# Tivo vs. Dish: Petition for rehearing en banc granted



## dfd

granted

http://www.cafc.uscourts.gov/opinions/09-1374o.pdf


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## Lake Lover

It is not a surprize, to me, I felt all along that the decision would be reviewed by the full bench. If I were a betting man, I would predict that the decision will be affirmed in favour of TiVo.

I am very disappointed that Tom and Charlie didn't settle this mess.


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## dgordo

Surprising to me just because of the low percentage of appeals that get an en banc review. If you look at the questions that they are asking to be briefed, it seems strange that was granted as these are well established legal standards they want answered.


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## Allen Noland

Tivo down 36% on the news.

http://online.wsj.com/article/BT-CO-20100514-710157.html


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## Stuart Sweet

Here's the next chapter:

http://www.marketwatch.com/story/dish-network-allowed-to-appeal-ruling-for-tivo-2010-05-14



> SAN FRANCISCO (MarketWatch) -- A federal appeals court will allow Dish Network Corp. /quotes/comstock/15*!dish/quotes/nls/dish (DISH 23.00, +1.04, +4.74%) to appeal a ruling that it infringed patents on digital video technology held by TiVo Inc. /quotes/comstock/15*!tivo/quotes/nls/tivo (TIVO 11.23, -6.16, -35.42%) . Shares of TiVo dropped 35% to $11.35 and Dish shares rose 5.7% to $23.20 in recent trading. In March, a federal judge ruled in favor of TiVo, awarding it $300 million.


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## dgordo

Could that description of the case be any more inaccurate?


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## davemayo

Here's some of the order:

IT IS ORDERED THAT:
(1) The petition of Defendants-Appellants EchoStar Corporation et al. for panel rehearing is denied.

(2) The petition of Defendants-Appellants EchoStar Corporation, et al. for rehearing en banc is granted.

(3) The court’s March 4, 2010 opinion is vacated, and the appeal is reinstated.

(4) The parties are requested to file new briefs addressing the following issues:

a) Following a finding of infringement by an accused device at trial, under what circumstances is it proper for a district court to determine infringement by a newly accused device through contempt proceedings rather than through new infringement proceedings? What burden of proof is required to establish that a contempt proceeding is proper?

b) How does “fair ground of doubt as to the wrongfulness of the defendant’s conduct” compare with the “more than colorable differences” or “substantial open issues of infringement” tests in evaluating the newly accused device against the adjudged infringing device? See Cal. Artificial Stone Paving Co. v. Molitor, 113 U.S. 609, 618 (1885); KSM Fastening Sys., Inc. v. H.A. Jones Co., 776 F.2d 1522, 1532 (Fed. Cir. 1985).

c) Where a contempt proceeding is proper, (1) what burden of proof is on the patentee to show that the newly accused device infringes (see KSM, 776 F.2d at 1524) and (2) what weight should be given to the infringer’s efforts to design around the patent and its reasonable and good faith belief of noninfringement by the new device, for a finding of contempt?

d) Is it proper for a district court to hold an enjoined party in contempt where there is a substantial question as to whether the injunction is ambiguous in scope?

(5) This appeal will be heard en banc on the basis of the originally filed briefs, additional briefing ordered herein, and oral argument. An original and thirty copies of all originally filed briefs shall be filed within 42 days from the date of filing of this order. An original and thirty copies of new en banc briefs shall be filed, and two copies of each en banc brief shall be served on opposing counsel. The Defendants-Appellants shall file their new en banc brief within 42 days from the date of filing of this order. The response brief of the Plaintiff-Appellee is due within 42 days from the date of service of the Defendants-Appellants’ brief. The reply brief of the Defendants-Appellants, if any, is due within 28 days from the date of service of the response.. Briefs shall adhere to the type-volume limitations set forth in Federal Rule of Appellate Procedure 32 and Federal Circuit Rule 32.

(6) Briefs of amici curiae will be entertained, and any such amicus briefs may be filed without leave of court but otherwise must comply with Federal Rule of Appellate Procedure 29 and Federal Circuit Rule 29.

(7) Oral argument will be held at a time and date to be announced later.


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## davemayo

Here's the order.


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## davemayo

TiVo Statement:

ALVISO, CA--(Marketwire - 05/14/10) - TiVo Inc., the creator of and a leader in television services and advertising solutions for digital video recorders (DVRs), offered the following statement on the U.S. Court of Appeals decision to grant an en banc hearing in the lawsuit against EchoStar.

"We are disappointed that we do not yet have finality in this case despite years of litigation but we remain confident that the Federal Circuit's ruling in our favor will be reaffirmed after all of the judges on the Federal Circuit have had the opportunity to review the merits of this case."

http://finance.yahoo.com/news/TiVo-Statement-on-Decision-by-iw-3703858270.html?x=0&.v=1


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## Kheldar

The ruling has some interesting points in it, page 2:


> (4) The parties are requested to file new briefs addressing the following issues:
> a) Following a finding of infringement by an accused device at trial, under what circumstances is it proper for a district court to determine infringement by a newly accused device through contempt proceedings rather than through new infringement proceedings? What burden of proof is required to establish that a contempt proceeding is proper?
> b) How does "fair ground of doubt as to the wrongfulness of the defendant's conduct" compare with the "more than colorable differences" or "substantial open issues of infringement" tests in evaluating the newly accused device against the adjudged infringing device? See Cal. Artificial Stone Paving Co. v. Molitor, 113 U.S. 609, 618 (1885); KSM Fastening Sys., Inc. v. H.A. Jones Co., 776 F.2d 1522, 1532 (Fed. Cir. 1985).
> c) Where a contempt proceeding is proper, (1) what burden of proof is on the patentee to show that the newly accused device infringes (see KSM, 776 F.2d at 1524) and (2) what weight should be given to the infringer's efforts to design around the patent and its reasonable and good faith belief of noninfringement by the new device, for a finding of contempt?
> d) Is it proper for a district court to hold an enjoined party in contempt where there is a substantial question as to whether the injunction is ambiguous in scope?


Part (a) of that section sounds like the court is trying to decide if it is proper to use a contempt proceeding to determine if a "newly accused device" (i.e. a DVR model not included in the original complaint, like maybe the ViPs) is also infringing, or if they must start over with a whole new trial. If they accept the answer that I assume TiVo would give them to this question, this may be a way to get the ViPs shut down with the other models.

Part (b) suggests that, if they agree in part (a) that the newer models should be included in the contempt proceeding, what kind of test should be applied to determine whether or not the "newly accused device" infringes -- the much-discussed "more than colorable differences", or the "substantial open issues of infringement" test, which is described in a book on patent law this way:









So, if "substantial open issues of infringement" don't exist, according to this book it may be entirely appropriate to bring the "newly accused devices" into the case at this point. At least that's what the court is trying to decide.

Then, if they determine in part (b) that it is appropriate to bring the newer devices into the contempt proceeding at this point, part (c) is trying to determine what standard they should use to determine what burden of proof TiVo has to demonstrate to prove that the newer devices infringe, and whether or not DishNet should get bonus points for at least trying to avoid infringement.

Again, I am not a lawyer, but these points seem to mirror some of the debates we have had in earlier threads.


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## spear61

Stuart Sweet said:


> Here's the next chapter:
> 
> http://www.marketwatch.com/story/dish-network-allowed-to-appeal-ruling-for-tivo-2010-05-14


may appeal ruling? someone at marketwatch needs a refresher course on composition and the english languge.


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## phrelin

Wow! A big win for Charlie - delay, delay, delay.


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## TulsaOK

Earning interest on that money every day.


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## phrelin

There are a couple of things I don't understand here. They are:

(4) The parties are requested to file new briefs addressing the following
issues:
...d) Is it proper for a district court to hold an enjoined party in contempt where there is a substantial question as to whether the injunction is ambiguous in scope?​
AND​
(6) Briefs of amici curiae will be entertained, and any such amicus briefs may be filed without leave of court but otherwise must comply with Federal Rule of Appellate Procedure 29 and Federal Circuit Rule 29.​
Am I reading that the Court thinks it's possible that "there is a substantial question as to whether the injunction is ambiguous in scope?"

Is it just a normal provision in all en banc rehearings, which aren't normal to begin with, to permit "briefs of amici curiae" or does the court think that there is something special here that perhaps others in lawsuits with TiVo might want to get on the record?


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## ATARI

and the lawyers on both sides continue to make money


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## Voyager6

phrelin said:


> There are a couple of things I don't understand here. They are:
> 
> (4) The parties are requested to file new briefs addressing the following
> issues:
> ...d) Is it proper for a district court to hold an enjoined party in contempt where there is a substantial question as to whether the injunction is ambiguous in scope?​
> AND​
> (6) Briefs of amici curiae will be entertained, and any such amicus briefs may be filed without leave of court but otherwise must comply with Federal Rule of Appellate Procedure 29 and Federal Circuit Rule 29.​
> Am I reading that the Court thinks it's possible that "there is a substantial question as to whether the injunction is ambiguous in scope?"
> 
> Is it just a normal provision in all en banc rehearings, which aren't normal to begin with, to permit "briefs of amici curiae" or does the court think that there is something special here that perhaps others in lawsuits with TiVo might want to get on the record?


I think that they are referring to Judge Folsom's desire to see the infringing DVR's shut down even if they no longer infringe. E* obviously felt that by loading new software that the DVR's no longer had to be disabled. Judge Folsom disagreed with that. Now the appeals court wants to look at the issue. That was one of the main issues of the contempt citation.


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## dgordo

spear61 said:


> may appeal ruling? someone at marketwatch needs a refresher course on composition and the english languge.


Exactly my point. You would think that Dow Jones would know something about the legal process or at least how to read.


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## davemayo

phrelin said:


> Is it just a normal provision in all en banc rehearings, which aren't normal to begin with, to permit "briefs of amici curiae" or does the court think that there is something special here that perhaps others in lawsuits with TiVo might want to get on the record?


It is a normal provision in an en banc order to invite amici to submit briefs.


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## jacmyoung

Kheldar said:


> ...a "newly accused device" (i.e. a DVR model not included in the original complaint, like maybe the ViPs) ...


That is incorrect, the "newly accused devices" refer to the 8 named DVRs with the new software. So far this appeal deals with only those 8 named DVRs, no more, no less.

For all those questions people say that you do not understand, if you had the opportunities to read all those threads about this case in this forum, they had all been argued here more than enough times, only now the en banc panel is going to revisit almost all of them, all over again.

Some people in that village definitely got b-slaped today for not believing in karma


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## dgordo

What is the village?


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## Paul Secic

phrelin said:


> Wow! A big win for Charlie - delay, delay, delay.


Charlie really needs to settle this and move on! Or Buy Tivo. I'm starting to think he's listening to his legal team too much.


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## jacmyoung

Paul Secic said:


> Charlie really needs to settle this and move on! Or Buy Tivo. I'm starting to think he's listening to his legal team too much.


If you had read our discussions in the past few days, Charlie has already made an offer to TiVo.


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## phrelin

Kent Taylor said:


> Earning interest on that money every day.





ATARI said:


> and the lawyers on both sides continue to make money


"It's only money." - Charlie Ergen



Paul Secic said:


> Charlie really needs to settle this and move on! Or Buy Tivo. I'm starting to think he's listening to his legal team too much.


Well, when justice moves at this speed, delay really is on Charlie's side. As you may remember I keep a record of posts on threads on this subject (only the ones I think are worth looking back at as many with only a few posts offer no information). It looks like this:








We're now over six years into this and over four years after the jury verdict. The listed boxes are fully depreciated. While Dish has paid TiVo some of that "it's only money" and likely will have to pay some more "it's only money", given enough time Charlie will end up with all MPEG4 satellite feeds, no listed boxes, and no boxes designed anything like the listed boxes.

IMHO this granting of an en banc hearing has to be a big win in Charlie's mind. And in the unlikely event (in his mind) that the ViP's are found to infringe, he'll pay licensing fees or buy TiVo as "it's only money."


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## jacmyoung

Voyager6 said:


> I think that they are referring to Judge Folsom's desire to see the infringing DVR's shut down even if they no longer infringe. E* obviously felt that by loading new software that the DVR's no longer had to be disabled. Judge Folsom disagreed with that. Now the appeals court wants to look at the issue. That was one of the main issues of the contempt citation.


The injunction may be ambiguous only if you listen to what TiVo's interpretation is. At the time TiVo proposed the injunction, TiVo said it only sought to *stop the infringement, no more, no less*. It also instructed the court on what step E* might take to comply with the injunction, by saying, E* could *disable the infringing DVR functions* of the DVRs by a software download.

Now TiVo is saying E* could not just download a software to disable the *infringing DVR functions*, E* must disable *any DVR functions*, whether the DVRs still infringe or not.

Judge Rader was the only one of the four judges caught the contradiction in TiVo's statements. Even E*'s lawyer during the oral argument did not make a point of the above, Judge Rader noticed the above after asking TiVo's lawyer a few questions, then caught the above several TiVo's statements buried in the files.

IMHO, E* was lucky. There are of course other reasons, but still E* was lucky.


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## James Long

dgordo said:


> What is the village?


I believe jacmyoung is referring to "Invester's Village" ... a discussion site that hosts a Tivo forum where the issue is also discussed.


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## phrelin

> ENGLEWOOD, CO, May 14, 2010 (MARKETWIRE via COMTEX News Network) -- DISH Network L.L.C., a subsidiary of DISH Network Corporation (NASDAQ: DISH), and EchoStar Technologies L.L.C., a subsidiary of EchoStar Corporation (NASDAQ: SATS), issued the following statement regarding recent developments in TiVo vs. EchoStar Communications Corporation:
> 
> "DISH Network and EchoStar are pleased that the full Federal Circuit Court of Appeals has granted their petition for rehearing en banc.
> 
> We believe the issues that will be considered by the full court on rehearing will have a profound impact on innovation in the United States for years to come."


If it does have a "profound impact on innovation", of course the loser will appeal to the Supreme Court which might actually take it up, particularly if it does have a "profound impact on innovation.":sure:


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## phrelin

By the way, just to get it clear here, in the quarterly call according to Reuters:


> On a call with analysts, Ergen shrugged off, but did not dismiss, the takeover chatter. Instead, he praised TiVo's legal strategy, and said it is in the best interest of both companies to reach some kind of amicable agreement.
> 
> "We are joined at the hip in the sense that if we don't get a deal done, those fees will go away for them, and obviously we'll lose customers," he said. "A strong Dish Network is probably beneficial to TiVo if we're utilizing their technology."
> 
> As for buying TiVo, Ergen said: "I haven't really thought about it too much, but I guess those are always options. It's not something that I've thought a lot about."


And, of course, today after the markets closed we have a wry comment in a Forbes article TiVo Plummets On Patent Case Review:


> TiVo investors learned the hard way that patent infringement cases are never over until the big court sings.


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## James Long

Tivo down 40% with a volume of 37,240,709 (at close)
DISH up 4.28% with a volume of 7,898,245

For Tivo this is a correction back to the prices that were common before the big volume jump up in price at the beginning of March. For DISH it doesn't seem to have an impact.

It certainly was a better day for DISH than Tivo.


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## dgordo

I thought stock talk wasn't allowed here?


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## James Long

We'll keep it limited to those two posts, with the second simply illustrating the first.
(At this point it is historical data. No advice to buy/sell/hold/keep/jump off a bridge/etc.
Also no attempt to manipulate the market or predict what principals are doing.)


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## jacmyoung

James Long said:


> I believe jacmyoung is referring to "Invester's Village" ... a discussion site that hosts a Tivo forum where the issue is also discussed.


I did not want to go too far off the topic, but since we are on it, many TiVo individual investors are on that board, some of them also post here. For obvious reasons most of them did not like me a bit But some of them went out of their ways to attack me. Which led to my previous comment about "karma". Believe it or not, again that comment was not mine, I simply borrowed it from them. Hopefully we all learned from our own mistakes. This case is clearly not over.

Now back to the topic, I want to note that the number of issues listed in the en banc order, all of them were mentioned by me from the very beginning of the contempt proceeding, that was back in the mid 2008. Some of the "old timers" here should remember the following terms:

1) Newly accused device against the adjudged infringing device,
2) burden of proof,
3) fair ground of doubt,
4) more than colorable differences,
5) substantial open issues, and
6) whether the injunction is ambiguous.

The above issues had been argued so many times here they became circular and almost considered spam. Not that I want to resurrect them, I am sick of talking about them too, but it is interesting to know that our en banc panel is now asking the very same questions for the first time, from the court perspective, precisely two years after we started debating such issues.


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## Slamminc11

ATARI said:


> and the lawyers on both sides continue to make money


and I continue to watch tv using my Dish DVR and not something made by tivo!


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## phrelin

jacmyoung said:


> I did not want to go too far off the topic, but since we are on it, many TiVo individual investors are on that board, some of them also post here. For obvious reasons most of them did not like me a bit But some of them went out of their ways to attack me. Which led to my previous comment about "karma". Believe it or not, again that comment was not mine, I simply borrowed it from them. Hopefully we all learned from our own mistakes. This case is clearly not over.
> 
> Now back to the topic, I want to note that the number of issues listed in the en banc order, all of them were mentioned by me from the very beginning of the contempt proceeding, that was back in the mid 2008. Some of the "old timers" here should remember the following terms:
> 
> 1) Newly accused device against the adjudged infringing device,
> 2) burden of proof,
> 3) fair ground of doubt,
> 4) more than colorable differences,
> 5) substantial open issues, and
> 6) whether the injunction is ambiguous.
> 
> The above issues had been argued so many times here they became circular and almost considered spam. Not that I want to resurrect them, I am sick of talking about them too, but it is interesting to know that our en banc panel is now asking the very same questions for the first time, from the court perspective, precisely two years after we started debating such issues.


Actually, as I noted Dish's comment above:


> We believe the issues that will be considered by the full court on rehearing will have a profound impact on innovation in the United States for years to come.


I thought to myself, this actually could get interesting. Maybe not, maybe we'll end up with a vary narrow, same old stuff, ruling. But they really have opened up the can of worms at the outset.


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## jacmyoung

BTW, I almost forgot to mention another thing. I did not want to bring it to the open before the en banc panel made its decision. Now it is appropriate.

Recall a day or two ago Voyager6 posted his theory of the possibility that Judge Folsom had already considered the E* new designs (the two new options pending pre-approval) to be non-infringing but wanted to wait for the en banc panel? I somewhat dismissed his theory because the timing was wrong.

Now the en banc order is in, I can talk about it. Voyager6's theory is a valid one, because if Judge Folsom has already decided that the two new options should be pre-approved for implementation, he would still not want to do so because in the event that the en banc granted the petition, meaning there is the possibility that his own ruling and injunction could be overturned, then approving E*'s new designs for implementation would have placed unnecessary burden on E* because implementing new software is a messy business, involving a lot of man-hour, possible backlash from the customers, bug fixes, we know this too well.

It would be an undue burden on E* if later the en banc panel overturns his ruling and order. So here is a possibility why Judge Folsom may not want to make any decision on the pre-approval issue, even if in the event that he had already decided the new designs were non-infringing. The best approach is to continue to stay his own injunction until further notice.


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## am7crew

I love how people call the CEO's of these 2 companies by they're first names as if they know them lol


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## jacmyoung

phrelin said:


> Actually, as I noted Dish's comment above: I thought to myself, this actually could get interesting. Maybe not, maybe we'll end up with a vary narrow, same old stuff, ruling. But they really have opened up the can of worms at the outset.


I hate to burst your bubble, or should I say burst E*'s bubble

The fact the en banc panel is asking the exact same questions that we J6Ps debated two years ago, is proof that there is nothing new here, there will be no profound impact, just to maintain the status quo, that is if the en banc panel overturns Judge Folsom's ruling and order.

The court in a civil case always wants to encourage settlement, sometimes it goes out of its own way to do so, exercising its maximum discretion, depending on which party it believes is unreasonably "stubborn". But at some point when the court exhausts its leverage and its discretion is limited in such effort, it must get back on track with the law, and only the law.

For two years, both the district court, and the appeals court merits panel majority, might have done just that, but they failed to get Charlie to change his mind. Now the en banc panel must go back to visit the law. This is not to say Charlie will win, just that the court has realized its effort to coax a settlement had failed, so it now has to go back to the basics.


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## scooper

You can't force somebody to settle if they don't want to...

And when they are a billionaire who really doesn't have to answer to anybody else ... 

I think that one salient fact is one that alot of the Tivo posters fail to grasp when they come here, and try to bring up the stockholders putting pressure on Charles Ergen. Of course, most of us know it is an empty point.


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## James Long

jacmyoung said:


> ... proof that there is nothing new here ...


Well if there is nothing new to discuss I suppose we could just wait in silence until something happens many months from now. 



scooper said:


> I think that one salient fact is one that alot of the Tivo posters fail to grasp when they come here, and try to bring up the stockholders putting pressure on Charles Ergen. Of course, most of us know it is an empty point.


True that. People forget who the major stockholder is. It isn't some company who hired a CEO from some other company. The lead owners of DISH/SATS started the company and remain in daily control. We're talking a Bill Gates type of person, although in DISH's case, the creator is still running the show.


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## dgordo

What is most interesting to me is that the court has asked that the parties brief 4 questions of law that have previously been answered by this very court in other cases. Maybe they forgot?


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## James Long

dgordo said:


> What is most interesting to me is that the court has asked that the parties brief 4 questions of law that have previously been answered by this very court in other cases. Maybe they forgot?


Perhaps they want to revisit their previous decisions from another angle?


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## jacmyoung

James Long said:


> Well if there is nothing new to discuss I suppose we could just wait in silence until something happens many months from now.


We are not discussing those "age old" issues, I even said I was sick of them myself



> True that. People forget who the major stockholder is. It isn't some company who hired a CEO from some other company. The lead owners of DISH/SATS started the company and remain in daily control. We're talking a Bill Gates type of person, although in DISH's case, the creator is still running the show.


The individual TiVo investors are trying to get rich quick on the court rulings. In the case of TiVo, it is mostly owned by institutional investors (over 90%), therefore the individual investors are basically playing against the big guys.

But there were signs, before this en banc order, we knew many TiVo insiders sold large percentages of their holdings. You never read Charlie selling his stakes in large numbers based on any kind of news about his companies.


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## jacmyoung

dgordo said:


> What is most interesting to me is that the court has asked that the parties brief 4 questions of law that have previously been answered by this very court in other cases. Maybe they forgot?


What were the answers?

The only thing I can say is, the higher court is more likely to maintain the status quo if they can, because the law, if not amended by the Congress, stays the same. Since Judge Folsom's ruling is against the status quo, the odds are against TiVo.


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## scooper

dgordo said:


> What is most interesting to me is that the court has asked that the parties brief 4 questions of law that have previously been answered by this very court in other cases. Maybe they forgot?


Or maybe asking Dish/Tivo what is making this case unique that previous remedies won't work.


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## jacmyoung

scooper said:


> Or maybe asking Dish/Tivo what is making this case unique that previous remedies won't work.


Instead of looking at the questions asked by the en banc panel, it maybe a good idea to consider what questions they did not ask.

An obvious question that is absent in the en banc order is, what should be the standards used to deterimne colorable difference and infringement issues? Another maybe whether the reliance on the doctrine of equivalents standard is appropriate in this case? Because this question was asked by the professors.

The fact those questions were not even raised, implies that the en banc panel (or at least the majority of them) did not even see them as valid issues in this review, which may lead to the conclusion that they had already agreed with Judge Rader that the modified DVRs were likely no longer infringing. If so the only questions left to answer were the above four.


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## FarmerBob

http://www.reuters.com/article/idUS...uters/technologyNews (News / US / Technology)


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## jacmyoung

"We are disappointed that we do not yet have finality in this case despite years of litigation but we remain confident that the Federal Circuit's ruling in our favor will be reaffirmed," TiVo said in a statement.

I just read this TiVo's statement, am I correct that TiVo should have said "the district court's ruling" instead of "the Federal Circuit's ruling" because "the Federal Circuit's ruling" has been vacated, i.e. no longer exists?


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## phrelin

jacmyoung said:


> "We are disappointed that we do not yet have finality in this case despite years of litigation but we remain confident that the Federal Circuit's ruling in our favor will be reaffirmed," TiVo said in a statement.
> 
> I just read this TiVo's statement, am I correct that TiVo should have said "the district court's ruling" instead of "the Federal Circuit's ruling" because "the Federal Circuit's ruling" has been vacated, i.e. no longer exists?


I think they mean the vacated ruling - this was a PR piece for shareholder protection saying "hey we already won here before", not a note to the attorneys.

Now there will be about 4 months of filing briefs, probably a minimum of 6 months to a decision. That decision can be appealed to the Supreme Court.

And I'm still puzzling over the language "Is it proper for a district court to hold an enjoined party in contempt _where there is a substantial question as to whether the injunction is ambiguous in scope_?" What ambiguity in scope in the injunction language exists as a substantial question?

This isn't a discussion of a possible hypothetical substantial question, but rather asserts that there is a substantial question which existence they aren't asking to be discussed. Are they accepting as a given Judge Rader's pointing to the contradiction in TiVo's statements about what constitutes disabling? Are they preparing to accept a reasonable argument that contempt is not appropriate under these circumstances?

Despite the relationship to the first three issues, this "feels" as if it is a question apart.


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## jacmyoung

phrelin said:


> I think they mean the vacated ruling - this was a PR piece for shareholder protection saying "hey we already won here before", not a note to the attorneys.
> 
> Now there will be about 4 months of filing briefs, probably a minimum of 6 months to a decision. That decision can be appealed to the Supreme Court.
> 
> And I'm still puzzling over the language "Is it proper for a district court to hold an enjoined party in contempt _where there is a substantial question as to whether the injunction is ambiguous in scope_?" What ambiguity in scope in the injunction language exists as a substantial question?
> 
> This isn't a discussion of a possible hypothetical substantial question, but rather asserts that there is a substantial question which existence they aren't asking to be discussed. Are they accepting as a given Judge Rader's pointing to the contradiction in TiVo's statements about what constitutes disabling? Are they preparing to accept a reasonable argument that contempt is not appropriate under these circumstances?
> 
> Despite the relationship to the first three issues, this "feels" as if it is a question apart.


To answer your good question, we will have to revisit the "age old" question again, that can get us in trouble, but I think it is worth the risk

The goal of an injunction against infringement, and the only goal, is to prevent further infringement. Therefore it must be first assumed, when one reads the injunction, that the above rule applies. An infirnger subject to such injunction must be given the benefit of such interpretation, because this is the law.

Where the injunction might be interpreted as to prohibit an act even if such act is non-infringing, the appeals court had said, in such case, the court must nevertheless interpret such injunction in a way that conforms to the law. This is almost the same as saying if the court has to twist the words of the injunction to meet the above standard, it will have to do so.

Because of the above reasons, the only saving grace for the court is to somehow argue that the injunction is ambiguous. Because it cannot say it is trying to twist the words of the injunction (it will be a riot), only that the words of the injunction are not clear enough.

There are plenty of reasons to call Judge Folsom's injunction ambiguous. It first defined the 8 nameds DVRs "the Infringing Products", all the prohibitions in the injunction referred to "the Infringing Products". If the injunction had meant to include the modified products that might not be infringing, the injunction should have made it clear to include such non-infringing products, but it did not.

The injunction called for the disabling of "the DVR functionalities", not "any DVR functionalities". When the infringer interpreted "the DVR functionalities" to mean the DVR functions that were adjudged to infringe during the trial, he must be given the benefit of such interpretation, because the injunction did not make it clear that it meant to disable any possible future DVR functions, whether they infringe or not.

The injunction also prohibited "the DVR fucntions" from being reinstalled back onto "the Infringing Proudcts", once "the DVR functions" were disabled. Had the injunction meant to disable "any DVR functions" regardless, such additional requirement would have been unnecessary, because as long as no DVR functions could be used, why the injunction tried to make a point that those DVR functions could not be reinstalled? The implication was, other DVR functions might be fine, as long as they were not "the DVR functions" that infringed.

As for the "all means all", disable all storage and playback from the hard drive..."of the Infringing Proudcts", continued to show that it was limited to the products that infringed.

Of course the TiVo folks had always called the above interpretation "tortured interpretation" Unfortunately, if the above "tortured interpretation" is the only interpretation that can result in conforming to the law, the appeals court had said, such "tortured interpretation" will do

TiVo of course argues that if the injunction was not so clear to E*, E* should have appealed. But E* did not have to, if the injunction was not clear, it could not be in force, period, nowhere had the court ever said an ambiguous order can be effective if the wording of the order is not appealed.


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## James Long

phrelin said:


> Now there will be about 4 months of filing briefs, probably a minimum of 6 months to a decision. That decision can be appealed to the Supreme Court.


The way this case is going, I'd consider that as additive. ie: Minimum 10 months before a decision.



phrelin said:


> And I'm still puzzling over the language "Is it proper for a district court to hold an enjoined party in contempt _where there is a substantial question as to whether the injunction is ambiguous in scope_?" What ambiguity in scope in the injunction language exists as a substantial question?


That is a good question. The problem I see with the injunction was apparently not raised in prior appeals. It is too broad. Instead of saying "remove that infringing process" it says "remove the entire function". Barring the ability to have the function even if a non-infringing process is used. This ambiguity was raised in later rounds but not when DISH appealed the initial decision.

The ambiguity raised by DISH when they failed to disable their DVRs was what disabling means. DISH claimed they disabled their DVRs and installed new software that did not infringe. For most of us "disabled" for a few minutes to reboot doesn't match the wording of the injunction. Other than the clerical errors, is there ambiguity remaining?



phrelin said:


> Are they accepting as a given Judge Rader's pointing to the contradiction in TiVo's statements about what constitutes disabling? Are they preparing to accept a reasonable argument that contempt is not appropriate under these circumstances?


This is a messy case. It is a shame that we all have jobs or obligations that keep us from solving it for the courts. We would have had an answer years ago ... two answers actually - one where Tivo wins and one where DISH wins.


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## jacmyoung

James Long said:


> ...Other than the clerical errors, is there ambiguity remaining?


Plenty of it as I pointed out. No matter how unambiguous one believes the injunction is saying, as long as the other guy has interpreted it differently, the question becomes, how much weight should the court give to the other guy's interpretation? It just so happens that the court also says, if the other guy happens to be the one subject to the injunction, the court must rule in the way most favorable to him.


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## phrelin

James Long said:


> We would have had an answer years ago ... two answers actually - one where Tivo wins and one where DISH wins.


My answer is where both "win" - order Dish to pay a license fee for continued use of the listed DVRs based on the average license fee paid by others plus a 50% penalty.

Dish's problem would be to figure out how to get folks to replace those products. Tivo's problem would be whether to file a new lawsuit against Dish and Echostar on the unlisted DVRs.


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## Greg Bimson

jacmyoung said:


> It just so happens that the court also says, if the other guy happens to be the one subject to the injunction, the court must rule in the way most favorable to him.


That is not exactly the standard. The problem is that the interpretation of the injunction by DISH/SATS holds no plausibility, and I'm not going into that again.

Truthfully, I think this is being revisited _en banc_ because they need real case law to deal with this situation. And as I've said time and time again, so far by following case law DISH/SATS has been found in contempt. The only way I believe the finding of contempt is overturned is if the bench of the CAFC makes a precedential ruling and creates new case law, a la _KSM_.


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## jacmyoung

Greg Bimson said:


> That is not exactly the standard. The problem is that the interpretation of the injunction by DISH/SATS holds no plausibility, and I'm not going into that again.
> 
> Truthfully, I think this is being revisited _en banc_ because they need real case law to deal with this situation. And as I've said time and time again, so far by following case law DISH/SATS has been found in contempt. The only way I believe the finding of contempt is overturned is if the bench of the CAFC makes a precedential ruling and creates new case law, a la _KSM_.


We will have to continue to agree to disagree.


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## jacmyoung

phrelin said:


> My answer is where both "win" - order Dish to pay a license fee for continued use of the listed DVRs based on the average license fee paid by others plus a 50% penalty.
> 
> Dish's problem would be to figure out how to get folks to replace those products. Tivo's problem would be whether to file a new lawsuit against Dish and Echostar on the unlisted DVRs.


I just want to point out that the above is not a "both win", rather a "TiVo-only win".

I'd say a win/win solution is what Charlie had offerred, $120M a year lump sum, TiVo allows E*/DISH to use its name and technology. I believe Charlie wanted an exclusive deal, others may disagree, but if it is up to me a non-exclusive deal would be fine, but that was before the en banc order.

With the en banc order, Charlie's position is much stronger, I would not be surprised if he takes back his offer. Though I think an exclusive $120M lump sum deal is still a reasonable deal for both.

Let's not forget, with the en banc review in place, it will take another 6 months minimum, most likely more than that to reach a resolution, meanwhile the next PTO action should come sooner. As I had pointed out, TiVo had already allowed the PTO to certify the 8 new claims in the event the PTO continues to reject the two software claims, if the PTO agrees with TiVo, the software claims will be formally invalidated, without any appeal from TiVo.

I don't think TiVo wants to wait for that possibility before considering any offer from Charlie. On the other hand my bet is with this en banc order, he will wait out longer to see what the PTO is going to do. If the PTO does the above, he would not have to do anything, this case would be gone forever, E* would not owe TiVo anything at all because there was never any infringement in the first place. He would not get that $105M back though.


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## Paul Secic

jacmyoung said:


> If you had read our discussions in the past few days, Charlie has already made an offer to TiVo.


Oh OK.


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## Jhon69

Personally I think Tivo is suing Dish for a license fee so they can try to find out how Dish made such a great DVR which the 625 is.Dish's 625 can operate 2 TVs,has a 2 hour pause with 2-120 minute live buffers.PIP with splitscreen(you can view what's on tuner1 and 2),plus 150 hour recording capacity.


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## jacmyoung

Earlier I said what may be important is to ask what questions the en banc panel did not ask.

Another obvious question that is missing is whether it is proper for the court to require pre-approval of any design around. As far as we know, this is the first time such pre-approval requirement is included in an injunction. As such it deserves the attention and a decision so the world may get the direction on this issue in the future.

By not even touching on this issue, the signal is that such requirement has no importance or is moot, if so the amended injunction will likely be vacated for that provision alone. A new injunction will be required even if Judge Folsom's ruling is reaffirmed.


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## FogCutter

OK, let's say Charlie loses and is pinned to the wall without further appeal -- at the risk of sounding self-centered -- what happens to my 3 DVRs? Do they come and get them? Do they quit working? Does someone charge me more?


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## phrelin

FogCutter said:


> OK, let's say Charlie loses and is pinned to the wall without further appeal -- at the risk of sounding self-centered -- what happens to my 3 DVRs? Do they come and get them? Do they quit working? Does someone charge me more?


It's all speculation, of course, but I think the February 1, 2010 rate structure is a start to covering any costs Dish might have to pay for the listed devices.

Just my opinion.


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## scooper

Well - first off - based on past performance, most of us would be greatly surprised to hear anything from the En Banc review for 3 months minimum, more likely 6-12 months - and longer wouldn't be too long a stretch.

If it goes against Dish - they still have an appeal application to the SCOTUS - probably would be denied. 

Then only if Dish /Echostar could not reach a licensing agreement with Tivo - and only then - would you see the "Infringing Products" DVR function disabled..

At least this is how I see it....


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## peak_reception

jacmyoung said:


> No matter how unambiguous one believes the injunction is saying, as long as the other guy has interpreted it differently, the question becomes, how much weight should the court give to the other guy's interpretation? It just so happens that the court also says, if the other guy happens to be the one subject to the injunction, the court must rule in the way most favorable to him.


 How about this: If "either guy" has a question about a court injunction, it is *his* responsibility to ask the judge for a clarification. Otherwise he takes responsibility for any misinterpretation he may make, and bears consequences for any such misinterpretation going forward.


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## kcolg30

Can someone please ID which DVR models are in question.


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## jacmyoung

peak_reception said:


> How about this: If "either guy" has a question about a court injunction, it is *his* responsibility to ask the judge for a clarification. Otherwise he takes responsibility for any misinterpretation he may make, and bears consequences for any such misinterpretation going forward.


Except in this case, neither guy ever had any question/doubt about the court injunction, they both believed they were correct in interpreting the injunction.

But even if you may be correct that E* might have had some questions, sorry my friend, it is not E*'s job to set the injunction clear, rather that an unclear injunction can be used to a party's advantage, it happens all the time, I have cited several cases in which the contempt rulings were overturned for the exact reason, there were never the issue of should the infringers have tried to clarify the injunctions first. Besides, "not appeal" is one of the most central arguments by TiVo, yet the en banc panel did not even bother to include this one in their questions.

Now a lot have been said about why the en banc petition was granted, most believe it is because the en banc panel believed this was a very important case. But let's not forget, this is not the only reason for an en banc review, another reason for en banc review is simply that the en banc panel believed the previous court rulings could be wrong, in such cases, no matter how insignificant the cases are, the court should be obligated to review them.

dgordo asked a great question, why did the en banc panel ask the 4 questions that they themsleves had already answered before, more than once already? The questions that had been answered several times before are not very important or pressing questions. I have also pointed out that there are questions in this case that are in fact very important and historical, but the en banc panel did not even bother.

Why? Maybe this is one of those small number of the en banc review cases which the reason for review is not that it is an important case, rather that the en banc panel simply thought the prior court rulings were likely wrong.


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## FogCutter

thanks -- we'll just have to wait it out. could dish buy tivo or tivo buy dish?
That would end it and solve a lot of problems.


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## Ext 721

TIVO has a "poison pill" that requires a huge (at current prices) dividend to ALL shareholders upon a takeover. Essentially, this would make any TIVO shareholder instantly receive a huge cash sum, and cost the buyer of TIVO a huge sum of unrecoverable cash.

TIVO is far too small to aquire DISH or Echostar.


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## lparsons21

FogCutter said:


> OK, let's say Charlie loses and is pinned to the wall without further appeal -- at the risk of sounding self-centered -- what happens to my 3 DVRs? Do they come and get them? Do they quit working? Does someone charge me more?


As a consumer of Dish's goods and services, you asked the only real question you should care about. Well maybe, if they lose how much more will it cost me is a good one too.

Other than that, this whole thing is just mental gymnastics...


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## phrelin

kcolg30 said:


> Can someone please ID which DVR models are in question.


Sure, as I can't imagine trying to go through 14,000+ posts to find it. From the June 2, 2009 Amended Final Judgment and Permanent Injunction:

"...the Court hereby enters judgment for Plaintiff against Defendants for willful infringement of U.S. Patent No. 6,233,389 ("the '389 Patent") claims 31 and 61 ("the Infringed Claims") by Defendants' following DVR receivers (collectively the "Infringing Products"): DP-501, DP-508, DP-510, DP-522, DP-625, DP-721, DP-921, and DP-942."


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## James Long

kcolg30 said:


> Can someone please ID which DVR models are in question.


The named receivers are the DP 501, 508, 510, 522, 625, 721, 921 and 942.

(And it only took me a minute longer to go through 14,000 plus posts to find it. )


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## jacmyoung

lparsons21 said:


> As a consumer of Dish's goods and services, you asked the only real question you should care about. Well maybe, if they lose how much more will it cost me is a good one too.
> 
> Other than that, this whole thing is just mental gymnastics...


Funny how people think so not alike. When I was still a DISH sub a year or so ago, I had wished my 625 would be shut off so I could call DISH and ask for a fee upgrade to a 622 or 722, but it did not happen, so I ended up switching to DirecTV


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## James Long

jacmyoung said:


> Funny how people think so not alike. When I was still a DISH sub a year or so ago, I had wished my 625 would be shut off so I could call DISH and ask for a fee upgrade to a 622 or 722, but it did not happen, so I ended up switching to DirecTV


And yet many did the upgrade and are happy with the results.

I'm happy to know that my named receiver will be another year closer to a natural death from old age before any threat of being shut down by this case can take effect.


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## lparsons21

jacmyoung said:


> Funny how people think so not alike. When I was still a DISH sub a year or so ago, I had wished my 625 would be shut off so I could call DISH and ask for a fee upgrade to a 622 or 722, but it did not happen, so I ended up switching to DirecTV


I switched to D* about 3 years ago and then switched back in Feb of last year. All because of ****ty HDDVRs that kept getting worse as they 'updated' them. Now it seems that they have a decent one (HR24), but I wonder how long it will take them with 'updates' to screw it up?  Of course, as long as what you get is what is on the truck, you don't know if you're getting the single one worth having or not...


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## Greg Bimson

jacmyoung said:


> dgordo asked a great question, why did the en banc panel ask the 4 questions that they themsleves had already answered before, more than once already?


It appears that if more than one standard can be applied, the CAFC wants to make sure there isn't anything missing. And it is quite possible that the CAFC wants to create a standard for this. One can see that by looking at the questions themselves:


> a) Following a finding of infringement by an accused device at trial, under what circumstances is it proper for a district court to determine infringement by a newly accused device through contempt proceedings rather than through new infringement proceedings? What burden of proof is required to establish that a contempt proceeding is proper?


This is the "_KSM_" question. But it appears that this is worded to either separate the models found infringing that only received the new software, or all of the model numbers originally found infringing. And I am guessing it all depends on TiVO's brief, as we already know DISH/SATS stance.


> b) How does "fair ground of doubt as to the wrongfulness of the defendant's conduct" compare with the "more than colorable differences" or "substantial open issues of infringement" tests in evaluating the newly accused device against the adjudged infringing device? See Cal. Artificial Stone Paving Co. v. Molitor, 113 U.S. 609, 618 (1885); KSM Fastening Sys., Inc. v. H.A. Jones Co., 776 F.2d 1522, 1532 (Fed. Cir. 1985).


This question is new. I'll need to look this one up.


> c) Where a contempt proceeding is proper, (1) what burden of proof is on the patentee to show that the newly accused device infringes (see KSM, 776 F.2d at 1524) and (2) what weight should be given to the infringer's efforts to design around the patent and its reasonable and good faith belief of noninfringement by the new device, for a finding of contempt?


This of course is jacmyoung's point that TiVo only used DISH/SATS' defense that they no longer infringe and TiVo only addressed those arguments when finding infringement, yet the rest of the claims weren't necessarily addressed.


> d) Is it proper for a district court to hold an enjoined party in contempt where there is a substantial question as to whether the injunction is ambiguous in scope?


To me, this appears to be asking TiVo why the disable order should have been followed. TiVo needs to answer that the injunction is not ambiguous, irrespective of DISH/SATS strained interpretation, and that it should have been followed. This appears to be giving TiVo to address Judge Rader's mistake.


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## jacmyoung

Greg Bimson said:


> It appears that if more than one standard can be applied, the CAFC wants to make sure there isn't anything missing. And it is quite possible that the CAFC wants to create a standard for this. One can see that by looking at the questions themselves:This is the "_KSM_" question. But it appears that this is worded to either separate the models found infringing that only received the new software, or all of the model numbers originally found infringing. And I am guessing it all depends on TiVO's brief, as we already know DISH/SATS stance.This question is new. I'll need to look this one up.This of course is jacmyoung's point that TiVo only used DISH/SATS' defense that they no longer infringe and TiVo only addressed those arguments when finding infringement, yet the rest of the claims weren't necessarily addressed.To me, this appears to be asking TiVo why the disable order should have been followed. TiVo needs to answer that the injunction is not ambiguous, irrespective of DISH/SATS strained interpretation, and that it should have been followed. This appears to be giving TiVo to address Judge Rader's mistake.


First off, dgordo asked this question, why the en banc panel asked the 4 questions that the appeals court had already answered before. dgordo is an attorney so I would give more weight to his assertion that those 4 questions are not new ones, all of them are old ones, I also pointed out that all the terms used in those questions had been used by us since two years ago, so I don't think you are correct that at least one of the questions is new.

Secondly, even if one or two of the questions are new, it is my view that for TiVo to prevail, all of the four questions will have to be answered in TiVo's favor, but even if one question is answered in E*'s favor, the case will have to be overturned and remanded.

Thirdly, if dgordo is correct the answers to the 4 questions had already been given by the appeals court in the past, and if I am correct that it is highly unlikely that the en banc panel is going to reverse all the existing answers on all four questions, the odds are against TiVo.

The en banc panel carefully picked four old questions, all related to the arguments made my E*. They did not pick a single question that is related to TiVo's arguments. To me they are sending a message, asking TiVo to settle with Charlie. The timing is also of suspect, the en banc order came only a few days after Charlie, for the very first time and publicly, indicated he was ready to settle with TiVo.

If we can agree that the court will continue to urge the parties to settle, then there is the logic to speculate that once the court had learned that finally, the "unreasonably stubborn party" was ready and had made an offer, the court was only glad to see and hope that the end might be near, and would try to do something to tell the other party to get on board. Of course this is highly speculative, I have no proof nor fact to support it, this is only speculation.


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## jacmyoung

Greg Bimson said:


> ... This appears to be giving TiVo to address Judge Rader's mistake.


What mistake? Judge Rader never said the injunction was ambiguous. Therefore the en banc panel's 4th question regardling the ambiguity issue cannot possibly be to let TiVo to correct Judge Rader's such "mistake" that did not even happen.

Judge Rader made mainly two points, one, TiVo was wrong in proving continued infringement by the modified DVRs, he sided with E* that the modified DVRs likely no longer infringed. Two, TiVo was inconsistent about what E* can do now, compared to what TiVo said what E* could do back then.

Yet if you look at the en banc order, not a single question is designed to give TiVo the opportunity to respond to Judge Rader's above two contentions.

Since as dgordo pointed out, the 4 questions are old questions with answers already made by the appeals court in the past, what the en banc panel seems to be doing is to tell the TiVo attorneys, look, are you so confident that you can convince us to change our answers on all four questions? Because the exsiting answers to the above 4 questions support E*'s position. The en banc panel did not pick one question with answer that might support TiVo's position.

There are several questions that could have been asked to give TiVo the chance to make its argument, such as whether E* had waived its right to appeal, or whether, as Judge Folsom said, as far as the contempt is concerned, the local rule matters, not the CAFC rule. But they did not give TiVo such opportunity.

But to play devil's advocate, like the TiVo folks usually say, the reason the court tried to give opportunity to one party more, was because they had already intended to rule against that party, they just wanted to make sure they did not look biased, and gave the losing party all the opportunities to speak before ruling against them. If so, I will not argue against that


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## FogCutter

I'm not sure which company invented the DVR, but Tivo was one of the main players who popularized the things. It is sad and ironic that they are being squeezed out of a market they created when the sell a product that everybody loves. 

I can't imagine watching TV without one. 

But that's the way the cookie crumbles. . .


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## JWKessler

I looked and didn't see this already, so I'll toss it out.

The New York Times did a story on this on the 14th. I don't know if it added anything new to the discussion but some of you might be interested in seeing it.

http://www.nytimes.com/2010/05/15/business/15tivo.html


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## BobaBird

jacmyoung said:


> Maybe this is one of those small number of the en banc review cases which the reason for review is not that it is an important case, rather that the en banc panel simply thought the prior court rulings were likely wrong.


Are arguments limited to the 4 topics the panel asked the parties to file briefs on? If as you imply they can revisit the whole decision, are they bound by what was set as "the law of the case" that led to that decision? I'm thinking specifically of the court's applying the single term "parse" to 2 distinct processes (1. read the multi-channel satellite stream to identify and direct the desired video signal, 2. analyze and possibly index said video signal for use by DVR functions).


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## jacmyoung

BobaBird said:


> Are arguments limited to the 4 topics the panel asked the parties to file briefs on? If as you imply they can revisit the whole decision, are they bound by what was set as "the law of the case" that led to that decision? I'm thinking specifically of the court's applying the single term "parse" to 2 distinct processes (1. read the multi-channel satellite stream to identify and direct the desired video signal, 2. analyze and possibly index said video signal for use by DVR functions).


That is the question I have asked myself several times. Obviously the colorable difference analysis and the infringement analysis will have to be addressed, the fact they are not fashioned in the 4 questions is not an indication that they will not be revisited.

But what exactly is "the law of the case" here?

More importantly, if it is true that the above decision by Judge Folsom is "the law of the case", then what is the point of asking the 4 questions, because as we all know, even E* does not dispute, in fact E* had said clearly, if their modified DVRs are indeed only colorably different and continue to infringe, they are in fact in violation.

So the only possible conclusion one can make is, the en banc panel's 4 questions are based on the premise that the modified DVRs likely no longer infringed, *and* E* did not waive any rights in this appeal just because supposedly E* did not appeal the last time. Only then one can explain why the en banc panel asked the 4 questions, but not the other "more important and historical questions".


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## david_jr

CBS headlines this morning reported that Tivo stock was down a "stunning 41 %" after losing a key ruling in its ongoing battle with Dish Network over its DVR technology. They really didn't give any other details of the case or the ruling.


----------



## Nick

"I'm sorry, did you say something about *low* prices?"









*Graphic: Morningstar.com*


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## James Long

david_jr said:


> CBS headlines this morning reported that Tivo stock was down a "stunning 41 %" after losing a key ruling in its ongoing battle with Dish Network over its DVR technology. They really didn't give any other details of the case or the ruling.


To be fair it was an artificial high after a similar high volume jump back in March when it appeared Tivo would win this thing this year. Look at a full year and you'll see the massive jump up and now back again.


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## jacmyoung

James Long said:


> To be fair it was an artificial high after a similar high volume jump back in March when it appeared Tivo would win this thing this year. Look at a full year and you'll see the massive jump up and now back again.


Of course no surprise the analysts are back pumping TiVo again. This is one profession you can get away with anything you said yesterday that was wrong, and continue to be possibly wrong, people will continue to listen. Even politicians don't get such good treatment


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## James Long

jacmyoung said:


> Of course no surprise the analysts are back pumping TiVo again.


They are not. Perhaps later today when they are sure that the stock is leveling off but no new analysis.


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## Kheldar

jacmyoung said:


> Of course no surprise the analysts are back pumping TiVo again. This is one profession you can get away with anything you said yesterday that was wrong, and continue to be possibly wrong, people will continue to listen. Even politicians don't get such good treatment


Stock analysts and weathermen: can be consistently wrong and people still listen to them.


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## phrelin

Well, while I know we aren't supposed to discuss this in detail. But this morning from the Motley Fool Time to Get Back On the TiVo Roller Coaster?:


> Investing in TiVo (Nasdaq: TIVO) is not for the faint of heart. Another reversal in the long-running patent infringement case TiVo has going against DISH Network (Nasdaq: DISH) and EchoStar (Nasdaq: SATS) cut TiVo's stock at the ankles on Friday.
> 
> ...Dish CEO Charles Ergen recently noted that this kind of case review isn't granted often, so it's a bit of a shocker. Then again, it's a very material case for both sides of the battle -- maybe the Appeals Court simply felt that it was only fair to give it the full treatment rather than a cursory, three-judge review. I'm not a lawyer, but that would make sense.


I'd hardly call the article a "buy, buy" article, but it seems to say it might be a good time to buy in.

Then we have the upgrades and downgrades today:
17-May-10	Kaufman Bros	Downgrade from Buy to Hold
17-May-10	Caris & Company	Upgrade from Above Average to Buy

Maybe I could put together some Tivo derivatives.


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## Greg Bimson

jacmyoung said:


> So the only possible conclusion one can make is, the en banc panel's 4 questions are based on the premise that the modified DVRs likely no longer infringed, and E* did not waive any rights in this appeal just because supposedly E* did not appeal the last time. Only then one can explain why the en banc panel asked the 4 questions, but not the other "more important and historical questions".


That's a stretch. Each jurist may have completely different reasons to vote for an _en banc_ rehearing. The four questions certainly make it appear that there is a lot more than one train of thought to have the rehearing.

The corollary to this is the fact that the CAFC still has the original appeal argument briefs from the parties. There is no need to brief the court again. Now the _en banc_ needs the answers to these questions.

Take a look at the last two of the questions. Those questions appear to be begging TiVo to answer those correctly to proverbially "shut the door".


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## jacmyoung

Greg Bimson said:


> That's a stretch. Each jurist may have completely different reasons to vote for an _en banc_ rehearing. The four questions certainly make it appear that there is a lot more than one train of thought to have the rehearing.
> 
> The corollary to this is the fact that the CAFC still has the original appeal argument briefs from the parties. There is no need to brief the court again. Now the _en banc_ needs the answers to these questions.
> 
> Take a look at the last two of the questions. Those questions appear to be begging TiVo to answer those correctly to proverbially "shut the door".


Yet neither of the main points raised by TiVo and Judge Folsom was addressed. I hate to repeat them but the most important argument made by TiVo was, E* had waived its right to appeal the injunction when it did not do so last time. This is a very important question of application of law, if the answer to this question is not clarified, E* cannot be held in violation, period, because the en banc panel does not seek to clarify the status of the current DVRs either.

The main point Judge Folsom's made was that even if the DVRs no longer infringed, he may still hold E* in contempt for not following his order, because as he argued, when it comes to the determination of violation, his Fifth Circuit local rule applies, not the federal (CAFC) rule. Again this is a very important question of application of law. If this question is not clarified, once again E* cannot be held in contempt because the federal (CAFC) rule does not allow it if the products' status is not certain.

But neither of the above questions was asked by the en banc panel, nor was the question asked about the status of the DVRs. Therefore if you are correct that the en banc panel was given TiVo the opportunity to "shut the door", then they are wasting their time. TiVo can totally satisfy the en banc panel on the two questions, they will still not be able to found E* in contempt. Of course that cannot be true.

But then again, if one insists that the court can waste its time and has been doing so all along, I really cannot argue against that either. If delaying the process is one of Charlie's tactics, I am sure he is only too happy to know the en banc panel is going along.

Of course I am only playing devil's advocate here, it is not my view that the en banc panel is trying to waste its time, I am only using your argument to reach a very bad conclusion in order to demonstrate that maybe you are wrong.

BTW, where are Curtis and Tivonomo? While I had some heated exchanges with them, I had always considered both of them very knowledgeable and can appreciate their input, hope they are still around.


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## Greg Bimson

jacmyoung said:


> Yet neither of the main points raised by TiVo and Judge Folsom was addressed. I hate to repeat them but the most important argument made by TiVo was, E* had waived its right to appeal the injunction when it did not do so last time. This is a very important question of application of law, if the answer to this question is not clarified, E* cannot be held in violation, period, because the en banc panel does not seek to clarify the status of the current DVRs either.


1) It wasn't "the most important argument".
2) It appears the _en banc_ doesn't need clarification of this point.

The actual issue isn't with the waiver of appeal, but only DISH/SATS interpretation of the injunction, i.e., that the injunction is valid and it cannot enjoin non-infringing activity. I'd beg to differ with the fact that the law allows for equitable relief, and that was in the form of disabling the DVR's.


jacmyoung said:


> The main point Judge Folsom's made was that even if the DVRs no longer infringed, he may still hold E* in contempt for not following his order, because as he argued, when it comes to the determination of violation, his Fifth Circuit local rule applies, not the federal (CAFC) rule. Again this is a very important question of application of law. If this question is not clarified, once again E* cannot be held in contempt because the federal (CAFC) rule does not allow it if the products' status is not certain.


You need to re-read _en banc_ Question 4:


> d) Is it proper for a district court to hold an enjoined party in contempt where there is a substantial question as to whether the injunction is ambiguous in scope?


The only "ambiguity" relates to the disable order. And those products' status is far from "not certain": they are subject to the disable order and they were modified. There isn't a rule that takes precedence, so both rules apply. Or at least that is the tact I'd take when arguing.


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## jacmyoung

Greg Bimson said:


> ...The only "ambiguity" relates to the disable order. And those products' status is far from "not certain": they are subject to the disable order and they were modified. There isn't a rule that takes precedence, so both rules apply. Or at least that is the tact I'd take when arguing.


The 4th question takes on the premise that the order is ambiguous. Therefore it will be improper for the parties to address the question from the standpoint of "whether the order is clear or not", rather what should the court do "when the order is ambiguous"?

Earlier I said of course the issue of colorable difference and infringement (the status of the DVRs) would have to be addressed, but after thinking about it, I have reach a different conclusion. It is possible the issue of the status of the DVRs will not be addressed by the en banc panel at all.

We know that most judges in this case did not want to get involved in the colorable difference and infringement analyses business, except Judge Rader. Back when E* filed the declaratory judgment suit in the DE court, the DE judge transferred the case back to Judge Folsom because he thought Judge Folsom was better at making such decisions.

Likewise, the majority on the appeals court merits panel said the same thing, they considered Judge Folsom the expert in making such decisions. So it is safe to assume the majority on the en banc panel takes a similar position, as far as the status of the current DVRs, they'd prefer that Judge Folsom makes the call.

Once you set the above condition in place, it is very easy to explain why the 4 questions were asked by the en banc panel. The 4 questions are all geared to clarify one question really, the questions is, what is the proper venue to address the status of the DVRs? In a contempt proceeding, or in a new action? Most Circuit Judges do not seem to want to question Judge Folsom's ability to make his decisions on the status of the DVRs, except maybe Judge Rader or Judge Newman perhaps.

But it is very likely that most of the judges agreed with Judge Rader that the inquiries into the status of the modified DVRs should be done in a new action, not in a contempt proceeding. If so, they don't have to address the status of the current DVRs at all, all they have to do is to remand the case back to Judge Folsom, and ask him to complete the analyses in that new lawsuit currently pending before him. They are not questioning his judgment in such case, only asking him to do it again in a proper venue.

That way, no one's feeling is hurt, E* wanted that new case in the first place, so let's do it there. Okay, maybe TiVo's feeling was hurt, but it happened already by this en banc order anyway, so let's move on and do it right this time.


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## jacmyoung

Having said the above, I know some TiVo folks will begin to see some hope in this, hey, if they all consider Judge Folsom the expert, then what is the difference if the decision is from the contempt proceeding or from a new action? It is only a matter of time right?

Well for one thing, time is of essence, we know this too well.

But more importantly, if the contempt proceeding was not a proper venue, then the final judgment made in the improper venue will have to be rendered moot or invalid, so all the damages and sanctions will have to be reversed.

In addition, in a new action, the parties can demand jury trial, which is the case in this pending new lawsuit before Judge Folsom. Not only that, if we judge the schedules set for the TiVo v. Verizon and ATT cases, the earliest discoveries/Markman hearings are set about 18 months from now.

What? Another Markman hearing? You heard that right. Remember the software claims are under rejection by the PTO at this time, in addition TiVo has amended the claims with new descriptions for several key claim elements such as the “transform object”. Therefore a new Markman hearing will be needed for claim construction of such newly defined claim terms. Therefore in the worst case, if the PTO continues to reject the software claims and TiVo is forced to continue to respond or appeal the PTO decision, the new action will be stayed pending the outcome of the PTO reexamination.

And in the best case scenario the PTO certifies the TiVo’s amendment with the new claim terms, a new Markman hearing and the discoveries may take place over 18 months after the case is remanded from the appeals court.


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## jacmyoung

This one is interesting:

http://www.forbes.com/2010/05/14/dish-satellite-hulu-technology-tivo.html?boxes=Homepagechannels



> There has been speculation that companies like Apple ( AAPL - news - people ) have been reluctant to introduce video products for the living room because they don't want to have to pay TiVo royalties, or wind up being sued by TiVo if they don't. Should the courts find that Dish was able to implement TiVo-like functions without violating any TiVo patents, it would be fair to assume other companies would begin to do the same thing. And that might make for a revolution in living room electronics.


Forbes did make a mistake by saying:



> On Friday, though, U.S. Court of Appeals for the Federal Circuit, which deals with patents, *said the judge in the case had erred*, and while it didn't specifically rule in Dish's favor, it ordered that the court reevaluate the issue.


The highlighted part is incorrect, while the questions asked by the en banc panel seem to point that way, it did not say Judge Folsom had erred. The "it ordered that the court reevaluate the issue" is also misleading. The en banc order did not order the district court (Judge Folsom) to reevaluate the issue, not yet, it only ordered the en banc panel to reevaluate the issue itself, if this is what he is trying to say.

Forbes.com does seem to have some unique take on the case. It speculated that Charlie's long fight with TiVo is actually him sizing up the real value of TiVo before he tries to take control of TiVo. I agree with this speculation. Charlie spent $380M to buy Sling, as I said for a long time, and I think he understands it too, Sling and TiVo together make for a great future product. The only question is how much it should be. My guess is he will take TiVo at maybe twice the money he paid for Sling. Just a wild guess. Please don't try to tell me that "poison pill" thing, it has no leverage if the en banc panel does order a reevaluation, i.e. a new action.


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## Voyager6

One question that needs to be raised is, Can E* get a fair hearing with Judge Folsom? Folsom has already decided that the DVR's must be disabled even if they no longer infringe. If the Appeals Court orders a new infringement trial, isn't the outcome already predetermined? Folsom has already made known his ideas about the redesigned software that E* downloaded. He is sitting on two new redesign proposals and won't review them. What could the Appeals Court possibly order that would change Folsom's mind?


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## jacmyoung

Voyager6 said:


> One question that needs to be raised is, Can E* get a fair hearing with Judge Folsom? Folsom has already decided that the DVR's must be disabled even if they no longer infringe. If the Appeals Court orders a new infringement trial, isn't the outcome already predetermined? Folsom has already made known his ideas about the redesigned software that E* downloaded. He is sitting on two new redesign proposals and won't review them. What could the Appeals Court possibly order that would change Folsom's mind?


First tell Judge Folsom politely (so long as Judge Rader does not write the opinion) that the contempt proceeding was inappropriate, then order the district court to do it in that new action, that is if TiVo still wants to do it.

In the new action, the fact finder will be the jury. It does not have to, parties can agree to a bench trial, but they can demand a jury trial too, which as it stands right now, E* does demand a jury trial.

There are other possibilities, as I said the PTO action can potentially end this thing, but some additional unusual things can happen, such as a settlement

Another thing can happen is, E* can, if it gets the new action, ask Judge Folsom to move the new action back to the DE court, not going to happen, but then it can petition the appeals court to order Judge Folsom to move the case back to the DE court. Not likely to be granted either, but E* cannot lose by trying. There is a good justification to ask for that, if the en banc panel orders a review by the new action, it will have essentially determined that Judge Folsom was wrong in his choice of venue and exercising of discretion.

That is if the en banc panel ultimately rules in E*'s favor of course.

Of course Judge Folsom can change his mind too, I am an eternal optimist


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## James Long

Voyager6 said:


> What could the Appeals Court possibly order that would change Folsom's mind?


Simple - state that: "Infringment must be found in order to order the disablement of a modified product." If Judge Folsom disagrees the appeals court will overturn his rulings.


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## jacmyoung

James Long said:


> Simple - state that: "Infringment must be found in order to order the disablement of a modified product." If Judge Folsom disagrees the appeals court will overturn his rulings.


I think his question is, what will stop Judge Folsom from continuing to call the new design around option infringement. He can of course continue to do so, only that in a new action, it will be the jury, not him, as fact finder. Not to mention all the other legal options E* will have in a new action.


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## Voyager6

James Long said:


> Simple - state that: "Infringment must be found in order to order the disablement of a modified product." If Judge Folsom disagrees the appeals court will overturn his rulings.





jacmyoung said:


> I think his question is, what will stop Judge Folsom from continuing to call the new design around option infringement. He can of course continue to do so, only that in a new action, it will be the jury, not him, as fact finder. Not to mention all the other legal options E* will have in a new action.


I am also pointing out that according to Folsom's interpretation of his injunction, E* has no choice but to disable the DVR functions of the infringing products. Folsom didn't care what software solution that E* came up with, he wanted the DVR functions disabled. E* believes that if new software can be downloaded to make the DVR's non-infringing, it is legal for E* to do so. This is a fundamental disagreement about the intention of the original injunction. Will the Appeals Court redefine Folsom's injunction to allow for a software redesign?


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## Greg Bimson

Voyager6 said:


> One question that needs to be raised is, Can E* get a fair hearing with Judge Folsom? Folsom has already decided that the DVR's must be disabled even if they no longer infringe.


Isn't that the basis for CAFC Question d?


> d) Is it proper for a district court to hold an enjoined party in contempt where there is a substantial question as to whether the injunction is ambiguous in scope?


If the CAFC can be convinced that the order to disable was not ambiguous in scope (contrary to Judge Rader's belief) then contempt can simply stand. The reality is that TiVo needs to argue in their brief as if they are talking directly to Judge Rader, to get him to change his mind. The way Judge Rader's dissention was written I'd think TiVo could write 45 pages simply to counter many of the mistakes within that document.

I think too many people are putting an extreme amount of faith that DISH/SATS has the answers to all these questions and that somehow the entire contempt finding will be overturned. That to me is a big leap of faith.

There's one person that believes that these devices can only be adjudged in a new trial and another that believes the CAFC will create new case law in order to force Judge Folsom to rule in a different manner. I'm not saying it won't happen, but the odds are long. DISH/SATS has thrown everything and the kitchen sink into their argument. It is now TiVo's turn to pull out all the stops.


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## jacmyoung

Voyager6 said:


> ...Will the Appeals Court redefine Folsom's injunction to allow for a software redesign?


No, they will just vacate it.

I know Greg continues to believe the en banc panel is giving TiVo an opportunity to argue that the injunction is not ambiguous, but one only needs to read the 4th Q to know the en banc panel had already viewed the injunction ambiguous, the Q is what the court should do about an ambiguous injunction.


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## James Long

jacmyoung said:


> No, they will just vacate it.


They will be more specific than that. Judge Folsom will be remanded to take whatever action the appeals court feels is needed.



> I know Greg continues to believe the en banc panel is giving TiVo an opportunity to argue that the injunction is not ambiguous, but one only needs to read the 4th Q to know the en banc panel had already viewed the injunction ambiguous, the Q is what the court should do about an ambiguous injunction.


There is no order adjudicating the injunction as ambiguous.


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## Greg Bimson

jacmyoung said:


> I know Greg continues to believe the en banc panel is giving TiVo an opportunity to argue that the injunction is not ambiguous, but one only needs to read the 4th Q to know the en banc panel had already viewed the injunction ambiguous, the Q is what the court should do about an ambiguous injunction.


Getting ahead of yourself...


> d) Is it proper for a district court to hold an enjoined party in contempt where there is a substantial question as to *whether the injunction is ambiguous* in scope?


As a reminder:

1) "there is a substantial question as to whether the injunction is ambiguous". Is it or isn't it?
2) this is one question, not asked by the entire panel, but a member of that panel, so it isn't that the entire panel believes the injunction is ambiguous

TiVo needs to shut the door on "ambiguous". I'll even give a big hint: irreparable injury. DISH/SATS so twisted the reasoning for the injunction that TiVo needs to put a stake in the argument.


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## phrelin

Hmmm. I read it like this:

_Question to be resolved:_ Is it proper for a district court to hold an enjoined party in contempt?

_Statement of Court's Belief of Circumstances:_ where there is a substantial question as to whether the injunction is ambiguous in scope.

To address the question - is it proper? - does not require determining if the injunction is actually ambiguous.


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## Lake Lover

Plain and simple, if it is possible for anything revolving around this case to be, doesn't it boil down to the defendants concocted a work around which the judge decided did nothing to end the infringements. The judge applied the injunction in order to end continued injury to the plaintiff by the defendants. So. the only reasonable course of action for the judge was to warn the defendants: You are continuing to infringe; the infringement injures Tivo; I can't allow this to continue, so, clear it thru me from here on. Otherwise, the defendants could go on their merry way continuing business as usual under the guise of diligently pursuing a satisfactory workaround.


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## Greg Bimson

phrelin,
That is my point. Someone on the court believes "there is a substantial question as to whether the injunction is ambiguous in scope".

TiVo will need to take the three-pronged approach that
1) the injunction is not ambiguous,
2) even if the slightest ambiguity is present, it is only because DISH/SATS redefined terms within the injunction that have definition, and
3) injunctions are written to stand on their own merits, so any interpretation of an injunction that requires use of "the court's rules" is not valid when the injunction cannot be challenged.


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## jacmyoung

James Long said:


> They will be more specific than that. Judge Folsom will be remanded to take whatever action the appeals court feels is needed.


Of course if they remand the case, there will be specific instructions, but as far as the amended injunction is concerned, they can only affirm it or vacate it, they will not try to redefine it.


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## jacmyoung

phrelin said:


> ...*where there is a substantial question as to* whether the injunction is ambiguous in scope...


The above highlighted phrase is an affirmative statement, meaning the en banc panel believed there is a "substantial question" exists to point out that the injunction may be ambiguous. The question is not whether such "substantial question" exists or not, rather what the court should do in light of the existence of such "substantial question".

The "substantial question" had already been raised by Judge Rader during the oral argument (later stated in his dissent) after he pointed out the inconsistency in TiVo's statements then and now, as far as what E* can or cannot do in order to comply with the injunction. This is a fact, and no one has ever disputed that, not even TiVo. TiVo never disputed Judge Rader's such "substantial question" of inconsistency during the oral argument, Mr. Waxman, faced with Judge Rader's such question, simply changed his topic. Go back and listen to the recording you will agree with me.

Therefore the question now is, given such "substantial question" raised by Judge Rader about the clarity of the injunction, which Mr. Waxman could not dispute, what is proper for the court to do?

We need to be very clear about one thing, the injunction was TiVo's injunction, TiVo proposed the wording of it, then instructed the court and E* what steps E* could do to comply with it, and the court adopted it. It is TiVo's job to demonstrate that its proposed injunction is clear, concise and without any ambiguity. It is undisputed, as Judge Rader pointed out in the oral argument, which Mr. Waxman could not dispute, that TiVo said one thing back then what E* could do to comply with its injunction, then after E* did what TiVo said they should do, later TiVo said no, E* should have done something else to comply with the *exact same injunction*. Therefore unless TiVo can somehow demonstrate to the court that its statements then and now are consistent, otherwise the injunction was ambiguous.


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## James Long

jacmyoung said:


> James Long said:
> 
> 
> 
> They will be more specific than that. Judge Folsom will be remanded to take whatever action the appeals court feels is needed.
> 
> 
> 
> Of course if they remand the case, there will be specific instructions, but as far as the amended injunction is concerned, they can only affirm it or vacate it, they will not try to redefine it.
Click to expand...

I suppose we'll know for sure next year some time. Appeals court remands CAN be specific. It is possible that a particular wording will be recommended in the remand.


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## jacmyoung

James Long said:


> I suppose we'll know for sure next year some time. Appeals court remands CAN be specific. It is possible that a particular wording will be recommended in the remand.


I suspect it may come sooner. This en banc order came much sooner than everyone had expected, a lot of investors/analysts were caught by surprise not just because the petition was granted, but the quick turnaround. Most of them were discussing what the decision might do to the TiVo options *after* the May expiration, then the order came *before* the May expiration, as some news report said, it was a bloodbath especially for the options contracts.

What I have done so far is by analyzing the questions raised by the en banc panel, and reading between the lines, something interesting maybe happening here. I suspect because most circuit judges, like the two judges on the merits panel, did not want to confront Judge Folsom on his analyses of the infringement issue with regard to the new design, but at the same time they agreed with Judge Rader's opinions.

They might have come up with a clever way to possibly blame it all on TiVo


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## jacmyoung

This Dish/Google news should put to the end of any speculation that Google might buy TiVo, or maybe resurrect it?

I think the timing of this news might also have to do with this TiVo case, it comes out a little over a week after Charlie made his offer to TiVo, and a few days after the en banc order which put TiVo on the defense.

I can see a possible settlement soon, for the very first time. Not what TiVo had hoped for, but better than nothing.


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## jacmyoung

Below are some difficult readings of the USPTO regulations/patent law with respect to reexamination and reissue of patent:

http://www.uspto.gov/web/offices/pac/mpep/documents/2200_2293.htm

And

http://www.uspto.gov/web/offices/pac/mpep/documents/appxl_35_U_S_C_252.htm#usc35s252

Basically, in an ex parte reexamination, if the patent owner makes *any* amendment or adds new claims, and later the PTO agrees to incorporate the amendment/new claims for certification, the certified reexamination will be treated as a reissued patent.

In doing so, if the reissued patent is not substantially identical to the original one, a party is not liable for acts that may have infringed on the original patent, as long as such act was prior to the reissue of the patent.

If the reissued patent is substantially identical to the previous one, a party may still be liable for acts that may have infringed the original patent prior to the reissue of the patent, however even in such event, the court may still use its own discretion to allow such acts to continue.


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## Lake Lover

Here is TiVo's 1st quarter report released at 4 pm. Rogers mentions heavy legal expense as being a continued drag on earnings, and his disappointment with the long running lawsuit as well as disappointment that the case will have to be retried by the full bench. Cash position very strong and zero debt.

http://www.stockwatch.com/newsit/ne...830-U:TIVO-20100525&symbol=TIVO&news_region=U


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## phrelin

Lake Lover said:


> Here is TiVo's 1st quarter report released at 4 pm. Rogers mentions heavy legal expense as being a continued drag on earnings, and his disappointment with the long running lawsuit as well as disappointment that the case will have to be retried by the full bench. Cash position very strong and zero debt.
> 
> http://www.stockwatch.com/newsit/ne...830-U:TIVO-20100525&symbol=TIVO&news_region=U


It is true that the SEC filing shows $215,404,000 current assets less current liabilities and little debt, which means they have cash to waste. Dish only had $305,111,000 current assets less current liabilities and a lot of debt, so they don't have cash to waste.

But according to the news release:


> For the first quarter, service and technology revenues were $43.2 million, compared with $48.5 million for the same period last year and $45.3 million in the prior quarter. Additionally, first quarter net revenue was $61.4M; up compared to $55.1M in the year-ago quarter and the highest Q1 net revenue in three years. Adjusted EBITDA was ($6.7) million, compared to guidance of ($9) million to ($11) million, and $5.3 million in the same period a year ago. Increased legal spend as well as research & development expenses relating to new products and distribution were a significant driver in the year-over-year Adjusted EBITDA decline. TiVo reported a net loss of ($14.2) million, compared to guidance of a net loss of ($19) million to ($21) million, and a ($3.9) million net loss in the year-ago quarter. Net loss per share this quarter was ($0.13).


 And from the Wall Street Journal:


> On Monday, Lazard Capital Markets said TiVo's earnings news isn't really meaningful now, and instead said the stock will swing on major possible deals with other operators that will likely hinge on litigation success against Dish. The next major ruling is not likely for up to a year, and in the firm's opinion, may go against TiVo.
> 
> ...Subscriber acquisition costs grew 26%. The monthly churn, or cancellation rate, was 2% for TiVo-owned subscribers, up from 1.4% a year ago. Total subscriptions fell 21%.


So the company has yet to make any money from operations. Do they have anything going for them other than "major possible deals" and the Dish lawsuit (why don't they mention the other lawsuits???). If Dish or Direct had that churn rate increase and subscription losses, the results would be considered disastrous, so I have no idea how to measure what's going on at TiVo.


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## jacmyoung

Lake Lover said:


> Here is TiVo's 1st quarter report released at 4 pm. Rogers mentions heavy legal expense as being a continued drag on earnings, and his disappointment with the long running lawsuit as well as disappointment that the case will have to be retried by the full bench. Cash position very strong and zero debt.
> 
> http://www.stockwatch.com/newsit/ne...830-U:TIVO-20100525&symbol=TIVO&news_region=U


It appears TiVo is losing its own standalone subs at an increasing rate, now only about 1.13M TiVo standalone subs who are actual paying subs.

There is also a new report that all 11 judges on the en banc panel voted to grant the review. If true it is not very surprising, if you subscribe to my theory that the court tried to pressure Charlie to settle the best they could, now it is time to actually review the application of the law. What that means is, all the court rulings in the past, at least most of them, were just for show

I wonder if any analyst will ask the USPTO reexam question? What would happen if the PTO accepts TiVo's proposed amendment? I don't think TiVo would volunteer an answer if not asked.


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## jacmyoung

phrelin said:


> It is true that the SEC filing shows $215,404,000 current assets less current liabilities and little debt, which means they have cash to waste. Dish only had $305,111,000 current assets less current liabilities and a lot of debt, so they don't have cash to waste.
> 
> But according to the news release: And from the Wall Street Journal: So the company has yet to make any money from operations. Do they have anything going for them other than "major possible deals" and the Dish lawsuit (why don't they mention the other lawsuits???). If Dish or Direct had that churn rate increase and subscription losses, the results would be considered disastrous, so I have no idea how to measure what's going on at TiVo.


TiVo announced a few new deals today, but all the deals TiVo has made so far failed to excite the investors.

In the past few days several analysts speculated a buyout by Google, I don't know if they made such speculations after reading my comment a few days earlier regarding the Google TV/Dish deal Although anything is possible, I do think some of those analysts are a little desperate. Personally I think there is a better chance Charlie ends up buying TiVo than anyone else. Not that I am betting on it, just what are the odds if it happens.


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## Lake Lover

I look at the financials and think that Echostar is in terrible shape. Dish needs its cash to run the whole shebang. $311 million is not a lot to run an organization the size of Dish. They have really piled on debt, including borrowing to cover that big one time dividend a while back. 

So, if I were a Dish shareholder, I would say look at this, Charlie: There is no way Dish can make a hostile takeover of TiVo, which would probably run three times the combined cash of Dish and TiVo, which would require borrowing another billion dollars, or issuing 50,000,000 shares of Dish. I doubt any bank would give him another $Billion. This reminds me of the TV ad where a woman is cutting up her furniture with a chain saw, thinking she won the lottery. You might win the new case, Charlie. You MIGHT win. But what if you don't? How much of your cash needed for working capital are you willing to risk in this crap shot??? All of it???

I might say to Tom: Looka here -- Based on our eroding subscriber base TiVo can't count on a meaningful return from subscription unless TiVo wins this case and begins collecting royalties from other companies. The financials prove that we can increase revenue even without subscribers. But it will be a long time before the profits become meaningful. In the next three or four months fly up and see Charlie and have a heart - to - heart, a give and take, and come to a compromise-- for the sake of all. Half a loaf is better than none.

Do I think that compromise apart from this case will finally bring this charade to an end? Yes, I do.


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## jacmyoung

Lake Lover said:


> I look at the financials and think that Echostar is in terrible shape. Dish needs its cash to run the whole shebang. $311 million is not a lot to run an organization the size of Dish. They have really piled on debt, including borrowing to cover that big one time dividend a while back.
> 
> So, if I were a Dish shareholder, I would say look at this, Charlie: There is no way Dish can make a hostile takeover of TiVo, which would probably run three times the combined cash of Dish and TiVo, which would require borrowing another billion dollars, or issuing 50,000,000 shares of Dish. I doubt any bank would give him another $Billion. This reminds me of the TV ad where a woman is cutting up her furniture with a chain saw, thinking she won the lottery. You might win the new case, Charlie. You MIGHT win. But what if you don't? How much of your cash needed for working capital are you willing to risk in this crap shot??? All of it???
> 
> I might say to Tom: Looka here -- Based on our eroding subscriber base TiVo can't count on a meaningful return from subscription unless TiVo wins this case and begins collecting royalties from other companies. The financials prove that we can increase revenue even without subscribers. But it will be a long time before the profits become meaningful. In the next three or four months fly up and see Charlie and have a heart - to - heart, a give and take, and come to a compromise-- for the sake of all. Half a loaf is better than none.
> 
> Do I think that compromise apart from this case will finally bring this charade to an end? Yes, I do.


If Charlie could borrow $1B just to pass around among themselves and the investors, you bet he can borrow another $1B if he needs to, even some analyst had pointed out that his credit rating is looking up with this en banc order and a possible win.

The problem is, while Charlie was willing to deal, that was before the en banc order. I suspect he is no longer so eager to deal with TiVo, because any one of the following ending in his favor will nail TiVo:

1) The next PTO action against TiVo;
2) The Judge Folsom's pre-approval decision in favor of Dish;
3) The en banc ruling in Dish's favor; and
4) Time.

While TiVo needs all four of the above in its favor to have a strong position in any kind of talk. That is why there are almost no analysts these days talking about a settlement anymore. Now some still insist some big guy will buy TiVo, just so they can make themselves feel better

But Rogers said today GoogleTV is no good, because it requires a second box. Here is my speculation Google is not buying TiVo But I actually do agree with him on the point of the two-box deal, except he forgot, it was not a two-box deal. This GoogleTV deal is different than AppleTV in that Google is trying to make it a "no-box" deal, by building the hardware in the TVs. Additionally where AppleTV fails for not having a full service cable provider as an anchor, Google has learned the lesson and enlisted Dish in the deal.

Again all the above cannot guarantee success, but at least it will have a better shot at it than AppleTV. On a side note, I think it is critical for Dish to have GoogleTV bulit in, at least in its 922 DVRs.

According to the Village folks, Rogers also said today that Dish's pre-approval motion had put Judge Folsom in an awkward position. If true, here is Rogers agreeing with me There is nothing like having both CEOs agreeing with me


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## jacmyoung

Just read the TiVo call transcript online. I noted when Rogers talked about the pre-approval being awkward for Judge Folsom, he did not mean Dish's pre-approval motion made it awkward, but the en banc order did, which is actually much loser than what I was saying

The difference however is, according to him, it is now awkward for Judge Folsom to do the pre-approval review because the en banc order delayed the clarification of the rules needed for Judge Folsom to do his review. What I said was, the en banc review could render Judge Folsom's decision on the pre-approval moot, which makes the pre-approval review awkward.

See how two different angles two can take to reach the same conclusion? The problem with Rogers' explanation is, the questions asked in the en banc order will in no way to clarify any rules for Judge Folsom to do his pre-approval review, the order does not address the pre-approval at all, and there had never been any rules established in the past to address a pre-approval anyway, so they would not have been able to clarify the rules for Judge Folsom on the pre-approval, even if they had touched on the pre-approval issue in the en banc order, which they did not.

What TiVo folks are trying to argue is, because the en banc order does not ask any questions relating to the facts of the case, which we here had all agreed, therefore in TiVo lawyers' view, the en banc panel had already considered the facts of the case in TiVo's favor, it only seeks to clarify the rules, for example, in TiVo's view, the rule should allow an expedited court proceeding (the contempt proceeding) to address the design around issues, not force them to have a new trial.

Of course the problem with such "tortured interpretation" of the en banc order is, the en banc order itself "unnecessarily prolongs" the court process even much further for TiVo, so how can you possibly argue that the en banc panel is now trying to clarify the rules so to allow TiVo an expedited proceeding (i.e. the contempt proceeding), in doing so, greatly delays the proceeding for TiVo? It simply does not make any sense. For TiVo's interpretation to make sense, the en banc panel should have granted TiVo's motion to immediately lift the stay of the injunction while doing their en banc review, but of course it did not happen, they did not even give TiVo's motion any consideration before denying it.

For the above reasons, I think our "tortured interpretation" of the en banc order makes much more sense


----------



## phrelin

Over in another thread discussing Dish June rate changes, I posted this:


phrelin said:


> coldsteel said:
> 
> 
> 
> Not at all. You're paying $2 more for SD, not HD.
> 
> 
> 
> Yes, so it doesn't make any sense not to have HD as the revenue loss for the HD fee is now being recovered from SD customers. Your first receiver or DVR is included whether it's HD or SD. And since February 1, whether HD or SD the monthly fee is the same for additional receivers or DVRs.
> 
> Anyone want to speculate why those changes are occurring now?
Click to expand...

It sure looks to me like Charlie is doing everything to get people out of the listed boxes.


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## jacmyoung

phrelin said:


> Over in another thread discussing Dish June rate changes, I posted this: It sure looks to me like Charlie is doing everything to get people out of the listed boxes.


Connecting the dots is what you and I do the best

There is no question he would love to remove as many listed boxes as soon as possible, without breaking his bank. For this reason, I expect E* to soon do the following, or think they should.

Now that the en banc panel has decided to review the case, E* should soon ask Judge Folsom to get moving on the pre-approval thing, make a decision on the motion ASAP. If Judge Folsom should find the new new design options non-infringing, then stay the implementation of the design around options while the en banc review is pending.

Doing so will remove the cloud over E*'s head, also demonstrate that both E* and the court are making necessary effort to prevent further infringement. If Judge Folsom still finds the new new design around options infringing, then at least the instructions will be given to E* as what features are still infringing so E* can take necessary steps to remove them.

Judge Folsom's stay period will end on 6/4, it will be a good time to ask for the above. If Judge Folsom continues to claim he has no time to do it, at least E* gets on the record that it is trying to prevent further infringement, yet the court is not. Such record will be beneficial to E* later should the en banc panel reaffirm Judge Folsom's ruling and order, and TiVo tries to seek additional damages and sanctions.


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## James Long

phrelin said:


> Over in another thread discussing Dish June rate changes, I posted this: It sure looks to me like Charlie is doing everything to get people out of the listed boxes.


Hopefully this thread can get back to the case at hand and wild speculation about the case ... I mean, news about the case. (Well at least discussion.)

The primary reason to get people off of old receivers can be summed up by the simple statement: You can put more MPEG4 channels on a transponder than MPEG2. Making Western Arc all MPEG4 will free up a ton of bandwidth. Enough that more national channels could be added.

You can disagree with me in the appropriate thread ...

Now back to Tivo vs DISH.


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## jacmyoung

There can even be speculation about the differences between MPEG2 streams and MPEG4 streams that could impact this case. I recall long time ago there was a discussion about it. It depends on the technical details of MPEG4 streams, the data packets may be stored differently than those of the MPEG2 streams which may result in changes in how the PID filter operates, for example.

Of course my experience in compression schemes is skin deep, maybe folks like P Smith can chime in.


----------



## jacmyoung

I forgot to mention one other issue related to this PTO reexamination, aside from the "intervening rights" raised by a "resissued patent" which can work in E*'s favor.

In the PTO's first Office Action, the PTO examiner noted that the TiVo software claims "required" the detection of the start codes and use the parsed start codes to build the index table. TiVo in its response to the Office Action did not dispute such requirement, in TiVo's latest amendment, it still did not dispute such requirement. Therefore should the PTO accept TiVo's amendment and reissue the patent, on the patent record will be this requirement, such requirement will clearly get E* off the hook because it is undisputed that E*'s modifed DVRs no longer detect the start codes nor build the index table using such start codes.

In other words, TiVo by proposing its amendment, had decided to give up a lot of rights it used to enjoy from this Time Warping patent, should the PTO accept the amendment. Depending on the timing of the PTO decision, it can be the quickest way to end this whole case, not even having to go to a new trial. Yet no one is even paying attention to this PTO reexamination.


----------



## Kheldar

jacmyoung said:


> Yet no one is even paying attention to this PTO reexamination.


You are paying attention, so does that make you "no one"? :grin:


----------



## jacmyoung

Kheldar said:


> You are paying attention, so does that make you "no one"? :grin:


It is a known fact here that I am nobody.


----------



## phrelin

jacmyoung said:


> It is a known fact here that I am nobody.


Frequently I've thought you were not only somebody but maybe a committee....


----------



## jacmyoung

phrelin said:


> Frequently I've thought you were not only somebody but maybe a committee....


Frequently I had wished for this but also understood wishful thinking was a sure sign of being a nobody

Below is my post in the GoogleTV/Dish thread:



> http://www.engadget.com/2010/05/28/the-next-apple-tv-revealed-cloud-storage-and-iphone-os-on-tap/
> 
> Not surpisingly, but I still see one big piece of the puzzle missing from this future AppleTV, that is a full service cable provider (such as DISH, but not Netflix) as an anchor. Maybe they will enlist DirecTV? I would not be surprised to see a similar rumor about Microsoft, they already have ATT/Uverse in their fold.
> 
> Let the game begin.


Its only relevance to this thread is, the whole world is charging ahead, looking at TiVo in the rear view mirror. It is decision time for TiVo.


----------



## jacmyoung

Not much going on with this case, but some interesting items on the two other TiVo cases. Don't remember if I mentioned before Verizon had motioned Judge Folsom to move the TiVo v. Verizon case to NJ. Parties had completed their filings and a hearing is set in July for this motion.

In the TiVo v. Verizon case, as I mentioned before, Verizon argued most of the evidence will be provided by Motorola, which has little presence in TX, rather close to NJ. Verizon also counter-sued TiVo. Apparently Verizon is a member of an IP holder with a rich IP portfolio, whose goal is to deter lawsuits by patent owners against companies. Companies pay a million or so a year to this IP holder to become a member, paying members can use the patent holder's IPs to courter-sue a patent owner. This is a purely defensive measure. Verizon argued that this IP holder has no presence in TX as well. Obviously this IP holder intentionally stays far away from districts such as E. TX to allow its members to seek change of forum if needed.

The third argument is actaully related to this TiVo v. E* case. As verizon argued, different DVRs will have a whole new set of evidence and claim constructions to deal with, even though one of the patents (the Time Warping patent) in the TiVo v. Verizon case is the same as in the TiVo v. E* case. The point being, even with the different E* DVRs (50Xs v. the Broadcom DVRs), the verdicts and infringement/non-infringement analyses were different, therefore there is little reason to stay in the E. TX court just because the Time Warping patent had been tried there. To the contrary, Verizon cited a case law that argued it might be reasonable to move the case because one of the patents was already tried there, implying that the judge might be influenced by his view regarding the patent in the TiVo v. E* case. We shall see how such argument may hold.

Last but not the least, last Friday, ATT/MS also motioned Judge Folsom to move their TiVo v. ATT/MS case.


----------



## jacmyoung

The oral argument is scheduled for 11/9/10. I guess some of you were correct the en banc ruling will be some time next year. My end of the year was a little too optimistic.


----------



## david_jr

Any ideas why so long before arguments are heard? Busy court, or is the time to prepare arguments? It's amazing how long this is taking!


----------



## scooper

david_jr said:


> Any ideas why so long before arguments are heard? Busy court, or is the time to prepare arguments? It's amazing how long this is taking!


Yes - both actually. But probably more the judges schedules.


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## HiDefGator

I'm not sure they could have scheduled it earlier because of all the time both sides get to file their arguments.

June 25th - Echo brief
Aug 6th - Tivo brief
Sept 3rd - Echo reply
Nov 9th - hearing


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## jacmyoung

The last oral argument in front of the merits panel was expedited, this oral argument before the en banc panel now is actually on a normal schedule. The question is, why the previous motions panel decided to expedite the oral argument time table last time? Seemed as if the three-judge motions panel saw a clear one-sided decision, therefore ordered the expedited oral argument.

Of course the end result was a split decision, and the en banc review, hardly a one-sided quick decision at all. I wonder if the previous motions panel saw a quick and one-sided decision, only that they saw an entirely different decision. I say this in part because of the expedited oral argument they ordered, but also in part because how quickly the en banc order was issued in E*'s favor.


----------



## david_jr

So if I understand this right (probably not) the 3 panel arguments are out the window and the full panel hears fresh arguments? Are they allowed to stray from what was argued last time? I thought the full panel would just review what the 3 panel court heard. Guess this is a lot more involved than I figured.


----------



## jacmyoung

david_jr said:


> So if I understand this right (probably not) the 3 panel arguments are out the window and the full panel hears fresh arguments? Are they allowed to stray from what was argued last time? I thought the full panel would just review what the 3 panel court heard. Guess this is a lot more involved than I figured.


If I understand it correctly, the full panel will consider arguments by the parties (but not the judges) related to the 4 questions only. The facts, arguments by the parties in the prior briefs, as well as those (new and in addition to the prior ones, if any) in the new briefs will be considered with respect to the 4 questions. The arguments in the new briefs should be able to raise any new development and facts since the last briefs.

Some important decisions by the Appeals Court:

*The En Banc Order, Granted:*
5/14/10 Before MICHEL, Chief Judge, NEWMAN, MAYER, LOURIE, RADER, BRYSON, GAJARSA, LINN, DYK, PROST, and MOORE, Circuit Judges. Per curiam

*The Appeals Court 3-Judge Panel Decision Sided with TiVo, Vacated:*
03/04/10 Before Rader, Mayer and Lourie (I am going by memory on the majority circuit judges)

*Motion for Judicial Notice of the PTO Action, Granted:*
09/17/09 On motion before Gajarsa, circuit judge

*Motion for Stay of Injunction Pending Appeal, Granted:*
7/1/09 ON MOTION Before MICHEL, Chief Judge LOURIE and BRYSON, Circuit Judges. By BRYSON, Circuit Judge.

*The Appeals Court 3-Judge Panel Decision Sided Mostly with TiVo:*
DECIDED: January 31, 2008 Before BRYSON, Circuit Judge, PLAGER, Senior Circuit Judge, and KEELEY, Chief District Judge.* By BRYSON, Circuit Judge.

The reason I listed the above Appeals Court orders, is to have a look at what likely leaning there might be by the various Circuit Judges.

Judge Bryson was on the first appeals panel, also wrote the opinion mostly in favor of TiVo on 1/31/08. But he also wrote the order to grant E* the stay motion on 7/1/09. One can speculate that Judge Bryson, being the one who likely knew this case better than any other circuit judges at that time, saw merits in E*'s design around effort. Then there were Judges Michel and Lourie. Lourie (correct me if I am wrong) later sided with TiVo 100%.

We know that Bryson could be leaning E*'s way, Rader was 100% on E*'s side, and Mayer and Lourie were 100% on TiVo's side, though they both voted to vacate their own decision and for an en banc review. Judge Michel retired on 5/31/10, we don't know the final lineup of the en banc panel yet except that it has to be an odd number of judges.


----------



## jacmyoung

Today, the PTO issued its Final Action rejecting the TiVo's software claims.

Details should be available soon.


----------



## HiDefGator

that's a pretty bold statement. where are the details?


----------



## jacmyoung

HiDefGator said:


> that's a pretty bold statement. where are the details?


See the bold statement on the USPTO PAIR site, no details yet, but we should be able to read the actual doc next week:



> Transaction History
> Date Transaction Description
> *06-04-2010 Final Rejection Mailed*
> 06-02-2010 Information Disclosure Statement Filed
> 06-02-2010 Information Disclosure Statement (IDS) Filed
> 05-20-2010 Information Disclosure Statement Filed
> 05-20-2010 Information Disclosure Statement (IDS) Filed
> 04-08-2010 Miscellaneous Incoming Letter
> 04-08-2010 Certificate of Service
> 03-09-2010 Information Disclosure Statement Filed
> 03-09-2010 Information Disclosure Statement (IDS) Filed
> 02-24-2010 Information Disclosure Statement Filed
> 02-24-2010 Information Disclosure Statement (IDS) Filed
> 02-24-2010 Information Disclosure Statement (IDS) Filed
> 12-07-2009 Information Disclosure Statement Filed
> 12-07-2009 Information Disclosure Statement (IDS) Filed
> 11-02-2009 Response after Non-Final Action
> 11-02-2009 Affidavit(s), Declaration(s) and/or Exhibit(s) Filed
> 11-02-2009 Miscellaneous Incoming Letter
> 11-02-2009 Certificate of Service
> 09-30-2009 Extension of Time Period for Response Granted
> 09-25-2009 Notice of Court Action
> 09-25-2009 Miscellaneous Incoming Letter
> 09-25-2009 Certificate of Service
> 09-24-2009 Request for Extension of Time
> 09-22-2009 Examiner Interview Summary Record
> 09-14-2009 Mailing of Petition Decision - Dismissed
> 08-21-2009 Mailing of Petition Decision - Dismissed
> 08-03-2009 Information Disclosure Statement Filed
> 08-03-2009 Information Disclosure Statement (IDS) Filed
> 08-03-2009 Reexam Non-Final Action Mailed
> 07-28-2009 Information Disclosure Statement Filed
> 07-28-2009 Information Disclosure Statement (IDS) Filed
> 07-28-2009 Information Disclosure Statement (IDS) Filed
> 07-28-2009 Information Disclosure Statement (IDS) Filed
> 07-07-2009 Notice of Court Action
> 07-07-2009 Miscellaneous Incoming Letter
> 07-07-2009 Certificate of Service
> 06-10-2009 Reexam - Opposition filed in response to petition
> 06-10-2009 Certificate of Service
> 05-27-2009 Certificate of Service
> 05-27-2009 Receipt of Petition in a Reexam
> 03-25-2009 Date Forwarded to Examiner
> 02-18-2009 Change in Power of Attorney (May Include Associate POA)
> 02-23-2009 Change in Power of Attorney (May Include Associate POA)
> 02-20-2009 Correspondence Address Change
> 01-07-2009 Information Disclosure Statement Filed
> 01-07-2009 Information Disclosure Statement (IDS) Filed
> 01-07-2009 Determination -- Reexam Ordered
> 12-30-2008 Notice of Reexam Published in Official Gazette
> 11-24-2008 Case Docketed to Examiner in GAU
> 11-10-2008 Information Disclosure Statement Filed
> 11-10-2008 Information Disclosure Statement (IDS) Filed
> 11-18-2008 Reexam Litigation Search Conducted
> 11-18-2008 Notice of assignment of reexamination request
> 11-10-2008 Notice of reexamination request filing date
> 11-10-2008 Reexamination requested by third party requester
> 11-18-2008 Title Report
> 11-18-2008 Completion of Preprocessing - Released to Assigned GAU
> 11-19-2008 Reexamination Formalities Notice Mailed
> 11-19-2008 Reexamination Formalities Notice Mailed
> 11-10-2008 Receipt of Original Ex Parte Reexam Request


----------



## phrelin

jacmyoung said:


> See the bold statement on the USPTO PAIR site, no details yet, but we should be able to read the actual doc next week:


Do you have an application/control/patent/pct/publication number for this that you'd share with someone who's never used that site before?


----------



## jacmyoung

phrelin said:


> Do you have an application/control/patent/pct/publication number for this that you'd share with someone who's never used that site before?


The app# is 90009329. Now promise me you will start tracking it for me, I am tired


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## scooper

So, if we are to surmise correctly - this means that Tivo's patent is essentially DEAD now ? And all further cases have to listen to this ?


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## RasputinAXP

wow. Yeah. Looks like it.


----------



## jacmyoung

scooper said:


> So, if we are to surmise correctly - this means that Tivo's patent is essentially DEAD now ? And all further cases have to listen to this ?


Not so I am only going by what I understand, experts may correct me.

Once the rejection is final, TiVo will not be able to amend the claims to overcome the rejection, it will either have to give up the claims, or appeal to have the PTO Final Action overturned. While the claims are still presumed valid in the court of law, TiVo can no longer assert the rejected claims against any party in a new action, until such time it succeeds in its appeal, if it happens, that can take years.

A Final Rejection also carries a lot of weight in an on-going litigation in the court. I don't know its impact to the current TiVo v. E* case, but I think once we get to read the PTO rejection in detail, we can have a better idea.

Just give you an example, if in the PTO Final Rejection the examiner contends that one reason for the rejection is that the TiVo software claims require start code detection and building of an index table based on the start codes, which TiVo did not dispute the PTO's such contention last time, then E* should be able to motion Judge Folsom for a summary judgment of non-infringement by the current modified DVRs, because in the court, TiVo did not dispute that the modified DVRs no longer detected the start codes and building an index table on those start codes. TiVo only said the start code detection was irrelevant to the software claims, but this PTO's Final Action can refute TiVo's such assertion. If so, Judge Folsom will be compelled to find the modified DVRs non-infringing, after that this case will in all practicality be over. The remaining contempt issue will have no real impact, as I had explained before.

Therefore what the PTO examiner says in his final rejection will be very critical, so is how aggressively E* will take advantage of this PTO action.


----------



## Curtis52

scooper said:


> So, if we are to surmise correctly - this means that Tivo's patent is essentially DEAD now ? And all further cases have to listen to this ?


Not really. The USPTO issued a final rejection of TiVo's patent in 2007. TiVo responded to the rejection and the examiner withdrew the rejection and blessed the patent without a single word of the patent being revised.

Also, as far as other lawsuits in process, the judges are free to ignore the "rejection" because they know that it is very early in the reexamination process and the patent is valid until the process completes, which could take years.

10-22-2008 Input Issue Number and Issue Date for Reexamination
09-05-2008 Miscellaneous Action Mailed
07-18-2008 Workflow - File Sent to Contractor
04-28-2008 Reexam Forwarded to Office of Publications
02-07-2008 Mailing of Petition Decision - Dismissed
01-04-2008 Reexam returned to TC for correction/completion
11-28-2007 Notice of Intent to Issue a Reexam Certificate
10-26-2007 Examiner Interview Summary Record
10-25-2007 Examiner Interview Summary Record
03-07-2006 Information Disclosure Statement (IDS) Filed
02-06-2007 Information Disclosure Statement (IDS) Filed
11-01-2007 Extension of Time Period for Response Granted
10-31-2007 Reexam Litigation Search Conducted
10-29-2007 Response to Final Rejection
10-29-2007 Request for Extension of Time
10-29-2007 Miscellaneous Incoming Letter
10-23-2007 Miscellaneous Incoming Letter
10-23-2007 Certificate of Service
10-03-2007 Case Docketed to Examiner in GAU
09-29-2007 Extension of Time Period for Response Granted
09-24-2007 Request for Extension of Time
09-24-2007 Certificate of Service
09-24-2007 Request for Extension of Time
09-24-2007 Certificate of Service
07-30-2007 Final Rejection Mailed


----------



## jacmyoung

There are huge differences between the 2005 reexamination and the current one.

The 2005 reexamination was about the entire TiVo's Multimedia Time Warping patent, i.e. reexamination of all the 61 claims, the PTO never rejected most of the claims, only a small amount of dependent claims. The independent claims were never touched, including the "hardware claims" and the "software claims." In this reexamination, only the two independent software claims are at issue, and they were rejected in the first PTO office action.

The 2005 reexamination was reviewed based on one prior art called "Geer". This current one is reviewed based on two different prior art.

TiVo never made any amendment of the claims in an attempt to overcome the rejections of the few dependent claims in the 2005 reexamination. But in this one, TiVo in fact amended its claims in anticipation to the final rejection of the two software claims. Once the claim amendment was made, even if later the PTO agrees to recertify the claims under the TiVo amendment proposal, TiVo will no longer be able to prove infringement by the equivalents, only by literal infringement.

In other words, had the PTO agreed to recertify the reexamination based on TiVo's claim amendment, the outcome would not be that much better, because TiVo would not have even been able to prove infringement by the E*'s modified DVRs in a contempt proceeding, because the contempt proceeding only relies on the doctrine of equivalents, and in any new action, again TiVo would be compelled to prove literal infringement, an almost impossible task. I have discussed such scenario in length before.

We now know however, the PTO did not even accept TiVo's claim amendment this time, rejected the two software claims in the face of the TiVo claim amendment. There is little chance TiVo can overcome this Final Rejection, but even if in the end TiVo manages to overcome it, the PTO will at a minimum accept TiVo's claim amendment, which TiVo will be faced with the above scenario.

As it stands now, there is little chance TiVo can assert its software claims in a new action, may it be the new action against E*, or in the TiVo v. Verizon case, or in the TiVo v. ATT/MS case, until such time the reexamination can be recertified, if it happens, and as I said again, if so, the contempt proceeding will be out of the question, and TiVo will have to prove literal infringement of the Time Warping patent. The doctrine of equivalents will be unavailable to TiVo.

Not to mention a recertified patent with claim amendment as a condition, will be treated as a reissued patent, therefore by law, if the amended claims are not "substantially identical" to the old claims, E* will not even be liable for any infringement findings for acts prior to the recertification of the reexamination.

Now you know I did not just try to waste my time before trying to discuss the impact of claim amendment during a reexamination


----------



## phrelin

Well, this has become so legally complex I guess I'll have to wait for one of those really knowledgeable financial analysts to be quoted in the press ... oh, wait, they're dumber than posts.

Ok, jacmyoung, so you are DBSTalk's most prolific analyst. Here's what I understand you have summarized is the result of the June 4, 2010 PTO rejection of TiVo's lastest reexamination of two software patents which TiVo attempted to amend:

TiVo will have to prove literal infringement of the Time Warping patent in any future action.
The doctrine of equivalents will be unavailable to TiVo in any future action.
Little chance exists that TiVo can assert its software claims in a new infringement action, may it be the new action against Echostar/Dish on non-listed boxes, or in the TiVo v. Verizon case, or in the TiVo v. ATT/MS case, unless it prevails in an appeal.
Should Tivo prevail in an appeal of the the rejection, because it is a recertified patent with claim amendment as a condition, it legally will be regarded as a reissued patent and if the amended claims cannot be proved to the satisfaction of the courts that they are "substantially identical" to the old claims, Echostar/Dish will not be liable for any infringement findings for acts prior to the recertification of the reexamination.
What I take from this is that in addition to the nearly one year delay caused by the en banc hearing, when and if the case ever gets back to the Circuit Court:

Any issues involving the non-listed DVRs just became infinitely more complicated and probably subject to additional years of litigation.
In the meantime, Dish is methodically encouraging customers to replace the listed DVRs with it's newer HD DVRs thereby reducing its liability for future TiVo license fees on the listed DVRs.
Is that an accurate summary of the current situation as you see it?


----------



## jacmyoung

phrelin said:


> Well, this has become so legally complex I guess I'll have to wait for one of those really knowledgeable financial analysts to be quoted in the press ... oh, wait, they're dumber than posts.
> 
> Ok, jacmyoung, so you are DBSTalk's most prolific analyst.


Please, just because you are an analyst wannabe, doesn't mean I should be also



> Here's what I understand you have summarized is the result of the June 4, 2010 PTO rejection of TiVo's lastest reexamination of two software patents which TiVo attempted to amend:
> 
> [*]TiVo will have to prove literal infringement of the Time Warping patent in any future action.


Only if later the PTO accepts TiVo's claim amendment and recertifies the reexamination.



> [*]The doctrine of equivalents will be unavailable to TiVo in any future action.


Same as the above.



> [*]Little chance exists that TiVo can assert its software claims in a new infringement action, may it be the new action against Echostar/Dish on non-listed boxes, or in the TiVo v. Verizon case, or in the TiVo v. ATT/MS case, unless it prevails in an appeal.


Even with the listed E* DVRs. Keep in mind the en banc panel can easily remand the case to have the listed DVRs retried in a new action.



> [*]Should Tivo prevail in an appeal of the the rejection, because it is a recertified patent with claim amendment as a condition, it legally will be regarded as a reissued patent and if the amended claims cannot be proved to the satisfaction of the courts that they are "substantially identical" to the old claims, Echostar/Dish will not be liable for any infringement findings for acts prior to the recertification of the reexamination.


There is the possibilty that TiVo may prevail on appeal without any claim amendment, though the likelihood of such is next to none. Otherwise the answer is a yes.



> What I take from this is that in addition to the nearly one year delay caused by the en banc hearing, when and if the case ever gets back to the Circuit Court:
> 
> Any issues involving the non-listed DVRs just became infinitely more complicated and probably subject to additional years of litigation.
> In the meantime, Dish is methodically encouraging customers to replace the listed DVRs with it's newer HD DVRs thereby reducing its liability for future TiVo license fees on the listed DVRs.
> Is that an accurate summary of the current situation as you see it?


We are still only talking about the listed DVRs, let's not get too far ahead of ourselves.


----------



## phrelin

Uh, ok.

So in your opinion does this rejection, assuming it stands, impact in any way on the appeal now before the en banc panel with regard to the listed boxes, either prior to the Echostar/Dish software-firmware modifications or after the modifications? And if so, how?


----------



## Curtis52

phrelin said:


> Uh, ok.
> 
> So in your opinion does this rejection, assuming it stands, impact in any way on the appeal now before the en banc panel with regard to the listed boxes, either prior to the Echostar/Dish software-firmware modifications or after the modifications? And if so, how?


The final (misnomered) rejection in 2007 didn't affect diddly and as far as I know the USPTO procedure is still as irrelevant to the lawsuits as they ever were.


----------



## jacmyoung

phrelin said:


> Uh, ok.
> 
> So in your opinion does this rejection, assuming it stands, impact in any way on the appeal now before the en banc panel with regard to the listed boxes, either prior to the Echostar/Dish software-firmware modifications or after the modifications? And if so, how?


First let me respond to Curtis' above post by saying, he continues to ignore the fact in the 2005/2007 reexamination and rejections, the claims in question with regard to the lawsuits were not affected, they were not rejected, especially the software claims, which ultimately were the only claims found to have been infringed by E*'s old DVRs, the software claims were NEVER rejected last time, in addition, the whole patent was later recertified as is. Of course that reexamination had no impact to the litigation.

Now since this Final Rejection has to do with the two software claims and these two only, they were also the only claims E* was found to have infringed, and since the PTO action is now final, it will certainly play into how the court may view how the appropriate damages and/or sanctions should be assessed and handled, because as far as the PTO is concerned, as it stands now, the software claims should never have been issued to TiVo, even though the court may still view the patent as valid.

If the PTO action stands, any judgment against E* based on any acts of infringement on the two software claims, would be a grave injustice served, because TiVo could not have the right in the first place.

That is not to say that the judge(s) are NOW compelled to rely on the PTO Final Rejection itself to rule going forward, however what the PTO says in the Final Rejection may be used by E* to its advantage, as I explained earlier. That is why I think knowing the details of the PTO Final Action will be important.

Because the PTO's Final Action is now part of the patent prosecution history, which the court MUST rely on, not the rejection of the software claims itself, but how the PTO interpreted each element of the claims. So far the PTO had agreed with E* on the two critical interpretations of the software claim elements, and in responding to the PTO's such statements, TiVo did not even dispute them. That fact alone should result in the finding of non-infringement by the MODIFIED DVRs, I repeat, non-infringement by the MODIFIED DVRs, not by the old DVRs with the old software. Again, such infringement decision will have nothing to do with whether the software claims are rejected or not.

An important goal of any reexamination is to clarify claim interpretations, even if in the end the rejection fails. In this reexamination, E* has already succeeded in interpreting the software claims to REQUIRE start code detection and building of an index of the start code information, which the PTO has already agreed to, and TiVo does not dispute. This is more important than the rejection itself, this will compel the court to rule that the E* modified DVRs no longer infringed. On the other hand, believe it or not, the claim rejection might not even be the ultimate goal of E*, because as we know, Charlie had more than once in the past talked about E* and TiVo "working together". That includes possible buyout of TiVo too. Buyout or not, if Charlie is serious about working with TiVo, he may not want to see TiVo's patent claims rejected in the end. It is all about leverage.

I am looking forward to the reading of the actual PTO rejection document next week, unless if the PTO decides to keep it away from the public.


----------



## phrelin

Ok. Thanks, I think I now understand your point.


----------



## jacmyoung

phrelin said:


> Ok. Thanks, I think I now understand your point.


I have added another point, which is also very important:



> An important goal of any reexamination is to clarify claim interpretations...On the other hand, believe it or not, the claim rejection might not even be the ultimate goal of E*, because as we know, Charlie had more than once in the past talked about E* and TiVo "working together". That includes possible buyout of TiVo too. Buyout or not, if Charlie is serious about working with TiVo, he may not want to see TiVo's patent claims rejected in the end. It is all about leverage.


----------



## Curtis52

phrelin said:


> Ok. Thanks, I think I now understand your point.


No problem.


----------



## jacmyoung

Curtis52 said:


> No problem.


There is one big problem, by your own stats, which we had confirmed, after claim rejection in a PTO reexamination, 59% of the time the claims end up being cancelled or modified, in both situations the judgment/damages against E* would not stand.

The question is then, would a reasonable judge or a panel of judges impose such judgment/damages knowing the judgment/damages are more likely than not (59% to 41%), wrong?

The fact that TiVo even tried to amend the claims in order to overcome the rejection, without success, makes the odds for claim cancellation or modification much greater.


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## James Long

At the time DISH violated the patent the patent was in force.

What you're suggesting is like retroactively fighting a speeding ticket because the speed limit was later raised on the road where the ticket was issued. If the sign says 55 the speed limit _IS_ 55 regardless of if the signs are changed to 70 years later.

So regardless of the current status of the patent, DISH was found guilty of violating the patent as it existed when they violated it. This may make a future work-a-round easier ... but it does not change the facts of the case.

The questions that the en banc panel are asking remain regardless of the patent. We're a long way from over.


----------



## jacmyoung

James Long said:


> At the time DISH violated the patent the patent was in force.
> 
> What you're suggesting is like retroactively fighting a speeding ticket because the speed limit was later raised on the road where the ticket was issued. If the sign says 55 the speed limit _IS_ 55 regardless of if the signs are changed to 70 years later.
> 
> So regardless of the current status of the patent, DISH was found guilty of violating the patent as it existed when they violated it. This may make a future work-a-round easier ... but it does not change the facts of the case.
> 
> The questions that the en banc panel are asking remain regardless of the patent. We're a long way from over.


There is one huge difference, in the case of the PTO rejection and claim cancelation or change, it is as if that specific speed limit was never there, and will never be in the future. That is why once the claims are canceled, or recertified with changes that are "not substantially identical," liabilities prior to the cancelation or recertification no longer exsit even if they were found by the court before. The law is the law, I have posted the law before.

The only issue that might continue to be asked is the issue of the contempt of the court. Though I had also looked at its real impact in the event it is affirmed but without infringement/damages, the impact will be very little.

BTW, looking at some stats, the chance for claim affirmation after final rejection has been around 25% only.


----------



## jacmyoung

Some new items on the CAFC Pacer site:



> MOTIONS AND OTHER ENTRIES
> >> Please Note: Motions are listed first. Entries are listed last.<<
> 5/25/2010 MOTION: Entry 102 :by Appellants - Defendants-Appellants' Motion For Extension Of Time (from June 25, 2010 to July 26, 2010) To File Opening En Banc Brief SERVICE : by Mail on 5/25/2010
> . REPLY 1: 5/27/2010 , Entry # 103
> . REPLY 2: 5/27/2010 , Entry # 104
> 
> ACTION: Entry 105:Granted. Appellants may file an opening en banc brief by July 26, 2010. Filed: 6/1/2010


It appears on 5/25 E* had motioned to extend opening brief filing date from 6/25 to 7/26, two relies were filed on 5/27, the motion was granted on 6/1.


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## jacmyoung

Just a thought, the above could indicate E* was preparing for some activities before 7/26, then they might incorporate the issues in the opening brief, if so, the only two likely places those can happen are before Judge Folsom, and/or between E* and TiVo.


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## HiDefGator

Or they just saw a chance to stall this entire process for another 30 days and stuck to their game plan.


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## dgordo

Getting the en banc hearing already added another year to the process, i don't think they care about those 30 days that much.


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## HiDefGator

dgordo said:


> Getting the en banc hearing already added another year to the process, i don't think they care about those 30 days that much.


if a 12 month delay is good, a 13 month delay is better.


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## Curtis52

dgordo said:


> Getting the en banc hearing already added another year to the process, i don't think they care about those 30 days that much.


The hearing date hasn't changed.


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## HiDefGator

Curtis52 said:


> The hearing date hasn't changed.


but it almost has too. if you move E*'s filing out a month then you have to move Tivo's filing out as well. which then requires E*'s reply to be moved out too. The judges will still need time to review everything before oral arguments.

unless Tivo doesn't care what E* files and is willing to file their brief a week after E* files. Not sure why Tivo would agree to that.


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## jacmyoung

One other item on the Pacer site deserves a note. Recall after those 5 professors’ briefs were filed, their attorney filed a letter explaining the professors’ connection to the parties. It looked to me that letter was later rejected by the CAFC on some procedural ground.

If so, the professors’ background will not be part of the record. This may support the view that the en banc panel will not consider the professors’ “motive”.

On the E*'s motion for the 30-day extension, it was granted before the oral argument was scheduled, so no more delays, if there was one.


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## tsmacro

DISH Network and EchoStar Statement Regarding PTO Ruling

ENGLEWOOD, Colo., June 8, 2010 /PRNewswire via COMTEX News Network/ -- DISH Network L.L.C., a subsidiary of DISH Network Corporation (Nasdaq: DISH), and EchoStar Technologies L.L.C., a subsidiary of EchoStar Corporation (Nasdaq: SATS), issued the following statement regarding recent developments in TiVo vs. EchoStar Communications Corporation:

"We are pleased the Patent and Trademark Office issued a Final Office Action maintaining its rejection of the software claims of TiVo's patent. These software claims are the same claims that EchoStar was found to have infringed in the contempt ruling now pending for en banc review by the Federal Circuit. In the Final Office Action, three examiners of the PTO considered TiVo's response and, in a detailed 32-page decision, finally concluded that the software claims were unpatentable in view of two prior art references."

About DISH Network

DISH Network L.L.C., a subsidiary of DISH Network Corporation (NASDAQ: DISH), leads the pay-TV industry in technological breakthroughs and provides more than 14.3 million satellite TV customers, as of March 31, 2010, with the highest quality programming and technology at the best value. Customers have access to the most HD channels, the most international channels, state-of-the-art interactive TV applications, and award-winning HD and DVR technology including the ViP 922 SlingLoaded DVR, the world's only DVR with TV Everywhere functionality. DISH Network Corporation is included in the Nasdaq-100 Index (NDX) and is a Fortune 200 company. Visit www.dish.com, follow on Twitter, @dishnetwork (www.twitter.com/dishnetwork), or become a Fan on Facebook, www.facebook.com/dishnetwork.

About EchoStar Corporation

EchoStar Corporation (Nasdaq: SATS) provides equipment sales, digital broadcast operations, and satellite services that enhance today's digital TV lifestyle, including products from Sling Media, Inc., a wholly owned subsidiary. Headquartered in Englewood, Colo., EchoStar has 25 years of experience designing, developing and distributing advanced award-winning television set-top boxes and related products for pay television providers and creates hardware and service solutions for cable, telco, IPTV and satellite TV companies worldwide. The company includes a network of 10 digital broadcast centers. EchoStar also delivers satellite services through 10 owned and leased in-orbit satellites and related FCC licenses. Visit www.echostar.com.

SOURCE DISH Network Corporation


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## Matt9876

Copy of PTO ruling from another Dishnetwork forum:


DISH Network and Echostar Statement Regarding PTO Ruling
ENGLEWOOD, Colo. – June 8, 2010 – DISH Network L.L.C., a subsidiary of DISH Network Corporation (NASDAQ: DISH), and EchoStar Technologies L.L.C., a subsidiary of EchoStar Corporation (NASDAQ: SATS), issued the following statement regarding recent developments in TiVo vs. EchoStar Communications Corporation:

“We are pleased the Patent and Trademark Office issued a Final Office Action maintaining its rejection of the software claims of TiVo's patent. These software claims are the same claims that EchoStar was found to have infringed in the contempt ruling now pending for en banc review by the Federal Circuit. In the Final Office Action, three examiners of the PTO considered TiVo's response and, in a detailed 32-page decision, finally concluded that the software claims were unpatentable in view of two prior art references.”


Great news for Dish and your DVR 

News Headlines:TiVo shares fall after patent office rejects claim.


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## harsh

The TiVo response:


TiVo said:


> "While TiVo is disappointed with this recent PTO office action, this is just one of several steps in the review process. We will continue to work with the PTO to explain the validity of the claims under review. It is important to note that TiVo received a "final action" holding several claims invalid during EchoStar's first reexamination request at this juncture only to have the PTO ultimately uphold the validity of all claims of the patent.
> 
> Moreover, the PTO proceeding is separate and apart from the ongoing litigation against EchoStar and does not impact the current United States Court of Appeals en banc review of the district court's finding of contempt against EchoStar and the related injunction."


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## jacmyoung

The PTO's final rejection doc is now available. The final rejection continues to state the following:



> Examiner note: The parsing of video and audio data is interpreted to mean detecting video frames and then generating an index or table of the start of the detected video frames and their storage location on a hard drive.


While Judge Folsom ignored the above PTO's statement last time, we will see if E* will bring this one up again, the difference is this time E* has clear evidence that TiVo did not dispute the above PTO's interpretation.

The record is clear that E*'s modified DVRs no longer "parse audio and video data" as required by the PTO interpretation above. While TiVo continues to insist that the PTO action will be irrelevant to the court proceedings, any reasonable person should agree that the E* modified DVRs do not infringe, because TiVo does not dispute that the modified DVRs no longer detect start codes (start of the detected video frames) and does not generate an index or table of such start codes. TiVo's argument was that the start codes and index table were irrelevant to the software claims. Now they are relevant, not only relevant, but required.

Another issue is the TiVo's proposed claim amendment. The PTO examiner did not enter such amendment because either the amendment did not directly address the examiner's previous requests, or it was filed too early. That in conjunction with TiVo's statement today, may indicate that instead of appealing the Final Action, TiVo may continue to propose claim amendment to try to overcome the rejection, if so, and if the PTO decides to accept any claim amendment and recertify the reexamination, E* will likely be free of any past liabilities, and/or any future liabilities.


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## Curtis52

" Press Release Source: TiVo On Tuesday June 8, 2010, 3:53 pm EDT

ALVISO, CA--(Marketwire - 06/08/10) - TiVo Inc., the creator of and a leader in television services and advertising solutions for digital video recorders (DVRs), offered the following statement on the United States Patent and Trademark Office (PTO) decision.

"While TiVo is disappointed with this recent PTO office action, this is just one of several steps in the review process. We will continue to work with the PTO to explain the validity of the claims under review. It is important to note that TiVo received a "final action" holding several claims invalid during EchoStar's first reexamination request at this juncture only to have the PTO ultimately uphold the validity of all claims of the patent.

Moreover, the PTO proceeding is separate and apart from the ongoing litigation against EchoStar and does not impact the current United States Court of Appeals en banc review of the district court's finding of contempt against EchoStar and the related injunction.""


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## tsmacro

Well the latest announcement ought to be good for a few hundred more posts of people arguing what it all means i'd guess.


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## jacmyoung

What's interesting is, every news outlet considers this a big news today, when in fact we had made the news first available here last Friday.

Just because TiVo wants the PTO issue to be separate, does not mean E* will let it be. We shall see what happens. E* does not have to rely on this PTO action, but they can try.


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## James Long

jacmyoung said:


> What's interesting is, every news outlet considers this a big news today, when in fact we had made the news first available here last Friday.


Major companies issuing press releases tends to make the news. 

The major stock effect was an hour before closing ... and both DISH and Tivo put their releases out at close of market.


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## scooper

James Long said:


> Major companies issuing press releases tends to make the news.
> 
> The major stock effect was an hour before closing ... and both DISH and Tivo put their releases out at close of market.


So any "big" market impact should be seen tomorrow , if any.


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## James Long

scooper said:


> So any "big" market impact should be seen tomorrow , if any.


I'm not sure how much is left for Tivo ... I mentioned the artificial high that they were at until the en banc review was granted. Now they are back to the level they were before the jump last June. Stockholder reaction seems almost moody.

BTW: I don't own stock in any particular company. I have an IRA that is invested in a fund that invests in stocks but I have not looked at their investment list lately.


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## jacmyoung

James Long said:


> I'm not sure how much is left for Tivo ... I mentioned the artificial high that they were at until the en banc review was granted. Now they are back to the level they were before the jump last June. Stockholder reaction seems almost moody.
> 
> BTW: I don't own stock in any particular company. I have an IRA that is invested in a fund that invests in stocks but I have not looked at their investment list lately.


One analyst valued TiVo at $5 without this lawsuit. That was earlier this year, the overall market has since come down quite a bit. There is still a lot of room to drop if TiVo loses on en banc or something else unexpected surfaces.

Of course TiVo can also win the next round, anything is possible.

As far as whether this PTO Final Action is separate from the court case or not, while TiVo wants people to think so, let's not forget last time when E* motioned the appeals court to take judicial notice of the PTO Initial Office Action, TiVo opposed it on the same ground, but the motion was granted. E* can motion the appeals court to take judicial notice of this Final Action as well, if so, the motion will likely be granted too.

Whether the judges will reply on the PTO actions or not is at the judges' own discretion. Obviously the panel majority did not rely on the Initial Action, they went against E*, but did Judge Rader rely on the Initial Action in any way at all? He did not mention the PTO action, but no one knows if he was in any way influenced by it.


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## HiDefGator

jacmyoung said:


> Of course TiVo can also win the next round, anything is possible.


not this year...


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## jacmyoung

HiDefGator said:


> not this year...


I did not say it has to be the en banc review. Though at this moment, it is difficult to see what good can come TiVo's way any time soon.

A settlement with E* would


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## jacmyoung

Another reason why I think TiVo will likely propose a new amendment to the PTO Examiner in order to overcome the rejection, rather than appealing, is because the examiner in several locations explained to TiVo that the software claims 31 and 61 did not contain some claim terms TiVo used to argue for non-obviousness, such as the “downstream”, “pipeline” and “blocked” features. The implication is, if TiVo should propose to add those terms into the claim language of the claims 31 and 61, it would likely result in a recertification of the reexamination.

When TiVo proposed its amendment last time, it did not change the claim language of the claims 31 and 61 at all, only added some new dependent claims to them. Reading this PTO Final Action, such amendment clearly will not be good enough. TiVo will have to modify claims 31 and 61 themselves. Of course modifying the two claims themselves will easily make the new claims not “substantially identical” to the old claims, and we know what that means.

It is indeed a tough choice, amend the claims so to survive the rejection, but let E* off the hook, or not amend the claims rather appeal, which does not necessarily guarantee a win on en banc against E*, but will lose the right to assert the software claims against Verizon and ATT.


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## phrelin

Well, reading the various reports in the business press, one has to conclude that there are other implications for TiVo, if nothing more than PR issues.

Unless the folks at TiVo remain just as stubborn as Charlie, as they seem to have been in the past, they really should be looking for someone to partner with or buy them. Counting on three lawsuits to make your operation profitable isn't a very impressive approach to management, particularly when only one - the 6½-year-old Echostar/Dish case - can reach a possible final result in a year or two and the other two involve the two largest telecom corporations in the U.S. plus Microsoft.

It's hard to imagine that the original post on this case was January 5, 2004.:nono2:


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## jacmyoung

Checked out Rambus today, another CAFC rehearing and big drop in price. The Rambus story of course has been ten times more dramatic than that of TiVo, and the investors into those IP stockes are screaming corruption.

Speaking of corruption, the similarity in all such patent cases is the PTO reexaminations and rejections of claims involved in the litigations. For a very long period of time due to funding cut, the PTO relied on filing fees to fill the gap, it fast tracked the patent application process and granted many patents that were very weak. That in addition to some district courts' fast track patent proceedings (such as that of the E. TX court) and favoring patent trolls (of course TiVo is not one of them), the business communities were hammered with negative rulings and many were forced to settle to avoid trials.

E* was one of the very few that started to fight back. Many of those investors unfortunately over the years got too personal with their stocks. They now believe in conspiracy theories, if so, they need to go back in time and look into how "corruption" at the PTO and some federal district court levels had actually inhibited innovation by granting weak patents then enforcing them, stifling competition.

I don't know much about the Rambus case, in the case of TiVo, a few companies such as Apple are said to have held back on their effort into the TV/DVR market because of fear of lawsuit or having to pay license fees.


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## scooper

Then it sounds like the courts are going to be busy for a long time.

Personally - if we have to have patent office at all - fund it adequately so it can do a rigourous examination of every patent application so we can prevent these court cases in the first place . Much cheaper to deny a patent application that shouldn't be granted than to take it to court - for ALL parties involved !!!


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## HiDefGator

scooper said:


> Much cheaper to deny a patent application that shouldn't be granted than to take it to court - for ALL parties involved !!!


yes but the percentage of patents that do anything other than collect dust is very small. and in the end any patent in a lawsuit will be dragged through the ringer anyway.


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## jacmyoung

A few days ago phrelin provided the link to the USPTO "PAIR" site, I also provided the case #. If anyone is interested, select the "Image File Wrapper" page, then open the "IDS" file posted by TiVo on 6/2/10.

It is a 5-page disclosure filed by TiVo, from pages 2 to 4 you will find a total of 24 separate exhibits, each makes its own invalidity contention against the TiVo "Time Warping patent" based on prior art. The invalidity contentions were filed by ATT/MS as part of the TiVo v. ATT/MS case.

Aside from many additional prior patents used by ATT/MS (the two patents E* used in this PTO reexamination are included), it is interesting to point out that in one exhibit ATT/MS also used the Dishplayer 7100 as prior art. We know MS did the software for the Dishplayer 7100, MS also had its own DVR patent. We'll see how effective their invalidity arguments may be, that is if we will get to that point.


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## Matt9876

scooper said:


> Then it sounds like the courts are going to be busy for a long time.


The Lawyers are getting rich off this one,Not that anyone involved will compromise at this point but a settlement or sale would make a lot of sense.

If all the parties involved AT&T,Verizon,Motorola,E*,Etc worked together and bought up all the shares in TiVo this thing would vanish over night.


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## jacmyoung

http://www.law.com/jsp/article.jsp?...ms_but_Case_Against_EchoStar_Is_Far_From_Over



> but Case Against EchoStar Is Far From Over


Interresting the title of the above article borrowed TiVo's patent lawyer's quote and took it as a matter of fact

Nevertheless, this is the first time the TiVo patent attorney who has been handling the PTO reexaminations spoke, it may have hinted their next strategy.

I talked about this earlier that if they amend the software claims as suggested by the PTO, they should be able to get the PTO recertify the claims, but will get E* off the hook, now from what the lawyer was saying, they likely will try to convince the PTO to withdraw the rejection, even try to amend the claims again, but will not be willing to get E* off the hook as a result, if they had to let E* off the hook, they'd rather take the next step and appeal to the BPAI instead.

This of course makes sense too, because what good does it do if you let E* off the hook, just so you may get the software claims back? It will mean little, the cases against Verizon and ATT will likely be moot too if the world realizes E* would have won.

What this statement has indicated is, it is likely there is still no settlement possibility, neither side is willing to compromise at this time.


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## phrelin

jacmyoung said:


> What this statement has indicated is, it is likely there is still no settlement possibility, neither side is willing to compromise at this time.


Ah yes....


----------



## david_jr

phrelin said:


> Ah yes....


Just think of all the money the poor lawyers working for Tivo and Echo whould have lost out on if the two companies had come to a reasonable settlement to this at the beginning.:lol:


----------



## jacmyoung

david_jr said:


> Just think of all the money the poor lawyers working for Tivo and Echo whould have lost out on if the two companies had come to a reasonable settlement to this at the beginning.:lol:


Even though the attorneys make significant amount, it is no comparison to the amount of money paid in damages or licnese fees. I must agree though, attorneys may not have E* and TiVo's best interests in mind, before looking after their own interest first, that is to continue the litigation. But that is natrual, wouldn't you want your own business to continue as long as possible?

I want to put the blame on the CEOs. But then again, they seem to do very well regardless anyway, so why should we care? Just because the attorneys are able to have a small share of the CEO's big pie?

At least now TiVo seems to begin to think this case "far from over." It is always nice to see we can all agree on something.


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## jacmyoung

Since the PTO issued its final action rejecting the TiVo software claims, TiVo has been trying to use that last reexamination to suggest that the PTO rejection would only make the claims "stronger." As Curtis pointed out, the last reexamination ended in a certification of the claims without any amendment, after the final rejection.

I decided to take a close look at the last final rejection and certification. In the 2007 final rejection, the two hardware claims, along with a few of their dependent claims were rejected. However in the end they were reaffirmed, after TiVo clarified that the hardware claims required separation of the audio and video data, later reassemble them back into one stream.

Anyone who is familiar with this case knows that the reason the appeals court later overturned the jury's hardware claims infringement verdicts, was because the E* DVRs either did not separate or did not reassemble the audio and video streams.

In other words, the last PTO reexamination made the hardware claims "stronger" (narrower) but also made them more difficult to infringe. Therefore even if we take TiVo's current spin that the final rejection will only make the software claims "stronger", and then take into consideration of their requirement to detect start codes and build index or table of such start codes (clarified by the PTO), we may speculate the outcome of the current software claims infringement verdict after the en banc review, that is if the history should repeat itself.

Did I mention that one of the key objectives of a reexamination may not be to invalidate the claims, rather to get the PTO to clarify some of the claims so the party can take advantage of such clarification?


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## jacmyoung

I know ever since TiVo was hit hard by the en banc order, many TiVo analysts have been talking about a TiVo buyout as a way to pump up TiVo's value, but for all the possible suitors, DirecTV? And some of the TiVo supporters seemed to believe this. As a DirecTV sub, I don't think DirecTV is so foolish to play into Charlie's hand on this one.


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## phrelin

The gamblers weighed in heavily today in the options arena and the sentiment is bullish. But unless someone hears a rumblings of a low buyout price, I can't see much happening.


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## James Long

phrelin said:


> The gamblers weighed in heavily today in the options arena and the sentiment is bullish. But unless someone hears a rumblings of a low buyout price, I can't see much happening.


The poison pill remains regardless of the low price, but it would be better to buy the company when the price is low than when it is high.

DISH isn't buying ... they'd rather beat the the company than buy it.


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## jacmyoung

James Long said:


> The poison pill remains regardless of the low price, but it would be better to buy the company when the price is low than when it is high.
> 
> DISH isn't buying ... they'd rather beat the the company than buy it.


I am sure Charlie will buy if the price is good enough, but DirecTV gains nothing, it has the ReplayTV IPs to defend itself, it has shown little interest in even providing any TiVo brand DVRs.

People will believe anything.


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## TulsaOK

jacmyoung said:


> People will believe anything.


_*Some *_people.


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## jacmyoung

TiVo today made its DVRs available to access social networking sites such as Facebook on TV, that is what I call competition in the marketplace.

Though I begin to think, with the success of Apple's iPhone and Ipad, and all the other smartphones and mobile devices, I just have a hard time seeing Internet TV having much attraction anymore. They did not get anywhere even when the smartphones were not widely used.


----------



## jacmyoung

James Long said:


> DISH isn't buying ... they'd rather beat the the company than buy it.


I noticed something, since the en banc order, E* has become silent in Judge Folsom's court, no filings, no request to address the pre-approval issue for the new design around. I think you are on to something, E* appears confident that they can win on en banc, maybe even in time at the PTO front, only then there is no need to address the pre-approval issue.

Of course E* can still file papers to Judge Folsom any time, but Charlie might just be prepared to win the next en banc and/or PTO rounds . Even the general sentiment among the TiVo analysts and the TiVo investors seem to reflect such understanding. They no longer talk about the outcome of the en banc review, or the PTO reexamination, all the rage now is on a supposed TiVo buyout. Logic says if you are confident about the court case and the PTO case, you should stand firm on your ground, reap huge benefit after the final wins, which will easily get TiVo to $17 and above, rather constantly wishing for a bailout now, which can at the most get TiVo to $12.

I am using the numbers $17 and $12 because they were the milestones reached at the two critical points of court win and settlement/buyout rumor in the past. Nothing else has changed much.

Of course a TiVo bailout will be good for E* too, while I doubt it will happen, whoever would buy TiVo would likely end the litigation because the buyer, assume it is one of the big guys, likely does not rely on the litigation path to survive.


----------



## harsh

James Long said:


> The poison pill remains regardless of the low price, but it would be better to buy the company when the price is low than when it is high.


Didn't someone once mention a sunset on the poison pill?


----------



## jacmyoung

harsh said:


> Didn't someone once mention a sunset on the poison pill?


I forgot about this, simliar to the talks of the court wins, a licensing deal, award in the billion, the TiVo supporters also stopped bragging about the "poison pill" They will take a bailout if they can get it for now.

Poison pill is only good when you have leverages.


----------



## jacmyoung

Today the appeals court again granted a petition for writ of mandamus, ordering the E. TX court to transfer a patent case out of its own court, to a different district court.

I had mentioned before that in the past two years the appeals court issued four of such orders, forcing the E. TX court to transfer its patent cases to different forums. This is the fifth one. It is very important to note that in this case, the appeals court dismissed the argument made by the E. TX court that there is another concurrent lawsuit involving similar/identical patents pending in the E. TX court.

I had also mentioned that currently both Verizon and ATT/MS are motioning Judge Folsom to transfer the TiVo cases out of the E. TX court. While I said it was unlikely Judge Folsom would grant the motions for transfer, I speculated that Verizon and ATT/MS would appeal.

With this latest decision by the appeals court, I am almost certain Verizon and ATT/MS will appeal, if Judge Folsom denies their motions for transfer.

To grant a petition for writ of mandamus, the appeals court must conclude that the lower court had made a decision that was “patently erroneous” and the petitioner was left with no other remedy but to seek the relief by the appeals court.

I think five of such orders issued against one district court (unheard of to begin with) by the appeals court in a relatively short time period, should have some significant impact on how parties assess their positions in those patent cases in the E. TX court, especially when the cases are pending review by the appeals court.


----------



## spear61

jacmyoung said:


> I think five of such orders issued against one district court (unheard of to begin with) by the appeals court in a relatively short time period, should have some significant impact on how parties assess their positions in those patent cases in the E. TX court, especially when the cases are pending review by the appeals court.


No big deal. It's public knowledge that, in the recent past, the court administrators have made a decision to require a significant business presense at the location of filings. They are just doing the housework needed to move to the new filing standard. The hotels in East Texas are going to see a dropoff in business.


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## jacmyoung

Two parties (GreatBatch and Verizon Communications) filed amicus curiae briefs to the appeals court at the beginning of July, the GreatBatch brief was in support of E*, Verizon's brief supported neither party. Both briefs were rejected on 7/8/10.

There was no reason given, but I recall in the past all amicus curiae briefs were accompanied by motions to grant the filing. It appeared neither party filed a motion.


----------



## jacmyoung

Today ATT/MS filed a few things, one of them is their response to TiVo's response to ATT/MS' motion to transfer venue to N. CA. Based on the ATT/MS filing, TiVo seemed at least to say that the case might be moved to W. TX. If so the case will be out of Judge Folsom's court.

But the most interesting part of the ATT/MS filing (for me at least) is the following:



> Only two of the asserted claims-claims 31 and 61 of the '389 patent-could possibly benefit from the Court's familiarity with the EchoStar litigation. However, the PTO recently issued a final rejection for both of these claims. *As TiVo itself has stated, "n light of published PTO statistics, there is an overwhelming probability that in reexamination the claims of the patent-in-suit will be cancelled, or at the very least, amended."*_ See D.E. 82, Ex. B, at 2. If the claims do not survive reexamination, no overlap with the EchoStar litigation will remain._


_

I did not read TiVo's filing so do not know the full context of the TiVo's above statement. We do know the stats agree with TiVo's own assessment._


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## phrelin

It's just my worthless observation, but Charlie doesn't seem to get lawsuits going with different folks over essentially the same issue. TiVo seems to be getting in deeper and deeper taking on industry giants that seem to cleverly bring up the Echostar/Dish case which has yet to be resolved.

There's got to be a subtle negative psychological impact on judges, even Folsom, that results in a raised eyebrow or two directed towards TiVo's table.


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## Curtis52

Considering how long lawsuits take, filing lawsuits serially might not be a good business strategy. Dish infringed. That much is settled. Others may too and I don't think whether they are industry giants or not is germane.


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## jacmyoung

Curtis52 said:


> Considering how long lawsuits take, filing lawsuits serially might not be a good business strategy. Dish infringed. That much is settled. Others may too and I don't think whether they are industry giants or not is germane.


I think TiVo recognizes this, which is why they no longer talk much about the lawsuit wins, rather their new partnership with various cable operators. Unfortunately the TiVo investment community is already addicted to the lawsuit wins.

I expect Verizon to pick up the PTO reexamination issue as well. Last time they filed their papers on the motion to move forum, the PTO decision was barely issued.


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## jacmyoung

phrelin said:


> There's got to be a subtle negative psychological impact on judges, even Folsom, that results in a raised eyebrow or two directed towards TiVo's table.


I don't know if Judge Folsom is moved at all. We will know soon after he makes the rulings on both motions to transfer.


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## jacmyoung

jacmyoung said:


> A few days ago phrelin provided the link to the USPTO "PAIR" site, I also provided the case #. If anyone is interested, select the "Image File Wrapper" page, then open the "IDS" file posted by TiVo on 6/2/10.
> 
> It is a 5-page disclosure filed by TiVo, from pages 2 to 4 you will find a total of 24 separate exhibits, each makes its own invalidity contention against the TiVo "Time Warping patent" based on prior art. The invalidity contentions were filed by ATT/MS as part of the TiVo v. ATT/MS case.
> 
> Aside from many additional prior patents used by ATT/MS (the two patents E* used in this PTO reexamination are included), it is interesting to point out that in one exhibit ATT/MS also used the Dishplayer 7100 as prior art. We know MS did the software for the Dishplayer 7100, MS also had its own DVR patent. We'll see how effective their invalidity arguments may be, that is if we will get to that point.





jacmyoung said:


> http://www.law.com/jsp/article.jsp?...ms_but_Case_Against_EchoStar_Is_Far_From_Over
> 
> Interresting the title of the above article borrowed TiVo's patent lawyer's quote and took it as a matter of fact
> 
> Nevertheless, this is the first time the TiVo patent attorney who has been handling the PTO reexaminations spoke, it may have hinted their next strategy.
> 
> I talked about this earlier that if they amend the software claims as suggested by the PTO, they should be able to get the PTO recertify the claims, but will get E* off the hook, now from what the lawyer was saying, they likely will try to convince the PTO to withdraw the rejection, even try to amend the claims again, but will not be willing to get E* off the hook as a result, if they had to let E* off the hook, they'd rather take the next step and appeal to the BPAI instead.
> 
> This of course makes sense too, because what good does it do if you let E* off the hook, just so you may get the software claims back? It will mean little, the cases against Verizon and ATT will likely be moot too if the world realizes E* would have won.
> 
> What this statement has indicated is, it is likely there is still no settlement possibility, neither side is willing to compromise at this time.


I quoted the above two previous posts I made, because today TiVo filed for extension to the PTO to move the response deadline from 8/4 to the second week of September, as expected.

One of TiVo's justifications was the invalidity contentions raised by ATT/MS in the TiVo v. ATT/MS case, and the high volume of prior art documents TiVo needed to go through, although I don't know why ATT/MS invalidity contentions should have anything to do with this reexamination. But it will be very interesting if TiVo will actually touch on any of the prior art references used by ATT/MS and use them in this reexamination, especially if the Dishplayer 7100 and the related MS patent are discussed.

TiVo's request also confirmed my speculation about the likely TiVo strategy, that is try to convince the Examiner to reverse his Final Rejection, failing that, appeal rather amend the claims for a speedy recertification. Amend the claims will likely seriously undermine this lawsuit against E*.


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## HiDefGator

where is the Dish brief ? shouldn't it be available by now.


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## jacmyoung

HiDefGator said:


> where is the Dish brief ? shouldn't it be available by now.


Well E* filed its initial brief on 7/26, but there are more.

Greatbatch filed its amicus curiae brief in support of E*, and Verizon file its own in support of neither party. Whether these two amicus curiae briefs were actually rejected or not is difficult to tell last I checked.

The most recent amicus curiae brief file by the FTC on the other hand is more easily accessible:

http://www.ftc.gov/os/2010/08/100802tivoechostarbrief.pdf

First it interpreted the four questions raised by the en banc order the same way I interpreted, specifically the last one, though the FTC decided only to address the first three questions.

Even though the FTC brief says it supports neither party, after reading it, I had the feeling it is almost in support of E*.


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## HiDefGator

well if someone has to go to DC to get the briefs might as well wait till next week and get Tivo's at the same time.


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## jacmyoung

"HiDefGator" said:


> well if someone has to go to DC to get the briefs might as well wait till next week and get Tivo's at the same time.


Why? No one here is even interested in this case anymore.

As to the others, Judge Folsom has not been able to find time to stop E* from continuing the supposed infringement, E* has stopped from asking Judge Folsom to do that, TiVo has been busy signing deals with small cablecos, putting deals with the big guys behind them.

The parties in this litigation are acting as if whatever the past decisions will have no impact to their current and future businesses.


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## HiDefGator

jacmyoung said:


> Why? No one here is even interested in this case anymore.


Entertaining summer reading?


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## jacmyoung

HiDefGator said:


> Entertaining summer reading?


I don't see anything entertaining in those briefs except maybe one. As the FTC pointed out, "The fourth question concerns the propriety of holding a party in contempt when there is ambiguity as to the scope of the injunction."

As I pointed out before, one of the TiVo's core arguments has been that there was absolutely no ambiguity as to the scope of the injunction. It will be very interesting to see how TiVo can address the fourth question without basically telling the en banc panel that they are stupid.

I am not trying to be sarcastic, really, this is where (regardless the outcome) you can separate a great lawyer from an average one.


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## phrelin

jacmyoung said:


> Why? No one here is even interested in this case anymore.


I beg your pardon! I'm someone here!


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## jacmyoung

phrelin said:


> I beg your pardon! I'm someone here!


You and I are nobody, remember?

Here is another piece:

http://www.multichannel.com/article/455633-FTC_Weighs_In_On_TiVo_EchoStar_Case.php



> Separately, in June the U.S. Patent and Trademark Office ruled that TiVo's "Time Warp" DVR patent was invalid in light of two prior-art references. TiVo called that "just one of several steps in the review process."
> 
> But courts should consider the PTO finding that the TiVo patent is invalid in considering the enforcement of an injunction through contempt proceedings, Verizon Communications argued in an amicus brief with with the appeals court last month. The telco is itself engaged in patent litigation with TiVo.
> 
> "Where the PTO has cast doubt on the validity of an issued patent, enforcement of the patent through an injunction -- even more than enforcement through payment of money damages -- can deprive the public not only of legitimate competition and the benefits that such competition brings, but also of further innovation that comes through continued participation in the market," Verizon said in its brief dated July 2.


The Verizon's brief sounded a lot like something we talked about


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## jacmyoung

The recent deals TiVo made with some of the small cable companies seem to indicate TiVo is now willing to offer very reasonable terms. The deal with RCN is a good example. According to some posters here in the DirecTV forum, RCN is only charging an extra $2 for a TiVo DVR, compared to the ordinary cable DVR box RCN provides. The new RCN TiVo DVR seems to provide the most up-to-date features even the new DISH and DirecTV DVRs have not caught up with. More importantly TiVo is providing both software and hardware support in the above deals.

Such deals appear in much better terms than the DirecTV and Comcast deals, not to mention what TiVo is seeking in the DISH deal through the courts in the past. In other words TiVo has adopted a more reasonable approach since the appeals court en banc order.

While Charlie has stated that he would settle with TiVo for $120M per year, that was before the en banc order. It is reasonable to speculate that currently TiVo would be happy to accept such terms because it is in line with what the RCN deal is. Keep in mind even if TiVo wants the court to dictate a settlement in the form of a compulsory licensing deal, the deal would still take into consideration the existing deals TiVo has out there, including the latest ones with the small cable companies. Add to the fact that TiVo must have realized the PTO’s rejection of the software claims has put TiVo in a less favorable position in a hypothetical settlement negotiation.

It is therefore reasonable to speculate that after the en banc order and the PTO Final Action, Charlie might have taken back the offer he made to TiVo. While it is understandable that he has the right to clear his name, to remove the cloud over him as far as the issue of infringement and contempt, at this juncture, a reasonable deal to allow E* and TiVo to “work together” is clearly in the interest of E*, and more importantly in the interest of the DISH subs.

Despite E*’s claim that they had downloaded an “improved” software to avoid infringement, we know it is less efficient than the TiVo’s DVR technology. To avoid infringement, they had to remove some key features that were intended to save the CPU power consumption. We know that the DISH DVRs do consume more power than the other brands. It is also clear that the higher DISH DVR fees are in part the result of the E* v. TiVo lawsuit, so much that they appear to be one of the main reasons DISH is now less competitive than DirecTV in retaining advanced DVR subs.

All of the above makes a reasonable deal with TiVo a compelling move. From the very beginning I had wished they worked together, while I am not holding my breath, I hope they do so for their subs, by putting their own egos aside.


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## domingos35

jacmyoung said:


> The recent deals TiVo made with some of the small cable companies seem to indicate TiVo is now willing to offer very reasonable terms. The deal with RCN is a good example. According to some posters here in the DirecTV forum, RCN is only charging an extra $2 for a TiVo DVR, compared to the ordinary cable DVR box RCN provides. The new RCN TiVo DVR seems to provide the most up-to-date features even the new DISH and DirecTV DVRs have not caught up with. More importantly TiVo is providing both software and hardware support in the above deals.
> 
> Such deals appear in much better terms than the DirecTV and Comcast deals, not to mention what TiVo is seeking in the DISH deal through the courts in the past. In other words TiVo has adopted a more reasonable approach since the appeals court en banc order.
> 
> While Charlie has stated that he would settle with TiVo for $120M per year, that was before the en banc order. It is reasonable to speculate that currently TiVo would be happy to accept such terms because it is in line with what the RCN deal is. Keep in mind even if TiVo wants the court to dictate a settlement in the form of a compulsory licensing deal, the deal would still take into consideration the existing deals TiVo has out there, including the latest ones with the small cable companies. Add to the fact that TiVo must have realized the PTO's rejection of the software claims has put TiVo in a less favorable position in a hypothetical settlement negotiation.
> 
> It is therefore reasonable to speculate that after the en banc order and the PTO Final Action, Charlie might have taken back the offer he made to TiVo. While it is understandable that he has the right to clear his name, to remove the cloud over him as far as the issue of infringement and contempt, at this juncture, a reasonable deal to allow E* and TiVo to "work together" is clearly in the interest of E*, and more importantly in the interest of the DISH subs.
> 
> Despite E*'s claim that they had downloaded an "improved" software to avoid infringement, we know it is less efficient than the TiVo's DVR technology. To avoid infringement, they had to remove some key features that were intended to save the CPU power consumption. We know that the DISH DVRs do consume more power than the other brands. It is also clear that the higher DISH DVR fees are in part the result of the E* v. TiVo lawsuit, so much that they appear to be one of the main reasons DISH is now less competitive than DirecTV in retaining advanced DVR subs.
> 
> All of the above makes a reasonable deal with TiVo a compelling move. From the very beginning I had wished they worked together, while I am not holding my breath, I hope they do so for their subs, by putting their own egos aside.


well said


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## jacmyoung

Just when I said TiVo was moving away from the past software/UI-only deals with the large DVR/content providers, as evident from the latest deals with the small cablecos, TiVo just made a deal with Cox cable, again focusing on using TiVo's own hardware.

The timing is interesting because not too long ago (before the en ban order) TiVo indicated they wanted to move away from being a DVR company, rather becoming a software provider (hint: IP licensing), but recently (after the en ban order) everything TiVo has been doing is going back to be a DVR company. Maybe they also see their winning streak on the IP front ending.

Yet those latest deals, while not the best ways to make TiVo investors rich overnight, will likely benefit the consumers by offering an advanced DVR alternative to the cable subs, ultimately provide real competition in the DVR market.

Maybe the CAFC does know how to use the patent system to benefit the consumers, which is the goal of our patent system anyway. To that end let's hope TiVo success, if only there is a way to use a TiVo DVR to receive satellite programming as well


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## Lake Lover

It seems Echostar may be as anxious as TiVo to seek a lot of extra cash when it feels its property rights have been compromised. In this instance, the attempt backfired.

http://www.law.com/jsp/article.jsp?id=1202464797613&rss=newswire


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## jacmyoung

On or around 8/25 TiVo had an interview with the PTO Examiner(s), we should know how that went very soon.

While searching the PTO PAIR site, I also took a look at the docs concerning that "Digital Video Recording System" patent app. If you all recall a few months back I talked about that app TiVo filed in 2004, as a "continuation" of the "Time Warping" patent in this TiVo v. E* case.

That "DVR" patent had been rejected many times (non finals) by the PTO, on or around 8/5, TiVo finally amended many claims in the app in order to overcome the rejections. The amendment seems to make the claims "no longer substantially identical" meaning even if the PTO accepts them and certifies the "DVR" patent, there may not be liability due to any infringement acts (even if TiVo may prove such acts) prior to the certification of the patent.

TiVo's such move, along with its proposed amendment in the "Time Warping" patent reexamination (which the PTO Examiner ignored in his Final Rejection) seem to suggest TiVo rather choose not to fight the PTO Examiners all the way through appeals. Although the stakes in the "Time Warping" patent reexamination are much higher, if TiVo makes a similar amendment again, E* can go free.

Therefore the outcome of that 8/25 interview could be very critical.


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## jacmyoung

Just saw this on Yahoo today:

http://seekingalpha.com/article/222849-tivo-is-quickly-becoming-irrelevant?source=yahoo

I assume he is one of those analysts, this is the first time I know that an analyst is predicting TiVo having only a small chance of winning the next court fight. But more interesting is his choice of words:



> *Parsing* TiVo's...


Did he read too much of the TiVo software claims?


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## jacmyoung

Today the PTO site provided the TiVo interview summary detail. The interview with the PTO Examiners did not yield an agreement. TiVo agreed to provide a "supplemental amendment" to the Examiners soon. There are a few hints on what the Examiners were asking for, but not enough to indicate whether TiVo will have to actually amend the claim terms, or merely provide additional clarification in the patent specification.

The issue centered on the "automatic flow control", which according to TiVo is different than the two prior patents. My feeling is, further clarification of such "flow control" can land support to E*'s contention that E*'s modified software no longer used the kind of flow control specified in TiVo's claims. TiVo is now required to clarify that the "automatic flow control" is a function runs in parallel to the three (source, sink and transform) objects. The "flow control" TiVo accused E* still uses in the modified software, as I recall, was just a "ring of buffer" used in writing data onto the hard drive. It does not work in parallel with those objects.

I am sure E* is watching closely at what TiVo and the Examiners will say about such flow control function.


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## CuriousMark

Looking Ahead to TiVo v. Dish at the Federal Circuit

This is an interesting article on the subject that is worth a read by those who are following the case.


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## jacmyoung

"CuriousMark" said:


> Looking Ahead to TiVo v. Dish at the Federal Circuit
> 
> This is an interesting article on the subject that is worth a read by those who are following the case.


Is it just me that he was suggesting TiVo should prepare to go all the way to the supreme court? Now that would be the first such thought ever in this case.


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## rocatman

CuriousMark said:


> Looking Ahead to TiVo v. Dish at the Federal Circuit
> 
> This is an interesting article on the subject that is worth a read by those who are following the case.


Interesting there is no mention in this article of the activities at the Patent and Trademark Office related to the TIVO patent.


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## Curtis0620

rocatman said:


> Interesting there is no mention in this article of the activities at the Patent and Trademark Office related to the TIVO patent.


Because it's irrelevant.


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## RasputinAXP

Curtis0620 said:


> Because it's irrelevant.


If it invalidates the patents they're suing over, then I hardly see how it's irrelevant.


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## Greg Bimson

RasputinAXP said:


> If it invalidates the patents they're suing over, then I hardly see how it's irrelevant.


It's hard to understand, so bear with me...

Dish Network has been found in contempt by both at the District Court level and at the Court of Appeals. Yet there is no standing decision regading contempt as it has been vacated by the courts so the arguments can be reheard yet again.

So the PTO has "invalidated" the patent. The patent was valid when the case started, and the patent was only recently "invalidated". However, just like the contempt proceeding, the patent will not be invalid UNTIL all appeals run their course.

So, as was mentioned, the finding that the patent was invalid is irrelevant. The patent isn't invalid, yet.


----------



## jacmyoung

"Greg Bimson" said:


> It's hard to understand, so bear with me...
> 
> Dish Network has been found in contempt by both at the District Court level and at the Court of Appeals. Yet there is no standing decision regading contempt as it has been vacated by the courts so the arguments can be reheard yet again.
> 
> So the PTO has "invalidated" the patent. The patent was valid when the case started, and the patent was only recently "invalidated". However, just like the contempt proceeding, the patent will not be invalid UNTIL all appeals run their course.
> 
> So, as was mentioned, the finding that the patent was invalid is irrelevant. The patent isn't invalid, yet.


If the PTO Action was irrelevant to this case, as TiVo argued rigorously on this point, why then the appeals court took judicial notice of such action?

Can you be so sure that the PTO Actions had no influence on any of the judges during the en banc polling?

I am not saying there is proof of any influence, just that at this point I found it hard to be so sure they are totally irrelevant.

And that was a good point raised, if the author was so concerned about the patent rights, he should be equally concerned that we have a system to actually grant valid patents. If the majority of the patents (according to the PTO reexam stats) are not valid in the first place, what are we talking about protecting such questionable patent rights for?


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## RasputinAXP

Greg Bimson said:


> It's hard to understand, so bear with me...
> 
> Dish Network has been found in contempt by both at the District Court level and at the Court of Appeals. Yet there is no standing decision regading contempt as it has been vacated by the courts so the arguments can be reheard yet again.
> 
> So the PTO has "invalidated" the patent. The patent was valid when the case started, and the patent was only recently "invalidated". However, just like the contempt proceeding, the patent will not be invalid UNTIL all appeals run their course.
> 
> So, as was mentioned, the finding that the patent was invalid is irrelevant. The patent isn't invalid, yet.


That sounds horribly pedantic to me. Dish is guilty because they infringed on an illegally awarded patent. Dish is further guilty because they designed around the patent in a way Tivo and the judge didn't like. But we haven't come to the end of that decision yet, either.

So by your measuring stick, the patent isn't yet invalid because they haven't exhausted all of their appeals. By the same measure, then, Dish isn't guilty because they haven't exhausted all of their appeals.

Now, Dish stands a strong chance of stringing this all out until the patent is invalidated, which means that they infringed upon something that should not have been patented. It follows then that there was nothing infringed on at all, QED Dish is in the clear.

That is, of course, provided the patents get invalidated. Or am I missing something here?


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## Greg Bimson

RasputinAXP said:


> So by your measuring stick, the patent isn't yet invalid because they haven't exhausted all of their appeals. By the same measure, then, Dish isn't guilty because they haven't exhausted all of their appeals.


Technically, when taking an appeal, the decision stands. That is why those decisions are "reversed" when the Court of Appeals finds an error.

So, Judge Folsom in Texas found Dish Network in contempt. That is the acutal answer, until it is affirmed or reversed by a higher court.


RasputinAXP said:


> That sounds horribly pedantic to me. Dish is guilty because they infringed on an illegally awarded patent.


That's a bit elementary. Just because a patent is invalidated doesn't mean it was awarded illegally. For example, I believe it was in 2007 that the Supreme Court ruled that a combination of two patents is not patentable. And that is exactly why claims 31 and 61 of the Time Warp patent were invalidated.

And that means the patent was valid from the date of issue until it was invalidated.


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## jacmyoung

Greg Bimson said:


> Technically, when taking an appeal, the decision stands.


I like that attitude, just that most TiVo investors don't seem to see it that way after the en banc order.


----------



## jacmyoung

RasputinAXP said:


> That sounds horribly pedantic to me. Dish is guilty because they infringed on an illegally awarded patent.


Too soon to say that. TiVo can still overcome the PTO rejection.



> Dish is further guilty because they designed around the patent in a way Tivo and the judge didn't like. But we haven't come to the end of that decision yet, either.


I don't think Judge Folsom even cared whether E* successfully designed around the software claims or not, he has said he simply did not like the fact E* was still using those DVRs as DVRs.

The above article echoed such feeling, even went further to argue one should not get on a judge's nerve, a big mistake you know. This is almost the same as justifying that it is OK if a judge is vindictive.

This much both sides seem to agree, had E* appealed the wording of the injunction, the appeals court would have certainly (as Judge Rader said "with a stroke of the pen") rejected the original injunction and asked Judge Folsom to modify it so to be clear that E* could design around and still use those DVRs as DVRs. If so, one cannot continue to insist TiVo is the victim here, at the most E* made a stupid mistake.

Of course again as Judge Rader pointed out, TiVo actually did issue an instruction to tell E* and Judge Folsom how to comply with the original injunction back then, in a way that E* followed and believed it was in the clear, only later TiVo changed its interpretation of its own injunction. So you can say in effect TiVo led E* into this situation, because had TiVo made it clear to E* back then what TiVo is telling E* now, E* would have certainly appealed the original injunction and had it vacated by the appeals court. One may even argue that TiVo chose not to be so clear back then when the injunction was issued in 2006 therefore tricked E* into not appealing the questionable injunction.

So who is the bad guy now?

The author above repeatedly stated his respect for Judge Rader, in part I think because Judge Rader is one of the only two (Judge Newman being the other) that has the reputation of defending patent owners' rights, therefore he was more troubled by the fact Judge Rader was completely on the side of a convicted infringer in this case. Maybe the reason was simple, the more you are for a strong patent system, the more you feel obligated to ensure no one abuses the system in the name of protecting patent rights.


----------



## Curtis52

RasputinAXP said:


> Dish is further guilty because they designed around the patent in a way Tivo and the judge didn't like.


The judge said Dish did not design around the patent.


----------



## CuriousMark

Curtis52 said:


> The judge said Dish did not design around the patent.


They tried to design around it, but weren't successful in the eyes of the judge. The claims are quite broad and dish's narrow changes didn't get them there. I think they made a good effort to try to do so, it wasn't a sham attempt, but there is no guarantee that a design around attempt is good enough just because effort was put into it.


----------



## jacmyoung

CuriousMark said:


> They tried to design around it, but weren't successful in the eyes of the judge. The claims are quite broad and dish's narrow changes didn't get them there. I think they made a good effort to try to do so, it wasn't a sham attempt, but there is no guarantee that a design around attempt is good enough just because effort was put into it.


In the eyes of the other judge, E*'s design around was a clear success It just so happened this other judge sits above that judge.

I wouldn't call TiVo's software claims very broad, just that TiVo tried to interpret them in the broadest form possible and was quite successful in that attempt until Judge Rader chimed in.


----------



## dgordo

Barons said:


> TiVo (TIVO) shares have spiked on speculation that the company may have reached a settlement of its long-standing patent infringement lawsuit against Dish Network (DISH). As both Briefing.com and TheFlyOnTheWall.com report, the chatter has been spurred in part by an SEC filing showing that TiVo has received approval from the SEC for confidential treatment of two exhibits in its 10-Q.
> 
> That sounds interesting, but I would note that the SEC has granted confidential treatment to TiVo more than two dozen times since May 2008.
> 
> TIVO is up 58 cents, or 6.8%, to $9.08.


Could it be?


----------



## James Long

We've had speculation before. Tivo stock seems to be driven primarily by speculation.


----------



## jacmyoung

James Long said:


> We've had speculation before. Tivo stock seems to be driven primarily by speculation.


A quick check on Yahoo, TiVo and Samsung just signed an agreement to use TiVo's "DVR porting kit" to manufacture DVRs for overseas market.

While we all learned not to hold our breath for any settlement between TiVo and E*, I will say again that I like to see them working together. It seems clear when they work to compete in the marketplace, rather than fighting in court, not only the consumers benefit, the companies too.

On the other hand, a lot of those TiVo analysts had been quiet for some time, several of them seized on the latest news and speculations to pump TiVo again. It is understandable.

If TiVo stock can go up without relying on the litigation outcome, there is all the reason the court sees it that the court fight is unnecessary.


----------



## jacmyoung

Very interesting that on the PTO PAIR site, it shows TiVo filed its response to the PTO Final Action on 9/9/10, but one week later the site still has yet publicly uploaded the file. Usually the lag is only a few days max.

Now that is something one can speculate on


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## HiDefGator

If their patent is currently rejected how can they go forward with lawsuits against VZ and T for infringing that patent? I don't understand.


----------



## jacmyoung

HiDefGator said:


> If their patent is currently rejected how can they go forward with lawsuits against VZ and T for infringing that patent? I don't understand.


The patent itself is not rejected, only the software claims. It is however true that in the eyes of the court, even the software claims are still presumed valid unless TiVo fails to overcome the rejection and loses on all appeals. The difference is, the TiVo's cases against VZ and ATT are in their infancy. Usually if substantial discoveries have not taken place yet, the district court tends to stay any proceedings with regard to the rejected claims until resolution is reached at the PTO reexamination.

TiVo can still go after VZ and ATT on the hardware claims alone, but we know proving infringement by the hardware claims alone would be nearly impossible, even the old E* DVRs, which literally "copied" TiVo's patent (according to TiVo and the jury), were later found to have not infringed on the hardware claims. Without the software claims, TiVo's cases against VZ and ATT have little chance.

TiVo needs to do something to quickly overcome the software claims rejection by the PTO to have a more solid case against VZ/ATT, at the same time whatever TiVo does to the software claims to overcome the rejection should not end up getting E* off the hook.


----------



## HiDefGator

thanks for the explanation. So what the PTO has told Tivo is that they plan on rejecting the software claims unless Tivo can talk them out of it. Any idea when they will go ahead and officially reject them?


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## jacmyoung

HiDefGator said:


> thanks for the explanation. So what the PTO has told Tivo is that they plan on rejecting the software claims unless Tivo can talk them out of it. Any idea when they will go ahead and officially reject them?


The PTO had already "officially" rejected the software claims, twice. The latest one was a "Final Rejection." I think you meant to ask when the PTO will certify the reexamination.

It appeared from the PTO site TiVo filed its amended response to the PTO Final Rejection on 9/9/10. If it satisfies the PTO, the PTO could certify the reexamination rather quickly. If not, TiVo can appeal, recertification, if any, will have to wait.

If the PTO certifies the reexamination soon, the devil will be in the detail what the TiVo's amended response was that had finally overcome the rejection. If the amended response makes any amendment to the claims and the patent specification that renders the amended claims not substantially identical to the old claims, E* can go free.

Obviously TiVo would not want that to happen. Unfortunately this time, the PTO site failed to upload TiVo's 9/9/10 amended response to the PTO Final Rejection so we don't know the detail of it. However E* as the third party reexamination requester should have a copy of it.

Which leads me to speculate, and this is pure speculation, there is a possibility that the PTO intentionally left this document out so TiVo and E* might get to iron out something between them. Personally I don't see E* and TiVo working out anything, but like the court, the PTO could be trying to get them to talk. There is no other explanation (unless it was a pure clerical error) why the PTO did not upload that TiVo's response.

But I am no lawyer, so maybe there is a perfect explanation why the PTO did not upload that doc, I am simply clueless


----------



## jacmyoung

BTW just took a close look at the PTO receipt file, it listed all the docs filed by TiVo, all uploaded by the PTO except three, one of them is the TiVo's response, 22 pages, the other two are two "...declaration by 3rd party", 14 pages and 7 pages respectively.

If the "3rd party" means E*, then both TiVo and E*'s critical filings might have not been uploaded by the PTO. I have not seen any "3rd party declarations" ever uploaded by the PTO during the course of this reexamination, but not uploading the 22-page TiVo's response was unusual.


----------



## jacmyoung

Oh well, just after I questioned why the above three documents were not uploaded, now suddenly they are available

A quick note, the "3rd party" does not refer to E*, rather the original Time Warping patent inventors/owners. Apparently they had transferred the patent ownership to TiVo, Inc. on 9/9/10, making them the "third party" who filed the two declarations in support of TiVo's response to the office action.

I thought linking E* to the "3rd party" was difficult because at this stage of the ex parte reexamination E* can only receive the on going filings but not to respond.


----------



## HiDefGator

After reading Tivo's response to the PTO it appears they are conceding nothing in this go round. Any thoughts on their odds of changing the PTO examiners' minds after it didn't work the first two tries? Is Tivo just trying to drag this out as long as they can?


----------



## jacmyoung

"HiDefGator" said:


> After reading Tivo's response to the PTO it appears they are conceding nothing in this go round. Any thoughts on their odds of changing the PTO examiners' minds after it didn't work the first two tries? Is Tivo just trying to drag this out as long as they can?


No crystal ball on the odds, but not surprising at all TiVo did not want to modify the claims to give E* an easy way out. Although based on what the PTO said and what TiVo said so far, it should be clear to the en banc panel the modified E* DVRs were no longer encroaching. I think even Judge Folsom knows it. Why do you think he continued to decline the request from both E* and TiVo to examine the 2nd and the 3rd new designs? The court is obligated to ensure no more infringement, not to continue to allow it to go on. Keep in mind TiVo wanted such determination too. More importantly, E* cannot do anything this time unless Judge Folsom approves it first.

I don't think TiVo was trying to drag it out at the PTO, as I said, this is not an easy thing for TiVo, it has to walk a very fine line in the responses to the PTO Actions.


----------



## Curtis52

HiDefGator said:


> After reading Tivo's response to the PTO it appears they are conceding nothing in this go round. Any thoughts on their odds of changing the PTO examiners' minds after it didn't work the first two tries? Is Tivo just trying to drag this out as long as they can?


If history repeats itself, TiVo will sail through this.

This is exactly the point in the sequence of events in the last reexamination where the claims went from rejected to blessed. Everything is proceeding apace.


----------



## jacmyoung

Curtis52 said:


> If history repeats itself, TiVo will sail through this.
> 
> This is exactly the point in the sequence of events in the last reexamination where the claims went from rejected to blessed. Everything is proceeding apace.


Last time the software claims were not even rejected in the first PTO office action, only the hardware claims, then reversed in the second office action. However this time it is not to say TiVo cannot overcome the rejection, but the point has never been the rejection, rather the PTO's clarification of the interpretation of several key claim terms, which supported E*'s argument that the modified DVRs no longer infringed.

Last time there was never an en banc review, E*'s en banc request was denied without a poll.

As far as Judge Rader, in and around the time of the E* appeal ruling, he had behaved similarly in one or two other appeals rulings, being the dissenting judge, but only in the TiVo case did he initiate the en banc polling. In at least one other case the losing party's en banc was denied without him making a sound even though he forcefully dissented.

Clearly he felt compelled to correct this one.

The history did not repeat itself already. That is not to say E* may not lose this time.


----------



## Curtis52

TiVo's en banc brief discussed here.


----------



## HiDefGator

Now we just need E*'s brief


----------



## HobbyTalk

Interesting article. Even this quote:


> TiVo, like all others, is probably a defendant more than they are a plaintiff, particularly when you factor into the equation the numerous threat letters they undoubtedly receive on a daily basis demanding that dubiously related patents be licensed.


Wonder where he got this idea as I have not read anywhere that TiVo has gotten many threatening letters much less many daily. Could there be some bias here?


----------



## Curtis52

HobbyTalk said:


> Interesting article. Even this quote:
> 
> Wonder where he got this idea as I have not read anywhere that TiVo has gotten many threatening letters much less many daily. Could there be some bias here?


Such things are rarely made public. As a patent attorney he is in a good position to know about the frequency of threatening letters to companies in general.


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## jacmyoung

HiDefGator said:


> Now we just need E*'s brief


If there is something earth shaking, you let me know. After all the readings for over two years, I am not so sure I want to read the lawyers' rambling on neither side anymore. If they have their clients' best interest in mind, they need to convince both to work together. Both companies can really use some help, court fight is not one of them.


----------



## jacmyoung

HiDefGator said:


> Any thoughts on their odds of changing the PTO examiners' minds...


After sleeping on that question for a while, I have some comment.

Had the TiVo v. E* been the only issue today, if I am correct and the PTO examiners also think they had done enough to clarify the several key claim terms which landed support for E*'s non-infringement contention, the odds would be in favor of TiVo to overcome the rejection.

The complicating factor is, TiVo has several other cases against ATT/Verizon/MSFT based on the same core claims. Who knows how much weight of those cases are on the minds of the examiners.

This much we know, the examiners can say whatever they want to steer the outcome in one direction, because as the court has held repeatedly, and emphasizing this in the recent years, the PTO is under a much lower standard of proof when it comes to invalidating claims in reexaminations.


----------



## jacmyoung

Even though I don't feel like reading those briefs, I must admit I do check out the tivo investor village site. It is very interesting to see the investors' reaction to any development in this case and the PTO proceedings.

I just caught a well prepared summary by tivonomo, he no longer posts here, but I said before I had fun with our exchanges while he was here and appreciated his knowledge. Below is his summary of TiVo's responses to the four Qs raised by the en banc panel. Assume his summary is accurate, I could not help but comment on those TiVo's responses:



> TiVo's responses to the 4 en banc questions
> The following are the original en banc questions and TiVo's short answers to each. Looking at each of these individually, I feel very strongly about the positions TiVo has taken. Since this is the core of the en banc, I thought this would be useful to share.
> 
> Q1: Following a finding of infringement by an accused device at trial, under what circumstances is it proper for a district court to determine infringement by a newly accused device through contempt proceedings rather than through new infringement proceedings? What burden of proof is required to establish that a contempt proceeding is proper?
> 
> A1: A court may use enforcement proceedings to assess whether a
> 
> modified product continues to infringe unless the modifications raise "substantial
> 
> open issues of infringement." *Because that determination is a largely discretionary
> 
> procedural question, it carries no separate burden of proof-although the district
> 
> court in this case found that TiVo would have carried any such burden by clear and
> 
> convincing evidence*.


According to Judge Rader, not only did TiVo clearly fail on the "burden by clear and convincing evidence" they failed on the lesser "discretionary" burden of proof.



> Q2: How does "fair ground of doubt as to the wrongfulness of the defendant's conduct" compare with the "more than colorable differences" or "substantial open issues of infringement" tests in evaluating the newly accused device against the adjudged infringing device? See Cal. Artificial Stone Paving Co. v. Molitor, 113 U.S. 609, 618 (1885); KSM Fastening Sys., Inc. v. H.A. Jones Co., 776 F.2d 1522, 1532 (Fed. Cir. 1985).
> 
> A2: The "substantial open issues of infringement" standard, which
> 
> properly focuses the "colorable differences" standard, is consistent with the "fair
> 
> ground of doubt" and "really a doubtful question" language of California Artificial
> 
> Stone Paving Co. v. Molitor, 113 U.S. 609 (1885).


Not much to talk about there.



> Q3: Where a contempt proceeding is proper, (1) what burden of proof is on the patentee to show that the newly accused device infringes (see KSM, 776 F.2d at 1524) and (2) what weight should be given to the infringer's efforts to design around the patent and its reasonable and good faith belief of noninfringement by the new device, for a finding of contempt?
> 
> A3: The factual predicates for violation of an injunction must be proven
> 
> by clear and convincing evidence. No weight should be given to the infringer's
> 
> good faith or any "reasonable efforts" to comply. *Where a violation is found,
> 
> those factors may be considered in fashioning an equitable remedy.*


By cutting the damages by half or what?



> Q4: Is it proper for a district court to hold an enjoined party in contempt where there is a substantial question as to whether the injunction is ambiguous in scope?
> 
> A4: A district court may enforce an injunction so long as the enjoined
> 
> party had fair notice of what was required or prohibited. *If there is ambiguity in an
> 
> injunction (which there was not here)* [oh really?, if so why the en banc panel asked this question? To fill more pages?],* the enjoined party must seek timely
> 
> clarification. If it does not, it assumes the risk that any ambiguity will later be
> 
> resolved against it*.


Wow! Let's not forget, as Judge Rader pointed out, the ambiguity in this case was caused by TiVo when they changed their interpretation of their own injunction. When TiVo submitted the injunction to the court in 2006, it told everyone it was to stop the infringement, "no more, no less!" It also went a little further in its instruction to E*, telling E* it could comply with the injunction by disabling the "infringing DVR functions" through a satellite download. So now it is E*'s job to clarify any ambiguity? What ambiguity? There was no ambiguity until 2008 after TiVo changed its tone, insisting even if E* indeed disabled the infringing DVR functions, it would not be enough, any DVR functions, infringing or not, are a no no. And at that time, TiVo correctly pointed out E* had already missed its opportunity to seek clarification, how convenient.

But that is not even the point. It is a long held standard, a standard reflects the core belief of this nation, that the government must risk having an ambiguous order resolved against it, not the one subject to the order. This is not Russia or China. Even Greg did not try to go that far


----------



## jacmyoung

To follow up, this case we get to see how a seasoned and skillful judge at work.

E* has consistently argued that the court simply cannot make a ruling resulting not allowing a legitimate design around. Of course this is correct, but the problem is, the way E* carried out the design around in such a convert fashion does not land any sympathy for them. If the appeals judges go by this point alone, they will have to basically call out Judge Folsom. None of them wanted that naturally.

So what a court to do? Well Judge Rader was the only one that figured out how. No one else did, not Judge Folsom, not even E*'s lawyers.

It turned out TiVo made inconsistent statements then and now, making the order ambiguous for anyone who tried to follow it. Once the judges realized that, it became a much easier call.

Why is that the en banc order came so quickly, caught everyone by surprise? Judge Rader likely had a very easy sell after making the above argument to the other judges.


----------



## James Long

jacmyoung said:


> E* has consistently argued that the court simply cannot make a ruling resulting not allowing a legitimate design around. Of course this is correct, but the problem is, the way E* carried out the design around in such a convert fashion does not land any sympathy for them. If the appeals judges go by this point alone, they will have to basically call out Judge Folsom. None of them wanted that naturally.


There is a problem with the injunction DISH's design around. The injunction gave no guidance as to how to handle a design around. It only contained the blunt rule that the infringing devices no longer function as DVRs. So when DISH came up with a design around it wasn't really done in a covert fashion ... it was done as any development is done - protecting trade secrets. (Or at least how a wise company handles development.)

While not being brought in to the loop may have annoyed Judge Folsom what he should have focused on was the actual violation of his injunction - not his annoyance over DISH not informing him of an act that was not covered by the injunction.

Years later and the injunction still hasn't been followed to the letter of the injunction and the courts are still haggling over the question of if it should be followed. Tivo thinks this will all be cleared up by February? I doubt it.

Even if Tivo "wins" there will be appeals long into next year. It isn't over yet.


----------



## jacmyoung

James Long said:


> ...Years later and the injunction still hasn't been followed to the letter of the injunction ...


That is debatable, I know a lot of people think that way, rightfully so by the simple reading of it. But if such opinion is shared by the en banc panel, they would not have posted the 4th question, which is based on the premise that the injunction was ambiguous. Therefore you cannot honestly insist that you know exactly what the letter of the injunction was, else you are basically saying the en banc panel did not know what they were talking about.

The ambiguity is not so much from the letter of the injunction itself, rather what TiVo said what the order meant back in 2006. TiVo said the purpose of its proposed injunction was to stop infringement, "no more, no less." I think most of us know very well what the "no more, no less" means.

Additionally in instructing the court and E* how to comply with its own proposed injunction, TiVo for the record stated that E* could disable "the infringing DVR functions" through a satellite download. TiVo did not said any DVR functions, infringing or not, must be disabled, it only said "the infringing DVR functions" must be disabled.

So what we have is a TiVo proposed injunction, unchanged, word for word issued by the court, and TiVo's own statements with regard to what it really meant, back in 2006. Now TiVo explains the exact injunction in a different way, changing "the infringing DVR functions" to "any DVR functions, even if non-infringing," "all means all" so to speak.

TiVo should have said so in 2006 then, not two years later. But of course TiVo knew back then they could not have said "all means all" because had they done so, E* would have surely appealed, and as Judge Rader had said, would have the appeals panel taken the injunction out "with a stroke of the pen."

One can say TiVo did it covertly as well, it was a masterpiece in fact Very few people saw it, even E* did not see it, but Judge Rader did.

The bottom line? TiVo is not this innocent victim as many want to think, while E*/Charlie has been stubborn and reckless, TiVo was not that much better, they deserve each other, which is in part why I said they should work together


----------



## Lord Vader

TIVO has not been stubborn and reckless; DISH has. Charlie doesn't give a rat's patootie about anything or anyone else but himself, which is why he doesn't care how many patents he has to violate.


----------



## James Long

jacmyoung said:


> Therefore you cannot honestly insist that you know exactly what the letter of the injunction was, else you are basically saying the en banc panel did not know what they were talking about.


I can HONESTLY give an opinion on the injunction. The en banc panel does not control me and I disagree with your opinion of their opinion.


----------



## jacmyoung

James Long said:


> I disagree with your opinion of their opinion.


So what is your opinion of their opinion?


----------



## jacmyoung

Lord Vader said:


> TIVO has not been stubborn and reckless; DISH has. Charlie doesn't give a rat's patootie about anything or anyone else but himself, which is why he doesn't care how many patents he has to violate.


I did not say TiVo was equally stubborn and reckless, nor did I imply being stubborn and reckless are always bad.

TiVo may not be stubborn and reckless, yet their "covert measure" might have worked in the past, but might not work in the future. I am not saying such "covert measure" is all bad either.

Being stubborn, reckless like Charlie, and being inconsistent like TiVo, sometimes might be necessary in this dog eat dog world. Charlie did not become a billionaire, TiVo did not become a household verb because of mere luck. I say they both should put their talent to good use.

Neither of them has proven to be particularly talented in court.


----------



## HobbyTalk

Curtis52 said:


> Such things are rarely made public. As a patent attorney he is in a good position to know about the frequency of threatening letters to companies in general.


While I agree that they are rarely made public, if his assumptions are right TiVo has received 1000's of such threats over the past 5 years. 250 work days x 3 letters per day x 5 years = 3750 letters. I find it hard to believe that out of close to 4000 such letters being sent that not one company sending these letters has not released such information publicly. If nothing else for investor information or just to pump and dump their stock. Nor has any of them been picked up by any of the 1000's of on-line stock blogs and forums. If only 0.1% were reported on we would have heard of 37 of them.


----------



## jacmyoung

HobbyTalk said:


> While I agree that they are rarely made public, if his assumptions are right TiVo has received 1000's of such threats over the past 5 years. 250 work days x 3 letters per day x 5 years = 3750 letters. I find it hard to believe that out of close to 4000 such letters being sent that not one company sending these letters has not released such information publicly. If nothing else for investor information or just to pump and dump their stock. Nor has any of them been picked up by any of the 1000's of on-line stock blogs and forums. If only 0.1% were reported on we would have heard of 37 of them.


I did not quite understand your previous post, now I think I know and let me guess, that attorney was thinking a situation likely happening to a company on the very top of the fortune 100 list, then freely applied the situation as if TiVo were one of these companies


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## HobbyTalk

jacmyoung said:


> I did not quite understand your previous post, now I think I know and let me guess, that attorney was thinking a situation likely happening to a company on the very top of the fortune 100 list, then freely applied the situation as if TiVo were one of these companies


The author of that article (quoted below) stated that TiVo would have gotten numerous threatening letters daily for copyright infringement. I just found it hard to believe that if they have gotten 1000's of them over the years that none of them were ever discovered or made public.



> TiVo, like all others, is probably a defendant more than they are a plaintiff, particularly when you factor into the equation the numerous threat letters they undoubtedly receive on a daily basis demanding that dubiously related patents be licensed.


----------



## HiDefGator

Echostar's en banc brief and several amicus filings are available over at IV


----------



## jacmyoung

HiDefGator said:


> Echostar's en banc brief and several amicus filings are available over at IV


Can you give us a list of parties that filed all the briefs? Indicating those that clearly are for or against one party in this case, and those that supported neither side.

I do want to caution that the two earliest amicus briefs, one by Verizon and one by the FTC, both claimed to support neither party, after we read them, them both appeared to support E*'s positions. So the parties' own claims may not be credible, some of them might just not want to declare which side they were on.

As for reading them, I'll pass for now.


----------



## HiDefGator

None of the amicus briefs I posted are from Verizon, T, or Microsoft. 

I think 3 are pro dish, 3 pro Tivo, and one claims no support for either side. These are all responding to the en banc questions. 

The Dish brief for the en banc is worth reading. It's there too.


----------



## phrelin

HiDefGator said:


> Echostar's en banc brief and several amicus filings are available over at IV


Could you provide a link?


----------



## jacmyoung

I did scan through E*’s brief to see if there was anything new, which there was not many, but I could have missed a thing or two.

I did catch one thing which is naturally new because the argument was based on Judge Rader’s opinion, which was new.

The point made by E* was interesting. We know the appeals court had established several standards to determine if a contempt proceeding is appropriate or not in a patent case. One of these is called “fair ground for doubt.”

If a “fair ground for doubt” is established, a contempt proceeding is not appropriate. What’s important is, this standard does not require that a doubt is established, only a “fair ground” on which a doubt may stand on, regardless if the doubt can ultimately be proven.

Therefore even if TiVo is convinced that there is absolutely on doubt in their mind E* was in contempt, E* did not even have to prove TiVo wrong to avoid a contempt. E* only needs to point out such a “fair ground” exists to potentially lay their doubts on.

As such, the “fair ground” has clearly been established in this case, that ground is that a member of this appeals court (Chief Judge Rader) had supported E*’s positions 100%. Regardless which side you agree and how strongly you agree or disagree, once such “fair ground” exists, the contempt proceeding is no longer appropriate.

The rest of arguments are just to fill the pages and lawyer’s billable hours.

As far as the argument that E* did not notify the court back then when they were attempting the design around, because E* was afraid the court would deny it, the counter argument is simple, just take a look at what is happening now.

The District court issued a new order that E* must notify and obtain approval, E* followed and tried to notify and seek approval repeatedly, what did they get? The court repeatedly declined to answer such requests, allegedly the court had no time.

How can you blame E* for not notifying the court back then when such notification was not even required, when you realize it is evident now the court is not at all motivated to respond to any such notifications even if you repeatedly make them?

Do any of you not see the hypocrisy in this BS?


----------



## dgordo

Its always tough to get a court to adopt a new standard, which is what Dish is seeking with the fair ground for doubt standard. It will be interesting to see what the CAFC thinks about that. Judge Rader is obviously already on board.



jacmyoung said:


> Do any of you not see the hypocrisy in this BS?


To be fair, Dish had been found in contempt and pissed off a judge. I wouldn't expect him to do any favors at this point. Before this, it would be seen by the judge as giving him the control he so desires. Judges have huge egos and right or wrong you need to feed them.


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## HiDefGator

http://www.mediafire.com/file/5bh911mbv2fmbqv/DishEnbanc0001.pdf


----------



## jacmyoung

dgordo said:


> Its always tough to get a court to adopt a new standard, which is what Dish is seeking with the fair ground for doubt standard.


E* is not seeking a new standard, the "fair ground for doubt" standard is as old as it gets. If anything TiVo is trying to make history. For all the patent cases I have read so far, not one party had been ultimately found in contempt when there was lack of infringement.

On the other hand, there are several cases where infringement was proven beyond doubt, yet ultimately the contempt rulings were overturned on technicality.


----------



## dgordo

jacmyoung said:


> E* is not seeking a new standard, the "fair ground for doubt" standard is as old as it gets.


Of course they are, they even admit such several times in their brief and their General Counsel said so in the last conference call.

"We also think we're on the right side of the law on this one as you will see our primary argument is that the federal circuit should take this opportunity to really bring the law of contempt for patent cases in line with the law of contempt generally which means the test should be quite simply that in the fairground of doubt as to the wrongfulness defendant's conduct and if there isn't, then contempt which is a pretty extreme sanctions should not be used and you should simply go to a new trial as to whether the redesign device infringes."

I don't mean to imply that they need this to win but obviously this is a lesser standard than has been used in contempt for patent cases previously by the CAFC.


----------



## jacmyoung

dgordo said:


> but obviously this is a lesser standard than has been used in contempt for patent cases previously by the CAFC.


Compared to what?

As far as I could find, "fair ground for doubt" had been an old time rule to determine whether contempt was appropriate or not, intertwined with the "colorable difference" rule. KSM adopted the "colorable difference" rule as the first step of the two-prong approach. It could very well have used the "fair ground for doubt" rule instead, one is no lesser than the other.

As it stands now, once it is determined the difference is "more than colorable," i.e. fair ground for doubt is established, the contempt proceeding is no longer appropriate.

What I think E* is asking is, don't make a contempt proceeding in a patent case a two distinct proceedings, where if you prove the first step, then no contempt proceeding, if you fail on the first, then the contempt proceeding starts there, then if you manage to defeat the second step, you are still not in contempt, even if the contempt proceeding was appropriate. E* suggests the contempt proceeding in a patent case should be similar to a general contempt proceeding, when a party brings up a contempt motion, we are in a contempt proceeding, period. Then use the two-prong test to determine if contempt or not.

KSM sought to set the contempt proceeding in a patent case apart from a general contempt proceeding, in that if the first step is not met, a contempt proceeding does not even exist. It does complicate the issue.

I agree with you, E* does not need such suggestion to win. What I think E* is doing is, now that the en banc was granted, why not make it look like E* is trying to make history, when in fact there is no history to be made.


----------



## dgordo

Compared to how KSM is applied now using just colorable difference. Fair ground of doubt has been used in other circuits but the CAFC hasn't traditionally used the standard as E says in their brief: "The "fair ground of doubt" test creates breathing room around the "more than colorably different" test-if there is a fair ground of doubt as to whether the test is satisfied, contempt is inappropriate."

It is sort of a new way of avoiding contempt. "this Court should recognize a third and independent way to raise a fair ground of doubt, which also precludes contempt here: Although a pure heart alone is not enough to overcome contempt, contempt is not proper when a defendant undertook diligent, good-faith efforts to comply with an injunction and had an objectively reasonable basis for believing that it was in compliance. Under such circumstances, there is necessarily a fair ground of doubt as to whether the defendant violated the injunction, or at least as to whether the defendant acted wrongfully."

Kind of like we may have violated the injunction but we didn't meant to.


----------



## jacmyoung

dgordo said:


> Compared to how KSM is applied now using just colorable difference. Fair ground of doubt has been used in other circuits but the CAFC hasn't traditionally used the standard as E says in their brief: "The "fair ground of doubt" test creates breathing room around the "more than colorably different" test-if there is a fair ground of doubt as to whether the test is satisfied, contempt is inappropriate."
> 
> It is sort of a new way of avoiding contempt. "this Court should recognize a third and independent way to raise a fair ground of doubt, which also precludes contempt here: Although a pure heart alone is not enough to overcome contempt, contempt is not proper when a defendant undertook diligent, good-faith efforts to comply with an injunction and had an objectively reasonable basis for believing that it was in compliance. Under such circumstances, there is necessarily a fair ground of doubt as to whether the defendant violated the injunction, or at least as to whether the defendant acted wrongfully."
> 
> Kind of like we may have violated the injunction but we didn't meant to.


Again I don't think what E* described of a "3rd and indepedent way" is new, it already exists, it is called "colorable difference test" in the patent area. The appeals court adopted the colorable difference test because it is more specific to the patent cases, when in a general case the "fair ground for doubt" was used. Prior to KSM, both the "colorable difference" and the "fair ground for doubt" were loosely used by various district courts. KSM unified the standards.

Because good faith effort and an objective reason to believe it is in compliance, requires good faith effort and an objective reason to demonstrate more than colorable difference. If it can't even demonstrate more than colorable difference, then it cannot possibly argue it has done so in good faith effort.

More than colorable difference does not prove non-infringement, therefore the most it does is to establish a fair ground for the doubt whether infringement still exists or not.


----------



## peak_reception

When visiting 'The Fairground of Doubt,' be sure to enter the House of Mirrors. That's what this case has become.


----------



## jacmyoung

peak_reception said:


> When visiting 'The Fairground of Doubt,' be sure to enter the House of Mirrors. That's what this case has become.


I think you might be very surprised after reading the en banc ruling, one way or the other, they might end up making it the "house that was never there."


----------



## dgordo

I think the CAFC views it is a different test otherwise why ask the question?

"How does “fair ground of doubt as to the wrongfulness of the defendant’s conduct” compare with the “more than colorable differences” or “substantial open issues of infringement” tests in evaluating the newly accused device against the adjudged infringing device? See Cal. Artificial Stone Paving Co. v. Molitor, 113 U.S. 609, 618 (1885); KSM Fastening Sys., Inc. v. H.A. Jones Co., 776 F.2d 1522, 1532 (Fed. Cir. 1985). "


----------



## jacmyoung

dgordo said:


> I think the CAFC views it is a different test otherwise why ask the question?
> 
> "How does "fair ground of doubt as to the wrongfulness of the defendant's conduct" compare with the "more than colorable differences" or "substantial open issues of infringement" tests in evaluating the newly accused device against the adjudged infringing device? See Cal. Artificial Stone Paving Co. v. Molitor, 113 U.S. 609, 618 (1885); KSM Fastening Sys., Inc. v. H.A. Jones Co., 776 F.2d 1522, 1532 (Fed. Cir. 1985). "


Good point but I think the en banc panel is BSing Just like the 4th question, which take the premise that the injunction is ambiguous, so what do you do with an ambiguous injunction? Should there be a new standard where in some cases it is good enough, others not?

Of course not.


----------



## James Long

jacmyoung said:


> Good point but I think the en banc panel is BSing


If you think a court of that level "BSs" when asking questions you probably don't have the appropriate amount of respect for the system.


----------



## phrelin

HiDefGator said:


> http://www.mediafire.com/file/5bh911mbv2fmbqv/DishEnbanc0001.pdf


Thanks, I appreciate the link.

After reading the E* filing, my opinion about one thing changed.

There seems to be an issue or two here that could get the Supremes to take up an appeal by E*, if the en banc goes against E* with at least one well-worded dissent (which might be likely).

I previously believed that if E* lost this time, they would be unable to create interest on the part of the high court.

And delay is the name of Charlie's game.


----------



## jacmyoung

phrelin said:


> Thanks, I appreciate the link.
> 
> After reading the E* filing, my opinion about one thing changed.
> 
> There seems to be an issue or two here that could get the Supremes to take up an appeal by E*, if the en banc goes against E* with at least one well-worded dissent (which might be likely).
> 
> I previously believed that if E* lost this time, they would be unable to create interest on the part of the high court.
> 
> And delay is the name of Charlie's game.


What about an appeal to the Supremes by TiVo? Never gave it a thought?


----------



## phrelin

jacmyoung said:


> What about an appeal to the Supremes by TiVo? Never gave it a thought?


Just more delay which works in Charlie's favor.

This go around brought the ATT/Verizon/MSFT triad into play which, of course, is not really relevant since they are such small players in the American economy and so all the judges are unaware of those pending cases.

If this case drags out long enough there won't be anyone in TV hardware who is not in, or has not been in, a dispute with TiVo. At some point it will become bad politics at higher altitudes where right and wrong aren't considered absolute, ever, in any situation. and all vision is peripheral.

But then the Supremes are immune to economic politics and what is the right thing to do is so very clear it can be determined by a 5-4 vote.


----------



## jacmyoung

phrelin said:


> Just more delay which works in Charlie's favor.
> 
> This go around brought the ATT/Verizon/MSFT triad into play which, of course, is not really relevant since they are such small players in the American economy and so all the judges are unaware of those pending cases.
> 
> If this case drags out long enough there won't be anyone in TV hardware who is not in, or has not been in, a dispute with TiVo. At some point it will become bad politics at higher altitudes where right and wrong aren't considered absolute, ever, in any situation. and all vision is peripheral.
> 
> But then the Supremes are immune to economic politics and what is the right thing to do is so very clear it can be determined by a 5-4 vote.


As long as the CAFC does not try to make history, the Supreme Court will not review it. And after being slapped a few times in the recent years by the Supremes, the CAFC will likely not try to make history.


----------



## Curtis52

There is a new status notice on the USPTO site:

"Reexam Terminated -- Notice of Intent to Issue a Reexamination Certificate Mailed"


----------



## Curtis0620

Curtis52 said:


> There is a new status notice on the USPTO site:
> 
> "Reexam Terminated -- Notice of Intent to Issue a Reexamination Certificate Mailed"


So does this mean that the Patent is valid?


----------



## Curtis52

TiVo Statement on Decision by United States Patent and Trademark Office

ALVISO, CA -- (Marketwire) -- 10/06/2010 -- TiVo Inc. (NASDAQ: TIVO), the creator of and a leader in advanced television services including digital video recorders (DVRs) for consumers, content distributors and consumer electronics manufacturers, offered the following statement on the United States Patent and Trademark Office (PTO) decision.

"We are pleased that the United States Patent and Trademark Office has reaffirmed the validity of all claims of the Time Warp Patent at issue in the second reexamination of the patent at the request of EchoStar. This decision by the PTO is final and not appealable by EchoStar. Today's decision further validates our IP and brings us closer to ending EchoStar's ongoing infringement. Moreover, we remain confident that the United States Court of Appeals for the Federal Circuit will uphold and enforce an injunction against EchoStar's ongoing willful infringement of the Time Warp Patent."


----------



## jacmyoung

Curtis0620 said:


> So does this mean that the Patent is valid?


Yes, based on both the PTO and TiVo's clarifications of the key claim terms during the reexamination.

The two key terms clarified by the PTO and TiVo are:

1. Parsing audio and video data
2. Automatic flow control

While the PTO defined 1. as detecting start codes and building an index table..., TiVo did not dispute such term, the focus was on 2.

Personally I don't know if the TiVo's clarification of 2. would do much to help E*, but the definition of 1. by the PTO clearly supports E*'s contention that the modifed DVRs no longer infringed the software claims.

I think this is part of the reasons why most of the latest arguments before the en banc panel is whether E* violated the injunction even if the modified DVRs no longer infringed. E* got the best out of this reexamination, even though a final invalidation would have been better.

Also with the latest clarification by TiVo, personally I think it would be very difficult to go after Verizon/ATT/MSFT on the same theories. The term "automatic flow control" was narrowed down by TiVo to the point that while it succeeded in overcoming the rejection, it also made this term so unusual an art it would be nearly impossible to map other manufactured DVR technologies on to it.


----------



## Greg Bimson

Wow. And if there aren't any gotchas in that re-exam, any argument about it is a completely empty discussion.


----------



## Greg Bimson

jacmyoung said:


> Personally I don't know if the TiVo's clarification of 2. would do much to help E*, but the definition of 1. by the PTO clearly supports E*'s contention that the modifed modified DVRs no longer infringed the software claims.


The problem here is the definition by the court. Just because there was a re-exam doesn't change the prosecution history of the patent. The moment the trial was final through the appeals process, infringement of that step was simply an analysis. Just because the PTO has looked at that part of the patent again doesn't change the court's definition.


----------



## Curtis52

Parsing is a fairly broad term. In one academic exercise the patent office may define it to mean a specific type of analysis to compare with another patent's more specific type of analysis. In another case, the patent office might define it to mean an entirely different type of parsing to more nearly compare TiVo's patent to that patent. The possibilities are endless.


----------



## jacmyoung

Greg Bimson said:


> Just because there was a re-exam doesn't change the prosecution history of the patent.


Reexaminations are part of the patent prosecution history.

Case and point, had TiVo modified the claim terms to make the amended claims not substantially identical than the old ones, there would be no infringement liability from the past, even though the claims/patent are still valid and in force. If your theory is correct, this part of the law must not stand.

An important part of the reexamination is to further clarify the claim terms, for example now the PTO made it clear that the term "parsing audio and video data" means "detecting start codes and build an index table of them..." such clarification is now part of the patent prosecution history, which the court must rely on in making its decision.


----------



## jacmyoung

Curtis52 said:


> Parsing is a fairly broad term. In one academic exercise the patent office may define it to mean a specific type of analysis to compare with another patent's more specific type of analysis. In another case, the patent office might define it to mean an entirely different type of parsing to more nearly compare TiVo's patent to that patent. The possibilities are endless.


Maybe, just in this case, the PTO took a position about that term squarely in E*'s corner. The question is, should the court ignore such PTO's position? If so, what is PTO for? The court might just grant the patent, then enforce it at the same time. We can save a lot of tax dollars for not having a PTO you know.


----------



## tivonomo

jacmyoung said:


> Maybe, just in this case, the PTO took a position about that term squarely in E*'s corner. The question is, should the court ignore such PTO's position? If so, what is PTO for? The court might just grant the patent, then enforce it at the same time. We can save a lot of tax dollars for not having a PTO you know.


Maybe you should start looking for a precedent and let Folsom know that the claim construction in his court was all a waste of time.


----------



## jacmyoung

tivonomo said:


> Maybe you should start looking for a precedent and let Folsom know that the claim construction in his court was all a waste of time.


Never said his claim constructions were all waste of time, however I did demonstrate that he himself departed from his own claim construction on that particular term in his contempt ruling, but I will not waste my time to go back and dig up those posts.

My point is, the questions asked by the en banc panel, while the 4th one is the most obvious, in reality all four of them take the position that the E* modified DVRs were likely no longer infringing. The reason is, E* themselves time after time agreed, if their modified DVRs still clearly infringed, they would be in contempt.

Based on such clear position, the en banc panel's questions would have been meaningless had they agreed with TiVo that the modified DVRs clearly still infringed due to E*'s own concession. The court does not waste time argue on issues both sides have already conceded to.


----------



## harsh

Curtis52 said:


> "Reexam Terminated -- Notice of Intent to Issue a Reexamination Certificate Mailed"


Odd choice of terms using the word "terminated" versus "completed". Sounds awfully abrupt; as if somebody suddenly halted the proceedings as opposed to letting it running its course.


----------



## FTA Michael

TiVo's press release:

TiVo Statement on Decision by United States Patent and Trademark Office

ALVISO, CA -- (Marketwire) -- 10/06/2010 -- TiVo Inc. (NASDAQ: TIVO), the creator of and a leader in advanced television services including digital video recorders (DVRs) for consumers, content distributors and consumer electronics manufacturers, offered the following statement on the United States Patent and Trademark Office (PTO) decision.

"We are pleased that the United States Patent and Trademark Office has reaffirmed the validity of all claims of the Time Warp Patent at issue in the second reexamination of the patent at the request of EchoStar. This decision by the PTO is final and not appealable by EchoStar. Today's decision further validates our IP and brings us closer to ending EchoStar's ongoing infringement. Moreover, we remain confident that the United States Court of Appeals for the Federal Circuit will uphold and enforce an injunction against EchoStar's ongoing willful infringement of the Time Warp Patent."

http://pr.tivo.com/easyir/customrel...ersion=live&prid=670704&releasejsp=custom_150

PS, A Radio Business Report article says that Dish had no immediate comment. http://www.rbr.com/tv-cable/28071.html


----------



## Hoosier205

Any estimates on how much this has cost Dish so far?


----------



## dgordo

Hoosier205 said:


> Any estimates on how much this has cost Dish so far?


The court awarded damages are easy to figure. Despite the lack of results in court, DISH has expensive lawyers, assume an average of $250 per hour. I would guess between the trial, all the appeals, the PTO work, etc that 5000 billable hours would not be a stretch and may even be low.


----------



## FarmerBob

Charlie should have bought TiVo last Spring when they were ripe for a take over. Now once again we're going to pay for his ineptitude.


----------



## phrelin

Actually, IMHO Charlie is only attempting to delay as long as possible. The PTO stuff was an interesting sideshow that offered some possibility for confusing everything. Now for the en banc decision followed by an appeal to the Supreme Court.

If the en banc decision is split and includes two well-worded opinions, the Supreme Court might actually take it up which could delay a final decision another however many months.

Regarding costs, I'll point out again that in February Dish instituted the following pricing policy:








As we know, only certain DVR models are covered by this case in a listing. An old listed 508 (solo DVR) costs the user $10 a month. An unlisted ViP612 costs the user $10 a month. Dish has almost no costs associated with an old 508 - they are fully depreciated. Dish could pay attorneys and TiVo $9 a month and still be covering all the costs for the 508. And when the 508 goes belly up, most frequently it will be replaced by an unlisted box.

Costs are not relevant to Charlie, time is. He just needs time to replace as many of the listed boxes as possible before a final decision.

If and when all the listed boxes are replaced TiVo will get no ongoing revenue from the jury decision. At that point, was it much of a win for TiVo?


----------



## James Long

Hoosier205 said:


> Any estimates on how much this has cost Dish so far?


Tivo litigation accrual: $454.4 million at the end of June 2010



FarmerBob said:


> Charlie should have bought TiVo last Spring when they were ripe for a take over. Now once again we're going to pay for his ineptitude.


Tivo has a poison pill in place that makes taking them over very expensive.


----------



## jacmyoung

"phrelin" said:


> Actually, IMHO Charlie is only attempting to delay as long as possible. The PTO stuff was an interesting sideshow that offered some possibility for confusing everything. Now for the en banc decision followed by an appeal to the Supreme Court.
> 
> If the en banc decision is split and includes two well-worded opinions, the Supreme Court might actually take it up which could delay a final decision another however many months.
> 
> Regarding costs, I'll point out again that in February Dish instituted the following pricing policy:
> 
> As we know, only certain DVR models are covered by this case in a listing. An old listed 508 (solo DVR) costs the user $10 a month. An unlisted ViP612 costs the user $10 a month. Dish has almost no costs associated with an old 508 - they are fully depreciated. Dish could pay attorneys and TiVo $9 a month and still be covering all the costs for the 508. And when the 508 goes belly up, most frequently it will be replaced by an unlisted box.
> 
> Costs are not relevant to Charlie, time is. He just needs time to replace as many of the listed boxes as possible before a final decision.
> 
> If and when all the listed boxes are replaced TiVo will get no ongoing revenue from the jury decision. At that point, was it much of a win for TiVo?


This is of course to assume the DVR fees actually were there to pay fines. I don't think you had ever provided any proof to link the two.

But since no one is refuting your theory, I say it is not a bad one. If true, here is one more evidence Charlie will not quit the fight, he'd rather pay to fight to the end.

My question is, if he ends up not to pay TiVo, where do you think those fees will go? Another big dividend?


----------



## phrelin

jacmyoung said:


> My question is, if he ends up not to pay TiVo, where do you think those fees will go?


To Fox and Disney.:sure:


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## rocatman

For clarification, Dish argued during the contempt proceedings that its revised software no longer infringed because its software no longer parsed audio and video data. This is now defined as meaning detecting start codes and building an index table based on the revised Time Warp Patent that the PTO just accepted. In finding Dish in contempt, Judge Folsom used a much broader definition for parsing audio and video data. Now that contempt ruling is being reviewed by the appeals court.


----------



## Greg Bimson

rocatman said:


> For clarification, Dish argued during the contempt proceedings that its revised software no longer infringed because its software no longer parsed audio and video data. This is now defined as meaning detecting start codes and building an index table based on the revised Time Warp Patent that the PTO just accepted.


I thought the PTO simply accepted the claims as-is. More on that in a moment.


rocatman said:


> In finding Dish in contempt, Judge Folsom used a much broader definition for parsing audio and video data.


In finding Dish Network in contempt, Judge Folsom used the only definition available to him during the entire proceeding. Because "this is now defined as meaning start codes and building an index table" doesn't change that the day it was argued in front of Judge Folsom, it wasn't the case. It's like arguing that I got a speeding ticket for going 64 in a 55 two years ago and that stretch of road is now 65 mph. Just because a rule may have been changed doesn't mean those rules are applied retroactively.

And it still remains to be seen what the PTO accepted.


----------



## Curtis52

Greg Bimson said:


> Because "this is now defined as meaning start codes and building an index table" doesn't change that the day it was argued in front of Judge Folsom, .


Huh? The lowly USPTO examiner never said that is the only definition. He only used that definition for that particular narrow academic exercise. Anyway, he isn't the final arbiter of definitions.


----------



## Greg Bimson

That's why I said at the very end, "And it still remains to be seen what the PTO accepted." We don't know anything, yet, let alone if a definition has changed.


----------



## jacmyoung

"Greg Bimson" said:


> That's why I said at the very end, "And it still remains to be seen what the PTO accepted." We don't know anything, yet, let alone if a definition has changed.


No one is even saying the PTO has changed anything, only clarified a few claim terms. The term "parsing audio and video data" had never been defined, either by the PTO or by the court, until the PTO's recent actions.

The only term that has been defined by the court in the past was the term "parse," but not the "parsing audio and video data."

This is new, part of the "new theories" E* and Judge Rader were talking about, which require a new action to sort out, not in a summary contempt action.


----------



## Greg Bimson

jacmyoung said:


> No one is even saying the PTO has changed anything, only clarified a few claim terms. The term "parsing audio and video data" had never been defined, either by the PTO or by the court, until the PTO's recent actions.


Never defined? Really? Judge Folsom didn't hold Markman hearings prior to the trial?


jacmyoung said:


> The only term that has been defined by the court in the past was the term "parse," but not the "parsing audio and video data."


I think you need to look at the transcript of the Markman hearings.


----------



## jacmyoung

Greg Bimson said:


> Never defined? Really? Judge Folsom didn't hold Markman hearings prior to the trial?I think you need to look at the transcript of the Markman hearings.


He defined "parsing audio and video data from the broadcast data" as "analyzing audio and video data from the broadcast data." As I said the only term he actually defined was the word "parse."

Now we have on the PTO patent prosecution history record that the PTO defines the term "parsing audio and video data" to mean "detecting (i.e. analyzing) start codes and building an index table..."

As far as a highway analogy goes, the following will be a better one, a hypothetical one of course:

Say you are a truck driver, driving a red semi truck with a license plate "E* v. TiVO." You passed a scale on the highway without stopping, you then were stopped by a highway patrol car and cited for "driving a loaded truck without stopping at the scale." You were then warned "not to ever drive the same truck through the same scale without stopping next time, if you do you will be cited again."

The next day you drove the same truck pass the same scale without stopping, the same officer stopped you, gave you another citation. You go to the court and tell the judge, well I have no problem paying the first fine, but not the second, because the second time my truck was not loaded, and the law only requires a loaded truck to stop at the scale.


----------



## Greg Bimson

jacmyoung said:


> He defined "parsing audio and video data from the broadcast data" as "analyzing audio and video data from the broadcast data." As I said the only term he actually defined was the word "parse."


No, if you look at what you wrote, he defined the entire element of the step within the claim. "Parse" wasn't defined. "Parsing audio and video data" wasn't defined.


jacmyoung said:


> Now we have on the PTO patent prosecution history record that the PTO defines the term "parsing audio and video data" to mean "detecting (i.e. analyzing) start codes and building an index table..."


Do we? No one seems to be able to find it.


----------



## jacmyoung

"Greg Bimson" said:


> No, if you look at what you wrote, he defined the entire element of the step within the claim. "Parse" wasn't defined. "Parsing audio and video data" wasn't defined.


So you agree with me he did not define those terms?



> Do we? No one seems to be able to find it.


Go read the PTO's Office Actions, pay close attention to the "examiner's notes" with emphases added. No one is even questioning me on this one, only you.


----------



## Greg Bimson

Judge Folsom defined the only terms necessary. 

But even with the "examiner's notes", we only know that the re-exam was terminated, and we know nothing regarding the status of those notes.


----------



## Curtis52

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."


----------



## tivonomo

jacmyoung said:


> Go read the PTO's Office Actions, pay close attention to the "examiner's notes" with emphases added. No one is even questioning me on this one, only you.


Add me to the list of those questioning you.

The examiner was defining the term in relation to the other patents... essentially doing a mapping of what audio and video data are. "detecting (i.e. analyzing) start codes and building an index table..."

Meanwhile, Folsom did define audio and video data as exactly that. One could insert any source of audio and video data. The only requirement is that a parsing of the data be done. Start codes and index table parsing would be one example.

But again, you have to look at the examiner's notes in context of the combination of patents being discussed. It wouldn't make sense to look at a different definition of parsing data that was not relevant for the analysis. And of course, the only thing that _might_ matter to any judge going forward is that all claims were upheld as written. E* is bound by Folsom's broader definition for the remainder of this legal battle.


----------



## James Long

DISH needs a firm definition of what the patent means. Otherwise when they work around what they think it means (legally permitted to avoid infringement) they don't waste time and development just to be told that the definition changed from the last time they were in court.

Does this PTO action give DISH a clear definition? Did the court? Are the definitions equal or competing? Which definition does DISH have to satisfy?


----------



## tivonomo

James Long said:


> Does this PTO action give DISH a clear definition? Did the court? Are the definitions equal or competing? Which definition does DISH have to satisfy?


The court definied the patent claims and the jury determined infringement. Ultimately the examiner has no authority to have the final say on defining the patent because any decision he made could be appealed by TiVo. Meanwhile, the first trip to the CAFC finalized the definition of the claims that will be applied in the TiVo vs E* case through to its ultimate end.


----------



## jacmyoung

tivonomo said:


> The court definied the patent claims and the jury determined infringement. Ultimately the examiner has no authority to have the final say on defining the patent because any decision he made could be appealed by TiVo. Meanwhile, the first trip to the CAFC finalized the definition of the claims that will be applied in the TiVo vs E* case through to its ultimate end.


Of course the PTO examiner's own definition to be certified as part of this reexamination will be the governing definition. When the court does its own claim construction, it always look to the PTO definition first, if it cannot find it, it will fall back on other definitions.

Judge Folsom never actually defined the term "parsing audio and video data" because at the time, this particular term was not in contest, E* never argued on this term, E* knew their old DVRs did detect the start code and build index table..., so they went on argued on other terms. Of course they failed.

Now they have modified the DVRs, which removed the "detecting start code..." function, of course Judge Folsom did not care, because "detecting start codes..." was not addressed back then and he did not want to address them in his contempt proceedng either.

Fortunately after Judge Folsom's contempt ruling, the PTO took the liberty to define it for us during the reexamination, it is now going to be certified as part of the patent prosecution history, basically the PTO raised a new claim construction issue that was not addressed during the last trial. This is precisely why a new trial is needed because a new infringement theory has been raised.

The court claim construction cannot depart from what the PTO defines in its patent prosecution history record. After all, it is the PTO that decides what this patent is, and why it can be granted or recertified. The patent is issued by the PTO, not the court. The court only enforces the patent, in doing so obviously it has to rely on what the PTO says about the patent.


----------



## FarmerBob

James Long said:


> Tivo has a poison pill in place that makes taking them over very expensive.


And all that Charlie is and will go through with this is not expensive? $454.4 million. Chump Change. Oh that's right he's down a couple billion this year. And where did all that come from . . . oh yeh, *US!!!!!!*


----------



## jacmyoung

FarmerBob said:


> And all that Charlie is and will go through with this is not expensive? $454.4 million. Chump Change. Oh that's right he's down a couple billion this year. And where did all that come from . . . oh yeh, *US!!!!!!*


I have a feeling Charlie is not all that worried about that $454.4M or whatever it is, in most cases excessive sanctions and damages get rolled back substantially on appeal, but what is interesting is Charlie gets to use the court expenses as an excuse to set aside large sums of money, and also raise the DVR fees, if phrelin's theory is correct.

Let me put it this way, this case is a perfect justification to extract more money from various sources, even though he knows in the end not much will be needed


----------



## peak_reception

> DISH needs a firm definition of what the patent means. Otherwise when they work around what they think it means...


True, but reading DISH legal briefs regarding the injunction, one is left with the firm impression that what DISH _thinks_ something means is all that matters.

Such clever, self-serving solipsism has gotten them further (bought more time) than many of us ever imagined possible. I'd like to say that the day of reckoning is near, but in this case... :nono2:


----------



## jacmyoung

peak_reception said:


> True, but reading DISH legal briefs regarding the injunction, one is left with the firm impression that what DISH _thinks_ something means is all that matters.


Isn't that not the usual position you take with regard to your own opinions? Or anyone else for that matter.

Especially in the case of interpreting a court order, the law gives the one subject to the order the most favorable treatment, i.e. if there is even the slightest reason to agree with the defendant, the defendant shall prevail. This separates our legal system from those of Russia and China...

I remember reading one case a district judge felt so strongly that the defendants tricked the system, abused the proceedings, violated the intent of his order, in a way he could prove with clear evidence the defendants not only played words during the framing of the injunction, but used them to the fullest extent, yet after blasting the defendants in his entire opinion, at the very end he said because his order lacked the exact lauguages specifically aimed at this one specific act, he could not find a contempt. He noted a lesson learned next time to issue a more carefully worded injunction, and apologized to the plaintiffs.


----------



## peak_reception

jacmyoung said:


> Isn't that not the usual position you take with regard to your own opinions? Or anyone else for that matter.


 Not usually so smart in a court of law where what the judge says and means is paramount.

In this particular case though it's worked well for DISH... so far.



> I remember reading one case a district judge felt so strongly that the defendants tricked the system, abused the proceedings, violated the intent of his order, in a way he could prove with clear evidence the defendants not only played words during the framing of the injunction, but used them to the fullest extent, yet after blasting the defendants in his entire opinion, at the very end he said because his order lacked the exact lauguages specifically aimed at this one specific act, he could not find a contempt. He noted a lesson learned next time to issue a more carefully worded injunction, and apologized to the plaintiffs.


Which case was that?


----------



## tivonomo

jacmyoung said:


> Of course the PTO examiner's own definition to be certified as part of this reexamination will be the governing definition. When the court does its own claim construction, it always look to the PTO definition first, if it cannot find it, it will fall back on other definitions.


To say that "the PTO examiner's own definition to be certified as part of this reexamination will be the governing definition" is 100% incorrect.

Per Markman, the courts have sole discretion in determining claim construction after hearing all evidence. Sure, the PTO examiners notes may be used *as well as *TiVo's responses to help define the patent claims. Also, the judges consider expert testimony and any other evidence to define claims.

In this case, the claims construction has already been set. E* has no right to ask for them to be redefined in this case unless they get a brand new jury trial for whatever reason the CAFC can dream up. And even then, it is doubtful that E* would succeed in redefining the terms in Folsom's court. Folsom has already heard all of the testimony from all sides on these claims and one patent examiners opinion is rather meaningless.


----------



## Hoosier205

Either way...this needs to end. Let's get a final resolution and allow the court to move on to other matters. Someone was wrong. Pay up.


----------



## jacmyoung

Hoosier205 said:


> Someone was wrong. Pay up.


What if TiVo is wrong, should they pay up?


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## scooper

jacmyoung said:


> What if TiVo is wrong, should they pay up?


I think so...


----------



## jacmyoung

tivonomo said:


> E* has no right to ask for them to be redefined in this case unless they get a brand new jury trial for whatever reason the CAFC can dream up.


No where is E* trying to redefine the claim term "parse audio and video data." I will say it again, I think even Greg had seemed agreed, this particular term was not defined by the court during the last trial.

Now the PTO has defined it for us, TiVo BTW does not dispute the PTO's definition. It just so happened the PTO's definition is squarely in E*'s corner. Based on this PTO's definition, E*'s modified DVRs no longer infringed, in fact I would argue E* can ask for a summary judgment of non infringement by the modified DVRs, on this PTO definition alone, as soon as the PTO certification is complete.

The above has nothing to do with whether you believe the PTO reexamination is relavent to this contempt issue or not, even if the court refuses to consider the PTO definition (which is not the case here), by the virtue of such PTO definition, it cannot be disputed that E*'s modified DVRs no longer infringed.

Because TiVo does not dispute that E*'s modified DVRs no longer "detect start codes then build index table on these codes..." and the PTO has said, TiVo's software claims require the "detecting start codes and build index table on the start codes..." step. This much is a fact, not my opinion. It is a matter of looking at this fact and determine for yourself if infringement still exists or not, regardless what else had happened in the past.


----------



## jacmyoung

peak_reception said:


> Not usually so smart in a court of law where what the judge says and means is paramount.


Which judge are you referring to? Judge Folsom or Judge Rader?



peak_reception said:


> Which case was that?


A case in New York, but I would not be able to go way back to dig it up anymore. It did leave a big impression on me.


----------



## Hoosier205

jacmyoung said:


> What if TiVo is wrong, should they pay up?


They aren't.


----------



## jacmyoung

Hoosier205 said:


> They aren't.


But what if they are, should they pay up?


----------



## Hoosier205

jacmyoung said:


> But what if they are, should they pay up?


No reason to look at hypothetical situations. Let's start shutting off those DVR's already. Pay up Charlie, you've been shot down enough by now. It's ridiculous that the courts have allowed this to go on as long as it has. That's all I will say on the subject.


----------



## jacmyoung

Hoosier205 said:


> No reason to look at hypothetical situations. Let's start shutting off those DVR's already. Pay up Charlie, you've been shot down enough by now. It's ridiculous that the courts have allowed this to go on as long as it has. That's all I will say on the subject.


It is not a hypothetical situation at all, the Chief Judge of the Appeals Court had already said TiVo was wrong.


----------



## James Long

Hoosier said:


> That's all I will say on the subject.


I doubt it.


----------



## Jhon69

Hoosier205 said:


> No reason to look at hypothetical situations. Let's start shutting off those DVR's already. Pay up Charlie, you've been shot down enough by now. It's ridiculous that the courts have allowed this to go on as long as it has. That's all I will say on the subject.


Think you may have forgot Dish network has been granted an en banc review?.


----------



## jacmyoung

Today the USPTO PAIR site finally released its summary of TiVo's latest clarifications which succeeded in overcoming the Final Office Rejection of the two software claims. I'd like to point out two items I think are important because they again support E*'s postions.

The first one emphasizes that for the self regulating (automatic flow control) to work, the C++ programming languages are used to achieve a very specific function. While I do not understand the technical detail of it, I do remember back during the last appeal in 2006, E* argued that TiVo's software claims required the use of the C++ programming, and because the E* old DVRs was not based on C++, they did not infringe.

We know the appeals court rejected E*'s such argument, agreed with TiVo that there was no requirement that C++ had to be used. Today the PTO made a point that C++ languages are a critical part of the "automatic flow control" function in the software claims.

The second item of interest is that the PTO also links the "physical data source" to the "media switch." Recall TiVo successfully argued in front of Judge Folsom that the "media switch" had nothing to do with the software claims because it is not mentioned in them, the "media switch" is only described in the hardware claims. This argument did a great deal to convince the judge that in stead, that so called "PID filter" could be the "physical data source."

Today the PTO says it is the "media switch" that is related to the software claims too, in fact is the critical part of it, that so called "physical data source" thing.

There are other things said in the PTO summary further narrowed down and clarified many software claims terms such as those "xxx objects."


----------



## Jim5506

Prima facia, I have an HD TiVo and a Dish ViP722k and on H.264 (MPEG4) data the FFW and REW on the Dish box is much less stable and much less reliable.

Whatever method Dish is using is obviously different from what TiVo is using, especially in results.

It seems that by avoiding the TiVo patent Dish has had to use an inferior or less precise method of reading the data stream which is obvious on trick plays.

It seems to be much more than colorably different.


----------



## tracyball

jacmyoung said:


> Today the USPTO PAIR site finally released its summary of TiVo's latest clarifications which succeeded in overcoming the Final Office Rejection of the two software claims. I'd like to point out two items I think are important because they again support E*'s postions.
> 
> The first one emphasizes that for the self regulating (automatic flow control) to work, the C++ programming languages are used to achieve a very specific function. While I do not understand the technical detail of it, I do remember back during the last appeal in 2006, E* argued that TiVo's software claims required the use of the C++ programming, and because the E* old DVRs was not based on C++, they did not infringe.
> 
> We know the appeals court rejected E*'s such argument, agreed with TiVo that there was no requirement that C++ had to be used. Today the PTO made a point that C++ languages are a critical part of the "automatic flow control" function in the software claims.
> 
> The second item of interest is that the PTO also links the "physical data source" to the "media switch." Recall TiVo successfully argued in front of Judge Folsom that the "media switch" had nothing to do with the software claims because it is not mentioned in them, the "media switch" is only described in the hardware claims. This argument did a great deal to convince the judge that in stead, that so called "PID filter" could be the "physical data source."
> 
> Today the PTO says it is the "media switch" that is related to the software claims too, in fact is the critical part of it, that so called "physical data source" thing.
> 
> There are other things said in the PTO summary further narrowed down and clarified many software claims terms such as those "xxx objects."


Here is the quote from the USPTO document:

"The specification explains that the preferred embodiment is implemented in terms of C++ classes"

So doesn't the use of the word "preferred" infer that there could be other embodiments?


----------



## tracyball

jacmyoung said:


> Today the USPTO PAIR site finally released its summary of TiVo's latest clarifications which succeeded in overcoming the Final Office Rejection of the two software claims. I'd like to point out two items I think are important because they again support E*'s postions.
> 
> The first one emphasizes that for the self regulating (automatic flow control) to work, the C++ programming languages are used to achieve a very specific function. While I do not understand the technical detail of it, I do remember back during the last appeal in 2006, E* argued that TiVo's software claims required the use of the C++ programming, and because the E* old DVRs was not based on C++, they did not infringe.
> 
> We know the appeals court rejected E*'s such argument, agreed with TiVo that there was no requirement that C++ had to be used. Today the PTO made a point that C++ languages are a critical part of the "automatic flow control" function in the software claims.
> 
> The second item of interest is that the PTO also links the "physical data source" to the "media switch." Recall TiVo successfully argued in front of Judge Folsom that the "media switch" had nothing to do with the software claims because it is not mentioned in them, the "media switch" is only described in the hardware claims. This argument did a great deal to convince the judge that in stead, that so called "PID filter" could be the "physical data source."
> 
> Today the PTO says it is the "media switch" that is related to the software claims too, in fact is the critical part of it, that so called "physical data source" thing.
> 
> There are other things said in the PTO summary further narrowed down and clarified many software claims terms such as those "xxx objects."


Additionally,

"The source object 901 takes data out of a physical data source, such as the Media Switch, and places it into a PES buffer, "

Don't the words "such as" imply there can be other physical data sources?


----------



## Curtis52

tracyball said:


> Here is the quote from the USPTO document:
> 
> "The specification explains that the preferred embodiment is implemented in terms of C++ classes"
> 
> So doesn't the use of the word "preferred" infer that there could be other embodiments?


There is no requirement that any particular computer language be used. The reference to C++ is just an explanation that the C++ "object" terminology is used to describe groups of data and groups of operations.

From the Claim Construction Order:



> TiVo argues an "object" is "a collection of data or operations, i.e., portions of a computer program."
> ...
> "the Court looked to a technical dictionary, the IEEE 100: THE AUTHORITATIVE DICTIONARY OF IEEE STANDARD TERMS at 752 (7th ed. 2000) which defines "object" as "a collection of data and operations." The Court notes that EchoStar's expert witness, Dr. Rhyne, has acknowledged that this is a widely accepted technical dictionary in the electrical engineering field. Rhyne Decl. at 45. Thus, for clarification purposes the Court construes "object" as "a collection of data and operations." This same construction of "object" applies to the terms "transform object," "sink object," and "control object."
> "


The examiner quotes from sections of the patent to support TiVo's claim and Folsom's ruling.


----------



## tracyball

So in other words, jacmyoung's logic is flawed, and the USPTO document does not support Echostar's position that the modified devices do not infringe?


----------



## Curtis52

tracyball said:


> Additionally,
> 
> "The source object 901 takes data out of a physical data source, such as the Media Switch, and places it into a PES buffer, "
> 
> Don't the words "such as" imply there can be other physical data sources?


Yep, there are any number of physical data sources. The "object" terminology is used throughout the patent and the examiner just quoted from that section to illustrate the definition of "object" as a collection of data and operations. The examiner made no attempt to link the quoted section to the reexamined claims except as an illustration of the use of the word "object" in the patent.


----------



## jacmyoung

Curtis52 said:


> The examiner quotes from sections of the patent to support TiVo's claim and Folsom's ruling.


First item first, with regard to the term "object." The Examiner in the latest reexamination did quote what TiVo said and what the court ruled, and used them in the first office action, i.e. the "object = collection of data and operations" to reject the software claims.

Remember during the first reexamination, the software claims were never rejected, because the Examiner believed the term "object" was good enough an invention. In this second reexam, because the term was broadened, the term "object" was no longer an invention, so the software claims were rejected. TiVo never recovered on this term, the only reason TiVo avoided the final rejection was because it successfully argued that the "automatic flow control" was an invention, in doing so they had to further narrow this particular term.

This second reexamination allowed the Examiner to sepcify several detailed interpretations never before clarified in the past, they support E*'s contentions, not only in the current modified DVRs, but the old DVRs.

The quote you used above is a perfect example when a patent owner tried to broaden a term in order to capture an alleged infringement act in the court, it runs the risk of having the term rejected in a reexamination, as the term "object" stands rejected now. As said above, the only reason TiVo survived this reexamination is because they further narrowed down the term "automatic flow control." TiVo has given up two other very critical terms, the "parse audio and video data" and the "object."

It is true that the Examiner speaks in terms of "preferred embodiments," which gives room to argue that there can be other embodiment that might qualify, but when the Examiner goes into length to explain why C++ is such a preferred embodiment, why the specific "object" required the specific functions found in C++, such explanation compels the jury to disregard other operational system as "another preferred embodiment."

The point is, had this new Examiner's further clarification been done in 2006, E* could very well have been successful in arguing that their old DVRs did not infringe. On the other hand, without the 2006 trial, TiVo never would have tried to broaden the term "object," therefore there would never have been this second reexamination and of course there would never have been this latest Examiner's further clairfications.

BTW, there is no need to further clarify the use of the C++, or the "parse audio and video data" or the "object", because TiVo is only arguing on the "automatic flow control" term, and did so successfully on this term alone. The reason the Examiner went to such length to clarify those other terms, is because it is part of his job to review any "co-pending" litigation cases, and clarify the claim terms that may have impact to those litigations, this is especially true when a reexamination is brought up by parties involved in such "co-pending" court cases.

Why would the Examiner waste his time to explain what the C++ means, what the "object" means or what the "parse audio and video data" means, when they don't even have anyting to do with the "automatic flow control," which in the end was the *only* issue in this reexamination? TiVo did its best (and successfully so) to avoid mentioning those terms for good reasons, indeed had proven they were not necessary to overcome the rejections, yet the Examiner continued to raise them. Does he not know how to be on topic like most of us here?


----------



## tivonomo

jacmyoung said:


> Does he not know how to be on topic like most of us here?


Topic: "Tivo vs. Dish: Petition for rehearing en banc granted"

Observation: The en banc is not about the PTO exam.

Conclusions:

1. This PTO nonsense is off topic.
2. Jacmyoung "does not know how to be on topic like most of us here"


----------



## jacmyoung

tivonomo said:


> Topic: "Tivo vs. Dish: Petition for rehearing en banc granted"
> 
> Observation: The en banc is not about the PTO exam.
> 
> Conclusions:
> 
> 1. This PTO nonsense is off topic.
> 2. Jacmyoung "does not know how to be on topic like most of us here"


You are just repeating what I said My point is I like to believe our fine PTO Examiners do know what topics they are dealing with during patent prosecutions, even though most of the time the patent owners (like TiVo) want to avoid them.

If not, then we can only pitty those Examiners, therefore cannot have faith in the patents they issue in the first place. Then the whole enforcement issue is in question.

As an investor, I hope you read my response to Highdef when I said odds were in TiVo's favor that the PTO would certify the reexamination, that was one week before we learned the result. I hope Highdef took my comment into consideration and bought some TiVo and made a quick 10% gain

And don't forget that karma thing either, I thought we all learned that lesson on 5/4/10, you know when the en banc order was handed down. Just answering your call to be on topic.


----------



## tivonomo

jacmyoung said:


> You are just repeating what I said My point is I like to believe our fine PTO Examiners do know what topics they are dealing with during patent prosecutions, even though most of the time the patent owners (like TiVo) want to avoid them.
> 
> If not, then we can only pitty those Examiners, therefore cannot have faith in the patents they issue in the first place. Then the whole enforcement issue is in question.


Looking at the PTO and the court system, both are so overloaded I don't have a lot of faith in either of them. Both seem to err on the "safe side". IMO, the PTO process often takes an invalidate first approach and forces the patent holder to make a detailed argument to prove their case. Let's face it. These examiners are intelligent but there is no way that they could be experts in so many different detailed technical areas. Therefore, they seek to be educated through the reexam process.

The judges are essentially the same way... and given the profile of this case and issues involved an en banc has been granted. It will be interesting to see what questions are asked at the oral argument on November 9th.


----------



## jacmyoung

tivonomo said:


> It will be interesting to see what questions are asked at the oral argument on November 9th.


Hear, Hear!

Other things may come up before that date, but we can all count on 11/9.


----------



## tivonomo

jacmyoung said:


> Hear, Hear!
> 
> Other things may come up before that date, but we can all count on 11/9.


I don't suppose you have heard about E*'s letter to the CAFC on Monday? E* asked that the injunction be lifted and a new trial be granted due to prosecution disclaimer related to the reexam arguments TiVo made?


----------



## jacmyoung

"tivonomo" said:


> I don't suppose you have heard about E*'s letter to the CAFC on Monday? E* asked that the injunction be lifted and a new trial be granted due to prosecution disclaimer related to the reexam arguments TiVo made?


You mean E*'s attorneys have been reading my posts here?

Thanks for the heads up, do you have a link?


----------



## jacmyoung

I guess TiVo made the usual response that the PTO reexamination has no bearing on the court proceedings, that E* just wanted to delay the case.

I think we can agree the PTO proceeding may or may not have bearing on the court case, it all depends on what TiVo and the PTO said in the PTO proceeding. E* seems to claim TiVo made some narrowing disclaimers in the PTO proceeding that took the E* DVRs out of the scope of the software claims.

Whether E*'s claim is valid or not of course can be debated, but it is simply not enough for TiVo to just argue, well it is irrelevant, we should not even consider this. TiVo needs to respond by saying, no, what was said in the PTO proceeding does not move E*'s DVRs out of the claim scope, and here is why. Refusing to counter E*'s claim can be seen by the judges that TiVo might have conceded on this point.

BTW Tivonomo, please tell your villagers this reexamination cannot possibly have broadened the software claims, only narrowed them. By definition, if it had broadened the claims, they would have continued to stand rejected as they were in the last two office actions. TiVo most cetainly had walked a very fine line, and did a good job to overcome the rejection while trying to avoid even mentioning the terms that would have contradicted TiVo's own arguments during the trial, such as the "parse audio and video data" term.

But TiVo should know very well E* will not let them easily off the hook. I told you somethings else might happen before the 11/9 date, we just did not know what could they be. Personally I don't expect the en banc panel to respond to this go around before the oral argument, I think what E* is trying to achieve is to plan for the oral argument more in its favor, hoping the judges would scrutinize TiVo more. If E* can succeed in that, the street will react to it.

But hey, anything is possible.


----------



## Greg Bimson

jacmyoung said:


> Whether E*'s claim is valid or not of course can be debated, but it is simply not enough for TiVo to just argue, well it is irrelevant, we should not even consider this. TiVo needs to respond by saying, no, what was said in the PTO proceeding does not move E*'s DVRs out of the claim scope, and here is why. Refusing to counter E*'s claim can be seen by the judges that TiVo might have conceded on this point.


I don't know.

Part of the problem here is that until the process of finding of contempt was completed, there wasn't any clarification from the PTO. Effectively Echostar is asking to back-date the finding as if this supposedly new PTO definition takes precedence over any of the arguments used to find contempt, when in fact this "narrowing" could not have been used as evidence during the contempt proceeding.

If all the PTO examiner did was clarify "the preferred embodiment", that doesn't change any of the definitions, so I'm not sure what exactly was narrowed.

I guess we'll see when the _en banc_ is held.


----------



## Curtis0620

Wouldn't a re-trial bring back the hardware claims?


----------



## jacmyoung

Greg Bimson said:


> Part of the problem here is that until the process of finding of contempt was completed...


That is if you don't think the finding of contmept necessarilly had to do with the finding of infringement. I think this is the point TiVo needs to succeed at oral argument.


----------



## Greg Bimson

jacmyoung said:


> That is if you don't think the finding of contmept necessarilly had to do with the finding of infringement. I think this is the point TiVo needs to succeed at oral argument.


I for one believe it was necessary, but in the same way Judge Folsom had ruled.

To me, the injunction covers a specific type of receiver, and that receiver was ordered disabled because it was found infringing. The injunction goes on to state, paraphrasing, that those disabled receivers were not to have their functionality enabled, so the non-infringing receiver (without DVR functionailty) is still under the scope of the injunction.

Meanwhile, Dish Network also sold newer versions of the receiver which contained new software, thus requiring a finding of mere colorable difference and infringement in order to extend the injunction to those receivers.

So, yes, I do agree that TiVo does need to address that those receivers are still infringements, but it must do so in the context that the claims had not been narrowed.


Curtis0620 said:


> Wouldn't a re-trial bring back the hardware claims?


Yes, but what's the use? Dish Network was able to re-write the code so that the media switch was no longer used. Keeping it very simple, if a media switch isn't being used, then there isn't infringement of the hardware claims.


----------



## jacmyoung

Greg Bimson said:


> ...So, yes, I do agree that TiVo does need to address that those receivers are still infringements, but it must do so in the context that the claims had not been narrowed.


But why didn't TiVo say so, why TiVo only insists that the PTO proceeding was irrelevant?

Of course TiVo narrowed several terms. I have pointed out how the PTO had clarified several terms for TiVo too, not to narrow them, but to clarify.

But on the issue of "automatic flow control," the reason the PTO finally accepted TiVo's explanation, was in part because TiVo clarified that the "automatic flow control" has to be some kind of "intelligent" art, it went into details to explain why.

Now we know TiVo argued that the modified E* DVRs still used some kind of "ring of buffers" which based on what I could figure, was a generic hard drive read/write data flow control function, therefore likely cannot be called an "intelligent" function, certainly not any innovative function.

TiVo by defining the "automatic flow control" to be "intelligent" necessarily had narrowed it to the extent that any generic and non-intelligent data flow control functions are outside of the scope of its "automatic flow control" limitation.


----------



## Greg Bimson

jac, I think you misinterpreted what I wrote:


Greg Bimson said:


> ...So, yes, I do agree that TiVo does need to address that those receivers are still infringements, but it must do so *in the context that the claims had not been narrowed.*





jacmyoung said:


> But why didn't TiVo say so, why TiVo only insists that the PTO proceeding was irrelevant?


I'm pretty much stating that the PTO action is irrelevant to this discussion.

What is relevant is what had been admitted as evidence in the contempt hearing. The PTO action took place after the hearing and ruling. Now that the PTO ruling is final and the re-exam certification sent, the correct course of action to have the injunction lifted is to go back to Judge Folsom for a ruling.


----------



## jacmyoung

Greg Bimson said:


> jac, I think you misinterpreted what I wrote:I'm pretty much stating that the PTO action is irrelevant to this discussion.
> 
> What is relevant is what had been admitted as evidence in the contempt hearing. The PTO action took place after the hearing and ruling. Now that the PTO ruling is final and the re-exam certification sent, the correct course of action to have the injunction lifted is to go back to Judge Folsom for a ruling.


I agree with you on the course of action, admittedly neither of us is a lawyer so we can't say for sure what is the exact correct course of action.

For one thing, E* might think they never got anywhere at Judge Folsom before, whether with good argument or bad, so why take that chance? On the other hand, the en banc panel definitely has the discretion to lift the injunction and remand the issue back to Judge Folsom for a new ruling.

I don't think they have to do it, but it is certainly within their own discretion. I have said I did not expect them to respond before the oral argument, but there is a logic to it still, if the en banc panel lifts the injunction, or continues to stay the injunction, but remands the issue of infringement back to Judge Folsom, considering the new PTO proceeding, it will allow the en banc panel to do less work, not having to make more important decisions, yet give Judge Folsom a graceful way to end the whole mess.

Based on what I have read about the CAFC judges, most of them are old and tired, with the exceptions of a few such as Judge Rader


----------



## harsh

jacmyoung said:



> E* seems to claim TiVo made some narrowing disclaimers in the PTO proceeding that took the E* DVRs out of the scope of the software claims.


I thought judges were only allowed to contemplate evidence presented as opposed to generating their own in the absence of a response.


----------



## jacmyoung

harsh said:


> I thought judges were only allowed to contemplate evidence presented as opposed to generating their own in the absence of a response.


I think new evidence can compel a new trial. E* is not asking the judges to reverse the ruling based on the new evidence, to that end I think lifting the injunction is going a little too far, but continue to stay the injunction while remand the infringement issue for a new trial is within reason.


----------



## harsh

jacmyoung said:


> I think new evidence can compel a new trial.


How can "new evidence" be admissible in a review?


----------



## James Long

harsh said:


> How can "new evidence" be admissible in a review?


Newly discovered evidence that was not available at the time of the trial? If it has the potential of changing the outcome of the trial there should be a place for it.


----------



## jacmyoung

"harsh" said:


> How can "new evidence" be admissible in a review?


I don't know what is the proper legal answer to this, maybe an attorney can chime in. I will only point out one fact, that the CAFC had already granted E*'s motion to take judicial notice of the PTO reexamination proceedings many months ago.


----------



## Greg Bimson

jacmyoung said:


> I don't know what is the proper legal answer to this, maybe an attorney can chime in. I will only point out one fact, that the CAFC had already granted E*'s motion to take judicial notice of the PTO reexamination proceedings many months ago.


Well, if the PTO found Claims 31 and 61 (the software claims) invalid, of course CAFC would review, but most likely would hand off any disposition of the judgment to Judge Folsom.

It isn't "new evidence", as whatever possible changes to the patent were done after the contempt proceedings. It would be like me saying that speeding ticket I received 10 years ago for going 64 mph should be dismissed because the speed limit is now 65 mph.

Could it change the outcome of anything else? Sure. It shouldn't change anything regarding the review at the CAFC.


----------



## jacmyoung

"Greg Bimson" said:


> Well, if the PTO found Claims 31 and 61 (the software claims) invalid, of course CAFC would review, but most likely would hand off any disposition of the judgment to Judge Folsom.
> 
> It isn't "new evidence", as whatever possible changes to the patent were done after the contempt proceedings. It would be like me saying that speeding ticket I received 10 years ago for going 64 mph should be dismissed because the speed limit is now 65 mph.
> 
> Could it change the outcome of anything else? Sure. It shouldn't change anything regarding the review at the CAFC.


Wrong analogy. The correct one is, now there is evidence that may demonstrate the speed limit was actually 65 from the very beginning.


----------



## James Long

jacmyoung said:


> Wrong analogy. The correct one is, now there is evidence that may demonstrate the speed limit was actually 65 from the very beginning.


The signs posted were 55 ... DISH violated the posted speed.

(When my state repealed the 55 MPH limit a few years ago the higher limits on roads based on class were known as soon as the bill was signed by the governor. But the speed limit didn't go up until the signs changed. One could argue all they wanted that the speed limit on a certain stretch of road was 60, 65 or 70 per the law, but until the sign changed the speed limit remained 55. DISH blew past a sign that read 55.)


----------



## Greg Bimson

jacmyoung said:


> The correct one is, now there is evidence that may demonstrate the speed limit was actually 65 from the very beginning.


I don't believe that is how it operates. Has anyone seen some type of effective date on the re-cert?


----------



## tivonomo

Greg Bimson said:


> I don't believe that is how it operates. Has anyone seen some type of effective date on the re-cert?


I'm guessing 10/6. Partly because of a new document on the PTO website.

E* tried to file something on 10/8 in an Information Disclosure Statement. Either making a new challenge or challenging the outcome. It is impossible to tell because on 10/15 the PTO rejected that filing because the reexam had been terminated. E* was invited to submit a new petition instead.

I guess "No" never means "No" to Ms. Charlie Ergen. At some point you have to "man up" and stop wasting time and resources. Plus, you would think that Ergen's lawyers would have known that it was too late to file something new at the PTO...


----------



## jacmyoung

"Greg Bimson" said:


> I don't believe that is how it operates. Has anyone seen some type of effective date on the re-cert?


Regardless the date of this recertification, once it is official, the interpretations and disclaimers in it should apply back to the date the patent was granted, because the patent specification did not change, still the same patent.

It is almost as if TiVo argued in the past that the speed limit in the patent was 55, E* said no it was 65, but the actual number was never clearly stated, so the court assumes the norm, agreed 65 it was.

But now the office that actually sets the speed limits finally came out and said, well just so happened for this particular patent, the speed limit has indeed always been 55.


----------



## tivonomo

jacmyoung said:


> Regardless the date of this recertification, once it is official, the interpretations and disclaimers in it should apply back to the date the patent was granted, because the patent specification did not change, still the same patent.


Why? It is already settled law that the examiner's interpretations are only one part of the evidence. The Markman hearings are not bound by an examiners interpretations. That is why there are experts involved. The only hope E* has is the "prosecution disclaimer" that they mentioned in their PR. They would have to prove that TiVo unambiguously argued something different than they have in the court case to date that shows a different intent by the patent holder (TiVo).

All of this legal mumbo jumbo can be found in the case of Dupont vs Phillips Petroleum.


----------



## jacmyoung

"tivonomo" said:


> I'm guessing 10/6. Partly because of a new document on the PTO website.
> 
> E* tried to file something on 10/8 in an Information Disclosure Statement. Either making a new challenge or challenging the outcome. It is impossible to tell because on 10/15 the PTO rejected that filing because the reexam had been terminated. E* was invited to submit a new petition instead.
> 
> I guess "No" never means "No" to Ms. Charlie Ergen. At some point you have to "man up" and stop wasting time and resources. Plus, you would think that Ergen's lawyers would have known that it was too late to file something new at the PTO...


I agree E* could not simply file an objection at the PTO, in an ex parte reexamination the 3rd party had no say at such late stage. E*' attorneys were probably just trying to leave no stone unturned. I don't even expect much to come out of the CAFC before the oral argument. But the evidence is now of the record. Never say never.


----------



## jacmyoung

"tivonomo" said:


> Why? It is already settled law that the examiner's interpretations are only one part of the evidence. The Markman hearings are not bound by an examiners interpretations. That is why there are experts involved. The only hope E* has is the "prosecution disclaimer" that they mentioned in their PR. They would have to prove that TiVo unambiguously argued something different than they have in the court case to date that shows a different intent by the patent holder (TiVo).
> 
> All of this legal mumbo jumbo can be found in the case of Dupont vs Phillips Petroleum.


And if E* is successful in making such argument of the TiVo's disclaimer, then what?

So far all we know is TiVo is saying the PTO thing is irrelevant, they are not saying they did not make such disclaimer, did they? It takes two to tangle.


----------



## tivonomo

jacmyoung said:


> And if E* is successful in making such argument of the TiVo's disclaimer, then what?
> 
> So far all we know is TiVo is saying the PTO thing is irrelevant, they are not saying they did not make such disclaimer, did they? It takes two to tangle.


As you say, "E*' attorneys were probably just trying to leave no stone unturned."


----------



## jacmyoung

"tivonomo" said:


> As you say, "E*' attorneys were probably just trying to leave no stone unturned."


Not on this point. I was only following your logic that a disclaimer would make a difference. I will never leave no stone unturned with you my friend cuz I am no Charlie, you are not Rogers.


----------



## HobbyTalk

James Long said:


> The signs posted were 55 ... DISH violated the posted speed.
> 
> (When my state repealed the 55 MPH limit a few years ago the higher limits on roads based on class were known as soon as the bill was signed by the governor. But the speed limit didn't go up until the signs changed. One could argue all they wanted that the speed limit on a certain stretch of road was 60, 65 or 70 per the law, but until the sign changed the speed limit remained 55. DISH blew past a sign that read 55.)


Or live in my city where the speed limits were wrong and the police knew they were wrong, but gave out tickets anyways. http://www.mlive.com/news/kalamazoo/index.ssf/2009/07/speed_limit_story_polls.html


----------



## tivonomo

jacmyoung said:


> Not on this point. I was only following your logic that a disclaimer would make a difference. I will never leave no stone unturned with you my friend cuz I am no Charlie, you are not Rogers.


Well, I read through everything in the patent reexam yesterday and I saw nothing remotely close to meeting the legal standard for a disclaimer by TiVo that would be "new evidence" deserving of a new trial.

And, by the way, most of my friends know that I am one of Rogers' biggest critics.


----------



## jacmyoung

tivonomo said:


> Why? It is already settled law that the examiner's interpretations are only one part of the evidence. The Markman hearings are not bound by an examiners interpretations. That is why there are experts involved. The only hope E* has is the "prosecution disclaimer" that they mentioned in their PR. They would have to prove that TiVo unambiguously argued something different than they have in the court case to date that shows a different intent by the patent holder (TiVo).
> 
> All of this legal mumbo jumbo can be found in the case of Dupont vs Phillips Petroleum.


Let me respond to the above so it may also address your latest post.

In patent litigation, the court relies on two basic types of evidence to interpret the claim terms and during claim constructions. One is called intrinsic evidence, the other extrinsic evidence.

First the court must rely on the intrinsic evidence, when the intrinsic evidence is not clear, it then looks for extrinsic evidence.

Intrinsic evidence are found in the patent specification and the PTO patent prosecution history. Extrinsic evidence can be obtained from publications, dictionaries, expert testimonies...

Take for example the term "parse audio and video data" term. Until the recent PTO reexamination, this term was never clearly defined. So the court took to the extrinsic evidence, through expert testimonies, to interpret it as "analying audio and video data." For that reason, TiVo was able to pin E*'s modifed DVRs down by pointing out that they still used the PID filter, which analyzed the broadcast data, therefore must also had analyzed the audio and video data in it.

E* said no, the above term in the software claims required that the DVR must analyze the start codes and build some kind of index table on those codes. But since the modified DVRs no longer did so, they no longer infringed, TiVo did not dispute the fact the modified DVRs no longer detected the start codes and build index table on those codes, TiVo said detecting start codes had nothing to do with the above term. The court agreed with TiVo.

Now fast forward to the current day, we know that the PTO has officially defined the term "parse audio and video data" to mean "detecting the start of the I-frame... and build an index table of such start of the frame information,..." so now we have a clear intrinsic evidence to override the simple "analyzing audio and video data" claim construction by the court. Even though the court construction was based on extensive expert testimonies, it must still give way to the intrinsic evidence.

While the court is not always bound by the PTO's interpretation when the PTO is just referring to a "preferred embodiment," it is different when the PTO provides a clear intrinsic evidence as how a particular claim term must be construed. Because after all it is the PTO that decided to grant the patent based on what it interpreted as a legit invention, not the court.


----------



## tivonomo

jacmyoung said:


> While the court is not always bound by the PTO's interpretation when the PTO is just referring to a "preferred embodiment," it is different when the PTO provides a clear intrinsic evidence as how a particular claim term must be construed. Because after all it is the PTO that decided to grant the patent based on what it interpreted as a legit invention, not the court.


The PTO's interpretation is simply another "expert" testimony. Experts already testified for the Markman hearing. E* doesn't get a chance to relitigate the claims construction because of a PTO examiner's interpretation in a re-exam. This is settled law.

All that can impact the claims construction is clear, unambiguous evidence that TiVo represented the patent claims in the reexam differently than they did in the past.

You are arguing that "parse audio and video data" could only be construed one way. E* already had opportunity to make that argument in court. I don't care if President Obama stated something, it is irrelevant in E* vs TiVo.

TiVo said nothing that would give E* any leverage. Your legal interpretations seem to be made up regarding "clear intrinsic evidence" from the PTO. Care to show us something to back that up? I haven't seen any opinions discuss this distinction.


----------



## jacmyoung

tivonomo said:


> The PTO's interpretation is simply another "expert" testimony. Experts already testified for the Markman hearing. E* doesn't get a chance to relitigate the claims construction because of a PTO examiner's interpretation in a re-exam. This is settled law.
> 
> All that can impact the claims construction is clear, unambiguous evidence that TiVo represented the patent claims in the reexam differently than they did in the past.
> 
> You are arguing that "parse audio and video data" could only be construed one way. E* already had opportunity to make that argument in court. I don't care if President Obama stated something, it is irrelevant in E* vs TiVo.
> 
> TiVo said nothing that would give E* any leverage. Your legal interpretations seem to be made up regarding "clear intrinsic evidence" from the PTO. Care to show us something to back that up? I haven't seen any opinions discuss this distinction.


TiVo said nothing that would agree with E* of course, TiVo is not stupid, the best they did was not to respond to the PTO's clarifications. Otherwise they would have actually disagreed or disputed the PTO on those terms, but they did not because they knew the PTO knows what those terms mean.

BTW, the experts never defined the "parse audio and video data" term at all during the trial and during the contempt proceeding, only the term "parse". But even if the experts had defined the "parse audio and video data" term, if their opinions were in contrast to the intrinsic evidence contained in the patent prosecution history, they would be out, this is the law, I can cite many cases to demonstrate that point.

Here is what we call the "new evidence." I am not too sure what kind of "new evidence" or disclaimers E* had cited in its letter to the CAFC, but the above can very be one of them.


----------



## Curtis52

tivonomo said:


> The PTO's interpretation is simply another "expert" testimony.


TiVo corrected the PTO in their response:



> Patent owner notes that the Office has ascribed a different meaning to the term "parsing" here. Parsing does not require indexing.


----------



## tivonomo

Curtis52 said:


> TiVo corrected the PTO in their response:


Thanks for providing some facts to the discussion, Curtis.

Note that even E* isn't arguing to the CAFC that there is new evidence. They are arguing prosecution disclaimer which has nothing to do with what the examiner said.

It is pretty clear that Folsom defined "parse audio and video data" as "analyze audio and video data". In this case, dictionary definitions of audio and video data are applied. E* could have challenged this and fought for a narrower definition (such as iframe detection) but that never happened. The claim construction is the law of the case and will not be reconstructed because of the examiners notes.


----------



## tivonomo

jacmyoung said:


> if their opinions were in contrast to the intrinsic evidence contained in the patent prosecution history, they would be out, this is the law, I can cite many cases to demonstrate that point.


I've asked you once and will ask you again, can you show us any case that backs up your claim?


----------



## jacmyoung

Curtis52 said:


> TiVo corrected the PTO in their response:


I know both E*'s letter and TiVo's response are out there, maybe someone can post a link so we can find out who had better predicted what were said in them?

BTW, why didn't TiVo say so during the reexamination? It is very important to correct a key intepretation as part of the patent prosecution history record. Now such opposing view is not in that record, only in some less than official court files in a form of a letter response.

And yet TiVo was still very careful about what it said, it said "parsing does not require indexing,", it did not say "parse audio and video data" does not require indexing. Of course the word "parse" alone does not require indexing. But you see TiVo is not really "correcting" the PTO, it still refused to face with the term "parse audio and video data."


----------



## jacmyoung

tivonomo said:


> Note that even E* isn't arguing to the CAFC that there is new evidence. They are arguing prosecution disclaimer which has nothing to do with what the examiner said.


New disclaimer is new evidence.

Did you actually have the chance to read both letters? If not, how do you know what E* was saying, what it was not saying? If E* was only talking about some disclaimer, and now we know in TiVo's response it at least tried to "correct" the PTO's such "disclaimer", then can we not speculate, like I did earlier that "parse audio and video data" maybe one of the "disclaimers" E* was talking about?


----------



## Curtis52

tivonomo said:


> Thanks for providing some facts to the discussion, Curtis.


The patent office seemed to take the correction well. They terminated the reexamination.


----------



## jacmyoung

Curtis52 said:


> The patent office seemed to take the correction well. They terminated the reexamination.


If you are talking about that particular "correction" you posted earlier, that was never the reason for the final rejection, therefore cannot possibly be the reason for termination. Besides, you said this correction was made in TiVo's response letter to CAFC, how did it have anything to do with the PTO termination?

If you are talking in general how a patent owner may be able to "correct" the PTO examiner to overcome any claim rejection, in reality usually it is not the patent owner did a good job correcting the examiner, rather that the patent owner further clarified and narrowed the claims to the point the examiner finally agreed to let it off the hook. This is clearly the case in this reexamination.

The main reason TiVo was able to overcome the rejection, was because it went to such length to convince the examiner that its so called "automatic flow control" is such a intricate and intelligent self-regulating function between three separate complex "objects" that there is very little chance TiVo can again find such functions in any other brand DVRs on the market today.


----------



## Curtis52

Interesting appeals court ruling in another patent case:

salazar-v-procter-and-gamble-company


> If the examiner believes that the record of the prosecution as a whole does not make clear his or her reasons for allowing a claim or claims, the examiner may set forth such reasoning. The reasons shall be incorporated into an office action rejecting other claims of the application or patent under reexamination or be the subject of a separate communication to the applicant or patent owner. The applicant or patent owner may file a statement commenting on the reasons for allowance within such time as may be specified by the examiner. *Failure to file such a statement shall not give rise to any implication that the applicant or patent owner agrees with or acquiesces in the reasoning of the examiner.*
> 
> 37 C.F.R. § 1.109 (1996) (emphasis added).3 These regulations offer the applicant an opportunity to respond to the examiner's unilateral reasons for allowance. *The regulations also state, however, that the applicant does not acquiesce in those reasons if the applicant declines to respond.*


There was no acquiescence on TiVo's part though. TiVo corrected the PTO on their interpretation of parsing in their office action response and clearly stated that parsing does not require indexing. The reexamination subsequently ended.


----------



## jacmyoung

"Curtis52" said:


> Interesting appeals court ruling in another patent case:
> 
> salazar-v-procter-and-gamble-company
> 
> There was no acquiescence on TiVo's part though. TiVo corrected the PTO on their interpretation of parsing in their office action response and clearly stated that parsing does not require indexing. The reexamination subsequently ended.


TiVo did not correct the PTO's requirement for the term "parse audio and video data.". Therefore merely saying "parsing does not require indexing" does not correct the above requirement. Just for clarification, if you read the PTO's requirement carefully, the PTO does not say "parsing requires indexing," rather it says "parsing audio and video data means the detection of the start of the frame information...AND the building of an index table..."

Remember THE point of contention during the contempt proceeding was whether the software claims required the detection of the start codes--the key step.

You have just proven that TiVo now no longer disputes that detecting start codes is required. We know the E's modified DVRs no longer detect the start codes.

In a way, the PTO's rush into certification and publication of the reexamination in effect allows E to introduce the PTO patent prosecution records for review by the court. IMO, correct me if I am wrong, only when the PTO proceedings are officially published, the court may rely on such records.


----------



## tivonomo

jacmyoung said:


> Remember THE point of contention during the contempt proceeding was whether the software claims required the detection of the start codes--the key step.
> 
> You have just proven that TiVo now no longer disputes that detecting start codes is required. We know the E's modified DVRs no longer detect the start codes.


First, are you serious?

Second, if you read the letter that E* sent to the CAFC - none of your points are relevant.

Third, are you serious?

Read the case Curtis posted. And to say that he has "just proven that TiVo now no longer disputes that detecting start codes is required" has got to be a joke. Of course they dispute that. The patent is simply just not limited to this type of parsing of data. They simply say parsing is required and E*'s new method still parses the data in an inexact back-solving way. I posted on the village that E* would try this method before we even saw the patent application. The method is obvious and trivial.


----------



## jacmyoung

"tivonomo" said:


> First, are you serious?
> 
> Second, if you read the letter that E* sent to the CAFC - none of your points are relevant.
> 
> Third, are you serious?
> 
> Read the case Curtis posted. And to say that he has "just proven that TiVo now no longer disputes that detecting start codes is required" has got to be a joke. Of course they dispute that. The patent is simply just not limited to this type of parsing of data. They simply say parsing is required and E*'s new method still parses the data in an inexact back-solving way. I posted on the village that E* would try this method before we even saw the patent application. The method is obvious and trivial.


Don't speak for Curtis, he is more than capable of speaking for himself. I was simply responding to whatever he decided to quote for the benefit of his own argument, and pointing out otherwise.

If you know more than us, feel free to quote for us too, I will try to take a crack at it as well, I don't even insist that you must be fair, quote both sides. As you can see Curtis only picked and chose what he wanted to quote, I did not complain.

But "are you serious?" is not a quote you would find in either E's filing or TiVo's filing


----------



## jacmyoung

To use the above case law for example, I quote it below:



> [E]ven where the ordinary meaning of the claim is clear, it is well-established that the prosecution history limits the interpretation of claim terms so as to exclude any interpretation that was disclaimed during prosecution. *A broader definition may be disclaimed, for example, where the examiner adopts a narrow definition and the applicant does not object.*


Here the Examiner has clearly adopted a narrow definition of the term "parse audio and video data" to mean (I am paraphrasing): detecting start codes&#8230; and build an index table from those start codes.

To the best of our knowledge, based on Curtis' information, TiVo only responded that "parsing does not require indexing." TiVo dose not say the above term does not require the detection of the start codes. As I have pointed out before, whether the DVR detects the start codes or not was THE point of contention during the contempt proceeding.

Therefore according to the very case law Curtis cited, TiVo has disclaimed any definition that is broader than requiring the detection of the start codes, because TiVo did not object to the Examiner's definition which required the detection of the start codes.

Insisting that the PID filter met the claim term, even though it is undisputed that the PID filter does not detect start codes, is adopting a broader definition of the term which TiVo has disclaimed. We know this now because the Examiner only now has adopted a narrow definition, and only now we know TiVo does not object to it.

When the en banc panel reviews the latest information, it is bound by the same requirement as stated in the above case law. It is not even necessary that they use the new evidence to determine if the modified DVRs still infringe or not, E* only asked them to look at the evidence, if they agree, to order a new trial to determine the infringement issue.

Such request is the same kind of request presented in that above case law. In that case, the appeals court reversed the lower court SUMMARY JUDGMENT of non-infringement, meaning you cannot make such decision without a full trial.


----------



## tivonomo

jacmyoung said:


> To the best of our knowledge, based on Curtis' information, TiVo only responded that "parsing does not require indexing." TiVo dose not say the above term does not require the detection of the start codes.


You might want to read TiVo's filing with the PTO first (the one date 9/9). They clearly argue against the requirement of an i-frame detector on page 12 of that document.


----------



## jacmyoung

tivonomo said:


> You might want to read TiVo's filing with the PTO first (the one date 9/9). They clearly argue against the requirement of an i-frame detector on page 12 of that document.


Yes I read it, nowhere did TiVo ever objected to the fact the "parse audio and video data" term required the detection of the start codes, all TiVo said was, you cannot combine the two prior art because adding an I-frame detector into the Thomason structure would not work because the Thomason art is an already memory intensive system, has its own fast forward and reverse functions already, asking it to then also use the I-frame detection function would exceed its capability and unnecessary, the resulting disadvantages would have out weighed any advantages of adding the I-frame detector.

TiVo knew they could not object to the notion that TiVo's patent requires the detection of the start codes, but TiVo did a real good job of avoiding this subject. Unfortunately E* will not let this pass. When E* filed for this reexamination, they had already planted the seeds of such disclaimers, therefore you can count on E* to continue to hammer on them.

Let's be very clear on one thing, it is not me who is making up all these things, again E* had already planted all the points when they started this reexamination, we have just begun to see E* taking the full advantage of it after the PTO officially published the records. It is only the beginning, but as I said earlier, the PTO's timing allowed E* to kick start this argument before the oral argument.

But I hope at least now we can agree that based on the above "well established" rule, if the examiner narrowly interpreted a claim term and the patent owner does not object, then the patent owner has disclaimed any interpretation that is broader than that of the examiner's.

The question then is, what kind of "disclaimers" did E* raise in its letter to the CAFC en banc panel, and did TiVo dispute them, or did TiVo merely argue that the PTO proceeding was irrelevant?

You had read them, you tell us.


----------



## Curtis52

More proof that acquiescence is not agreement (from the same case).



> Procter & Gamble next *quotes the following passage* from Inverness Medical Switzerland GmbH v. Princeton Biomeditech Corp., 309 F.3d 1365, 1372 (Fed.Cir.2002):
> 21
> 
> [E]ven where the ordinary meaning of the claim is clear, it is well-established that the prosecution history limits the interpretation of claim terms so as to exclude any interpretation that was disclaimed during prosecution. A broader definition may be disclaimed, for example, where the examiner adopts a narrow definition and the applicant does not object.
> 22
> 
> (internal quotations and citations omitted). *This broad language, however, is merely dicta. Inverness actually rejected the appellee's argument that a statement in the examiner's Reasons for Allowance governed the construction of the claim term at issue. Id. at 1373.*
> 
> ...
> Once again, the applicant has disavowed nothing. *This court refuses to create a rule or presumption that the applicant in this case disavowed claim scope by silence.*


----------



## jacmyoung

Curtis52 said:


> More proof that acquiescence is not agreement (from the same case).


Good then say it, that you did not make such disclaimer, that the software claims have nothing to do with detecting the start codes, despite the fact the examiner say they did and we did not object. Don't tell us the PTO proceeding is irrelevant.

The above case had to do with whether by not objecting to a statement of the examiner in the REASON FOR ALLOWANCE, the patent owner therefore had given up her right to a jury trial to argue that she did not make such disclaimer.

The appeals court majority agreed the SUMMARY JUDGMENT of non infringement was wrong, the patent owner had the right to a full trial to argue on that issue, in front of a jury if she chose to.

Here we are actually talking about a narrowing interpretation made by the examiner (not for reason for allowence, rather for reason of interpretation of the claim term) on the record, and TiVo did not object.


----------



## tivonomo

jacmyoung said:


> Yes I read it, nowhere did TiVo ever objected to the fact the "parse audio and video data" term required the detection of the start codes.


Nowhere? What do you mean? TiVo rejected the examiners entire line of reasoning and specifically argued for data to be the dictionary definition.



jacmyoung said:


> The question then is, what kind of "disclaimers" did E* raise in its letter to the CAFC en banc panel.... You had read them, you tell us.


You haven't read the E*'s letter to the CAFC yet? I posted the link at the Village.



jacmyoung said:


> and did TiVo dispute them, or did TiVo merely argue that the PTO proceeding was irrelevant?


:lol:

Did TiVo dispute them? Are you serious? Of course TiVo disputes that!

It doesn't seem you are clear on the fact that TiVo went to the CAFC first to notify them that about the PTO reissuing the patent intact and at the same time they said it was irrelevant to the case anyway. E* then followed with their letter from "lala land"


----------



## tivonomo

jacmyoung said:


> Here we are actually talking about a narrowing interpretation made by the examiner (not for reason for allowence, rather for reason of interpretation of the claim term) on the record, and TiVo did not object.


Of course they did. I really have to question your motive for being so persistent on this argument without any factual basis to back up your assertions. You have a long history of conveniently leaving out key facts that conflict with your arguments.

Curtis just showed that you selectively chose what to post from the P&G case. And you continue to falsely claim that TiVo did not dispute the "parse video and audio data" definition by the examiner when that is clearly not the case if you read all of TiVo's argument to the PTO on 9/9. TiVo argues the dictionary definiton of "data" on Page 7 and then continues to refer to "video and audio data" again and again.

For instance on page 9 of the argument to the PTO:



TiVo_to_the_PTO said:


> Accordingly the Thomason system lacks the recited centralized transform object that intelligently manages buffers or the manipulation of the video and audio data so as to facilitate the system's ability to handle asmmetric memory demands of the source and sink objects.


Remember, just because the examiner referred to "parses video and audio data" as employing Krause's i-frame detection to Thomason's system does not narrow or limit TiVo's invention to only analyzing i-frame data.

If you are arguing that TiVo must word for word deny and explicitly redefine the examiners "definition" of "parsing video and audio data", that is not the spirit of the ruling and regardless TiVo demonstrates in the passages I cited that they disagree with that narrowing.


----------



## jacmyoung

tivonomo said:


> Of course they did. I really have to question your motive for being so persistent on this argument without any factual basis to back up your assertions. You have a long history of conveniently leaving out key facts that conflict with your arguments.


What is your motive? Motive is irrelevant. Sometimes having fun and learn is all that is needed. Are you having fun yet?



> For instance on page 9 of the argument to the PTO:


Where did that say anything about if the "detecting start codes" was or was not required by the software claims?



> Remember, just because the examiner referred to "parses video and audio data" as employing Krause's i-frame detection to Thomason's system does not narrow or limit TiVo's invention to only analyzing i-frame data.


The examiner never said "parse audio and video data" was to employ the i-frame detector, the examiner said point blank, the term "parse audio and video data" MEANS "detecting start codes and..."

Please don't confuse what the narrow interpretation the examiner made for a term, with the prior art and claim rejections. An interpretation was made, TiVo did not object to such narrowing interpretation.

All the other back and forth arguments in order to overcome the rejection had nothing to do with that narrowing interpretation.

The case cited by Curtis above was centered on a comment made by the examiner in his REASON FOR ALLOWANCE. Two different things.

Here we are talking about a narrowing interpretation of a claim term made by the examiner, which TiVo could not object to. This one has nothing to do with claim rejection, overcoming rejection, or reason for allowance.

Curtis, Greg and I go way back, we have hundreds if not thousands of exchanges among the three of us, not once have we ever questioned one another's motive, because the debate is about the substances of the issues, not the motives.

If you really want to know my motive, I have already said it, I have always wished DISH and TiVo to work together, they are like-minded companies and can really help out each other, boy do they need help or what?

But I can't help if they refuse to work together, at the meantime, I try not to miss out on the fun of the on-going debate between the two of them.


----------



## jacmyoung

We seem to be in a quiet time on the court front, the only persistent rumor has been that Google might buy TiVo for two reasons. First Google can't risk being sued by TiVo, any DVR functions need TiVo to work or else. Well you know my opinion on this one Second Google buying TiVo will give Google the power to go after all other DVR makers.

On the first point, even if Google fears that TiVo had them by the balls, there is really no basis to speak of. Google has ad deals with both DISH and TiVo. If TiVo can't even nail DISH when DISH actually "copied" TiVo's prototype DVR way back decades ago, no sane person at Google will lose sleep on the GoogleTV possible entrenchment of TiVo. TiVo will have to reinvent its own patent suit to even start on another litigation endeavour.

As stupid logic as the latter one is, even if it can make sense, one would speculate Google would at least wait till the dust settles with this litigation. but then what is the point of getting TiVo patent just so Google can go after other DVR makers? GoogleTV's success is in a big part based on the DVR makers willing to build its functions into their hardware, yet GoogleTV's success is not dependent on any DVR functions, rather the content providers's willingness to let GoogleTV carry their programming, which is not really happening at this time. But TiVo can't help can they? TiVo's main issue is that they themselves do not have content.

Just because some analysts are spreading the rumor that the investors will automatically follow? I like to hear from some of our resident investment experts on this one, those "village people" do not apply though. They are only good at throwing mud at one of their own fellow villagers who decided to sign on with my "jacmyoung" username. Any lawyers here can tell me if that site can be sued for allowing such entrenchment of my username?

Maybe I should call Mr. Chu for some info., after all it is this "TiVo Investor's Village" that is infringing on my name. My only concern is Mr. Chu's going rate, you see I can't even afford to be part of any fee based online forums like "the TiVo Investor's Village."

But any of you lawyers out there who is willing to provide a free consultation, I am all ears Can "TiVo Investors Village" be sued for infringing on some individual's username with the clear intent to mislead the investors, or ridicule someone who argued against TiVo in this forum, when you consider that TiVo is so big on suing for infringement of its own patent?


----------



## James Long

The poison pill is in place regardless of who buys Tivo, but Google has enough money that they probably would not care.


----------



## harsh

jacmyoung said:


> We seem to be in a quiet time on the court front, the only persistent rumor has been that Google might buy TiVo for two reasons. First Google can't risk being sued by TiVo, any DVR functions need TiVo to work or else. Well you know my opinion on this one Second Google buying TiVo will give Google the power to go after all other DVR makers.


What portion of the DVR space is Google into? I can't imagine that the TiVo patents would impact YouTube in any meaningful way.

I see no point in Google acquiring TiVo. I think it more likely that somebody already into hardware technology and patents like HP would go after TiVo. I'd be willing to bet that Cisco has given it some thought.


----------



## jacmyoung

James Long said:


> The poison pill is in place regardless of who buys Tivo, but Google has enough money that they probably would not care.


I would hope they care. I'd like to think carelessness is the downfall of any company, no matter how big it is.


----------



## jacmyoung

harsh said:


> What portion of the DVR space is Google into? I can't imagine that the TiVo patents would impact YouTube in any meaningful way.
> 
> I see no point in Google acquiring TiVo. I think it more likely that somebody already into hardware technology and patents like HP would go after TiVo. I'd be willing to bet that Cisco has given it some thought.


TiVo has other patents. With GoogleTV though the issue is not of hardware technologies, but the content availability, which is a software issue, an issue that has stopped TiVo in its own track.

Let's see if the new rumors will speculate Cisco or HP buying TiVo, if so you can come back and claim credit

Of course if tomorrow the headline is Google buying TiVo, you and I better change our usernames


----------



## HobbyTalk

James Long said:


> The poison pill is in place regardless of who buys Tivo, but Google has enough money that they probably would not care.


The poison pill would only be in effect if the offer to buy TiVo stock is unwelcomed.


----------



## tivonomo

HobbyTalk said:


> The poison pill would only be in effect if the offer to buy TiVo stock is unwelcomed.


Correct. It forces hostile takeovers to pay an unreasonable price and requires anyone interested in an acquisition to go through TiVo's board. Also of note is that the poison pill expires in January. Some people believe that TiVo will not renew it.


----------



## Lake Lover

James Long said:


> The poison pill is in place regardless of who buys Tivo, but Google has enough money that they probably would not care.


The poison pill is potent only so long as the Tivo board of directors keeps it so. The pill can be revoked (cancelled), modified, or extended in as little time as it takes the board to vote and certify its vote. That is, about the time it takes to read this message?

The only sensible change of control of TIVO between now and the full bench hearing, would be as a result of a settlement between the parties. The court has given fair warning that the decision may produce some major discomfort. But the parties do not seem sensible in this regard, or they would have settled by now.

Apple won't touch it until after the full bench hearing is complete. No one would move prior to the hearing.


----------



## jacmyoung

"Lake Lover" said:


> The poison pill is potent only so long as the Tivo board of directors keeps it so. The pill can be revoked (cancelled), modified, or extended in as little time as it takes the board to vote and certify its vote. That is, about the time it takes to read this message?
> 
> The only sensible change of control of TIVO between now and the full bench hearing, would be as a result of a settlement between the parties. The court has given fair warning that the decision may produce some major discomfort. But the parties do not seem sensible in this regard, or they would have settled by now.
> 
> Apple won't touch it until after the full bench hearing is complete. No one would move prior to the hearing.


I agree.

I do want to point out the fact that there have been consistent rumors about a TiVo buyout coming mostly from "TiVo friendly analysts" and very much welcomed by the TiVo investment communities. Seem to me no one on the side of TiVo are actually still having that "poison pill attitude", but rather reaching out and say, "Buy us, please!"

Personally I think a buyout would be good for everyone, just trying to point out the so called "poison pill" is probably the last thing on people's mind for now. If TiVo wins the en banc, maybe it will be more relevant.


----------



## tivonomo

jacmyoung said:


> I agree.
> 
> I do want to point out the fact that there have been consistent rumors about a TiVo buyout coming mostly from "TiVo friendly analysts" and very much welcomed by the TiVo investment communities. Seem to me no one on the side of TiVo are actually still having that "poison pill attitude", but rather reaching out and say, "Buy us, please!"
> 
> Personally I think a buyout would be good for everyone, just trying to point out the so called "poison pill" is probably the last thing on people's mind for now. If TiVo wins the en banc, maybe it will be more relevant.


If you are going to try and make this thread about TiVo investment and Investor Village discussions. At least be accurate and don't lie about it.

If you read that board at all, you would know a lot of people don't favor TiVo being bought out. The majority think that TiVo is worth more on its own. The "rumors" of acquisition are welcomed in the sense that they help the market to realize the true value of TiVo's position in the marketplace and the value of its patent portfolio.


----------



## James Long

Gentlemen ... this is not a discussion about other sites. Let's get back to Tivo vs DISH.


----------



## jacmyoung

Today the appeals court issued an order vacating the E. TX court's denial of Oracle's request to move the case to another district.

Recall in the past few years the appeals court issued surprisingly large number of orders forcing the E. TX court to transfer their patent cases to various other courts.

This Oracle case does not go that far, it merely vacates the E. TX order of denying the transfer request, directing it to reevaluate Oracle's request, with some specific instructions.

Something to think about going into this en banc hearing?


----------



## tivonomo

jacmyoung said:


> Today the appeals court issued an order vacating the E. TX court's denial of Oracle's request to move the case to another district.
> 
> Recall in the past few years the appeals court issued surprisingly large number of orders forcing the E. TX court to transfer their patent cases to various other courts.
> 
> This Oracle case does not go that far, it merely vacates the E. TX order of denying the transfer request, directing it to reevaluate Oracle's request, with some specific instructions.
> 
> Something to think about going into this en banc hearing?


Umm... E* had a chance to appeal the venue of Texas 5+ years ago and with this being the second go around at the CAFC, venue obviously is not an issue any more.

And where did you come up with this fact? "Recall in the past few years the appeals court issued surprisingly large number of orders forcing the E. TX court to transfer their patent cases to various other courts."

It looks like you might be making something up. Transfer motions are common in patent cases... patent holders file suit in the districts that are most advantageous in terms of win %'s and time to reach a decision.


----------



## scooper

tivonomo said:


> Umm... E* had a chance to appeal the venue of Texas 5+ years ago and with this being the second go around at the CAFC, venue obviously is not an issue any more.
> 
> And where did you come up with this fact? "Recall in the past few years the appeals court issued surprisingly large number of orders forcing the E. TX court to transfer their patent cases to various other courts."
> 
> It looks like you might be making something up. Transfer motions are common in patent cases... patent holders file suit in the districts that are most advantageous in terms of win %'s and time to reach a decision.


Which is why a number of patentholders file in East Texas - or have in the past. I recall seeing a figure of 80%+ going to the patentholder in that court a couple of years ago in these threads. Maybe the court has started being a bit more impartial and the odds have changed a bit...


----------



## tivonomo

scooper said:


> Which is why a number of patentholders file in East Texas - or have in the past. I recall seeing a figure of 80%+ going to the patentholder in that court a couple of years ago in these threads. Maybe the court has started being a bit more impartial and the odds have changed a bit...


Sure, Texas and Oregon are both very popular. ED TX is known as the "rocket docket" while Oregon is known for very sympathetic juries to patent holders.

What I question (and hope I get an answer to) is the assertion that jacmyoung made that "the appeals court issued surprisingly large number of orders* forcing the E. TX court to transfer their patent cases *to various other courts"

I want to know the source of this "fact" regarding a large number of forced transfers *by the appeals court*.


----------



## jacmyoung

You obviously have not been here long enough, you don’t see anyone else questioning me on this fact do you? Ever heard of Writ of Mandamus? They are very rear. I wasn’t talking about motion to move venue, this happens a lot, but for the CAFC to issue a Writ of Mandamus against a district court, it has to conclude that the lower court had made a “patently erroneous decision” that the injured party had no legal means other than seeking an unusual relief from the CAFC.

If you don’t know at least be nice.


----------



## tivonomo

jacmyoung said:


> You obviously have not been here long enough, you don't see anyone else questioning me on this fact do you? Ever heard of Writ of Mandamus? They are very rear. I wasn't talking about motion to move venue, this happens a lot, but for the CAFC to issue a Writ of Mandamus against a district court, it has to conclude that the lower court had made a "patently erroneous decision" that the injured party had no legal means other than seeking an unusual relief from the CAFC.
> 
> If you don't know at least be nice.


First, noone else is questioning you because I already have.

Second, you were talking about motion to change venue. I'm not sure why you just said that you weren't. Specifically, you discussed the CAFC determining that the District court erred on such a decision.



jacmyoung said:


> Recall in the past few years the appeals court issued surprisingly large number of orders forcing the E. TX court *to transfer their patent cases to various other courts.*


And I gave you a chance to prove your assertion and you came up with nothing. Except that I "haven't been here long enough".

To my knowledge, the CAFC determining that a district court erred in determining venue is quite rare and this Oracle case is for a very case-specific reason.

And back to my original point, I don't see how this has anything to do with TiVo vs E* as the venue is most definitely settled at this point and it has been for years.


----------



## jacmyoung

tivonomo said:


> To my knowledge, the CAFC determining that a district court erred in determining venue is quite rare.


Ok then, would you think it is even more rare to have such a large number if I tell you the CAFC had issued 5 (maybe even 6 including this one) of such order against E. TX court in the past two years? This court wrapped up more of such orders than all the other district courts combined.

So how is this to do with this case? If this court can so easily make "patently erroneous decisions" in the eyes of the CAFC, would you as a TiVo investor not want to take that into consideration going into the en banc?


----------



## tivonomo

jacmyoung said:


> Ok then, would you think it is even more rare to have such a large number if I tell you the CAFC had issued 5 (maybe even 6 including this one) of such order against E. TX court in the past two years? This court wrapped up more of such orders than all the other district courts combined.
> 
> So how is this to do with this case? If this court can so easily make "patently erroneous decisions" in the eyes of the CAFC, would you as a TiVo investor not want to take that into consideration going into the en banc?


Thanks for clarifying your point... it seemed to have evolved over the course of this discussion.

I'm not really concerned with a few reversals by the CAFC for venue. I glanced at the oracle case and that was a special circumstance involving a contract signed in 2005. Courts make errors and that is why the appeals court is needed.

I wouldn't go as far as to imply that the ED of Texas is an error prone court because of a few cases that got reversed. At least not without looking at the circumstances of those appeals.

The fact is that TiVo had their first appeal upheld and on the current appeal 2 of 3 judges sided with the District Courts ruling.


----------



## jacmyoung

tivonomo said:


> The fact is that TiVo had their first appeal upheld


Irrelevant, two different appeals, many different infringement issues. The only thing is, in the current appeal, by law TiVo is held by a much higher standard of proof than the last one because this one is a summary contempt proceeding. Yet even in the last appeal, half of the TiVo's infringement theories, agreed upon by the jury, were thrown out. Although on the surface TiVo appeared to have won it all.



> and on the current appeal 2 of 3 judges sided with the District Courts ruling.


Good point. One must take the presumption that Judge Folsom, having presided over this patent case for so many years knew what he was doing, and the two out of three appeals court judges agreed with him.

On the other side, we have a top appeals judge, known for standing up for patent rights, basically called TiVo the villian. So how do one assess each other's chances?

I simply look at the questions asked by the en banc panel, because they are the only things we know will be debated on. The first three questions are basically filling blank pages, only the last question can really tip the balance.

The last question takes the position that the injunction was not clear, the en banc panel asks what should it do when (not if) the injunction was ambiguous?

E*'s answer was predictable, no, no, no, an injunction that is not clear cannot be enforced.

TiVo's answer is very interesting, first it said but no the injunction was very clear. Well that was not what the en banc panel was asking.

Then TiVo said even if the injunction was unclear, (1) it would still be the defendants who would need to clarify the order, else (2) the defendants ran the risk of the consequences.

(1) has absolutely no legal basis at all, there has never been one case where the defendants were compelled to clarify an order. The law is very clear that an order must be clear and without ambiguity, else it is not enforceable.

But the most interesting point is the (2), even if we accept TiVo's assertion that the defendants are responsible for clarifying an order, but failing that, they would risk the consequences.

What kind of risk are we talking about? Everyone's risk level is different, everyone's definition of consequences is different. Some may say $0.5 billion is a big risk, others consider $0.5 million a big risk, yet there are others that consider $0.5 a big risk. As long as TiVo agrees the defendants must bear the risk of the consequences, is it not up to the en banc panel to decide what kind of risk or consequence is appropriate?

Do you bet on $0.5B, $0.5M, or $0.5? What kind of betting person are you?


----------



## Greg Bimson

jacmyoung said:


> Then TiVo said even if the injunction was unclear, (1) it would still be the defendants who would need to clarify the order, else (2) the defendants ran the risk of the consequences.
> 
> (1) has absolutely no legal basis at all, there has never been one case where the defendants were compelled to clarify an order. The law is very clear that an order must be clear and without ambiguity, else it is not enforceable.


But there is legal basis. However, using your words, no one was "compelled" to clarify the order.

Dish Network did submit to the court a motion to clarify when they were attempting to figure out how to replace the 721, 921 and 942 DVR's under warranty.

The point is that if Dish Network wanted to reonfigure receivers identified as infringements that were subject to injunction, they should have submitted a motion to clarify in order to remove them from the scope of the injunction. The best example is that the injunction mandated that all DVR functionality was to be removed from those receivers for the life of the patent, so receivers without DVR functionality are still within the scope of the injunction.


----------



## harsh

Greg Bimson said:


> The best example is that the injunction mandated that all DVR functionality was to be removed from those receivers for the life of the patent, so receivers without DVR functionality are still within the scope of the injunction.


Is there any tangible evidence that the ViP211 has been discussed as being part of the injunction?


----------



## CuriousMark

harsh said:


> Is there any tangible evidence that the ViP211 has been discussed as being part of the injunction?


Of course not. Only the models specifically listed in the injunction itself fall under the scope of the injunction. His point is that those receiver STILL fall under the scope of the injunction even if they have their DVR capabilities surgically removed.


----------



## CuriousMark

TiVo has placed a nice summary of this whole affair, including a time line and the various legal briefs from TiVo, Dish and interested third parties (amicus briefs), on a website for all to see at http://phx.corporate-ir.net/phoenix.zhtml?c=106292&p=En_Banc

So now we have lots of fodder for further discussion.


----------



## tivonomo

CuriousMark said:


> TiVo has placed a nice summary of this whole affair, including a time line and the various legal briefs from TiVo, Dish and interested third parties (amicus briefs), on a website for all to see at http://phx.corporate-ir.net/phoenix.zhtml?c=106292&p=En_Banc
> 
> So now we have lots of fodder for further discussion.


It's great to see TiVo value clear and open communication about this court case.


----------



## jacmyoung

"CuriousMark" said:


> Of course not. Only the models specifically listed in the injunction itself fall under the scope of the injunction. His point is that those receiver STILL fall under the scope of the injunction even if they have their DVR capabilities surgically removed.


And do anyone dare to agree?

With respect to the 921s...E thought clarification after the contempt motion, and the 921s...in question were NOT under the contempt charges to begin with, so I don't think the example applies here.

Thanks for the heads up with the TiVo site, I agree it is an above the board act even though in such late stage I don't feel checking it out.


----------



## tivonomo

jacmyoung said:


> And do anyone dare to agree?
> 
> With respect to the 921s...E thought clarification after the contempt motion, and the 921s...in question were NOT under the contempt charges to begin with, so I don't think the example applies here.
> 
> Thanks for the heads up with the TiVo site, I agree it is an above the board act even though in such late stage I don't feel checking it out.


As usual, Mark is correct.

I'm curious why you don't want to check out the filings TiVo posted? I mean you were just reading through some irrelevant Oracle case yesterday. The en banc briefs as well as the amicus briefs are quite relevant to this case. And also are much more interesting than anything discussed here recently (IMO).


----------



## jacmyoung

tivonomo said:


> As usual, Mark is correct.


Are you saying Greg was wrong then?



> I'm curious why you don't want to check out the filings TiVo posted? I mean you were just reading through some irrelevant Oracle case yesterday. The en banc briefs as well as the amicus briefs are quite relevant to this case. And also are much more interesting than anything discussed here recently (IMO).


Because I do wonder the timing of it. For years E* has warned its investors of the worst case scenario of this litigation, and TiVo had always painted a rosy picture. Only now TiVo decided to lay all the arguments out, good or bad, for its investors to see. E* has prepared for the worst for its investors all along, what is TiVo trying to prepare for its investors at this time?

Can't say we were not open about it, can't you?


----------



## James Long

tivonomo said:


> It's great to see TiVo value clear and open communication about this court case.


It is a major factor in their business (note the Tivo stock swings any time something happens in the case).
It certainly saves a lot of digging to find those documents via the court's website.

It appears this "openness" is just a response to the last negative stock swing when the en banc was granted.
Has that page (or one similar) been up since 2006 keeping stockholders fully informed?


----------



## Curtis52

CuriousMark said:


> Of course not. Only the models specifically listed in the injunction itself fall under the scope of the injunction. His point is that those receiver STILL fall under the scope of the injunction even if they have their DVR capabilities surgically removed.


Products only colorably different from the Infringing Prodocts are also enjoined. If the ViP DVRs are only colorably different they are already enjoined and Dish would be in contempt.



> 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 or selling in the Untied States, the Infringing Products, either alone or in combination with *any other product and all other products that are only colorably different* therefrom in the context of the Infringed Claims, whether individually or in combination with other products or as a part of another product, and from otherwise infringing or inducing others to infringe the Infringed Claims of the '389 patent.


----------



## jacmyoung

As much as Tivonomo wants to point out my bias, and often rightfully so, I am eternally hopeful that the two of them would agree to work together, for no one else then at least for the benefit of mankind


----------



## tivonomo

James Long said:


> It is a major factor in their business (note the Tivo stock swings any time something happens in the case).
> It certainly saves a lot of digging to find those documents via the court's website.
> 
> It appears this "openness" is just a response to the last negative stock swing when the en banc was granted.
> Has that page (or one similar) been up since 2006 keeping stockholders fully informed?


I don't believe it has to do with the stock price. I think it has to do with the en banc being a big deal and the fact that the CAFC doesn't make these filings available online like the district courts do. I know quite a few investors have emailed TiVo about these filings.

I'm actually quite shocked that they went through this trouble. I've never seen or heard of any company posting all of their filings on their investor relations website. Companies like Dish are the norm... most likely due to the lawyers involved. For example, it took them several days to issue a PR on the recent PTO ruling on TiVo's patent.


----------



## tivonomo

Curtis52 said:


> Products only colorably different from the Infringing Prodocts are also enjoined. If the ViP DVRs are only colorably different they are already enjoined and Dish would be in contempt.


Of course. But there has been no determination by the courts (yet) regarding colorable differences on the ViP. We only presume that they will be enjoined.


----------



## tivonomo

jacmyoung said:


> As much as Tivonomo wants to point out my bias, and often rightfully so, I am eternally hopeful that the two of them would agree to work together, for no one else then at least for the benefit of mankind


I believe your bias was established long before I arrived to the conversation. 

Regarding the two working together, I wouldn't get your hopes up. It's pretty clear Ergen wants to be the low cost provider in the satellite world and that means he wants to share as little revenue with TiVo as possible - win or lose. I am a lot more interested in TiVo and DTV working together.


----------



## James Long

tivonomo said:


> I don't believe it has to do with the stock price. I think it has to do with the en banc being a big deal and the fact that the CAFC doesn't make these filings available online like the district courts do. I know quite a few investors have emailed TiVo about these filings.


Tivo investors care about the issue as it affects them more. Not surprising. (And that care is reflected in the stock price. Look at the past couple of years and you will see large jumps when "good news" or "bad news" came from the courts on this issue.)


----------



## tivonomo

James Long said:


> Tivo investors care about the issue as it affects them more. Not surprising. (And that care is reflected in the stock price. Look at the past couple of years and you will see large jumps when "good news" or "bad news" came from the courts on this issue.)


I know. I've traded every single one of those events.


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## phrelin

tivonomo said:


> I know. I've traded every single one of those events.


So you're the reason for all the fluctuation....:sure:


----------



## tivonomo

phrelin said:


> So you're the reason for all the fluctuation....:sure:


Even the biggest whales aren't the reason for the waves in the ocean.


----------



## James Long

tivonomo said:


> Even the biggest whales aren't the reason for the waves in the ocean.


They do tend to get pushed around more by the waves than those who have found safety on land (perhaps in a tank at a theme park - not beached as you may have assumed).


----------



## jacmyoung

"tivonomo" said:


> I believe your bias was established long before I arrived to the conversation.
> 
> Regarding the two working together, I wouldn't get your hopes up. It's pretty clear Ergen wants to be the low cost provider in the satellite world and that means he wants to share as little revenue with TiVo as possible - win or lose. I am a lot more interested in TiVo and DTV working together.


I am glad you mentioned DTV, as a DTV sub, I resisted saying this, but the biggest culprit in TiVo's difficulties is DTV IMHO.

It is DTV that propped TiVo up then stepped on it when DTV started moving people away from TiVo as soon as DTV worked out their own DVRs and bought ReplayTV IPs. DTV's abandoning of TiVo has a lot more to do with TiVo's misery than E* had ever been able to achieve.

Using James' analogy, E* is like the ocean wave, occasionally pushing the whales around but in general the whales liked the benefit the waves offered, but DTV is all those beaches that the whales end up running into


----------



## tivonomo

James Long said:


> They do tend to get pushed around more by the waves than those who have found safety on land (perhaps in a tank at a theme park - not beached as you may have assumed).


Ok. That is totally over my head... If the water is the stock market, what is the land supposed to be? The bond market?


----------



## tivonomo

jacmyoung said:


> I am glad you mentioned DTV, as a DTV sub, I resisted saying this, but the biggest culprit in TiVo's difficulties is DTV IMHO.
> 
> It is DTV that propped TiVo up then stepped on it when DTV started moving people away from TiVo as soon as DTV worked out their own DVRs and bought ReplayTV IPs. DTV's abandoning of TiVo has a lot more to do with TiVo's misery than E* had ever been able to achieve.


I wasn't surprised when DTV went their own direction with DVRs. Everyone else was going with generic DVRs or their own DVR. Both of those routes are far more profitable than licensing TiVo's (or Replay's) DVR.

And companies certainly don't like making less profit than their competition. Dish was literally stealing TiVo's DVR technology and getting away with it.
DTV realized that they needed to do the same in order to compete. And DTV signed a licensing deal after the first go around in Folsom's court when they realized TiVo was succeeding in the defense of their technology. Several cable MSO's signed as well.


----------



## jacmyoung

tivonomo said:


> And DTV signed a licensing deal after the first go around in Folsom's court when they realized TiVo was succeeding in the defense of their technology. Several cable MSO's signed as well.


That is why I say DTV is the true "evil" in TiVo's misery, it signed an agreement with TiVo so it can "steal" from TiVo legally while replacing all the TiVo DVRs with their own DVRs, and TiVo can do nothing about it.

Barking on the wrong tree Tivonomo


----------



## James Long

tivonomo said:


> Ok. That is totally over my head... If the water is the stock market, what is the land supposed to be? The bond market?


Simply out of the stock market. I could care less what happens to Tivo or DISH stock. I own neither (unless the mutual fund my IRA is in has invested in one of those companies - but such ownership would be very minor compared to other investments the fund has made).

If DISH loses the worst case my 501 gets replaced with a newer receiver and Tivo goes to court in a couple of years (after all of the appeals) to fight for several more years to shut down the next models. DISH goes another billion dollars in debt. No skin off my nose - nor any other regular subscriber.

If DISH wins it will free them up to put Tivo behind them (after all of the appeals) and move on to replacing the same receivers for other reasons (MPEG2 transmission becoming obsolete). My 501 and 301 will be replaced.

What's the difference to a DISH customer? Some Tivo induced fantasy where DISH goes completely bankrupt? There always seems to be one issue or another that will put DISH out of business. None have and DISH has not had an unprofitable quarter since at least 2005 nor an unprofitable year since 2003.


----------



## dgordo

tivonomo said:


> Ok. That is totally over my head... If the water is the stock market, what is the land supposed to be? The bond market?


CDs


----------



## tivonomo

James Long said:


> If DISH loses the worst case my 501 gets replaced with a newer receiver and Tivo goes to court in a couple of years (after all of the appeals) to fight for several more years to shut down the next models. DISH goes another billion dollars in debt. No skin off my nose - nor any other regular subscriber.


That's not too smart of a move given that any box that DISH would replace the boxes with is not proven to be colorably different. If the new DVR's were found to be not colorably different after a couple of more years in court (as you suggest) E* would be subject to damages of MUCH larger than $1.25 per box.

Therefore, I don't think Ergen would go that route... it would essentially be risking throwing away a billion dollars.

Also, if DISH loses on a new trial on the new workaround they would be at a much larger disadvantage in negotiating a settlement with TiVo. So we'd be talking about risking something on the order of 2 billion dollars if DISH rolls the dice.


----------



## phrelin

tivonomo said:


> Therefore, I don't think Ergen would go that route... it would essentially be risking throwing away a billion dollars.
> 
> Also, if DISH loses on a new trial on the new workaround they would be at a much larger disadvantage in negotiating a settlement with TiVo. So we'd be talking about risking something on the order of 2 billion dollars if DISH rolls the dice.


A billion here, a billion there....

As I've noted before, Charlie is collecting the same fee for a completely depreciated 501 as he is a ViP612. Since February, he has a sufficient revenue stream to pay $5 a month to TiVo for the listed boxes if he had to.

To say he wouldn't take the risk is to deny every past legal conflict we've seen. He might not take the risk, but that would not be the Charlie behavior I've come to expect.


----------



## scooper

phrelin said:


> A billion here, a billion there....
> 
> As I've noted before, Charlie is collecting the same fee for a completely depreciated 501 as he is a ViP612. Since February, he has a sufficient revenue stream to pay $5 a month to TiVo for the listed boxes if he had to.
> 
> To say he wouldn't take the risk is to deny every past legal conflict we've seen. He might not take the risk, but that would not be the Charlie behavior I've come to expect.


Well stated...


----------



## tivonomo

phrelin said:


> A billion here, a billion there....
> 
> As I've noted before, Charlie is collecting the same fee for a completely depreciated 501 as he is a ViP612. Since February, he has a sufficient revenue stream to pay $5 a month to TiVo for the listed boxes if he had to.
> 
> To say he wouldn't take the risk is to deny every past legal conflict we've seen. He might not take the risk, but that would not be the Charlie behavior I've come to expect.


Hardly "well stated".

Maybe the folks in Congress have that attitude about a billion dollars but Ergen certainly does not have that luxury and certainly he has not taken a risk of that magnitude in the past.

Even if he could afford a billion or two, it would still come out of Dish's profits and therefore out of Charlie Ergen's net worth.

See, its all about shrewed decision making. Charlie's "behavior" is financially justified. The risk to date has been the difference between a "free license" of TiVo if DISH won in court or a compulsary license of $1.25 per month. Both outcomes justify fighting TiVo in court regardless of DISH's true opinion on whether they infringe or not. Even $2 per month is justifiable based on the greater profit DISH makes by selling their own DVR's compared to selling or licensing a third party DVR.

However, in this discussion we are talking about replacing DVR's and taking a chance on a new trial and a patent friendly jury pool in Texas. The consequence of losing that battle would indeed be billions. That would be on the order of $5 per month or more. That would not be financially beneficial to Dish.


----------



## jacmyoung

Incorrect assessments on both sides for ignoring the facts.

When the injunction came down, DISH engineers came up with a work around, tested in the lab to be sure it would work, hired a reputable law firm to go through every detail to make sure the work around did not infringe.

The fact that Judge Folsom disagreed with Charlie does not make DISH careless, it was a well caculated risk they took with a very high level of caution because they learned from the last deal, which is why till today TiVo still has not seen another penny from them.


----------



## James Long

tivonomo said:


> That's not too smart of a move given that any box that DISH would replace the boxes with is not proven to be colorably different. If the new DVR's were found to be not colorably different after a couple of more years in court (as you suggest) E* would be subject to damages of MUCH larger than $1.25 per box.
> 
> Therefore, I don't think Ergen would go that route... it would essentially be risking throwing away a billion dollars.


How many years has he held off Tivo so far? He's good at this. Let the man work. 

Besides, as noted, it is not my problem. Only in a Tivo induced fantasy would any of this really affect me.


----------



## tivonomo

James Long said:


> How many years has he held off Tivo so far? He's good at this. Let the man work.


I guess we're going on 6 years. Ergen was definitely smart to go this route but going too far is a very fine line that he better not cross. If the en banc does not go strongly in favor of E*, he will need to settle or the potential cost of going at it in the courts will grow exponentially.



James Long said:


> Besides, as noted, it is not my problem. Only in a Tivo induced fantasy would any of this really affect me.


Ain't my problem either, but it is an interesting debate. Bottom line is that Ergen/DISH need a new trial on the workaround and a new, limited injunction. Otherwise, no businessman could justify the risk of going forward in the courts.


----------



## James Long

tivonomo said:


> I guess we're going on 6 years. Ergen was definitely smart to go this route but going too far is a very fine line that he better not cross. If the en banc does go strongly in favor of E*, he will need to settle or the potential cost of going at it in the courts will grow exponentially.


If DISH wins they need to settle?

OK ....



> Bottom line is that Ergen/DISH need a new trial on the workaround and a new, limited injunction. Otherwise, no businessman could justify the risk of going forward in the courts.


Who is to say that a working "workaround" has not already been accomplished? Just because Judge Folsom wants to know before one is deployed doesn't mean that DISH/SATS cannot continue to develop and test the solution they need.


----------



## tivonomo

James Long said:


> If DISH wins they need to settle?
> 
> OK ....


The answer is obvious.



James Long said:


> Who is to say that a working "workaround" has not already been accomplished? Just because Judge Folsom wants to know before one is deployed doesn't mean that DISH/SATS cannot continue to develop and test the solution they need.


History.

Given that DISH's first workaround method should have been their best effort, I can't expect the second to be any better. Really, that workaround was something designed more by lawyers than programmers... not exactly the innovation that Judge Rader is championing.

Once someone understood that, I don't see how anyone could be hopeful on a second workaround. To date, DISH has only been testing a second workaround and has not announced any success. If I were rooting for DISH, I wouldn't get my hopes up.

Three judges and the PTO have already seen through this smoke and mirrors "legal innovation" game. This en banc is more about the legal process than suddenly realizing that DISH might not be infringing on TiVo's patent.


----------



## James Long

Seems like another Tivo induced fantasy. There were DVRs before Tivo came up with their way of doing it. There can be DVRs that do not infringe on Tivo's methods.


----------



## tivonomo

James Long said:


> Seems like another Tivo induced fantasy. There were DVRs before Tivo came up with their way of doing it. There can be DVRs that do not infringe on Tivo's methods.


And you dare to talk about fantasy? Let's pop that cartoonish cloud bubble over your head and look at the facts.

The PTO did not find a prior patent to TiVo's. The judges so far have determined that the "legal innovation" workaround is a failure.

What options are left... well, you can go the brute force way but that is counter productive because you have an inferior DVR or your DVR is considerably more expensive than that of your competition.

Anyway, when you find a shred of evidence that DISH has a legitimate method - we can discuss what you allege is a TiVo induced fantasy. :grin:


----------



## scooper

tivonomo said:


> The answer is obvious.
> 
> History.
> 
> Given that DISH's first workaround method should have been their best effort, I can't expect the second to be any better. Really, that workaround was something designed more by lawyers than programmers... not exactly the innovation that Judge Rader is championing.
> 
> Once someone understood that, I don't see how anyone could be hopeful on a second workaround. To date, DISH has only been testing a second workaround and has not announced any success. If I were rooting for DISH, I wouldn't get my hopes up.
> 
> Three judges and the PTO have already seen through this smoke and mirrors "legal innovation" game. This en banc is more about the legal process than suddenly realizing that DISH might not be infringing on TiVo's patent.


You obviously haven't read Dish/ Echostar's description of their change - it has zippo to do with an index table anymore. Lawyers only can understand law - I don't trust any of them to understand real technical differences.


----------



## tivonomo

scooper said:


> You obviously haven't read Dish/ Echostar's description of their change - it has zippo to do with an index table anymore. Lawyers only can understand law - I don't trust any of them to understand real technical differences.


Obviously you don't know what you are talking about to be making such accusations.


----------



## jacmyoung

tivonomo said:


> Obviously you don't know what you are talking about to be making such accusations.


How much do you know? How many times you have accused me of lying or making things up only to find out it was you who did not know better than most of the participants here, on either side?

What do you mean the second work around will fail? E* had repeatedly asked Judge Folsom to review and approve the second work around, Folsom only said his was too busy to deal with that so I was going to stay my injunction and see what happened.

Sounded to me if you made a point to require E* to seek preapproval for any second work around, and E* does just that, you would at least try to find time to do a review, after all it is you who is so adamant that E* stops the current infringement, am I right or not? So why continue to find excuse that I have no time to do what the court is task to do, that is to try to stop the alleged continuing infringement by reviewing the new work around to see if it no longer infringes, if so, everyone will be happy right?

The fact Judge Folsom avoids the very duty he insisted he needs to do in his injunction, dose that not tell you maybe, just maybe, after he read more, he realized E* indeed had already suceeded in its first work around? Only then you can explain why he did not see any reason to waste more time to review another work around.

I am not saying that is what in his mind, only to show how logic works, you may not agree with the above logic, but try to come up with your own and see how far it will go.


----------



## CuriousMark

scooper said:


> You obviously haven't read Dish/ Echostar's description of their change - it has zippo to do with an index table anymore. Lawyers only can understand law - I don't trust any of them to understand real technical differences.


It is a real change and gets them out from under the hardware claims where the index table is required. Nowhere do the software claims require that, but E* is careful to ignore that basic fact. Obviously Dish will highlight the things they want to draw attention to in their description and gloss over the parts they don't want noticed. TiVo's job was to bring attention to those and try to show how the highlit things didn't matter. Dish's change just didn't get them all the way out from under the software claims, though it was certainly a very good try.


----------



## Greg Bimson

jacmyoung said:


> Sounded to me if you made a point to require E* to seek preapproval for any second work around, and E* does just that, you would at least try to find time to do a review, after all it is you who is so adamant that E* stops the current infringement, am I right or not? So why continue to find excuse that I have no time to do what the court is task to do, that is to try to stop the alleged continuing infringement by reviewing the new work around to see if it no longer infringes, if so, everyone will be happy right?


Currently, there is no requirement to evaluate a work around.


----------



## jacmyoung

Greg Bimson said:


> Currently, there is no requirement to evaluate a work around.


If so, then only when the requirement kicks in should E* begin to accumulate liability, but since this is not true, therefore your answer is not correct. Infringement must stop at any time regardless if there is injunction or not, else damages will accumulate, even possible sactions. The problem is, E* cannot implement anything this time unless the court approves it. You can't blame E* for not stopping any alleged infringement when the court refuses to let E* do so.


----------



## jacmyoung

Now we have this analyst telling the investors TiVo is looking good for one reason, the PTO again affirmed its patent. Supposedly the CAFC judges will take a look at the PTO documents and highly regard the affirmation in TiVo's favor.

Hello? It has been E* who tried to have the judges review the PTO proceedings as evidence in E*'s support, and TiVo has been trying to keep the PTO evidence out of the court, arguing that it is irrelevant to the court proceedings.

Sometimes I wonder how analysts keep their jobs.


----------



## Greg Bimson

jacmyoung said:


> If so, then only when the requirement kicks in should E* begin to accumulate liability, but since this is not true, therefore your answer is not correct. Infringement must stop at any time regardless if there is injunction or not, else damages will accumulate, even possible sactions. The problem is, E* cannot implement anything this time unless the court approves it. You can't blame E* for not stopping any alleged infringement when the court refuses to let E* do so.


Again, there is no requirement to evaluate a workaround. There will be if Judge Folsom's injunction is in full force and effect. Because the injunction is not in effect, Dish Network most certainly can implement anything they want.


----------



## Curtis52

Greg Bimson said:


> Because the injunction is not in effect, Dish Network most certainly can implement anything they want.


 Yep, even so, there would be those that claim Dish acted in bad faith and was "sneaky". Deja Vu.


----------



## harsh

jacmyoung said:


> Sometimes I wonder how analysts keep their jobs.


They don't have to make sense or be backed up with precedent, they just have to _appear_ to be reasoned. Clients pay for news and they expect to get it whether or not anything has materially happened.


----------



## jacmyoung

Curtis52 said:


> Yep, even so, there would be those that claim Dish acted in bad faith and was "sneaky". Deja Vu.


Not only that but in contempt Except Greg does not want to face the issue of E* cannot do anything unless the court first approves it this time. TiVo cannot now say but the order is stayed E* can do whatever during the stay, if so, E* can say hey then we should not be held responsible during the last stay you know.

So can we start all over and be consistent this time?


----------



## jacmyoung

harsh said:


> They don't have to make sense ... they just have to _appear_ to be reasoned.


How do you appear reasonable but make no sense at the same time?


----------



## Greg Bimson

jacmyoung said:


> Not only that but in contempt Except Greg does not want to face the issue of E* cannot do anything unless the court first approves it this time.


Let's make this simplistic as possible:

Dish Network cannot be held in contempt of an injunction that is not in full force and effect. Therefore, Dish Network can infringe, sell infringing devices, keep devices with their functionality enabled, and employ any workaround they see fit.

So I am completely facing "the issue of E* cannot do anything unless the court first approves it this time." Contempt cannot be found against an order that isn't active. However, if infringement is still present, TiVo can ask for more damages because the infringement is still present.


jacmyoung said:


> TiVo cannot now say but the order is stayed E* can do whatever during the stay, if so, E* can say hey then we should not be held responsible during the last stay you know.


Contempt was found because Dish Network was still infringing and was still enabling DVR functionality on the receivers ordered disabled once the injunction became active.

Technically, Dish Network can do whatever they like. If they don't employ a workaround during this stay, and the DVR's are still infringements after the appeals expire, Dish Network will be on the hook for more money while infringing during the stay period. But they cannot be found in contempt during the stay period, as there is no active order.

The problem with the argument is that there is tying of the injunction to ongoing damages for infringement. They are separate issues. Contempt is simply a violation of the order. Damages are awarded because of ongoing infringement, which has nothing to do with contempt. That is why TiVo was awarded damages during the stay period (even though Dish Network argued that their workaround limited the damages), yet contempt was only found because once the order was _active_, Dish Network was found in violation of two different provisions.

Ongoing infringement and following the orders of an inactive injunction are two different items. It's legalese. No one is expected to remember it all.


----------



## jacmyoung

Greg Bimson said:


> Let's make this simplistic as possible:
> 
> Dish Network cannot be held in contempt of an injunction that is not in full force and effect. Therefore, Dish Network can infringe, sell infringing devices, keep devices with their functionality enabled, and employ any workaround they see fit.
> 
> So I am completely facing "the issue of E* cannot do anything unless the court first approves it this time." Contempt cannot be found against an order that isn't active. However, if infringement is still present, TiVo can ask for more damages because the infringement is still present.Contempt was found because Dish Network was still infringing and was still enabling DVR functionality on the receivers ordered disabled once the injunction became active.
> 
> Technically, Dish Network can do whatever they like. If they don't employ a workaround during this stay, and the DVR's are still infringements after the appeals expire, Dish Network will be on the hook for more money while infringing during the stay period. But they cannot be found in contempt during the stay period, as there is no active order.
> 
> The problem with the argument is that there is tying of the injunction to ongoing damages for infringement. They are separate issues. Contempt is simply a violation of the order. Damages are awarded because of ongoing infringement, which has nothing to do with contempt. That is why TiVo was awarded damages during the stay period (even though Dish Network argued that their workaround limited the damages), yet contempt was only found because once the order was _active_, Dish Network was found in violation of two different provisions.
> 
> Ongoing infringement and following the orders of an inactive injunction are two different items. It's legalese. No one is expected to remember it all.


You seem to making argument only you are making. Why don't you read what E* said, what TiVo said, and what the judge said?

E* asked the judge to review the new work around, did TiVo object? No, TiVo never said but it was not necessary because the order was stayed and E* could just implement the work around as they wished, TiVo said let's have a full discovery.

The judge never said oh don't worry E*, you do whatever because my order is stayed. In fact Judge Folsom pointed out the serious need to timely clarify the issue for both E* and TiVo on the issue of the new work around, only that at that time he did not have time to do so for them.

So please try to stay with the arguments made by the parties involved in this case.


----------



## Greg Bimson

jacmyoung said:


> You seem to making argument only you are making. Why don't you read what E* said, what TiVo said, and what the judge said?
> 
> E* asked the judge to review the new work around, did TiVo object? No, TiVo never said but it was not necessary because the order was stayed and E* could just implement the work around as they wished, TiVo said let's have a full discovery.


Okay.

What motion is currently in front of Judge Folsom's court?


jacmyoung said:


> The judge never said oh don't worry E*, you do whatever because my order is stayed. In fact Judge Folsom pointed out the serious need to timely clarify the issue for both E* and TiVo on the issue of the new work around, only that at that time he did not have time to do so for them.
> 
> So please try to stay with the arguments made by the parties involved in this case.


I'll be happy to follow the guideline, with a caveat:

Complaining that Dish Network has "informed" the court of their workaround attempt because that is what the injunction says to do, yet the injunction also says to disable the DVR functionality of the DVR's found infringing and they aren't disabled yet. The argument that "Dish Network is simply following the injunction" was made by neither party, but is continually being addressed here.

So I'll be happy to stay within the arguments made by the parties as long as everyone else does the same.


----------



## tivonomo

jacmyoung said:


> So please try to stay with the arguments made by the parties involved in this case.


Considering how you just distorted those arguments, I don't think you have any room to lecture someone else about them.


----------



## James Long

jacmyoung said:


> You seem to making argument only you are making. Why don't you read what E* said, what TiVo said, and what the judge said?


You're missing the point.

There is NO injunction in effect. DISH can do whatever they like as long as there is no injunction in effect. They could revert to 2005 code and reenable everything they disabled as long as there is no injunction in effect. (That would not be recommended as restoring infringing code would add more months and infringing units to eventually pay court ordered royalties for. It would be better to have non-infringing code in place and, when it comes to that, be able to prove it.)


----------



## bnborg

jacmyoung said:


> How do you appear reasonable but make no sense at the same time?


Politicians do it all the time.


----------



## jacmyoung

Greg Bimson said:


> Okay.
> 
> What motion is currently in front of Judge Folsom's court?


The motion for Judge Folsom to review the new work arounds by E*, had been sitting on his desk since I think March.



> I'll be happy to follow the guideline, with a caveat:
> 
> Complaining that Dish Network has "informed" the court of their workaround attempt because that is what the injunction says to do, yet the injunction also says to disable the DVR functionality of the DVR's found infringing and they aren't disabled yet. The argument that "Dish Network is simply following the injunction" was made by neither party, but is continually being addressed here.
> 
> So I'll be happy to stay within the arguments made by the parties as long as everyone else does the same.


Did you get to see the new codes in the new work around? TiVo did, TiVo never said to Judge Folsom, look E*'s new work around still had DVR functions, TiVo just said yes let's do a discovery to figure it out. E* wanted the judge to figure it out for them too, even the judge said he understood the need to help both parties to figure it out, only that he did not have time to do so.

Neither TiVo, nor Judge Folsom ever even implied that E* could just implement all it wanted just because the order was stayed. So yes please stick to the arguments they made.


----------



## tivonomo

jacmyoung said:


> Neither TiVo, nor Judge Folsom ever even implied that E* could just implement all it wanted just because the order was stayed. So yes please stick to the arguments they made.


TiVo clearly believed that there was no need for E* to worry due to the stay.



Judge_Folsom said:


> Plaintiff opposes any expedited briefing and adds that Defendants' claims of emergency are premature because the Court's injunction is stayed pending the outcome of Defendants' petition for rehearing en banc. Dkt. No. 1029 at 2 & 4


After all of this time, ALL of your posts, have you not learned what a stay does and means?

Stay = No injunction = E* can do whatever they want

Of course once the injunction is reinstated, E* is at risk of being found to be still infringing under the injunction.


----------



## Greg Bimson

Greg Bimson said:


> Okay.
> 
> What motion is currently in front of Judge Folsom's court?





jacmyoung said:


> The motion for Judge Folsom to review the new work arounds by E*, had been sitting on his desk since I think March.


I see in the discourse of one of the other threads that the injunction was stayed by Judge Folsom until June, 2010. I see it is an "emergency motion for resolution".

What I don't see is any schedule to get this ball rolling. Remember all of the meetings and schedules issued by docket during the contempt charge? Nothing is here, yet. It may be because I haven't been able to read any of them, but I did see that they were docket numbers in the 1020's to docket number 1040.

Of course, TiVo is entitled to discovery, and I'm not sure that was ever granted.


jacmyoung said:


> Neither TiVo, nor Judge Folsom ever even implied that E* could just implement all it wanted just because the order was stayed. So yes please stick to the arguments they made.


That's because...

When the injunction became active the first time, it was clear that EchoStar didn't bother informing the court of the possible workaround when the requirement was to disable DVR functionality.

This go around is exactly what should have happened last time, and once again, there is no mention that Dish Network may have actually downloaded workaround #2 already without anyone noticing. EchoStar can certainly do that and it wouldn't have to be brought up to the court.

I'm making the argument because it wasn't addressed by anyone at all. The issue on the docket is to determine if the workaround is still infringing; it doesn't address that the workaround may have already been deployed, could be deployed or hasn't even been deployed, as it is irrelevant to the motion itself. That is why you don't see anyone addressing it.


----------



## jacmyoung

tivonomo said:


> TiVo clearly believed that there was no need for E* to worry due to the stay.


Only in terms of not having to rush into implementing anything, i.e. not even having to disable the DVR functions. Hopefully such statement can later be used by E* to its benefit, if TiVo wins en banc

But TiVo did not say E* could implement all E* wanted because of the stay, TiVo in fact wanted to have a full discovery into the new work around.

It does not matter what I have learned, it matters what E* had said, what TiVo had said, and what Judge Folsom had said. Because based on what I have learned E* has been in compliance since 07, but not according to TiVo or Judge Folsom, so I say stick to what they have to say


----------



## jacmyoung

Greg Bimson said:


> I see in the discourse of one of the other threads that the injunction was stayed by Judge Folsom until June, 2010. I see it is an "emergency motion for resolution".
> 
> What I don't see is any schedule to get this ball rolling. Remember all of the meetings and schedules issued by docket during the contempt charge? Nothing is here, yet. It may be because I haven't been able to read any of them, but I did see that they were docket numbers in the 1020's to docket number 1040.
> 
> Of course, TiVo is entitled to discovery, and I'm not sure that was ever granted.That's because...
> 
> When the injunction became active the first time, it was clear that EchoStar didn't bother informing the court of the possible workaround when the requirement was to disable DVR functionality.
> 
> This go around is exactly what should have happened last time, and once again, there is no mention that Dish Network may have actually downloaded workaround #2 already without anyone noticing. EchoStar can certainly do that and it wouldn't have to be brought up to the court.
> 
> I'm making the argument because it wasn't addressed by anyone at all. The issue on the docket is to determine if the workaround is still infringing; it doesn't address that the workaround may have already been deployed, could be deployed or hasn't even been deployed, as it is irrelevant to the motion itself. That is why you don't see anyone addressing it.


It was not deployed by E* because E* told Judge Folsom E* needed him to approve it so E* could implement it. Judge Folsom never gave a final answer. He did not say hey go ahead do it since my order was stayed, he only said I had no time to review it.

Would you go ahead implement it anyway without the judge's blessing this time, giving that he made it very clear he did not like you do so without his approval, regardless whether the order is stayed or not?


----------



## scooper

As long as the judge did not explicitly say "don't deploy it" - I would. If nothing else - it's "less infringing" than the original, and there's a good chance that it isn't infringing.


----------



## tivonomo

jacmyoung said:


> It was not deployed by E* because E* told Judge Folsom E* needed him to approve it so E* could implement it. Judge Folsom never gave a final answer. He did not say hey go ahead do it since my order was stayed, he only said I had no time to review it.
> 
> Would you go ahead implement it anyway without the judge's blessing this time, giving that he made it very clear he did not like you do so without his approval, regardless whether the order is stayed or not?


All Folsom said was that the injunction was not complied with. If the injunction exists (is not stayed or overturned), it must be complied with. Since it is stayed, E* can do whatever they please, and nobody has said anything differently except you.


----------



## Greg Bimson

jacmyoung said:


> Would you go ahead implement it anyway without the judge's blessing this time, giving that he made it very clear he did not like you do so without his approval, regardless whether the order is stayed or not?


So let's examine this legal rathole...

Sure. Go ahead and implement it. Why?

Because there's still that little issue at the CAFC. If the CAFC changes anything from Folsom's ruling, then EchoStar has the ability to do some things differently.

If the CAFC reaffirms Judge Folsom's ruling, then...

Once the injunction is active, EchoStar must disable the DVR functionality on the devices. The workaround then becomes irrelevant, other than to a) determine if it no longer infringes in terms of damages, and b) if it no longer infringes it might be able to be deployed to the enjoined boxes.


----------



## CuriousMark

scooper said:


> As long as the judge did not explicitly say "don't deploy it" - I would. If nothing else - it's "less infringing" than the original, and there's a good chance that it isn't infringing.


It makes sense that given current conditions they could have deployed it if they wanted to. But they haven't. Some possible reasons why not might be:


They believe they really do need the Judge's approval
They don't trust that the new workaround is "less infringing" enough to be worth the risk
The new work around works quite badly and though non-infringing is not something they want to inflict on their customers if they can avoid it

Surely this list can be expanded, but that is what comes to mind at the moment.

And don't worry, I am not calling you Shirly.


----------



## jacmyoung

Greg Bimson said:


> Once the injunction is active, EchoStar must disable the DVR functionality on the devices. The workaround then becomes irrelevant, other than to a) determine if it no longer infringes in terms of damages, and b) if it no longer infringes it might be able to be deployed to the enjoined boxes.


That is where the problem of the logic is, that you do not think disabling the DVR functions require a "work around." In reality, any change requires a software download as a "work around" the TiVo's patent, because the injunction allows the receivers still be used in the field.

As I said, TiVo did not declare that E*'s new work around still did not disable the DVR functions, TiVo just wanted a full discovery to determine if the court should let E* implement the new work around or not.


----------



## jacmyoung

CuriousMark said:


> It makes sense that given current conditions they could have deployed it if they wanted to. But they haven't. Some possible reasons why not might be:
> 
> 
> They believe they really do need the Judge's approval
> They don't trust that the new workaround is "less infringing" enough to be worth the risk
> The new work around works quite badly and though non-infringing is not something they want to inflict on their customers if they can avoid it
> 
> Surely this list can be expanded, but that is what comes to mind at the moment.
> 
> And don't worry, I am not calling you Shirly.


1) E* does not believe they need approval, they argued against it at the CAFC.

2) E* must trust its new work around because E* still trusts its original work around, much less the new one.

3) That cannot be known already since they have not even tried, they only have the new code for review, not actual products yet. Only after court approval, could E* try to implement the new code.

But as I have said, it does not matter what I believe, or what E* believes, it is what TiVo believes and what the judge believes. Do what the judge or even TiVo say you shall or shall not do, you can't go wrong even if you do not agree with them.


----------



## tivonomo

jacmyoung said:


> That is where the problem of the logic is, that you do not think disabling the DVR functions require a "work around." In reality, any change requires a software download as a "work around" the TiVo's patent, because the injunction allows the receivers still be used in the field.


You claim "work around" equals "disabling the DVR functions" even though that is simply following the injunction? Does a judge seriously create workarounds? Bottom line, with the injunction stayed E* can do whatever they want. There is no court order saying otherwise.

Do you realize that you come across as an antagonist by making such silly arguments to prolong this discussion?


----------



## jacmyoung

tivonomo said:


> Do you realize that you come across as an antagonist by making such silly arguments to prolong this discussion?


This discussion has been going on for nearly three years, if you are tired of it, you do not have to participate

What I have shown is how stupid this court preapproval thing is, allowing E* to use it against TiVo. Let's suppose the CAFC did not stay the injunction back then, we knew Judge Folsom had no time to do a review back then, and we knew E* would not be able to do anything without his prior approval.

So the point here is not even whether the injunction is stayed or not, I don't think when Judge Folsom and TiVo came up with this pre-approval thing they prepared for the CAFC to stay it first. I am pretty sure TiVo thought it would be enforced right the way, yet had they ever considered if the court even had time and resources to keep up with the fast changing world of market?

They have proven E*'s point that this preapproval provision is unreasonable and impractical, they just did not want to admit it.


----------



## tivonomo

jacmyoung said:


> This discussion has been going on for nearly three years, if you are tired of it, you do not have to participate


The discussion I am referring to has been only going on for a day... yet it feels like 3 years.



> What I have shown is how stupid this court preapproval thing is


It is only "stupid" to you and I find it humorous that you have the nerve to call Judge Folsom stupid... I don't see anyone else calling Folsom, E* or TiVo stupid...

And regardless, you have shown nothing. Thinking objectively, a court monitoring compliance of its own orders is hardly stupid or unreasonable. What happened was Folsom issued an injunction, E* ignored the plain reading of the injunction and did not ask for clarification from Folsom. Instead they asked a hand-picked law firm for clarification. Folsom was well within his rights to require pre-approval.


----------



## jacmyoung

tivonomo said:


> Folsom was well within his rights to require pre-approval.


Sure. He has that right, but if he could not possibly have time to exercise such right (and he must knew that fact by simply looking at his own schedule), then either he is stupid, or he is very smart to have planted a hole for TiVo to fall in.

You want this? You shall have it, don't blame me if it ends up working against you.

Pick your poison


----------



## Greg Bimson

jacmyoung said:


> They have proven E*'s point that this preapproval provision is unreasonable and impractical, they just did not want to admit it.


Yet it wasn't appealed.


jacmyoung said:


> Sure. He has that right, but if he could not possibly have time to exercise such right (and he must knew that fact by simply looking at his own schedule), then either he is stupid, or he is very smart to have planted a hole for TiVo to fall in.


Uh, the hole to fall is EchoStar. If (yes, I said if) the CAFC upholds Judge Folsom's ruling, no matter what happens, when the injunction is active, EchoStar will need to disable the DVR functionality. There aren't any ifs, ands or buts about that.


----------



## jacmyoung

Greg Bimson said:


> Yet it wasn't appealed.


Interlocutory decision cannot be appealed. See how much I have learned?



> Uh, the hole to fall is EchoStar. If (yes, I said if) the CAFC upholds Judge Folsom's ruling, no matter what happens, when the injunction is active, EchoStar will need to disable the DVR functionality. There aren't any ifs, ands or buts about that.


If you really want to talk about what kind of hole each is facing, as James pointed out, a loss at en banc will not impact E* much, yet if TiVo shall lose it will be devastating, don't ask me, ask those analysts.

No analyst is predicting DISH to drop big if they lose, but they all point out how devastating it would be for TiVo, only that most of them keep predicting TiVo would win.

The point is, if you want to talk about the size of the hole, it is much much bigger for TiVo than for E*, there is no dispute about that I hope.


----------



## harsh

jacmyoung said:


> How do you appear reasonable but make no sense at the same time?


By choosing to ignore/omit some of the overriding facts in your analyses.

It is, as bnborg points out, the very essence of politics.


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## jacmyoung

harsh said:


> By choosing to ignore/omit some of the overriding facts in your analyses.
> 
> It is, as bnborg points out, the very essence of politics.


I like that you said "politics" rather "politicians" because I am tired of people blaming politicians when we the people who voted them in have refused to look at the facts ourselves, our politicians only passed on our messages

But analysts? And judges too? No wonder we are hopeless.


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## spear61

From today's filings; The beta test program for work around and their thoughts concerning the PTO patent review.

light of the District Court’s finding of contempt, and its description of the manner in which it believes our original alternative technology infringed the ‘389 patent, we are also developing and testing potential new alternative technology in an engineering environment. As part of our development process, we downloaded several of our design-around options to less than 1,000 subscribers for “beta” testing. On March 11, 2010, we requested that the District Court approve the implementation of one of our design-around options on an expedited basis. There can be no assurance that the District Court will approve this request. 

Oral argument on our appeal of the contempt ruling took place on November 2, 2009, before a three-judge panel of the Federal Circuit Court of Appeals. On March 4, 2010, the Federal Circuit affirmed the District Court’s contempt order in a 2-1 decision. On May 14, 2010, our petition for en banc review of that decision by the full Federal Circuit was granted and the opinion of the three-judge panel was vacated. Oral argument is scheduled for November 9, 2010. There can be no assurance that the full Federal Circuit will reverse the decision of the three-judge panel. Tivo has stated that it will seek additional damages for the period from June 2009 to the present. 

On October 6, 2010, the Patent and Trademark Office (the “PTO”) issued an office action confirming the validity of certain of the software claims of United States Patent No. 6,233,389 (the ‘389 patent). However, the PTO only confirmed the validity of the ‘389 patent after Tivo made statements that we believe narrow the scope of its claims. The claims that were confirmed thus should not have the same scope as the claims that we were found to have infringed and which underlie the contempt ruling that we are now appealing. Therefore, we believe that the PTO’s conclusions are relevant to the issues on appeal. The PTO’s conclusions support our position that our original alternative technology does not infringe and that we acted in good faith to design around Tivo’s patent.


----------



## jacmyoung

"spear61" said:


> From today's filings; The beta test program for work around and their thoughts concerning the PTO patent review.
> 
> light of the District Court's finding of contempt, and its description of the manner in which it believes our original alternative technology infringed the '389 patent, we are also developing and testing potential new alternative technology in an engineering environment. As part of our development process, we downloaded several of our design-around options to less than 1,000 subscribers for "beta" testing. On March 11, 2010, we requested that the District Court approve the implementation of one of our design-around options on an expedited basis. There can be no assurance that the District Court will approve this request.
> 
> Oral argument on our appeal of the contempt ruling took place on November 2, 2009, before a three-judge panel of the Federal Circuit Court of Appeals. On March 4, 2010, the Federal Circuit affirmed the District Court's contempt order in a 2-1 decision. On May 14, 2010, our petition for en banc review of that decision by the full Federal Circuit was granted and the opinion of the three-judge panel was vacated. Oral argument is scheduled for November 9, 2010. There can be no assurance that the full Federal Circuit will reverse the decision of the three-judge panel. Tivo has stated that it will seek additional damages for the period from June 2009 to the present.
> 
> On October 6, 2010, the Patent and Trademark Office (the "PTO") issued an office action confirming the validity of certain of the software claims of United States Patent No. 6,233,389 (the '389 patent). However, the PTO only confirmed the validity of the '389 patent after Tivo made statements that we believe narrow the scope of its claims. The claims that were confirmed thus should not have the same scope as the claims that we were found to have infringed and which underlie the contempt ruling that we are now appealing. Therefore, we believe that the PTO's conclusions are relevant to the issues on appeal. The PTO's conclusions support our position that our original alternative technology does not infringe and that we acted in good faith to design around Tivo's patent.


I say the above statement in E*'s most current quarterly filing is probably the most confident sounding compared to all the doomsday statements they had made in the past filings. Of course too much confidence often gets people in trouble.


----------



## tivonomo

Jacmyoung, I see that you are flip-flopping on the importance of analysts... I guess you go with whatever proves the point you are aiming to make? 



jacmyoung said:


> Now we have this analyst telling the investors TiVo is looking good for one reason, the PTO again affirmed its patent. Supposedly the CAFC judges will take a look at the PTO documents and highly regard the affirmation in TiVo's favor...
> 
> *Sometimes I wonder how analysts keep their jobs.*





jacmyoung said:


> If you really want to talk about what kind of hole each is facing, as James pointed out, a loss at en banc will not impact E* much, *yet if TiVo shall lose it will be devastating, don't ask me, ask those analysts.*


The truth is that the en banc will impact E* very much so. I don't see how anyone can classify a billion dollars or more as not being an impact. 

Of course it will impact TiVo as well and in terms of a percentage of their business it will be a major impact each way. But really the reason both are fighting this out is that it is a serious impact to both businesses and their plans going forward.


----------



## Greg Bimson

Can we stick to the arguments at the CAFC, please?


jacmyoung said:


> That is where the problem of the logic is, that you do not think disabling the DVR functions require a "work around." In reality, any change requires a software download as a "work around" the TiVo's patent, because the injunction allows the receivers still be used in the field.


This argument has been presented by no one. Not even Dish Network. It is completely known that disabling DVR functionality is not the same as a workaround.


jacmyoung said:


> What I have shown is how stupid this court preapproval thing is, allowing E* to use it against TiVo. Let's suppose the CAFC did not stay the injunction back then, we knew Judge Folsom had no time to do a review back then, and we knew E* would not be able to do anything without his prior approval.
> 
> So the point here is not even whether the injunction is stayed or not, I don't think when Judge Folsom and TiVo came up with this pre-approval thing they prepared for the CAFC to stay it first. I am pretty sure TiVo thought it would be enforced right the way, yet had they ever considered if the court even had time and resources to keep up with the fast changing world of market?
> 
> They have proven E*'s point that this preapproval provision is unreasonable and impractical, they just did not want to admit it.


Another argument made by no one. The change to the injunction could have been appealed, but it appears the CAFC _en banc_ doesn't care to worry about it. Besides, if we are talking about unreasonable, let's start with "disable DVR functionality". Three of four judges have agreed, and the _en banc_ isn't necessarily taking this up, other than to ask the question if it is unclear. Personally, I think Judge Rader wants to set a standard, which is the only reason he's dissented. After all, he's admitted doing that before.


jacmyoung said:


> The point is, if you want to talk about the size of the hole, it is much much bigger for TiVo than for E*, there is no dispute about that I hope.


TiVo's won all this time, yet it appears the "hail mary" is probable?


----------



## tivonomo

Greg Bimson said:


> Personally, I think Judge Rader wants to set a standard, which is the only reason he's dissented. After all, he's admitted doing that before.TiVo's won all this time, yet it appears the "hail mary" is probable?


Judge Rader didn't need to dissent to get an en banc. The en banc request is separate from the panel hearing.


----------



## jacmyoung

"Greg Bimson" said:


> Can we stick to the arguments at the CAFC, please?This argument has been presented by no one. Not even Dish Network. It is completely known that disabling DVR functionality is not the same as a workaround.Another argument made by no one. The change to the injunction could have been appealed, but it appears the CAFC en banc doesn't care to worry about it. Besides, if we are talking about unreasonable, let's start with "disable DVR functionality". Three of four judges have agreed, and the en banc isn't necessarily taking this up, other than to ask the question if it is unclear. Personally, I think Judge Rader wants to set a standard, which is the only reason he's dissented. After all, he's admitted doing that before.TiVo's won all this time, yet it appears the "hail mary" is probable?


All the arguments you say only made by me, how much do you want to bet they will be made by E* in the future, only if they lose completely on en banc? How so? Just go back many thousands of posts and read my arguments you will find later E* begin to make the same ones

Of course I am not saying I know better than E*, all I was able to do was analyze what E* was doing at a given time, speculate what a strategy that particular action might indicate, then make the argument on that, if your logic is good enough, you will see later the same argument made by the parties.

I will just point out one mistake you made, the en banc panel never asked IF the injunction was unclear or not, rather they asked, what should we do when the injunction was unclear?

Which was exactly why TiVo had answered, well if it was unclear, E* still must bear the risk, on the other hand E* was able to go to length to keep reminding the en banc why the injunction was unclear.

The way the question is framed can lead parties to answer in a certain ways that can potentially neutralize their arguments. In this particular case, TiVo does not get to argue that the injunction was clear, because the question does not give TiVo that opportunity. The question led TiVo to argue that basically an unclear order can still be enforced, an argument even you do not dare to make, and an argument E* seized on and attacked relentlessly.

E* wouldn't have had such opportunity had the en banc panel not framed the fourth question in such way.


----------



## James Long

jacmyoung said:


> All the arguments you say only made by me, how much do you want to bet they will be made by E* in the future, ...


Can we stick with the present? Otherwise we might all post what we saw out the window of our flying Delorean.


----------



## jacmyoung

"James Long" said:


> Can we stick with the present? Otherwise we might all post what we saw out the window of our flying Delorean.


How present do you want it to be to read E*'s latest statement, which for the first time (correct me if I am wrong) openly mentioned the PTO proceeding and the point I made since the start of this PTO reexamination? Greg asked why should I bother to make an argument only I am making.

Well how fun is it to only repeat what others' are saying, when one can make an argument and see if parties may follow?


----------



## James Long

jacmyoung said:


> Well how fun is it to only repeat what others' are saying, when one can make an argument and see if parties may follow?


If you're going to make stuff up at least label it as fantasy ... that way you won't confuse those who don't pay close attention to this thread.


----------



## jacmyoung

James Long said:


> If you're going to make stuff up at least label it as fantasy ... that way you won't confuse those who don't pay close attention to this thread.


My comments are never intended for those who don't pay close attention to this thread, is this disclaimer good enough?


----------



## spear61

Apparantly the Patent Office thinks Dish has created something "different"

7826712


----------



## jacmyoung

spear61 said:


> Apparantly the Patent Office thinks Dish has created something "different"
> 
> 7826712


So the PTO issued E* this patent used in the modified DVRs in less than three years, in time for the oral argument? At the meantime, that TiVo's "DVR System" patent, which was filed in 2003 I believe, and meant to extend the life of the TiVo's "Time Warping System" patent, has been through 6 rejections and finally ran out of appeals at the PTO.

I don't know what the CAFC judges will think of this, of course one can always argue either the PTO knows nothing what they are doing, or the PTO is irrelevant.


----------



## Greg Bimson

Or...

Dish Network uses their patent. Dish Network has also been found in violation of TiVo's Time Warp patent. Therefore, in order to use Dish Network's patent, one must also use TiVo's Time Warp patent. The "indexless" patent is dependent upon the "Time Warp" patent.

Dish Network was found in contempt for refusing to disable DVR functionality on DVR's introduced in front of the court. Most of those DVR's have been found to infringe TWICE, and the second infringement was also an act of contempt.

That is what the CAFC hearing is about. The CAFC won't address any argument regarding TiVo's rejected patent or Dish Network's newly-accepted patent because it has no bearing on the current case: did Dish Network willfully violate a court order?

Can we please stay on topic? It was asked of me, yet it appears the requestor has no intention of doing the same.


----------



## jacmyoung

Greg Bimson said:


> Or...
> 
> Dish Network uses their patent. Dish Network has also been found in violation of TiVo's Time Warp patent. Therefore, in order to use Dish Network's patent, one must also use TiVo's Time Warp patent. The "indexless" patent is dependent upon the "Time Warp" patent.
> 
> Dish Network was found in contempt for refusing to disable DVR functionality on DVR's introduced in front of the court. Most of those DVR's have been found to infringe TWICE, and the second infringement was also an act of contempt.
> 
> That is what the CAFC hearing is about. The CAFC won't address any argument regarding TiVo's rejected patent or Dish Network's newly-accepted patent because it has no bearing on the current case: did Dish Network willfully violate a court order?
> 
> Can we please stay on topic? It was asked of me, yet it appears the requestor has no intention of doing the same.


If you want to stay on topic, then answer the en banc panel's question: When an injunction is unclear, what the court should do? The en banc panel never asked if the modified DVRs still infringed or not, nor did it ask was E* in contempt regardless they still infringed or not, it only asks, what should we do when your injunction was not clear?

Now if you are willing to get off this "on topic" high horse and willing to hear me out, I will put it this way:

If the E* patent as you say may still "infringe" on the TiVo patent by using all the TiVo patent steps, only to then add some new steps to make its own, the PTO would never have granted the new patent because by definition, if your assertion is right, the claims in the new E* patent would have been rendered obvious by TiVo's patent as one of the prior art. There are so many DVR prior art for E* to come in so late in 2008 to have a new DVR art, it has to be different, and not reliant on the TiVo's.

Now even if we are to stretch our imagination and accept your notion that the possibility exists that the E*'s new patent "infringes" on the old TiVo patent, at a minimum the answer cannot be resolved in a summary contempt proceeding, a new trial is necessary.

BTW, by my count, there were 14 prior art patents (including this TiVo's) E* had to overcome to have its new patent granted. And yes, TiVo's was just one of those 14 patents, not some fantasy mother of all DVR patents kind.


----------



## jacmyoung

Now let me add one more point on the issue of "broad injunction" claim made by TiVo's CEO Rogers in the past. Rogers had publicly stated many times that the injunction TiVo secured was very broad, meaning likely broader than the law usually allows. Else one would not claim it is broad, maybe it is appropriate instead?

Now if indeed according to TiVo's own interpretation that the injunction was broader than what the law allowed, then would it not support the notion that when E* interpreted the injunction in a narrower scope, it was likely a more appropriate interpretation according to the law?

So the only argument TiVo can have now is that E* did not appeal the broader interpretation TiVo decided for E*, yet TiVo ignores the fact it did not tell us what TiVo's interppretation was until the contempt proceeding started, so how could E* even appeal such broader interpretation before it was even made?

TiVo can probably argue that E*'s interpretation was wrong, but as long as it had also admitted that its own interpretation was broad, then E*'s interpretation cannot be more wrong than TiVo's. What TiVo cannot argue is E* should have appealed TiVo's interpretation before TiVo provided such interpretation to E*.


----------



## jacmyoung

One correction, the E* patent application was filed back in 8/06, apparently the same time their engineers came up with the idea, even before they engineered it into the 8 named DVRs.

What is interesting is the PTO did not reject the claims even once. I have read many patent applications never had one without office rejections. Reading the actual claims my guess is E* framed its patent claims with the clear goal to have it approved by the PTO ASAP, for defensive purpose, rather to use the patent to go after any potential infringers.


----------



## Curtis52

Greg Bimson said:


> The CAFC won't address any argument regarding TiVo's rejected patent or Dish Network's newly-accepted patent because it has no bearing on the current case: did Dish Network willfully violate a court order?


Also, there has been no determination that what is in Dish's patent and what is in the workaround are the same thing. Since no relevance has been established it has no bearing on the appeal.


----------



## dfd

jacmyoung said:


> Now let me add one more point on the issue of "broad injunction" claim made by TiVo's CEO Rogers in the past. Rogers had publicly stated many times that the injunction TiVo secured was very broad, meaning likely broader than the law usually allows. Else one would not claim it is broad, maybe it is appropriate instead?
> 
> Now if indeed according to TiVo's own interpretation that the injunction was broader than what the law allowed, then would it not support the notion that when E* interpreted the injunction in a narrower scope, it was likely a more appropriate interpretation according to the law?


This says it all about your arguments.

You took 'broad' to mean, 'likely broader than the law usually allows', when in fact it is just a description of the extent of the patent. There is no requirement in the law that the patent be 'narrow'.

From there your argument, like most of your others, falls apart because as usual you make stuff up from whole cloth and then expand upon it.


----------



## jacmyoung

dfd said:


> This says it all about your arguments.
> 
> You took 'broad' to mean, 'likely broader than the law usually allows', when in fact it is just a description of the extent of the patent. There is no requirement in the law that the patent be 'narrow'.
> 
> From there your argument, like most of your others, falls apart because as usual you make stuff up from whole cloth and then expand upon it.


Don't argue with me, argue with Rogers, he said we secured a "broad injunction." Now maybe he had also said somewhere that TiVo's patent is also very broad, we will have to find out if the en banc panel will agree with that or not.

But I was referring to his comment about this "broad injunction" which is not the same as "broad patent" at all. A "broad patent" can be more easily rejected later, unless the patent owner actually tries to narrow it to overcome any rejections. E* had finally pointed this out, and TiVo does not necessarily dispute the fact they narrowed the scope of the claims in order to overcome the PTO rejections, TiVo only said the PTO reexam is irrelevant.

A "broad injunction" is simply inappropriate. An injunction should not be broad, in fact if you read many appeals court opinions, they insist an injunction must be narrow, specific and only pertains to the exact issues that have been already adjudicated in the prior trial, not anything that has yet addressed in that trial.

Which leads to the argument that if later new issues arise that are not adjudicated in the prior trial, then a new trial will be needed to address them, because by definition, the law demands that the injunction can only cover issues already adjudicated in the prior trial.

Roger's comment about the "broad injunction" implied that it covers beyond the DVRs that was found to infringe and any DVRs that still infringe based on the same infringement issues adjudicated during the last trial, which is wrong. The law does not allow that to happen.

But how do the court deal with it if both the lower court and the patent owner insist that their injunction should actually be able to cover issues not addressed in the last trial, based on the way they interpreted the injunction? The easiest way to counter such argument is to tell them, but your injunction is not clear.

It is only a matter of opinion whether the injunction is clear or not, but as long as the appeals court takes the position that the injunction is not clear, what can you do about it? Again it is just he said, she said.

So people naturally argue, how can this injunction be not clear? Aside from the fact TiVo interpreted the same injunction differently in 2006, than in 2008, it has also been pointed out by both E* and Judge Rader that: The "disabling provision" in the injunction has two parts, one is to disable all DVR functions from the "Infringing Products", the other is to not reinstall the disabled DVR functions back into any of the replacement "Infringing Products."

The arguement the injunction is not clear is based on the undisputed understanding that the injunction only addressed the "Infringing Products" IN THE FIELD, not any replacements, because Judge Folsom rejected TiVo's request to include any DVRs not already in the field in the disabling provision. If TiVo is correct that the term "Infringing Products" covers all the 8 named DVRs, whether they infringe or not, then the "not to reinstall the DVR functions back into the replacement..." in the disabling provision would have in fact covered all the 8 named DVRs whether already in the field or not. Therefore what Judge Folsom had rejected, but now allows, creats ambiguity in his order.

The only way to remove the ambiguity from the order is to accept E*'s interpretation that the disabling provision only covers the 8 named DVRs that are still infringing, but not if they no longer infringe. But if TiVo insists E*'s interpretation is wrong, TiVo's is correct, then TiVo has made the injunction unclear.

Oh BTW, welcome back


----------



## Greg Bimson

jacmyoung said:


> If the E* patent as you say may still "infringe" on the TiVo patent by using all the TiVo patent steps, only to then add some new steps to make its own, the PTO would never have granted the new patent because by definition, if your assertion is right, the claims in the new E* patent would have been rendered obvious by TiVo's patent as one of the prior art. There are so many DVR prior art for E* to come in so late in 2008 to have a new DVR art, it has to be different, and not reliant on the TiVo's.


Up until a few years ago, it was completely possible to make a single patent by combining two or more patents. SCOTUS struck that down in 2007 (I think), by saying that in order for a patent to be granted it must have its own unique step. Therefore, Echostar could simply take the TiVo Time Warp patent, add one innovative, unique step, and the entire patent would be valid. Just like there are independent claims and dependent claims, there are standalone patents and dependent patents.


jacmyoung said:


> Now even if we are to stretch our imagination and accept your notion that the possibility exists that the E*'s new patent "infringes" on the old TiVo patent, at a minimum the answer cannot be resolved in a summary contempt proceeding, a new trial is necessary.


There's no stretching necessary, only the need to refute the stretch about EchoStar's new patent. TiVo hasn't filed suit or challenged EchoStar's new patent. Therefore, it is a stretch to believe that the new EchoStar patent should have anything to do with the contempt proceeding, because this is about infringement of TiVo's Time Warp patent and has nothing to do with EchoStar's "indexless" patent.


jacmyoung said:


> If you want to stay on topic, then answer the en banc panel's question: When an injunction is unclear, what the court should do? The en banc panel never asked if the modified DVRs still infringed or not, nor did it ask was E* in contempt regardless they still infringed or not, it only asks, what should we do when your injunction was not clear?


TiVo already made their argument; there's no sense for me to rehash that argument. However, just to be clear, I said once the _en banc_ was granted, TiVo needs to argue that question as:

1) the injunction is not "unclear"
2) any notion that it was "unclear" needed EchoStar to ask the court for clarification, because I still don't see how that injunction was unclear.

And from what I read, that is exactly how TiVo answered.


----------



## jacmyoung

"Greg Bimson" said:


> Up until a few years ago, it was completely possible to make a single patent by combining two or more patents. SCOTUS struck that down in 2007 (I think), by saying that in order for a patent to be granted it must have its own unique step. Therefore, Echostar could simply take the TiVo Time Warp patent, add one innovative, unique step, and the entire patent would be valid. Just like there are independent claims and dependent claims, there are standalone patents and dependent patents.There's no stretching necessary, only the need to refute the stretch about EchoStar's new patent. TiVo hasn't filed suit or challenged EchoStar's new patent. Therefore, it is a stretch to believe that the new EchoStar patent should have anything to do with the contempt proceeding, because this is about infringement of TiVo's Time Warp patent and has nothing to do with EchoStar's "indexless" patent.TiVo already made their argument; there's no sense for me to rehash that argument. However, just to be clear, I said once the en banc was granted, TiVo needs to argue that question as:
> 
> 1) the injunction is not "unclear"
> 2) any notion that it was "unclear" needed EchoStar to ask the court for clarification, because I still don't see how that injunction was unclear.
> 
> And from what I read, that is exactly how TiVo answered.


The question never asked if E* should have asked for clarification, rather what the en banc panel should do when the order is unclear. Of course TiVo would argue the order was clear, but due to the nature of the question, TiVo had to answer it under the assumption that the order was not clear.

So now you seem to have changed your position a little. I thought at one time you agreed an unclear order could not be enforced, period, now you agree with TiVo an unclear order can still be enforced if the defendant failed to try to clarify it?

How strongly you feel the injunction was clear is irrelevant to the question asked by the en banc panel when the question is based on the presumption that the order was unclear.


----------



## Greg Bimson

jacmyoung said:


> The question never asked if E* should have asked for clarification, rather what the en banc panel should do when the order is unclear.


The issue has less to do with what the _en banc_ panel should do, but whether or not the district court's decision is proper:


> Is it proper for a district court to hold an enjoined party in contempt where there is a substantial question as to whether the injunction is ambiguous in scope?





jacmyoung said:


> How strongly you feel the injunction was clear is irrelevant to the question asked by the en banc panel when the question is based on the presumption that the order was unclear.


True, to a point.

The problem here is one side created completely strained definitions in order to make a "clear" injunction seem unclear. It isn't.


jacmyoung said:


> So now you seem to have changed your position a little. I thought at one time you agreed an unclear order could not be enforced, period, now you agree with TiVo an unclear order can still be enforced if the defendant failed to try to clarify it?


I've said time and time again that an unclear order cannot be enforced. Just because EchoStar et al decided to use kangaroo leaps of logic in order to make their interpretation of an injunction unclear doesn't mean the injunction is unclear.

For example, EchoStar is quite reliant on using some rule that an injunction cannot enjoin a product which no longer infringes. However, Rule 65(d) states, paraphrased, that an injunction must be self-contained, i.e., cannot refer to another document in order to be interpreted. I know I scanned TiVo's Red Brief a while back, but I didn't see TiVo make that argument. So in this case, EchoStar changed the definition of "Infringing Products" to something else, and then used another rule to state the injunction could not prohibit non-infringing uses, when the injunction in plain language said to disable DVR functionality.

EchoStar put their interpretation as the only opinion, when they should have asked the court if their interpretation was legally valid. EchoStar was very happy to file a motion for clarification regarding the 721, 921 and 942 DVR's that were enjoined, as it related to warranty claims.

Let's say an injunction is unclear. How does one know it is "unenforcable"? They go through the courts to make that determination, not feign ignorance. If the injunction was truly unclear, EchoStar should have been in court from Day ONE and been on the offensive, but this "unclear" injunction is being used as a defense. That should be telling enough.


----------



## jacmyoung

"Greg Bimson" said:


> The issue has less to do with what the en banc panel should do, but whether or not the district court's decision is proper:True, to a point.
> 
> The problem here is one side created completely strained definitions in order to make a "clear" injunction seem unclear. It isn't.I've said time and time again that an unclear order cannot be enforced. Just because EchoStar et al decided to use kangaroo leaps of logic in order to make their interpretation of an injunction unclear doesn't mean the injunction is unclear.
> 
> For example, EchoStar is quite reliant on using some rule that an injunction cannot enjoin a product which no longer infringes. However, Rule 65(d) states, paraphrased, that an injunction must be self-contained, i.e., cannot refer to another document in order to be interpreted. I know I scanned TiVo's Red Brief a while back, but I didn't see TiVo make that argument. So in this case, EchoStar changed the definition of "Infringing Products" to something else, and then used another rule to state the injunction could not prohibit non-infringing uses, when the injunction in plain language said to disable DVR functionality.
> 
> EchoStar put their interpretation as the only opinion, when they should have asked the court if their interpretation was legally valid. EchoStar was very happy to file a motion for clarification regarding the 721, 921 and 942 DVR's that were enjoined, as it related to warranty claims.
> 
> Let's say an injunction is unclear. How does one know it is "unenforcable"? They go through the courts to make that determination, not feign ignorance. If the injunction was truly unclear, EchoStar should have been in court from Day ONE and been on the offensive, but this "unclear" injunction is being used as a defense. That should be telling enough.


I am so glad you mentioned rule 65(d) and the reference to an injunction must be "self contained" except I don't think you have read case law to understand what it means.

What that means is, an injunction can only prohibit base on the exact issues already contained/adjudicated during the prior trial, not on anything else. For example if TiVo had to rely on any new infringement theories that were not fully adjudicated/contained in the previous trial, it had violated rule 65(d).

Again, whether how strongly you feel that Judge Folsom was very clear, it is irrelevant when the en banc asks, what should we do where as he was not clear?

Or if you insist the question is whether the contempt was proper when the order was not clear? I don't see the difference.

If you agree the injunction cannot be enforced if it is not clear, then if the injunction is not so clear, obviously the contempt finding cannot be proper. Judge Folsom will have to make his injunction 100% clear, before he can even entertain the idea of a contempt.


----------



## Greg Bimson

jacmyoung said:


> What that means is, an injunction can only prohibit base on the exact issues already contained/adjudicated during the prior trial, not on anything else. For example if TiVo had to rely on any new infringement theories that were not fully adjudicated/contained in the previous trial, it had violated rule 65(d).


Rubbish. Rule 65(d) has nothing to do with having to "rely on any new infringement theories". Rule 65(d) only addresses that an injunction must be a self-contained document, without referring to or incorporating from another document.


> Is it proper for a district court to hold an enjoined party in contempt where there is a substantial question as to whether the injunction is ambiguous in scope?


It only took one judge to author that question, and no one needs to vote to have that question added to the vote ballot.

Judge Rader wants an answer. The others may want to hear the answer, but Judge Rader wants an answer.


----------



## jacmyoung

"Greg Bimson" said:


> Rubbish. Rule 65(d) has nothing to do with having to "rely on any new infringement theories". Rule 65(d) only addresses that an injunction must be a self-contained document, without referring to or incorporating from another document.It only took one judge to author that question, and no one needs to vote to have that question added to the vote ballot.
> 
> Judge Rader wants an answer. The others may want to hear the answer, but Judge Rader wants an answer.


First I will not use that kind of word on you only because we go way back, let's just say we can agree to disagree on the issue of the rule 65(d)

As far as who wrote those four questions, keep in mind I did not agree that Judge Rader himself asked those questions, remember it was an "on the alternative" statement. It is also possible other judges asked the questions. But who asked the questions is not even important, the important thing to understand is, the en banc panel's questions and the answers to them will determine the outcome of the en banc review.

Therefore if a question is asked in a way to make one party potentially making a wrong answer in order to support it's position, then one needs to consider the impact.


----------



## rocatman

The en banc hearing is scheduled for tomorrow 11/9/2010. Is this open to the public so that we will get at least some insight tomorrow on how things went in terms of questions and answers or will we have to wait until transcipts come out or until the decision is rendered?


----------



## Greg Bimson

jacmyoung said:


> First I will not use that kind of word on you only because we go way back, let's just say we can agree to disagree on the issue of the rule 65(d)


from FRCP Rule 65(d), on cornell.edu:


> (d) Contents and Scope of Every Injunction and Restraining Order.
> (1) Contents.
> 
> Every order granting an injunction and every restraining order must:
> 
> (A) state the reasons why it issued;
> 
> (B) state its terms specifically; and
> 
> (C) describe in reasonable detail - *and not by referring to the complaint or other document* - the act or acts restrained or required.
> 
> (2) Persons Bound.
> 
> The order binds only the following who receive actual notice of it by personal service or otherwise:
> 
> (A) the parties;
> 
> (B) the parties' officers, agents, servants, employees, and attorneys; and
> 
> (C) other persons who are in active concert or participation with anyone described in Rule 65(d)(2)(A) or (B).





jacmyoung said:


> Therefore if a question is asked in a way to make one party potentially making a wrong answer in order to support it's position, then one needs to consider the impact.


Hence the reason I stated that TiVo cannot let anyone remotely think that the injunction is "ambiguous".


----------



## jacmyoung

"Greg Bimson" said:


> from FRCP Rule 65(d), on cornell.edu:Hence the reason I stated that TiVo cannot let anyone remotely think that the injunction is "ambiguous".


Thank you for posting the rules, the mistake you made is you read the rule literally. If you noticed in every injunction, the order must specifically reference what
kind of patent claims are at issue, i.e. referencing those documents, and maybe many other documented items, such as how to define a product, even often actually use the actual documents for reference if necessary. So your literal interpretation is not on point, what is on point is Rule 65(d) requires that the issues referenced in an injunction must ONLY refer to those already adjudicated/documented in the trial, not any other things not yet have arisen or adjudicated/documented.

Therefore if later TiVo tried to use this injunction to impost limitations based on documents that by rule 65(d) could not be referenced, TiVo had gone beyond the scope of the order.

As far as if TiVo can or cannot admit the injunction was unclear, of course they cannot, that was never the point. The point is, in answering that question, TiVo was forced to accept at least the assumption that the injunction was unclear, and subsequently gave a wrong answer to it. It is those answers given by the parties, not their own positions as far as whether the order is clear or whatever, will likely make the difference.


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## Greg Bimson

> (C) describe in reasonable detail - *and not by referring to the complaint or other document* - the act or acts restrained or required.





jacmyoung said:


> If you noticed in every injunction, the order must specifically reference what kind of patent claims are at issue, i.e. referencing those documents, and maybe many other documented items, such as how to define a product, even often actually use the actual documents for reference if necessary.


To anyone that might be passing through reading this thread, and specifically this post, I humbly submit I am at the end of explaining.

This "on alternative argument" itself is so twisted that it cannot support itself. Either the first quote is correct or the second one is. And the first one is the Federal Rules of Civil Procedure, Rule 65(d), and once again, another "interpretation" is required.

The injunction must stand on its own without reference to another document, such as the complaint or the decision. Sure, there can be parts in there that say because of infringement of claims X, Y and Z of patent 'NNN (and according to Rule 65(d), there'd better be), that the enjoined party must recall all products sold. But the injunction order cannot reference nor incorporate another document.

And with that, I am done.


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## Curtis52

Greg Bimson said:


> To anyone that might be passing through reading this thread, and specifically this post, I humbly submit I am at the end of explaining.


The only winning move is _not to play_.


----------



## jacmyoung

Greg Bimson said:


> To anyone that might be passing through reading this thread, and specifically this post, I humbly submit I am at the end of explaining.
> 
> This "on alternative argument" itself is so twisted that it cannot support itself. Either the first quote is correct or the second one is. And the first one is the Federal Rules of Civil Procedure, Rule 65(d), and once again, another "interpretation" is required.
> 
> The injunction must stand on its own without reference to another document, such as the complaint or the decision. Sure, there can be parts in there that say because of infringement of claims X, Y and Z of patent 'NNN (and according to Rule 65(d), there'd better be), that the enjoined party must recall all products sold. But the injunction order cannot reference nor incorporate another document.
> 
> And with that, I am done.


Because you said based on the rule 65(d) you quoted, an injunction may not reference any other documents, it is only a self-contained document, cannot mention (i.e. reference other documents).

I have already told you you are wrong, all you need to do is read Judge Folsom's injunctions, they referenced the TiVo patent by the patent numbers so people can go to the PTO site to read what it was for example, they also reference the DVRs by their model numbers so people can go to read the DVR model info to know what Judge Folsom was talking about. They also reference any OTHER DOCUMENTS necessary to make it very clear what the injunctions seek to do. If your interpretation were correct, Judge Folsom's injunction would not be able to reference any other documents, no one would know what to do. He would have to attach a full copy of the PTO patent file with respect to all the documents related to the prosecution history of the TiVo's patent, he would also have to attach copies of all the user manuals of the 8 named DVRs, and he would also have to attach all the court files related to the trial.

Now you see why the 65(d) dose not prohibit the reference of "other documents" in the way you interpreted in the injunction? So what does it mean why it says the injunction may not refer to other documents? Need I repeat?

BTW, don't pick and choose what you may think are "other documents." "Other documents" are not limited to a specific decision as you want to define it. Other documents mean any other documents that is not this piece of document that contains the wording of this injunction but nothing else. Obviously I hope you agree an injunction can, and must reference other documents, it cannot possibly contain all the other documents necessary to let people understand what it seeks to achieve.

BTW, this is not the first time you said you are done, I hope you will be back.


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## jacmyoung

Curtis52 said:


> The only winning move is _not to play_.


The only winninig move is to be able to come here and say "told you so." In that regard, I will be the first to admit I had plenty of people able to say to me, "told you so" in the past, and rightfully so.


----------



## James Long

jacmyoung said:


> The only winninig move is to be able to come here and say "told you so."


Or keep comments so vague or rooted in fantasy that any outcome is the one predicted?

Sometimes there are no winners.


----------



## jacmyoung

James Long said:


> Or keep comments so vague or rooted in fantasy that any outcome is the one predicted?
> 
> Sometimes there are no winners.


Show me any one of my recent points is fantasy I might be able to tell you why it is not

Look the issue here is what is the correct answer to the question: Is a contempt finding proper when the injunction is not so clear?

Greg knew TiVo's answer to that question was wrong, he just did not want to admit it, so instead of answering the question, he decided to go "off the subject" and throw a bunch of 65(d) at me, which had nothing to do with the answer of that question. He was just trying to muddy the issue and get away with not having to answer the question.

If he can throw crap at me, I can show I am capable of getting back at him with my own crap. Another one of such "on the alternative argument" things


----------



## tivonomo

jacmyoung said:


> Show me any one of my recent points is fantasy I might be able to tell you why it is not


You've been proven to be fantasy by me and Greg. Your denial is remarkable.


----------



## jacmyoung

tivonomo said:


> You've been proven to be fantasy by me and Greg. Your denial is remarkable.


Come on Tivonomo, why do you always bring Greg into your sentences? I would be embarrased if I were Greg and constantly see my name side by side with yours


----------



## tivonomo

jacmyoung said:


> Come on Tivonomo, why do you always bring Greg into your sentences? I would be embarrased if I were Greg and constantly see my name side by side with yours


Why? Greg and I agree on just about every point. As he said, he is done trying to explain things to you. And Curtis is smart and refuses to even try. Is that not embarrassing for you?


----------



## tivonomo

Curtis52 said:


> The only winning move is _not to play_.


Great movie. They don't make them like they used to...


----------



## jacmyoung

tivonomo said:


> Why? Greg and I agree on just about every point. As he said, he is done trying to explain things to you. And Curtis is probably smart and refuses to even try. Is that not embarrassing for you?


I don't ever read anywhere Greg and Curtis said they agree with you just about on every point, talk about fantasy.


----------



## tivonomo

jacmyoung said:


> I don't ever read anywhere Greg and Curtis said they agree with you just about on every point, talk about fantasy.


That isn't what I said and you know that. Do you always replace the facts with your own fantasy? I agree with 99% of what Greg posts and we haven't disagreed significant point here. I never said Curtis and I agreed, but I liked his movie reference.


----------



## Doug Brott

Probably a good time to start discussing the topic and stop discussing each other .. 

Thanks guys.


----------



## jacmyoung

Today once again the appeals court issued an order to compel the E. TX court to move a case to a different court, because the district court clearly abused its discretion:

http://www.cafc.uscourts.gov/images/stories/opinions-orders/2010-m944.11-8-10.1.pdf

Now I know Tivonomo you have argued none of those are relevant. My point is, the CAFC does not have a great view for the E. TX court. Never had any district court been found to have abused its discretion and have been patently wrong so many times.

Also this case is just a little more relevant to TiVo, because Microsoft, which is the petitioner in the above case, had also asked the E. TX court to move the TiVo v. ATT/MS case, and Judge Folsom had denied the request I believe, let's see what will come out of that petition at the CAFC.


----------



## peak_reception

jacmyoung said:


> Look the issue here is what is the correct answer to the question: Is a contempt finding proper when the injunction is not so clear?


Isn't this supposed to be Oral Arguments Day?

jac, you seem very hung up on that question you post above here. I know, I know, it's not you that posed the question, it was the CAFC. However, so long as we're speculating, remember back to the last oral arguments and how they were dominated by Judge Rader. In fact he was basically the only one who said anything at all. A peep or murmur from the other two and that was it. Rader was dominant! Any yet... Rader was also a minority of one against the 2 judge majority who ruled in favor of TiVo.

In view of that, and considering how strongly Judge Rader apparently feels about this case, does it not make sense that he would also have his hands all over the questions presented by the en-banc panel for oral arguments this time around? And the other judges, perhaps no less inclined than the two last time to side with him, are nonetheless content to let him have his best shot at laying groundwork for a strong DISH presentation. After all, what is the harm in testing the previous judgment in TiVo's favor to see if it withstands maximum scrutiny or not? And in fact, isn't that the whole point of an appeal, to make sure that the District Court got it right the first time?

So an unbuttoned Rader (or mostly Rader, just as in the oral arguments last time) whips up a list of questions designed to cut right to the heart of whether previous judgments were correct or not. And how best to do that? Ask the toughest possible questions to TiVo and see how they handle them. The one you focus on so much is just a specimen of this approach.

After all, Rader was just as passionate in the last oral arguments (another fact you focus on excessively) and it didn't sway the other two judges who showed no outward passion at all one way or the other. 
Why should it be any different this time?

My speculation of course is that Rader is the author of that question positing an unclear injunction. Not a bad bet given how much of the show he ran the last time out. It will interesting to see how much 'in charge' he is this time too, but let's not forget that it didn't garner him any other support before and may not this time either, no matter how strongly he feels about it.


----------



## jacmyoung

peak_reception said:


> Isn't this supposed to be Oral Arguments Day?
> 
> jac, you seem very hung up on that question you post above here. I know, I know, it's not you that posed the question, it was the CAFC. However, so long as we're speculating, remember back to the last oral arguments and how they were dominated by Judge Rader. In fact he was basically the only one who said anything at all. A peep or murmur from the other two and that was it. Rader was dominant! Any yet... Rader was also a minority of one against the 2 judge majority who ruled in favor of TiVo.
> 
> In view of that, and considering how strongly Judge Rader apparently feels about this case, does it not make sense that he would also have his hands all over the questions presented by the en-banc panel for oral arguments this time around? And the other judges, perhaps no less inclined than the two last time to side with him, are nonetheless content to let him have his best shot at laying groundwork for a strong DISH presentation. After all, what is the harm in testing the previous judgment in TiVo's favor to see if it withstands maximum scrutiny or not? And in fact, isn't that the whole point of an appeal, to make sure that the District Court got it right the first time?
> 
> So an unbuttoned Rader (or mostly Rader, just as in the oral arguments last time) whips up a list of questions designed to cut right to the heart of whether previous judgments were correct or not. And how best to do that? Ask the toughest possible questions to TiVo and see how they handle them. The one you focus on so much is just a specimen of this approach.
> 
> After all, Rader was just as passionate in the last oral arguments (another fact you focus on excessively) and it didn't sway the other two judges who showed no outward passion at all one way or the other.
> Why should it be any different this time?
> 
> My speculation of course is that Rader is the author of that question positing an unclear injunction. Not a bad bet given how much of the show he ran the last time out. It will interesting to see how much 'in charge' he is this time too, but let's not forget that it didn't garner him any other support before and may not this time either, no matter how strongly he feels about it.


As compelling as your speculation is, I say yours is based on emotion, nothing wrong with that. Without passion, why even live?

But I think we can also agree the court should do its best to remove emotion out of it and use logic. So to keep the logic flowing, one may argue that since Judge Rader has clearly got the answers to those questions figured out already, one can speculate that the questions are likely asked by those judges who have not openly expressed their strong views.

You would almost have to conclude that Judge Rader is the biggest #$%^ to have already let the whole world known he knows the answers to those questions clearly and unequivocally, only to want to find out what the answers are again?

I am not saying I know who asked the Qs, it is of course all speculation.


----------



## MCSuckaDJ

jacmyoung said:


> Today once again the appeals court issued an order to compel the E. TX court to move a case to a different court, because the district court clearly abused its discretion:
> 
> Now I know Tivonomo you have argued none of those are relevant. My point is, the CAFC does not have a great view for the E. TX court. Never had any district court been found to have abused its discretion and have been patently wrong so many times.
> 
> Also this case is just a little more relevant to TiVo, because Microsoft, which is the petitioner in the above case, had also asked the E. TX court to move the TiVo v. ATT/MS case, and Judge Folsom had denied the request I believe, let's see what will come out of that petition at the CAFC.


Hold on a second there, toughguy. Those are not equivalent circumstances. In the Microsoft case, M$ successfully argued that:
1) Allvoice had nothing more than a P.O. Box in E Texas, and was essentially forum shopping, and,
2) M$ wanted to litigate on their home turf, where their witnesses and attorneys would be least-inconvenienced by participating in a trial.

However, E* is arguing that:
1) TiVo has nothing more than a P.O. Box in E Texas, and is essentially forum shopping, and,
2) E* has nothing more than a P.O. Box in Delaware, and is also essentially forum shopping.

If E* had requested to move venue to the 10th district and been turned down, the CAFC would be right in overturning the decision, but the CAFC cannot allow the same case to spin up in two different districts just because of the animosity you perceive they have against one of them.


----------



## scooper

Does Tivo even HAVE a PO box in East Texas ? This was a case forum shopping if there ever was one...


----------



## MCSuckaDJ

scooper said:


> Does Tivo even HAVE a PO box in East Texas ? This was a case forum shopping if there ever was one...


I concur. But the CAFC cannot reward E* for engaging in the same bad behavior as Tivo.


----------



## tivonomo

MCSuckaDJ said:


> Hold on a second there, toughguy. Those are not equivalent circumstances. In the Microsoft case, M$ successfully argued that:
> 1) Allvoice had nothing more than a P.O. Box in E Texas, and was essentially forum shopping, and,
> 2) M$ wanted to litigate on their home turf, where their witnesses and attorneys would be least-inconvenienced by participating in a trial.
> 
> However, E* is arguing that:
> 1) TiVo has nothing more than a P.O. Box in E Texas, and is essentially forum shopping, and,
> 2) E* has nothing more than a P.O. Box in Delaware, and is also essentially forum shopping.
> 
> If E* had requested to move venue to the 10th district and been turned down, the CAFC would be right in overturning the decision, but the CAFC cannot allow the same case to spin up in two different districts just because of the animosity you perceive they have against one of them.


I believe he is arguing that E Texas should have caught that from the beginning. That therefore implies that E Texas is a horrible court. And that therefore the CAFC is more likely to overturn Folsom's decision.

Now keep in mind, there is absolutely no other support for jacmyoung's view other than the E Texas court was found to make a bad error in this case and a prior one he mentioned. In only relates to TiVo in that jacmyoung's argument conflicts with E Texas and jacmyoung apparently thinks E Texas is a poor district court. Correct me if I am wrong, Jac.

Regarding forum shopping, all lawyers do it. And yes ALL means ALL. The fact is both companies sell products in E Texas and that goes a long way in making it a justifiable court selection (although not necessarily the best).


----------



## jacmyoung

tivonomo said:


> I believe he is arguing that E Texas should have caught that from the beginning. That therefore implies that E Texas is a horrible court. And that therefore the CAFC is more likely to overturn Folsom's decision.
> 
> Now keep in mind, there is absolutely no other support for jacmyoung's view other than the E Texas court was found to make a bad error in this case and a prior one he mentioned. In only relates to TiVo in that jacmyoung's argument conflicts with E Texas and jacmyoung apparently thinks E Texas is a poor district court. Correct me if I am wrong, Jac.
> 
> Regarding forum shopping, all lawyers do it. And yes ALL means ALL. The fact is both companies sell products in E Texas and that goes a long way in making it a justifiable court selection (although not necessarily the best).


As usual you are wrong again This is why I said you should have gone back to read more before making any assumptions.

I have said I have high regard for the E. TX court for making a name for itself and bringing in the revenues to its local communities, I wish my local officials can have similar spine in them.

Having said that, you need to be able to push the envelop in order to make it happen. For years the E. TX court had the reputation of supporting patent trolls (not saying TiVo was one, TiVo is not) and they have the spine to do it even if it means to abuse its discretion or make patently erroneous decisions.

The CAFC has issued more such orders than any other courts received combined to tell the E. TX court what they did were wrong, but the E. TX court continues to do so, by pushing the envelops.

My above comments never tried to compare the MS case to the TiVo v. E* case, so stop wasting your time. The point and the only point is, the judges in the E. TX court are known to push the envelops to side with the patent owners, and the CAFC knows it.


----------



## spear61

tivonomo said:


> I believe he is arguing that E Texas should have caught that from the beginning. That therefore implies that E Texas is a horrible court. And that therefore the CAFC is more likely to overturn Folsom's decision.
> 
> Now keep in mind, there is absolutely no other support for jacmyoung's view other than the E Texas court was found to make a bad error in this case and a prior one he mentioned. In only relates to TiVo in that jacmyoung's argument conflicts with E Texas and jacmyoung apparently thinks E Texas is a poor district court. Correct me if I am wrong, Jac.
> 
> Regarding forum shopping, all lawyers do it. And yes ALL means ALL. The fact is both companies sell products in E Texas and that goes a long way in making it a justifiable court selection (although not necessarily the best).


The more recent case moves by the courts don't mean much in this case. The administrative branch of the courts changed the rules a few years ago to reduce "shopping" in areas where the combatants do not have a significant presence. This is why one sees moves out of East Texas. The Tivo/Dish battle goes way back before those rules were adopted and this judge has established himself as the fountain of court knowledge in this particular case.


----------



## tivonomo

spear61 said:


> The more recent case moves by the courts don't mean much in this case. The administrative branch of the courts changed the rules a few years ago to reduce "shopping" in areas where the combatants do not have a significant presence. This is why one sees moves out of East Texas. The Tivo/Dish battle goes way back before those rules were adopted and this judge has established himself as the fountain of court knowledge in this particular case.


That sounds familiar. Thanks


----------



## peak_reception

> You would almost have to conclude that Judge Rader is the biggest #$%^ to have already let the whole world known he knows the answers to those questions clearly and unequivocally, only to want to find out what the answers are again?


 But that's exactly how he came across last time in oral arguments, as having formed his opinion already and not trying very hard to hide it. Contrast his confrontational exchanges with the TiVo lawyers, to his gentle approach with DISH lawyers whom he rarely interrupted. It's not that he liked the DISH lawyers more, it wasn't personal. He had simply decided that he agreed with them more, and it showed. But it didn't extend to the other judges; Judge Rader is still just one judge among nine (or is it seven?) who will decide this case, no matter how strongly he feels about it. It also make sense, at least to me, that he was key in posing the written questions for this round too, just as he was so central to the last proceeding before the CAFC.


----------



## jacmyoung

"peak_reception" said:


> But that's exactly how he came across last time in oral arguments, as having formed his opinion already and not trying very hard to hide it. Contrast his confrontational exchanges with the TiVo lawyers, to his gentle approach with DISH lawyers whom he rarely interrupted. It's not that he liked the DISH lawyers more, it wasn't personal. He had simply decided that he agreed with them more, and it showed. But it didn't extend to the other judges; Judge Rader is still just one judge among nine (or is it seven?) who will decide this case, no matter how strongly he feels about it. It also make sense, at least to me, that he was key in posing the written questions for this round too, just as he was so central to the last proceeding before the CAFC.


According to those attended the hearing, Judge Rader did not say a thing today, and Judge Mayer, one of the two sided with TiVo last time, removed himself from the panel. Looked to me the questions were likely asked by the other judges not in the initial panel.

I will try to listen later today when I get the chance.


----------



## peak_reception

Judge Rader didn't say a single word?! Strange. 

"I will try to listen later today when I get the chance." 

Something tells me you'll find the chance. ;-)


----------



## tivonomo

Here is a link to an article on some questions the judges asked.

http://m.foxbusiness.com/quickPage.html?page=19453&content=44530783&pageNum=-1


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## Curtis0620

http://www.bloomberg.com/apps/news?pid=newsarchive&sid=aKhZ70M.Mzks


----------



## jacmyoung

peak_reception said:


> Judge Rader didn't say a single word?! Strange.
> 
> "I will try to listen later today when I get the chance."
> 
> Something tells me you'll find the chance. ;-)


Actually reading the links above I don't even see the need to, but I will still likely listen to it for the fun of it.

Remember what I said a few weeks ago? If E* could succeed in instilling enough doubts in the minds of the CAFC judges, they will be reflected in the type of questions the judges asked of TiVo and the street would react to that. See how the street reacted?

We were discussing the PTO disclaimers filed by E* to the CAFC at that time, I agreed that the PTO issue might never be mentioned, but E* was still trying to put the issue in the judges' heads. Certainly can't say it was the PTO issue that had a play in this, but you cannot say my above comments were wrong.

The same thing happened when Highdef asked me of the likely outcome of the PTO reexamination after reading TiVo's response to the final rejection, I said based on what I read, odds were in TiVo's favor that the PTO would certify the reexamination, a few days later it happened and the street reacted to that decision.

Not trying to prove anything, I have been wrong many times before, but I don't go by fantasy, rather logical speculation.


----------



## peak_reception

> See how the street reacted?


The street reacted the same way after the last hearing. It sounded bad (Rader) so TiVo stock dropped. And yet, TiVo won.

This one sounds bad for TiVo too (from first reports) but that doesn't necessarily mean a TiVo loss.

We all get to wait another half a year or so to find out. How long has this case been going on now??


----------



## scooper

peak_reception said:


> The street reacted the same way after the last hearing. It sounded bad (Rader) so TiVo stock dropped. And yet, TiVo won.
> 
> This one sounds bad for TiVo too (from first reports) but that doesn't necessarily mean a TiVo loss.
> 
> We all get to wait another half a year or so to find out. How long has this case been going on now??


SHort answer - too long....


----------



## tivonomo

FYI, the most recent decision of an en banc, (Hyatt v Kappos) took exactly 4 months. So I would expect this en banc to be decided by mid March at the latest.


----------



## jacmyoung

peak_reception said:


> The street reacted the same way after the last hearing. It sounded bad (Rader) so TiVo stock dropped. And yet, TiVo won.
> 
> This one sounds bad for TiVo too (from first reports) but that doesn't necessarily mean a TiVo loss.
> 
> We all get to wait another half a year or so to find out. How long has this case been going on now??


Whether TiVo will win or E* will win or there will be a tie is irrelevant, it has nothing to do with the 11/2/09 hearing either, I said E* was trying to put more doubts in the judges' heads and if successful the street would react to it, it did, end of the story.

What had happened in the past or may happen in the future is irrelevant to my above comment.


----------



## jacmyoung

tivonomo said:


> FYI, the most recent decision of an en banc, (Hyatt v Kappos) took exactly 4 months. So I would expect this en banc to be decided by mid March at the latest.


I am not saying it will not take very long, but let's not forget how the TiVo investors were so caught off guard by the quick en banc order on 5/4/10.


----------



## Curtis52

Hearing audio:

Link


----------



## dgordo

The comments that the Judges were harder on TiVo counsel are interesting to me. I spoke to a guy who works at a fund that owns several million DISH shares. He was at the hearing and left concerned that the Judges were tougher on DISH. He was surprised to see the market reaction, especially because he believes the consensus is usually wrong. I guess we'll just have to wait and see.


----------



## jacmyoung

dgordo said:


> The comments that the Judges were harder on TiVo counsel are interesting to me. I spoke to a guy who works at a fund that owns several million DISH shares. He was at the hearing and left concerned that the Judges were tougher on DISH. He was surprised to see the market reaction, especially because he believes the consensus is usually wrong. I guess we'll just have to wait and see.


Have not listened to the audio so not able to comment on how hard were the judges on one party, but reading those news links, it seemed most Qs were directed at TiVo, could be why the reaction.

What is the current consensus anyway? If the only consensus is more Qs were directed at TiVo, that will not point to its odds, the kind of Qs may reveal how the judges might be already thinking at that time.


----------



## jacmyoung

Well the audio is not complete, Mr. Waxman's argument was cut short and E*'s rebuttal is not there.

But anyone having been sitting in that courtroom can reasonably talk away thinking the judges definitely had a lot of problems with TiVo's positions. There are just too many doubts from the judges about what Mr. Waxman said, that if you really go by the "fair ground for doubt" standard afforded to E*, the judges, having had seemingly so many not so satisfying responses from Mr. Waxman, would have difficulty to say with clear and convincing conviction that E* was in contempt, there are just too many doubts.

Two things I found are relatively new, one, E* has finally begun to talk about abuse of discretion by the district court, even made a quick mention of the PTO, and TiVo no longer insists that even if the modified products are more than colorably different, contempt proceeding is still appropriate, in fact Mr. Waxman, when pressed, said yes a new action would be needed. This is very important, judges are trying to see if the party may concede to something so they can make a decision and blame it on that party. Once TiVo does not dispute that if the difference is more than colorable, the contempt proceeding is no longer appropiate, and a new action is needed, than all it takes the judges to do is to say there is more than colorable difference, TiVo loses. All the issues of ambiguity, notification, good faith and bad faith, all of them are no longer determining factors.

In fact when the judges kept referring the modified DVRs as "new products" Mr. Waxman never even attempted to correct them. I think the street reaction was well justified. Come on, if you do not believe the modified DVRs are any different, at a minimum, make a point that they are NOT "new products." Like the above issue which TiVo did not dispute, they gave the judges the ticket to rule against them. Bad bad moves by TiVo.


----------



## Curtis52

Here is an interesting article on the case by a former U.S. Commissioner of patents and trademarks:

Link


----------



## scooper

Curtis52 said:


> Here is an interesting article on the case by a former U.S. Commissioner of patents and trademarks:
> 
> Link


One cannot help but get the feeling that he is for Tivo in that article.

He didn't even cover that Echostar DID come up with a replacement method (for which they were just granted THEIR patent).


----------



## jacmyoung

scooper said:


> One cannot help but get the feeling that he is for Tivo in that article.
> 
> He didn't even cover that Echostar DID come up with a replacement method (for which they were just granted THEIR patent).


As the former commssioner of the PTO, had he had the power to determine the patent application, he would not have granted E* the new patent because according to him the changes are trivial. Trivial is not innovative.

Boy was the PTO so wrong to have considered E*'s DVR method non-trivial and granted it a patent. On the other hand, if being trivial is good enough to receive a patent, then what value is there for any patents at all, whether it is E*'s patent, or TiVo's?


----------



## CuriousMark

scooper said:


> One cannot help but get the feeling that he is for Tivo in that article.
> 
> He didn't even cover that Echostar DID come up with a replacement method (for which they were just granted THEIR patent).


Echostar's new patent is innovative, but it is a layer of innovation on top of TiVo's not in place of TiVo's innovation.

Listening to the audio I got a kick out of the Dish attorney saying that TiVo had said that what Echostar did was not possible. Of course he left out the context that at the time of the invention, it was impossible with the processor technology available at the time. Dish even proved that by not putting this part of their fix into their oldest least powerful DVRs. Anyone who knows the history of this had to be rolling their eyes at him for saying it with a straight face.

At the time of the invention, Echostar's new technique was impossible, with newer hardware, it makes sense and is a viable new technology that really does work around the "hardware" claims of TiVo's patent successfully. I suppose that is at least partially why TiVo chose not to pursue the hardware claims, they new they could be worked around.

Since the discussion at the CAFC is about the "software" claims, the Echostar patent, really is just a blustery side show and is not relevant, so leaving it out of the article doesn't seem so much like a one sided omission as it is a proof that the author really does understand the case.


----------



## jacmyoung

You know it is too bad the stupid CAFC whoever uploaded that sorry audio could not even upload the complete audio. I was hoping to really hear Judge Dyk's response when Mr. Waxman said, the only way E* can avoid the contempt is if E*'s interpretation of the injunction is the only possible one.

So he is not even disputing anymore that there are more than one possible interpretation, for example one by E* and one by TiVo, just that if there are more than one possible intrepretation, TiVo should win, only if there is one possible interpretation, could E* win.

Are you kidding me?


----------



## tivonomo

jacmyoung said:


> You know it is too bad the stupid CAFC whoever uploaded that sorry audio could not even upload the complete audio. I was hoping to really hear Judge Dyk's response when Mr. Waxman said, the only way E* can avoid the contempt is if E*'s interpretation of the injunction is the only possible one.
> 
> So he is not even disputing anymore that there are more than one possible interpretation, for example one by E* and one by TiVo, just that if there are more than one possible intrepretation, TiVo should win, only if there is one possible interpretation, could E* win.
> 
> Are you kidding me?


Waxman was supporting his position that the burden is on E* to ask for clarification if they believed there were other reasonable interpretations. In other words, TiVo should win if TiVo's interpretation of Infringing Products was _reasonable_ - even if one believed E*'s interpretation was also reasonable.

The line of questioning stemmed from Moore's insistance that both parties could have walked away believing that they had "won" on the wording of the injunction.


----------



## peak_reception

jacmyoung said:


> You know it is too bad the stupid CAFC whoever uploaded that sorry audio could not even upload the complete audio.


Or maybe the recording was cut off in the hearing room? Either way, a shame that they couldn't get such an easy task done right. And if it is the uploading I wouldn't hold your breath waiting for them to fix it.



> I was hoping to really hear Judge Dyk's response when Mr. Waxman said, the only way E* can avoid the contempt is if E*'s interpretation of the injunction is the only possible one.





> So he is not even disputing anymore that there are more than one possible interpretation, for example one by E* and one by TiVo...


 There can be numerous interpretations of any written words. The question should be, are they _reasonable_ interpretations.



> ...just that if there are more than one possible intrepretation, TiVo should win, only if there is one possible interpretation, could E* win.


 His point was that unless the District Court's Injunction clearly and unambiguously supports DISH's interpretation, then they needed to ask for clarification or modification (or both) years ago when the Injunction was issued.

Too bad we don't get to hear the rest for ourselves.


----------



## phrelin

There are some opinions that seem more "interesting" than others. From this morning's MediaBiz The Morning Bridge:


> Judging from session in the full Federal Circuit appeals court, Stifel Nicolaus analysts Rebecca Arbogast and David Kaut note that "TiVo risks either having the contempt order reversed or having the case sent back to the district court judge with instructions to reconsider the contempt order in light of clarifications to the standard that governs contempt actions."
> 
> ...Write the duo, "We believe that EchoStar may have at least three and perhaps four of the five votes it will need for some form of relief." The court is not likely to issue its opinion before 1Q11.


While I'm skeptical about all analysts, I can't dismiss out of hand Arbogast's opinion even though she frequently is a talking head on business news shows:


> Rebecca Arbogast has been named head of the firm's Washington, D.C. Communications Regulatory Practice. She replaces Blair Levin, who has left the firm to return to head the Federal Communications Commission's effort to write the nation's broadband strategy.
> 
> Ms. Arbogast has been with the group since 2001, providing advice to clients on legal and regulatory issues affecting the communications and technology industries, including wireless, antitrust, intellectual property, and international issues. Prior to joining Stifel Nicolaus, she worked at the Federal Communications Commission (FCC), where she served as Chief of the International Bureau Telecommunications Division. In her position at the FCC, she led an office of attorneys, economists, and engineers, spearheaded the FCC's first comprehensive program of technical assistance to emerging economies, and shaped the agency's policies for international communications and Internet services.
> 
> Before joining the FCC, Ms. Arbogast served in the Office of Legal Counsel, Department of Justice in the Clinton Administration. She began her legal practice as a corporate attorney with the Washington D.C. law firm of Wilmer Cutler, representing clients in litigation, international arbitrations, and transactions.
> 
> Ms. Arbogast received her J.D. from the Yale Law School and her master's degree from the University of Iowa. She clerked on the Ninth Circuit Court of Appeals for Judge Fletcher and was the first Fulbright Fellow in European Community Law, studying and teaching in London.
> 
> She teaches Global Communications at American University Law School and has taught Constitutional Law at Johns Hopkins School of Public Policy. She served on the advisory group to the Obama-Biden Transition Team for the FCC and NTIA.


Naturally, as an attorney:


> Arbogast and Kaut wrap that opinion in a whole lot of "ifs," of course....


----------



## jacmyoung

tivonomo said:


> Waxman was supporting his position that the burden is on E* to ask for clarification if they believed there were other reasonable interpretations. In other words, TiVo should win if TiVo's interpretation of Infringing Products was _reasonable_ - even if one believed E*'s interpretation was also reasonable.
> 
> The line of questioning stemmed from Moore's insistance that both parties could have walked away believing that they had "won" on the wording of the injunction.


That is exactly why it was a joke. If E* walked away thinking he understood the injunction the way he sought it was, and TiVo walked away thinking she understood the injunction the way she thought, and if they are both reasonable in their respective understanding (which TiVo now no longer dispute that her way was the only reasonable way), that makes for an ambiguious injunction by definition, and yet Mr. Waxman said in such a case TiVo gets the benefit, totally in contrast to the law.

BTW, E* thought in fact his interpretation was the only reasonable way at the time the injunction took effect, how can he be required to seek clarification when he thought his was the only way?

Now TiVo says she has a different interpretation, but she did not tell E* that until the contempt proceeding started in 2008 did she? So how can she insist he clarify it during the 2006-2007 appeal process?


----------



## jacmyoung

peak_reception said:


> His point was that unless the District Court's Injunction clearly and unambiguously supports DISH's interpretation,


In E*'s mind yes at the time the injunction took effect.



> then they needed to ask for clarification or modification (or both) years ago when the Injunction was issued.


But since in E*'s mind the answer is yes, does that mean E* does not have to ask for clarification? You see how weird this demand is?


----------



## peak_reception

These oral arguments are both frustrating and fascinating to hear. 

The lawyers are really on the hot seat, as usual, though Waxman got grilled a lot more closely than Rosenkranz did. 

For all the times they make such appearances I am surprised that Rosenkranz would expect the judges to sit there and listen to him lay out a complicated argument about disablement or colorable difference. He actually tells the first interjecting judge to wait until he's done talking about disablement, then he will address the judge's question. Surprising that he was given that courtesy, and for the most part made his arguments unmolested by other interruptions. And when he was gently interrupted, sometimes it was even to help out his cause, such as when the one judge asked if it was proper to proceed in a contempt proceeding if there is any question of no longer infringing. And then when Rosenkranz is stumbling, suggests to him 'it's not, proper, right?' (the DISH position). 

Waxman, by contrast, was aggressively interrupted many times, including right out of the gate, four or five words into his statement, just like last time with Rader. Lucky for Waxman that he is quicker and more flexible than Rosenkranz, able to parry and thrust as the oral setting requires. 

Still, judges can and do inflict damage through aggressive questioning which does not allow adequate time for response and/or explanation. For some of the judges it seems that the aim is exactly that, to damage rather than clarify. Judges Moore and Dyk came across that way to me this time. Judge Rader came across that way last time, and it did reflect his positioning when the verdict was announced. Of all the talking judges, Gajarsa was about the only one who gave TiVo any comfort at all in his questions, gentle as they were.


----------



## jacmyoung

peak_reception said:


> These oral arguments are both frustrating and fascinating to hear.
> 
> Once again, as last time, I am struck by how unversed on the case some of the judges sound. With Judge Moore, even the "P.I.D." filter made its way back into the proceedings as she blurted it out three times in one sentence. She had listened well to Judge Rader apparently.
> 
> The lawyers are really on the hot seat, as usual, though Waxman got grilled a lot more closely than Rosenkranz did.
> 
> For all the times they make such appearances I am surprised that Rosenkranz would expect the judges to sit there and listen to him lay out a complicated argument about disablement or colorable difference. He actually tells the first interjecting judge to wait until he's done talking about disablement, then he will address the judge's question. Surprising that he was given that courtesy, and for the most part made his arguments unmolested by other interruptions. And when he was gently interrupted, sometimes it was even to help out his cause, such as when the one judge asked if it was proper to proceed in a contempt proceeding if there is any question of no longer infringing. And then when Rosenkranz is stumbling, suggests to him 'it's not, proper, right?' (the DISH position).
> 
> Waxman, by contrast, was aggressively interrupted many times, including right out of the gate, four or five words into his statement, just like last time with Rader. Lucky for Waxman that he is quicker and more flexible than Rosenkranz, able to parry and thrust as the oral setting requires.
> 
> Still, judges can and do inflict damage through aggressive questioning which does not allow adequate time for response and/or explanation. For some of the judges it seems that the aim is exactly that, to damage rather than clarify. Judges Moore and Dyk came across that way to me this time. Judge Rader came across that way last time, and it did reflect his positioning when the verdict was announced. Of all the talking judges, Gajarsa was about the only one who gave TiVo any comfort at all in his questions, gentle as they were.


First off, we need to learn to throw away the notion that judges don't know better and need educated. It is not true but even if it is, thinking that way gets you in trouble, just look at Judge Rader and what he was able to do.

Now it is natural if you are a judge and have already had a lot of problem with one party and its positions, you would give that party hard time.


----------



## peak_reception

jacmyoung said:


> *In E*'s mind* yes at the time the injunction took effect.
> 
> But since *in E*'s mind* the answer is yes, does that mean E* does not have to ask for clarification? You see how weird this demand is?


"E*'s mind" is not what counts. As I've said before, that is a completely solipsistic approach which is not what courts and judges care about one bit. E* does not get to decide _on their own, in their own mind_, what an injunction requires. The judge who wrote it knows and decides what it means. Higher up judges can correct the author judge if the question is raised and disputed. E* neither raised nor disputed the Injunction.

If this does go TiVo's way (which I doubt it will), it won't be because of E*'s clever evasion of the Injunction. In fact, if anything, that will be E*'s undoing if it goes against them. If it goes against TiVo it will be because the CAFC will find that Judge Folsom incorrectly applied the law regarding contempt proceedings where there is outstanding question of more-than-colorable difference to be decided first (by a jury). In which case they will remand the case back to Folsom and the case drags out for another couple of years if the parties won't settle. Of course TiVo can appeal to the Supreme Court also.

I wonder how many of us will live to see the end of this :sure:


----------



## peak_reception

> First off, we need to learn to throw away the notion that judges don't know better and need educated.


 I'm not saying that they're stupid. They have a hard job and a heavy work load. They are thrust into case after case where there is usually a long history of complicated dispute. I do, however, believe that they oftentimes go into these oral arguments inadequately (or woefully) unprepared. A tale of the tape. :grin:


----------



## tivonomo

peak_reception said:


> Of all the talking judges, Gajarsa was about the only one who gave TiVo any comfort at all in his questions, gentle as they were.


Lourie was also obviously on TiVo's camp. He "asked" a couple of tough KSM questions of E*. I think Moore and Dyk stand out more because of their attitude and tag-teaming in the questioning of Waxman, but I would strongly disagree based on the audio that this hearing favored either party. It will be a close vote for sure.

Also, Mayer did not show although he was part of the original panel and sided with TIVo. Just because he didn't show doesn't mean he won't vote (he can if he choses) Additionally, if the Senate confirms O'Malley, that will be another vote. So we could have potentially 11 judges on the final decision.


----------



## MCSuckaDJ

"jacmyoung" said:


> You know it is too bad the stupid CAFC whoever uploaded that sorry audio could not even upload the complete audio.


Perhaps a superior audio recording device is tied up in patent litigation.


----------



## tivonomo

peak_reception said:


> "E*'s mind" is not what counts. As I've said before, that is a completely solipsistic approach which is not what courts and judges care about one bit. E* does not get to decide _on their own, in their own mind_, what an injunction requires. The judge who wrote it knows and decides what it means. Higher up judges can correct the author judge if the question is raised and disputed. E* neither raised nor disputed the Injunction.


Yup.

By definition, if an interpretation is "reasonable" E*'s team should have considered it. I don't think one can argue TiVo's plain reading as unreasonable, so I've said all along that the disablement part of the injunction will stand when this is all over.


----------



## peak_reception

tivonomo said:


> Lourie was also obviously on TiVo's camp. He "asked" a couple of tough KSM questions of E*. I think Moore and Dyk stand out more because of their attitude and tag-teaming in the questioning of Waxman, but I would strongly disagree based on the audio that this hearing favored either party. It will be a close vote for sure.


 That may well be true that the aggressiveness of a couple of the judges [Moore & Dyk] makes it sound worse for TiVo than it actually is. But when you can pretty much plant three judges squarely in E*'s corner, one in TiVo's corner, and only guess at the other five, I would say that favor's E* overall. It's hard for me to imagine that the pro-E* passion shown by Rader, Moore, and Dyk will have no effect on the other judges. How many judges have shown pro-TiVo passion? None.



> Also, Mayer did not show although he was part of the original panel and sided with TIVo. Just because he didn't show doesn't mean he won't vote (he can if he choses) Additionally, if the Senate confirms O'Malley, that will be another vote. So we could have potentially 11 judges on the final decision.


I would think that only judges who are involved at every step of the process (including oral arguments) would be entitled to vote. Maybe that's wrong. Dgordo?


----------



## tivonomo

peak_reception said:


> I would think that only judges who are involved at every step of the process (including oral arguments) would be entitled to vote. Maybe that's wrong. Dgordo?


Mayer is allowed to vote since he was on the original panel. Also OMalley, whose nomination is on hold in the Senate, would be allowed to vote if confirmed in the next month or two. There is no requirement that a judge attend the oral argument.

I think you have to count Lourie and Bryson in TiVo's camp (Bryson wrote the 2008 decision). I think you have to count Rader and Moore in E*'s camp. Possibly Dyk.

Regarding "passion", I don't think the more experienced judges are "swayed" at all by that. In fact, everyone was laughing at Moore at one point. She was factually off on a couple of obvious points. Probably because of her lack of patent law experience and being the youngest judge ever appointed to the CAFC. Just because she is passionate, the judges only look at the quality of arguments.


----------



## peak_reception

> Also, Mayer did not show although he was part of the original panel and sided with TIVo. Just because he didn't show doesn't mean he won't vote (he can if he choses)


 Which makes for a possible 5 to 5 tie vote? (assuming the other judge is not confirmed in time or is not allowed to vote).

How would a tie vote be handled?


----------



## tivonomo

peak_reception said:


> Which makes for a possible 5 to 5 tie vote? (assuming the other judge is not confirmed in time or is not allowed to vote).
> 
> How would a tie vote be handled?


In order to overturn the district court there must be a majority. So 5-5 goes to TiVo.


----------



## jacmyoung

peak_reception said:


> "E*'s mind" is not what counts.


It is, if TiVo demands that E* must clarify any unclear issues FIRST or else. Because if E* had never had any unclear issues with what they believed was what the injunction said, you cannot possibly demand that E* must FIRST seek clarification, when the other interpretation TiVo or Judge Folsom provided to E* was AFTER the fact.

Now had TiVo and Judge Folsom told E* BEFORE the fact, say in 2006, that you must disable the DVR functions on those DVRs, whether they were infringing, or not, regardless how later you might modify them, then you can say, if E* did not agree, why didn't you appeal that.

But that was not what happened, in fact as Judge Rader said, TiVo said in 2006 the injunction only sought to stop infringement, "nothing more, nothing less." TiVo also told Judge Folsom and E* that E* could comply with the injunction by disabling "the infringing DVR functions through a satellite download." For such reasons, Judge Rader concluded that at that time, any attorney could not possibly even have interpreted the injunction other than how E*'s attorney had interpreted.


----------



## jacmyoung

tivonomo said:


> In order to overturn the district court there must be a majority. So 5-5 goes to TiVo.


There cannot be a tie because there can only be an odd number of judges on the panel.


----------



## jacmyoung

tivonomo said:


> I don't think one can argue TiVo's plain reading as unreasonable


What are you talking about? Judge Rader said at the time (2006) the only reasonable intepretation was E*'s interpretation.


----------



## tivonomo

jacmyoung said:


> There cannot be a tie because there can only be an odd number of judges on the panel.


Please don't spread misinformation on this board anymore. Thanks.


----------



## tivonomo

jacmyoung said:


> What are you talking about? Judge Rader said at the time (2006) the only reasonable intepretation was E*'s interpretation.


Yet 3 unreasonable judges disagreed?


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## jacmyoung

tivonomo said:


> Please don't spread misinformation on this board anymore. Thanks.


Why don't you quote us, I know you like to quote. I am not expert, you are.


----------



## jacmyoung

tivonomo said:


> Yet 3 unreasonable judges disagreed?


No one said the three judges were unreasonable, they only did not care what TiVo said back in 2006, and what TiVo said in 2009, which are different.

As Judge Rader said, if you are willing to go back to read the court papers in 2006 what TiVo said what its injunction meant, you could only read the injunction in the way E* interpreted back in 2006 and 2007, but if you refuse to do that, then only insist on the so called "plain language" of the order, yes you can agree with TiVo's current interpretation, which is different than that of 2006.

But, even if you can agree with TiVo, you may still not able to say E*'s interpretion back in 2006 and 2007 was not reasonable. This much TiVo does not even dispute in the latest oral argument. By making the statement that "E* can only win if E*'s interpretation is the only reasonable one," is to say that E*'s interpretation is not the only reasonable one, which means E*'s interpretation may still be a reasonable one just that there is another reasonable interpretation.

As such if an order can have more than one reasonable interpretation, it is unclear, therefore cannot be enforced.

But let me make this clear again, the above argument is no longer necessary, because Mr. Waxman also agreed that if the difference is more than colorable, the contempt proceeding is not proper, a new action would be needed. Therefore if the judges find the difference more than colorable, they can vacate the district order and remand for a new trial, end of the story, TiVo cannot complain, because TiVo has agreed to such outcome.


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## HiDefGator

a new trial, which I believe will be ordered, is not necessarily good for Dish. The jury in the new trial may also find infringement of the workaround and decide on a higher monthly rate at the same time. Dish may go from owing $2.25 a month today to owing $4 a month a year from now. And you can bet the new injunction will be very clear.


----------



## tivonomo

jacmyoung said:


> Why don't you quote us, I know you like to quote. I am not expert, you are.


Huh? You stated that there must be an odd number of judges on the en banc. You made that up. I just looked at the en banc rules this morning.


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## tivonomo

HiDefGator said:


> a new trial, which I believe will be ordered, is not necessarily good for Dish. The jury in the new trial may also find infringement of the workaround and decide on a higher monthly rate at the same time. Dish may go from owing $2.25 a month today to owing $4 a month a year from now. And you can bet the new injunction will be very clear.


One could even argue a lost profit damages approach which would be even more severe than that. Look at TiVo's sanction argument (that was rejected by Folsom in that situation). The numbers get to be big really quickly.


----------



## jacmyoung

HiDefGator said:


> a new trial, which I believe will be ordered, is not necessarily good for Dish. The jury in the new trial may also find infringement of the workaround and decide on a higher monthly rate at the same time. Dish may go from owing $2.25 a month today to owing $4 a month a year from now. And you can bet the new injunction will be very clear.


That is if you believe the "new products" will again be found to infringe based on all the new theories and the new PTO disclaimers You see TiVo will not be able to argue that the PTO disclaimers are irrelevant, everything will be on the table. E* will not even ask for a jury trial. They say so now for the benefit of their own, to get the new trial, but if they get it they will ask for a summary judgment of non-infringement.

If they don't get it from Judge Folsom, they will go to CAFC. I don't usually say this but for this one time, mark my words, if there is a new trial, E* will go that route, and TiVo is fully aware of that, as a result TiVo may just end the whole thing. This is exactly why TiVo will do anything to avoid a new trial.


----------



## tivonomo

jacmyoung said:


> That is if you believe the "new products" will again be found to infringe based on all the new theories and the new PTO disclaimers You see TiVo will not be able to argue that the PTO disclaimers are irrelevant, everything will be on the table.


If this premise is true, the rest of your argument is probably right. But the premise is most likely fantasy. At this point we don't know any specifics of E*'s argument on the alleged disclaimers. But we do know that E* told the CAFC and the judges ignored their plea and continued to the en banc.


----------



## jacmyoung

tivonomo said:


> If this premise is true, the rest of your argument is probably right. But the premise is most likely fantasy. At this point we don't know any specifics of E*'s argument on the alleged disclaimers. But we do know that E* told the CAFC and the judges ignored their plea and continued to the en banc.


What do you mean? I don't think E* had the illusion that the en banc panel would skip the oral argument, is that what you are trying to say? Then again you don't know what you are talking about. Are you now saying the en banc will ignore E*'s request and refuse to order a new trial? How do you know that when the en banc has yet ruled?

I will not even go so far as HighdefGator to say they WILL order a new trial, there can be other relief or TiVo still can win, but if there is a new trial, E* will likely go straight to ask for a summary judgment.


----------



## jacmyoung

CuriousMark said:


> Echostar's new patent is innovative, but it is a layer of innovation on top of TiVo's not in place of TiVo's innovation.
> 
> Listening to the audio I got a kick out of the Dish attorney saying that TiVo had said that what Echostar did was not possible. Of course he left out the context that at the time of the invention, it was impossible with the processor technology available at the time. Dish even proved that by not putting this part of their fix into their oldest least powerful DVRs. Anyone who knows the history of this had to be rolling their eyes at him for saying it with a straight face.
> 
> At the time of the invention, Echostar's new technique was impossible, with newer hardware, it makes sense and is a viable new technology that really does work around the "hardware" claims of TiVo's patent successfully. I suppose that is at least partially why TiVo chose not to pursue the hardware claims, they new they could be worked around.
> 
> Since the discussion at the CAFC is about the "software" claims, the Echostar patent, really is just a blustery side show and is not relevant, so leaving it out of the article doesn't seem so much like a one sided omission as it is a proof that the author really does understand the case.


You know what as much as you made a lot of sense, the mere fact E* can now rely on the more powerful CPUs to do the things TiVo could not do back then, makes the method totally different. If the difference was only trivial, it means more powerful CPUs are not necessary, E* could have used the new method on the old DVRs too. The fact that they could not work around on the old DVRs actually proved more than colorable difference as far as the DVR methods.

As much as the TiVo folks want to ridicule Judge Moore, she actually had the most refreshing view of it all. When the district court separated the four independent claims into hardware and software groups, it meant something. As such you almost have to prove what software codes that had infringed the software claims, not just pointing out that PID filter is still there, which is a hardware piece. She also pointed out that both parties could easily have walked away from the injunction hearing thinking they got exactly what the injunction said to do or not to do. That way of exchange had really threw Mr. Waxman off, to the point he practically admitted E*'s interpretation can be one of the reasonable ones.

It was also Judge Moore who pressed Mr. Waxman to admit if the difference is more than colorable, a new trial would be needed.


----------



## tivonomo

jacmyoung said:


> What do you mean? I don't think E* had the illusion that the en banc panel would skip the oral argument, is that what you are trying to say? Then again you don't know what you are talking about.


I'm saying exactly what I said. We don't even know if there was a disclaimer or if this was just another one of E*'s hail mary's. The legal standard for proving a disclaimer is very very difficult to meet.

All we know is that E* hoped to end the en banc with their filing to the CAFC regarding disclaimers. Obviously, it was ignored because the evidence wasn't clearly convincing and we will have to wait and see what this strategy involves.

Anything else is pure speculation. Nobody here knows, so there is no point in fantasizing about E* having an upper hand in a new trial on the workaround. That is putting the cart before the horse.:beatdeadhorse:


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## jacmyoung

"tivonomo" said:


> I'm saying exactly what I said. We don't even know if there was a disclaimer or if this was just another one of E*'s hail mary's. The legal standard for proving a disclaimer is very very difficult to meet.
> 
> All we know is that E* hoped to end the en banc with their filing to the CAFC regarding disclaimers. Obviously, it was ignored because the evidence wasn't clearly convincing and we will have to wait and see what this strategy involves.
> 
> Anything else is pure speculation. Nobody here knows, so there is no point in fantasizing about E* having an upper hand in a new trial on the workaround. That is putting the cart before the horse.:beatdeadhorse:


Upper hand in a new trial. I don't know about you but if there is a new trial, that means TiVo has lost. And you are now looking forward to arguing who will have an upper hand then?


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## peak_reception

Recording still not fixed. Will a transcript be available? How the hearing concluded may be important.


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## tivonomo

peak_reception said:


> Recording still not fixed. Will a transcript be available? How the hearing concluded may be important.


I've never seen a CAFC transcript released. Unless there is a second recording there won't be anything released by the CAFC.


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## jacmyoung

tivonomo said:


> Does anyone question the fact that jacmyoung spreads misinformation, such as this gem?


I know I know, you want to know. The total number of the CAFC judges is an odd number, 15 I think. The CAFC rules specify that any CAFC panel will have an odd number of judges on it, a minimum of three of course, but can be 5, 7, 9,...all the way to 15 as a full bench I believe.

Now I was wondering how Judge Moore was able to throw off one of the best, if not the best CAFC/SC lead attorney by getting him to make two very crucial concessions as I explained above. No one else did, not even Judge Rader was able to get him to make such concessions. Not saying such concessions will determine the outcome but if used against TiVo, TiVo cannot really complain.

Apparently Judge Moore is also a hot mom and she also has two degrees in electrical engineering:

http://www.cafc.uscourts.gov/index....-moore-circuit-judge&catid=1:judges&Itemid=24


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## Greg Bimson

I'm here to add my opinion after listening to the recorded transcript, and will be gone once again:

TiVo attorney Waxman should have led with the fact that Echostar's interpretation of the injunction is impossible. Heck, truth be told, I would think that EchoStar attorney Rosenkranz may have unwittingly yielded that point, causing the house of cards to fall for any argument regarding the failure to disable.

Early on in Rosenkranz's argument, he made he claim that one cannot replace the eight models of DVR with the term "Infringing Products" anywhere it is noted within the injunction. Yet, there is both ample case law and simple rules of English that supports it. I have a distinct feeling that TiVo attorney Waxman was saving it for his last argument, which of course we couldn't hear.

After hearing Rosenkranz's argument, I think EchoStar lost the "failure to disable" provision. I just don't believe the jurists believed the argument at all, so the questions became somewhat semantic regarding the disablement provision.

Of course, this appeal focuses on the methods Judge Folsom used to find contempt. So of course most of the questions posed to TiVo would be to review their stance and validate what Judge Folsom had done.

EchoStar's entire argument is "on alternative", but it is predicated on positions that are half-truths. They were successful in having the jurists continually ask about the PID filtering, which also occurred during the original CAFC appeal last year. However, TiVo attorney Waxman refused to concede that PID filtering was not used to find infringement. He finally made the point I made all along: *every single expert testfied PID filtering met the step of Claims 31 and 61, the "Software Claims".* No matter what other information was addressed or how EchoStar attempted to obfuscate the argument, it is the single reason why that step of the claim should STILL be found to be met.

There were valid questions raised, especially as the jurists mention the method the jury found EchoStar infringing. I honestly believe that Waxman's defense from questions asked by two of the jurists was correct, but I think it was way too wordy. That does leave some doubt in my mind how the infringement issue will be handled. My personal opnion is that TiVo met the colorable difference test head-on and that Judge Folsom's ruling should stand. However, I'm not so sure some on CAFC panel may agree.

And I still would have liked to hear the remainder of the transcript. I think it was about to get very interesting, as Waxman had yet to address EchoStar's "interpretation" of the injunction.


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## jacmyoung

Greg Bimson said:


> I'm here to add my opinion after listening to the recorded transcript, and will be gone once again:


Please don't go



> Early on in Rosenkranz's argument, he made he claim that one cannot replace the eight models of DVR with the term "Infringing Products" anywhere it is noted within the injunction. Yet, there is both ample case law and simple rules of English that supports it.


Wrong about what you heard, it was not that you cannot replace the eight model names with the term, rather that if you do, as TiVo did, the third use of that term in the injunction will have resulted in ordering E* to disable all the replacement DVRs not already in the field at the time the injunction took effect, a request made by TiVo but REJECTED by the district court.

It would have been better had TiVo tried to separate the DVRs already in the field, and those installed in the field after the injunction took effect. Then make this argument, if they still infringe, damages and sanctions will be calculated based that, but if the modified DVRs no longer infringe, E* would not be in violation for installing those DVRs after the injunction took effect, only those already in the field at that time would be in violation.

But of course TiVo could not make that distinction, because if they did, they would basically have agreed to E*'s interpretation that "Infringing Product" means the product that infringes, not if it no longer infringes.


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## tivonomo

jacmyoung said:


> I know I know, you want to know. The total number of the CAFC judges is an odd number, 15 I think. The CAFC rules specify that any CAFC panel will have an odd number of judges on it, a minimum of three of course, but can be 5, 7, 9,...all the way to 15 as a full bench I believe.


And for the hundredth time, you fail to give a source or quote like all of the rest of us do when asked.

I've already reviewed the rules on en banc as governed by a 1963 Congress law. Your misinformation is a detrement to this board and this discussion.

And I seriously don't want to know about you having the hots for a federal judge. Her appearance is extremely far from the topic of this board. What is closer to topic is the fact that she is next in line to replace Rader as Chief Justice.


----------



## bobukcat

I listened to audio and "if you can throw a pen at it and hit it, it's not software" :lol: was my favorite part. I have no idea what the judges that aren't asking a lot of questions are thinking but in my opinion the judges that were asking the most questions absolutely believe that there is more than colorable difference and infringement should now be decided by a new case. 

I also think that E* did a good job explaining at least one way that Tivo's take that "the infringing products" = "the named models of DVRs" is incorrect in that it would have required them to disable ALL functionality of those receivers, not just the DVR functionality. Tivo may have been successful in countering that with a point of law or precedent but not being a lawyer or judge I don't know.

On a side-note, I am really impressed with the resumes of the judges on this court with regards to the technical background that many of them have as well as their degrees and experience in the court. I was surprised how many of them have worked in the private industry and/or military in non-legal roles. I also noted that most of them were appointed by either Reagan or one of the Bush presidents.


----------



## peak_reception

> Of course, this appeal focuses on the methods Judge Folsom used to find contempt. So of course most of the questions posed to TiVo would be to review their stance and validate what Judge Folsom had done.


Yes, Waxman was put in the weird position of having to defend Judge Folsom's decisions more than defend TiVo's own arguments. Some of the CAFC judges sounded very critical, incredulous even, about how Judge Folsom went about things. But in Folsom's defense, KSM tied him into a pretzel trying to meet all its requirements.


----------



## jacmyoung

"peak_reception" said:


> Yes, Waxman was put in the weird position of having to defend Judge Folsom's decisions more than defend TiVo's own arguments. Some of the CAFC judges sounded very critical, incredulous even, about how Judge Folsom went about things. But in Folsom's defense, KSM tied him into a pretzel trying to meet all its requirements.


Well that is basically what a de novo review is all about. If KSM had made Judge Folsom's ruling very difficult to reconcile, by definition he had likely committed legal error(s). I think that is the point E*'s attorney was finally trying to make. It surprised Judge Dyk a little

It was likely those active during the hearing wrote those Qs. Those Qs clearly tried to blame it on TiVo rather than Judge Folsom, but E* was so confident that they finally decided to raise the bar.

By the way, I agree with the previous post, not only is Judge Moore hot, she also knew how to crack a joke or two. I think I know why Mr. Waxman was cracked under her questioning

On a side note, as pointed out above, most of those CAFC judges were appointed by the Republican presidents, while Mr. Waxman, the best lawyer money can buy as far as appeals are concerned, was appointed by a Democratic president when he was in an official capacity. We also know Charlie is a Democratic donor. Just pointing out a few facts, not trying to imply any thing.


----------



## peak_reception

Then they should invite Judge Folsom to defend his own actions and decisions.


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## jacmyoung

"peak_reception" said:


> Then they should invite Judge Folsom to defend himself.


Then it will no longer be a de novo review.


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## peak_reception

*"DE NOVO"*



> Anew. afresh. Considering the matter anew, the same as if it had not been heard before and as if no decision previously had been rendered.


 -- Lectric Library definition.

Ok, fair enough, considering the matter freshly. Easier said than done.


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## jacmyoung

peak_reception said:


> *"DE NOVO"*
> 
> -- Lectric Library definition.
> 
> Ok, fair enough, considering the matter freshly. Easier said than done.


Also not everything in the appeal is de novo review. I am no lawyer so correct me if I am wrong, the facts of the case, such as whether the PID filter actually anayzes "audio and video data" or just the PID 13?-bit ID code for example, whether the "ring of buffer" satisfies the "automatic flow control" limitation, these are all part of the de novo review.

The other part of the review is to determine if the district court had abused its discretion rendering its judgment. That is why I said long time ago the issue of abuse of discretion must be part of E*'s argument, they only started very recently. If you don't argue that the district court abused its discretion, even if you win on the de novo review, the appeals court cannot overturn the judgment.


----------



## Curtis52

ipwatchdog has chimed in.

ipwatchdog


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## jacmyoung

"Curtis52" said:


> ipwatchdog has chimed in.
> 
> ipwatchdog


This is the same guy who wrote after the en banc order how much problem he had with Judge Rader's effort for the en banc review. But it is very clear from his last sentence he is confused. He said E* was at fault since E* had problem with the injunction but did not appeal.

In the word of Greg, RUBBISH!

E* never had problem with the injunction as E* interpreted it to stop the infringement, nothing more, nothing less, as TiVo told them in 2006. He is a lawyer he should know that, the reason it now appears that E* is having problem with the injunction is after TiVo said in 2008, two years after TiVo told Judge Folsom and E* it was to stop the infringement, nothing more, nothing less, that but now the injunction was to prevent acts even if they are non infringing.

Had TiVo being consistent, continue to say, it is to stop the infringement, nothing more, nothing less, E* would have no problem at all.

This guy completely left out this one detail, a detail caught by Judge Rader. Maybe this is why he is not on the bench. He did say if I were the judges...


----------



## jacmyoung

Of course he also made another point that E* did later seek clarification of the disabling provision, but did not protest the injunction itself. But I am a little lost on this one, if E* did seek clarification, did E* not satisfy TiVo's unusual request that E* must first seek clarification, but the only problem is the court did not provide an answer to E*'s question?

I still cannot get over this audio being cut off at the very critical timing when the exchanges between Mr. Waxman and the Judges appeared to get really confrontational, and of course E*'s rebuttal to follow. I can't help thinking about what a lot of the TiVo investors were complaining at IV what happened when the en banc order was published on 5/4/10.

Usually the CAFC publishes its daily round at 10 Eastern, but that day others were released at 10E except the TiVo v. E* order at 11E. It was possible the big fish learned the news before the small ones who relied on the CAFC website rather any possible direct communications.

I am sure those who actually attended the hearing are mostly big fish, they knew what came down in the end but you never read their comments about that missing part. The lawyer in the above link said not a single word about the missing part, even though I am pretty sure he was there or at least know what happened.

In fact dgordo, our resident lawyer, said he was in that hearing, and also talked to one of the Fund managers who was there. Yet no comment about what was missing.

I am only speculating of course, not trying to accuse anyone of anything, but it just seems too much of a coincidence.


----------



## Lake Lover

The audio of the hearing just does not do it for me. I am chronologically old, and certainly physically, and maybe mentally older than my chronological age. Anyway, I just do not adequately process the recording of the hearing. Then, there is the issue of the troublesome loss of the end of the recording. Is there no printed transcription of the hearing in its entirety? Has the CAFC made any official comment relating to transcript?


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## dgordo

jacmyoung said:


> In fact dgordo, our resident lawyer, said he was in that hearing, and also talked to one of the Fund managers who was there. Yet no comment about what was missing.


I was not there, I only spoke to someone that was there.


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## dgordo

tivonomo said:


> And for the hundredth time, you fail to give a source or quote like all of the rest of us do when asked.
> 
> I've already reviewed the rules on en banc as governed by a 1963 Congress law. Your misinformation is a detrement to this board and this discussion.


The full panel is to be composed of an odd number of judges, however sometimes a judge will have to remove himself from the panel and there will be an even number of judges left to issue a ruling. Happened to me once when in front of the 7th Circuit. It was supposed to be a hearing in front of 9 judges and ended up only being 8. Didn't really matter as the decision ended up being 6-2 against me. :lol:


----------



## tivonomo

dgordo said:


> The full panel is to be composed of an odd number of judges, however sometimes a judge will have to remove himself from the panel and there will be an even number of judges left to issue a ruling. Happened to me once when in front of the 7th Circuit. It was supposed to be a hearing in front of 9 judges and ended up only being 8. Didn't really matter as the decision ended up being 6-2 against me. :lol:


A rehearing en banc has no such restriction. Look it up.


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## jacmyoung

"dgordo" said:


> The full panel is to be composed of an odd number of judges, however sometimes a judge will have to remove himself from the panel and there will be an even number of judges left to issue a ruling. Happened to me once when in front of the 7th Circuit. It was supposed to be a hearing in front of 9 judges and ended up only being 8. Didn't really matter as the decision ended up being 6-2 against me. :lol:


I would think in a very close poll any judge would not want to remove him/herself to creat an unfair situation?

BTW, sorry I misread you about being at the hearing.


----------



## jacmyoung

"Lake Lover" said:


> The audio of the hearing just does not do it for me. I am chronologically old, and certainly physically, and maybe mentally older than my chronological age. Anyway, I just do not adequately process the recording of the hearing. Then, there is the issue of the troublesome loss of the end of the recording. Is there no printed transcription of the hearing in its entirety? Has the CAFC made any official comment relating to transcript?


I don't know the answer, all I know is the CAFC is maybe the most backward in terms of implementing new technologies in communication with the public. Maybe they do so intentionally, who knows.


----------



## harsh

Lake Lover said:


> Is there no printed transcription of the hearing in its entirety?


If I read the documentation correctly, a transcript should be offered through PACER at a nominal fee of 7-8 cents per page.

I kinda doubt that someone is going to post the entire transcript on a freebie basis.


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## harsh

dgordo said:


> The full panel is to be composed of an odd number of judges, however sometimes a judge will have to remove himself from the panel and there will be an even number of judges left to issue a ruling.


Hasn't at least one of the judges punched out on this proceedings already?


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## jacmyoung

"harsh" said:


> Hasn't at least one of the judges punched out on this proceedings already?


According to IV, Mayer retired. He was one of the two that sided with TiVo in merits panel review. This is why Tivonomo has been hoping Mayer could come back even if it means we could go from a 9-judge panel to 10


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## spear61

tivonomo said:


> A rehearing en banc has no such restriction. Look it up.


Federal Appeals Court Rules

Rule 47.11. Quorum
A quorum is a simple majority of a panel of the court or of the
court en banc. In determining whether a quorum exists for en
banc purposes, more than half of all circuit judges in regular
active service, including recused or disqualifi ed judges, must
be eligible to participate in the en banc process. If a judge
of a panel that has heard oral argument or taken under submission
any appeal, petition, or motion is unable to continue
with consideration of the matter because of death, illness,
resignation, incapacity, or recusal, the remaining judges will
determine the matter if they are in agreement and no remaining
judge requests the designation of another judge. If the
remaining judges are not in agreement or if any remaining
judge requests the designation of another judge, the remaining
judges will promptly advise the chief judge who will secure
another judge to sit with the panel. The clerk will advise the 
parties of the designation, but no further argument will be had
or briefs received unless ordered by the court.

This court normally has 12 judges ( some may be vacant at this time).

Appeals Courts with more than 15 judges (there are a couple of really big ones) are allowed to determine en blanc in a different manner.


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## tivonomo

jacmyoung said:


> According to IV, Mayer retired. He was one of the two that sided with TiVo in merits panel review. This is why Tivonomo has been hoping Mayer could come back even if it means we could go from a 9-judge panel to 10


Mayer didn't retire. He took senior status. He sat for cases last month. It simply means a reduced workload and a few other benefits.

And I've read several analyst reports. They have stated Mayer would participate... and that a 5-5 tie would favor Tivo. The analysts have their lawyers/experts, so I wouldn't discount that opinion.

I've been trying to validate the Mayer participation and so far no answer from anyone. But I have been told that he can still vote without appearing at oral arguments as can O'Malley if she gets confirmed by the Senate.


----------



## tivonomo

spear61 said:


> Federal Appeals Court Rules
> 
> Rule 47.11. Quorum
> A quorum is a simple majority of a panel of the court or of the
> court en banc. In determining whether a quorum exists for en
> banc purposes, more than half of all circuit judges in regular
> active service, including recused or disqualifi ed judges, must
> be eligible to participate in the en banc process. If a judge
> of a panel that has heard oral argument or taken under submission
> any appeal, petition, or motion is unable to continue
> with consideration of the matter because of death, illness,
> resignation, incapacity, or recusal, the remaining judges will
> determine the matter if they are in agreement and no remaining
> judge requests the designation of another judge. If the
> remaining judges are not in agreement or if any remaining
> judge requests the designation of another judge, the remaining
> judges will promptly advise the chief judge who will secure
> another judge to sit with the panel. The clerk will advise the
> parties of the designation, but no further argument will be had
> or briefs received unless ordered by the court.
> 
> This court normally has 12 judges ( some may be vacant at this time).
> 
> Appeals Courts with more than 15 judges (there are a couple of really big ones) are allowed to determine en blanc in a different manner.


There are 9 Active judges and 6 Senior Judges. Mayer took senior status in June but is still eligible for the rehearing en banc. The 3 empty seats, if filled during the current session of the Senate would be allowed to vote for the en banc as well. Currently though, there is one (Judge O'Malley) who potentially would be called into service in time.

So by the time this is decided, there could be 11 votes. But I wouldn't hold my breath on O'Malley given the gridlock in the Senate.

Here is the composition of the court:

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


----------



## jacmyoung

"tivonomo" said:


> Mayer didn't retire. He took senior status. He sat for cases last month. It simply means a reduced workload and a few other benefits.


But if he was not part of this oral argument nor was he under submission, he could not possibly get in unless one of the 9 leaves, am I correct? Even if that happens, it will still depend on what agreement the remaining judges will make, and parties will be given a heads up, I assume if parties disagree a possible special order can be made.


----------



## dgordo

tivonomo said:


> A rehearing en banc has no such restriction. Look it up.


I didn't mean to imply it was a restriction, I only meant that it is normally composed of an odd number of judges.


----------



## dgordo

jacmyoung said:


> I would think in a very close poll any judge would not want to remove him/herself to creat an unfair situation?


Sometimes they don't really have a choice. In my situation the judge had a spouse that worked for the company I was representing.


----------



## tivonomo

dgordo said:


> I didn't mean to imply it was a restriction, I only meant that it is normally composed of an odd number of judges.


For a rehearing en banc?

Everything I've read says that all Active Judges sit for a rehearing en banc unless there are _unusual circumstances_. Currently that is 9 but there are normally 12.

According to a source at a patent law website, I just learned that Mayer (being Senior Status) would not be involved unless his vote would change the outcome. Of course, I am looking for confirmation of that.


----------



## jacmyoung

"dgordo" said:


> Sometimes they don't really have a choice. In my situation the judge had a spouse that worked for the company I was representing.


Of course things happen, but a majority must still be needed to decide what to do about the situation. In your case it was not a 4/4 tie so they did not have to call on another judge to fill in.

They just can't have a tie.


----------



## dgordo

tivonomo said:


> For a rehearing en banc?
> 
> Everything I've read says that all Active Judges sit for a rehearing en banc unless there are unusual circumstances. Currently that is 9 but there are normally 12.
> 
> According to a source at a patent law website, I just learned that Mayer (being Senior Status) would not be involved unless his vote would change the outcome. Of course, I am looking for confirmation of that.


Maybe I shouldn't extrapolate my experience with the 7th circuit to other circuits, but the 9th circuit has like 27 active judges. I cant imagine they have 27 judges sit for an en banc.


----------



## scooper

It would seem reasonable to me that an En BANC hearing would not require all 27 - some more reasonable subset would seem likely - say 9-15


----------



## tivonomo

dgordo said:


> Maybe I shouldn't extrapolate my experience with the 7th circuit to other circuits, but the 9th circuit has like 27 active judges. I cant imagine they have 27 judges sit for an en banc.


Yeah, 9th circuit is the exception. In that case they have a randomly selected 11 judges for any en banc. But there have been special cases where they have actually sat all of their judges for an en banc. It's just not practical to have 28 judges in one room. But literally, en banc is supposed to mean "on the bench" referring to ALL of the judges.

Here is a source: http://en.wikipedia.org/wiki/Rehearing_en_banc


----------



## jacmyoung

"tivonomo" said:


> Yeah, 9th circuit is the exception. In that case they have a randomly selected 11 judges for any en banc. But there have been special cases where they have actually sat all of their judges for an en banc. It's just not practical to have 28 judges in one room. But literally, en banc is supposed to mean "on the bench" referring to ALL of the judges.
> 
> Here is a source: http://en.wikipedia.org/wiki/Rehearing_en_banc


Where did that 28 come from? I thought it was 27.

I know you miss Judge Mayer, he is not on the panel, I am sorry.

Now do you care to speculate? He must have known with such a strong dissent from Judge Rader an en banc review was possible? If he was so sure TiVo was clearly wronged and justice needed served, why didn't he postpone his "semi retirement" to be on the panel?

If he is not so passionate about helping TiVo to be bothered to cut in his leave hours, what do you say about Judge Lourie?


----------



## tivonomo

jacmyoung said:


> Where did that 28 come from? I thought it was 27.
> 
> I know you miss Judge Mayer, he is not on the panel, I am sorry.
> 
> Now do you care to speculate? He must have known with such a strong dissent from Judge Rader an en banc review was possible? If he was so sure TiVo was clearly wronged and justice needed served, why didn't he postpone his "semi retirement" to be on the panel?
> 
> If he is not so passionate about helping TiVo to be bothered to cut in his leave hours, what do you say about Judge Lourie?


There are 28 judges in the 9th Circuit... not the Federal Circuit. They have 9 active judges.

Mayer is "on the panel". I now have two very good sources confirming what I have posted. So it is confirmed that E* needs *6* judges of the 9 to get a majority as long as Mayer doesn't switch his vote or Judge O'Malley gets confirmed in short order.

So your speculation on Mayer is irrelevant.


----------



## MCSuckaDJ

tivonomo said:


> So it is confirmed that E* needs *6* judges of the 9 to get a majority...


They're not overriding a Presidential veto; 5 of 9 will do.


----------



## jacmyoung

"MCSuckaDJ" said:


> They're not overriding a Presidential veto; 5 of 9 will do.


Because he now has confirmed there are 10 judges on the panel, it is just that Mayer went fishing that day. And if there is a tie, TiVo wins


----------



## MCSuckaDJ

jacmyoung said:


> Because he now has confirmed there are 10 judges on the panel, it is just that Mayer went fishing that day. And if there is a tie, TiVo wins


Wait a second... does that mean there were 9 judges sitting at the en banc proceeding, but one extra judge can phone in his decision just because he sat on the panel rehearing?


----------



## tivonomo

MCSuckaDJ said:


> Wait a second... does that mean there were 9 judges sitting at the en banc proceeding, but one extra judge can phone in his decision just because he sat on the panel rehearing?


Yes. Mayer didn't sit at the oral arguments because Senior status doesn't allow participation, only voting if it makes a difference.


----------



## jacmyoung

"MCSuckaDJ" said:


> Wait a second... does that mean there were 9 judges sitting at the en banc proceeding, but one extra judge can phone in his decision just because he sat on the panel rehearing?


I don't think the phone rang that day, it is not "who wants to be a millionaire?" kinda deal. I am very impressed by Tivonomo's sources at the CAFC, they must also have the missing part of the audio, I wonder if Tivonomo can post it here.


----------



## jacmyoung

"tivonomo" said:


> Yes. Mayer didn't sit at the oral arguments because Senior status doesn't allow participation, only voting if it makes a difference.


So Mayer gets to have his cake and eat it too? Under what circumstance should he cut his vacation short to come in and break Charlie's will? In case it is 5 to 4 in E's favor so he can "make the tie?"


----------



## MCSuckaDJ

Ah. So his vote would only be needed if there's a 4.5/4.5 tie. Gotcha.


----------



## jacmyoung

"MCSuckaDJ" said:


> Ah. So his vote would only be needed if there's a 4.5/4.5 tie. Gotcha.


Well there are judges that may concur in part and dissent in part, can they be considered 0.5 votes?

All jokes aside, only a majority opinion is binding, a tie does not produce a majority opinion.


----------



## James Long

Also remember that there were several questions ... it could turn out to be "win some, lose some" and not all bad for either side.


----------



## jacmyoung

James Long said:


> Also remember that there were several questions ... it could turn out to be "win some, lose some" and not all bad for either side.


I have come up with a few possible outcomes, some maybe the "win some, lose some" scenarios.

1) By at least a majority, the CAFC affirms the district court ruling entirely, TiVo wins.

2) By at least a majority, the CAFC lifts the injunction and orders a new full trial, E* wins because this is exactly what E* asks. To do so all district court ruling/judgment must be reversed/vacated.

3) By at least a majority, the CAFC reverses the district court judgment, therefore vacates the damages/sanctions, orders a summary review of whether the modified DVRs are still infringing, instructing the district court to consider the new PTO disclaimers. To do so they may lift, or continue to stay the injunction.

There are other options too.

The reason 3) is possible is because TiVo does not dispute the PTO disclaimers, only that TiVo argues they are irrelevant to the contempt proceedings. A summary proceeding is appropriate when there is no dispute of material facts, the only decision for the district court to make is whether such disclaimers are relevant to the infringement issues with regard to the modified DVRs, or not. Decisions on the damages and sanctions, if any, can be made after.

#3) order would offer a more expedited process in which both parties may claim victory for PR purpose, even though it will still be a decision in E*'s favor.

I think there can be other outcomes that are anywhere among the above three, but it would be too much of a speculation to do.


----------



## Curtis52

The hearing MP3 has been fixed.

CAFC


----------



## jacmyoung

Curtis52 said:


> The hearing MP3 has been fixed.
> 
> CAFC


Not as dramatic as I thought, but we now know that the several cases Mr. Waxman cited where the court required the defendants to seek clarification, those were for repeated offenders, they had been found to be in contempt repeatedly, so after that of course if they still insisted but the orders were not clear, then the court said given your history yes if you still argued the order was not clear, it was your job now to seek clarification after you had been found to violate the orders over and over. Yet TiVo is using those few cases to ask the CAFC to apply them as a general rule. In this case of course E* never even said the order was not clear until TiVo issued a different interpretation in 2008 than in 2006.

The E*'s rebuttal was interesting, a lot of time was actually spent to "educate" a judge or two (one of them Judge Lourie I think) who seemed still not too sure what the PID filter can or cannot do. I think Mr. Rosenkranz did a better job this time to hammer out the understanding that the PID filter does not analyze start codes, i.e. the so called "audio and video data." He used a very interesting analogy, the broadcast data are like envelops, sealed (data encrypted) with channel addresses on the covers, audio and video and other data inside, the PID filter's function is to only read the addresses, it cannot possibly read/analyze what are inside, only after the PID filter, the envelops are then opened (data descrambled) for the "parser" to read the start codes (the core function of the TiVo technology), but the modified DVRs no longer read the start codes anymore, that much is not in dispute.

It was clear to me Judges Dyk, Moore, and Rader understood the above explanation about the PID filter, only Judge Lourie (correct me if I am wrong) sought further clarification, which led to the above analogy given by Mr. Rosenkranz. Judge Lourie was one of the two sided with TiVo last time, in which they (Lourie and Mayer) did not even touch on the technical side of the PID filter issue. I think now he was trying to understand it. Likely the other judge's had tried to explain the technical aspect of the PID filter and he needed a clear confirmation from Mr. Rosenkranz, whether he received it or not we don't know, but the confirmation by Mr. Rosenkranz was clear.

So now they go back and try to reach a majority decision. With Mayer not on the panel, Lourie likely having reservation but talked through by the three on the E* side, there are 5 other judges basically did not seem to have much stonge opinions to even bother to ask any questions, maybe one other female judge (Newman?) did ask a question but I could not figure out who that was. Well still you never know what may happen.


----------



## James Long

jacmyoung said:


> I have come up with a few possible outcomes, some maybe the "win some, lose some" scenarios.


Actually I was thinking of the questions that were asked by the court.


----------



## jacmyoung

James Long said:


> Actually I was thinking of the questions that were asked by the court.


I think after listening to the audio, those questions are just sounding as stupid as they sounded initially. I repeatedly said only the last one had given some clue what might be the mindset of the questioners. But during the oral argument, about the only thing relevant to the Qs was the "fair ground for doubt", the key arguments were all about whether the modifed DVRs were more than colorable different and/or still infringing, as the issue should be from the beginning as I have argued over and over.

"Infringement is the sin qua non of an violation of an injunction on patent infringement." It is as simply as that.

In so doing, the PID filter was still the topic of the day. I think in the previous argument Mr. Waxman made a great impression on the majority with his very colorful "I love Lucy" analogy, E* probably played that one back many times, this time they came up with their own version of the envelop analogy, not as colorful but still easy enough to comprehend. Wonder why at the beginning Mr. Rosenkranz kept saying he could not talk more, needed to save time for rebuttal, now we know he made sure he had enough time to get to the punch line.

If E* wins this time, it might very well be that they had a better punch line this time, just like TiVo had a better one last time. If so then I have to finally agree with Scooper, we collectively as a system are screwed, whether you are on the TiVo's side, or E*'s side.


----------



## HiDefGator

jacmyoung said:


> If E* wins this time, it might very well be that they had a better punch line this time...


If the glove doesn't fit, you must acquit!


----------



## jacmyoung

HiDefGator said:


> If the glove doesn't fit, you must acquit!


Charlie was once kicked out of a Vegas Casino not because he showed people a pair of gloves that didn't fit, rather that he was counting the cards


----------



## James Long

jacmyoung said:


> Charlie was once kicked out of a Vegas Casino not because he showed people a pair of gloves that didn't fit, rather that he was counting the cards


Source? Or does the "" mean that this slander is just a joke?


----------



## jacmyoung

"James Long" said:


> Source? Or does the "" mean that this slander is just a joke?


I am shocked you did not read this one before.


----------



## James Long

It is irrelevant to the case at hand (and perhaps more of a compliment than a slander that he had the skill since the only crime is being smarter than the house). A little research shows the source of the claim is apparently a March 2005 Bloomberg story, although a previous account from February 2002 stated it was a Lake Tahoe casino. There he was not asked to leave but was asked to stop playing 21. Since the profit from his efforts worked out to $5 per hour he decided to move on to a much more profitable endeavor. Satellite TV.


----------



## rocatman

James Long said:


> It is irrelevant to the case at hand (and perhaps more of a compliment than a slander that he had the skill since the only crime is being smarter than the house). A little research shows the source of the claim is apparently a March 2005 Bloomberg story, although a previous account from February 2002 stated it was a Lake Tahoe casino. There he was not asked to leave but was asked to stop playing 21. Since the profit from his efforts worked out to $5 per hour he decided to move on to a much more profitable endeavor. Satellite TV.


Realize counting cards at Blackjack is not illegal in Nevada. Casinos can ask you to leave but they can't arrest you. In fact there have been several lawsuits against casinos where they have taken a card counter to a back room and roughed him up. In most cases the card counter has received millions either in judgements or settlements.


----------



## tivonomo

James Long said:


> It is irrelevant to the case at hand (and perhaps more of a compliment than a slander that he had the skill since the only crime is being smarter than the house).


Irrelevant? Hardly.

Charlie Ergen's gambling days give clear insight into this mindset. Card counting is a way of bending the rules to make financial gain. With maturity, it looks like he has gone from bending casino rules to bending legal rules. And this is not "slander" as at least several patent law blogs as well as TiVo, Folsom, and the original panel are questioning E*'s apparent lack of compliance with the disablement clause of the injunction. And of course there has been a finding of contempt.

Getting kicked out of a casino is a big deal, but is more a result of arrogance rather than "skill". Getting kicked out of the DVR market by our Federal Courts is a much bigger deal and also more a result of arrogance...


----------



## rocatman

tivonomo said:


> Irrelevant? Hardly.
> 
> Charlie Ergen's gambling days give clear insight into this mindset. Card counting is a way of bending the rules to make financial gain. With maturity, it looks like he has gone from bending casino rules to bending legal rules. And this is not "slander" as at least several patent law blogs as well as TiVo, Folsom, and the original panel are questioning E*'s apparent lack of compliance with the disablement clause of the injunction. And of course there has been a finding of contempt.
> 
> Getting kicked out of a casino is a big deal, but is more a result of arrogance rather than "skill". Getting kicked out of the DVR market by our Federal Courts is a much bigger deal and also more a result of arrogance...


Card counting is not bending the rules, it is just using your mental skills to put the odds of winning in your favor instead of the casino. There have been several legal cases dealing with card counting and it has been found to be legal at the federal level. Using this card counting analogy is just demonstrating your ignorance about something you think you know about based on what the general public believes is true. Please don't ask me to reference my legal sources, do a little bit of research yourself on court cases involved in Blackjack card counting and maybe you'll learn something.


----------



## RasputinAXP

I don't usually chime in on this thread, but counting cards at Blackjack without mechanical assistance is quite definitely a skill.


----------



## jacmyoung

rocatman said:


> Card counting is not bending the rules, it is just using your mental skills to put the odds of winning in your favor instead of the casino. There have been several legal cases dealing with card counting and it has been found to be legal at the federal level. Using this card counting analogy is just demonstrating your ignorance about something you think you know about based on what the general public believes is true. Please don't ask me to reference my legal sources, do a little bit of research yourself on court cases involved in Blackjack card counting and maybe you'll learn something.


It is safe to say that Charlie's court fights are in keeping with his early card counting tradition, it is in his vein And BTW this is not a slander either.


----------



## tivonomo

rocatman said:


> Please don't ask me to reference my legal sources, do a little bit of research yourself on court cases involved in Blackjack card counting and maybe you'll learn something.


Card counting isn't illegal. I've done it myself with some success and I hardly think anyone who's tried would think it is that difficult. Just because one can do it legally, doesn't mean it isn't bending the rules. Cardcounting is very much so against casino rules. That is why you don't want to be obvious or you get caught.


----------



## tivonomo

jacmyoung said:


> It is safe to say that Charlie's court fights are in keeping with his early card counting tradition, it is in his vein And BTW this is not a slander either.


Exactly my point. It is a charcter trait. Ergen pushes boundaries. It is what made him a very wealthy man.


----------



## scooper

tivonomo said:


> Exactly my point. It is a charcter trait. Ergen pushes boundaries. It is what made him a very wealthy man.


You say that like it's a bad thing.


----------



## tivonomo

scooper said:


> You say that like it's a bad thing.


No I didn't.



tivonomo said:


> Card counting isn't illegal. I've done it myself with some success


I should restate my position as:

ignoring casino rules = gutsy

ignoring "the way things usually are done" and starting a successful satellite business = smart

ignoring indisputable case law governing injunctions = contemptious and stupid = "a bad thing" = going "all in" on black


----------



## FTA Michael

The law firm of Foley & Lardner LLP commented on the case in an article on Lexology a few days ago. http://www.lexology.com/library/det...=Lexology+Daily+Newsfeed+2010-11-15&utm_term=

The article's conclusion was that "several" judges thought this would have been better handled in a new infringement suit rather than holding EchoStar in contempt. It also said that the court "appears likely to also address" E*'s failure to complain about the ambiguity of the initial court order in a more timely fashion.


----------



## tivonomo

FTA Michael said:


> The article's conclusion was that "several" judges thought this would have been better handled in a new infringement suit rather than holding EchoStar in contempt. It also said that the court "appears likely to also address" E*'s failure to complain about the ambiguity of the initial court order in a more timely fashion.


Here are a few more articles - unfortunately I cannot post the analyst reports:

http://www.foley.com/publications/pub_detail.aspx?pubid=7653

http://www.pepperlaw.com/publications_update.aspx?ArticleKey=1936

http://ipwatchdog.com/2010/11/11/federal-circuit-hears-tivo-v-dish-oral-arguments-en-banc/id=13288/


----------



## James Long

rocatman said:


> Realize counting cards at Blackjack is not illegal in Nevada. Casinos can ask you to leave but they can't arrest you. In fact there have been several lawsuits against casinos where they have taken a card counter to a back room and roughed him up. In most cases the card counter has received millions either in judgements or settlements.


I agree ... and that is why I stated was the only crime was being smarter than the house. Not against the law just annoying to those who run the place.


----------



## James Long

tivonomo said:


> Getting kicked out of the DVR market by our Federal Courts is a much bigger deal and also more a result of arrogance...


Wouldn't Tivo love that? Sounds pretty arrogant of a desire to me.

Tivo can only prevent DISH/Echostar from using Tivo's patent in a DVR. They cannot kick DISH out of the DVR market nor can the Federal Courts forbid DISH/Echostar or any other company from developing a DVR product.

The case is only about DISH/Echostar use of Tivo's patents - not their existence in the marketplace.


----------



## tivonomo

James Long said:


> Wouldn't Tivo love that? Sounds pretty arrogant of a desire to me.
> 
> Tivo can only prevent DISH/Echostar from using Tivo's patent in a DVR. They cannot kick DISH out of the DVR market nor can the Federal Courts forbid DISH/Echostar or any other company from developing a DVR product.
> 
> The case is only about DISH/Echostar use of Tivo's patents - not their existence in the marketplace.


All of the analysts are predicting that Dish will be forced to license TiVo if they lose this en banc. The alternative for Dish would be to not offer DVR's to customers or to invent. But invention is easier said than done.


----------



## jacmyoung

tivonomo said:


> All of the analysts are predicting.


Not again


----------



## scooper

tivonomo said:


> All of the analysts are predicting that Dish will be forced to license TiVo if they lose this en banc. The alternative for Dish would be to not offer DVR's to customers or to invent. But invention is easier said than done.


We don't care what the analysts are saying. All I care about is what the ruling from this latest hearing is.

But that being said - I wouldn't mind if Tivo gets told they can't change their interpretations midstream like they did 2006 vs 2008.


----------



## Curtis0620

scooper said:


> We don't care what the analysts are saying. All I care about is what the ruling from this latest hearing is.
> 
> But that being said - I wouldn't mind if Tivo gets told they can't change their interpretations midstream like they did 2006 vs 2008.


Or that DISH can't ignore an injunction.


----------



## jacmyoung

"Curtis0620" said:


> Or that DISH can't ignore an injunction.


Which version? The one told by TiVo in 2006, or the one told by TiVo in 2008?


----------



## HobbyTalk

tivonomo said:


> ignoring indisputable case law governing injunctions = contemptious and stupid = "a bad thing" = going "all in" on black


This has yet to be determined


----------



## Curtis0620

jacmyoung said:


> Which version? The one told by TiVo in 2006, or the one told by TiVo in 2008?


The one that said to Disable your DVRs. The one that DISH did not dispute. The one that DISH ignored.

The one currently in front of the court, that if they rule for DISH will totally destroy the current patent system.

The one that if the do rule this way, the Supreme Court will beat them down.

That one.


----------



## HobbyTalk

Curtis0620 said:


> Or that DISH can't ignore an injunction.


That is your opinion. It has yet to be determined.


----------



## HobbyTalk

Curtis0620 said:


> The one currently in front of the court, that if they rule for DISH will totally destroy the current patent system.


The current patent system could use a bit of destroying.


----------



## HiDefGator

Curtis0620 said:


> The one currently in front of the court, that if they rule for DISH will totally destroy the current patent system.


A little alarmist aren't we? If they order a new trial on the workaround I'm pretty sure the world won't end.

At least I sure hope not because I'm pretty sure that is what is going to happen 4 months from now.


----------



## jacmyoung

Curtis0620 said:


> The one that said to Disable your DVRs. The one that DISH did not dispute. The one that DISH ignored.
> 
> The one currently in front of the court, that if they rule for DISH will totally destroy the current patent system.
> 
> The one that if the do rule this way, the Supreme Court will beat them down.
> 
> That one.


Despite that fact you repeated it several times, it is still only ONE of the interpretations, the one TiVo used in 2008

There are two other interpretations, one by E*, one by TiVo in 2006 when they proposed the injunction. The latter two (a majority) agreed with each other, against the first one.

My understanding is the majority rules


----------



## Curtis0620

"HiDefGator" said:


> A little alarmist aren't we? If they order a new trial on the workaround I'm pretty sure the world won't end.
> 
> At least I sure hope not because I'm pretty sure that is what is going to happen 4 months from now.


It will kill innovation, as any blatant infinger like DISH will just ask for a re-trial for every trivial modification they make.


----------



## scooper

Curtis0620 said:


> It will kill innovation, as any blatant infinger like DISH will just ask for a re-trial for every trivial modification they make.


Not hardly.

It's requiring the patent holder to have to go through a full trial for any "MORE THAN COLORABLE" differences if they think they are infringing. It would be enforcing that a CONTEMPT hearing is NOT the appropriate place for this determination. Basically this is the status quo.


----------



## jacmyoung

Curtis0620 said:


> It will kill innovation, as any blatant infinger like DISH will just ask for a re-trial for every trivial modification they make.


It was well argued by the early adopters ReplyTV was a better DVR, but they lost to TiVo not because TiVo's DVR technology was more innovative, rather TiVo won in the marketplace through PR, litigation and alliance with DirecTV, they were much better than ReplayTV in that department.

What killed ReplayTV was not innovation, nor will this case kill any innovation. A business' success however is largely based on PR, innovation is important, but don't make the TiVo innovation more than it really is. TiVo was good in making a housesold name for itself not because it had a better DVR technology, ReplayTV was better but they still lost, so was Xerox, OS2...many better innovations lost to less innovative ones, but that never stopped innovation.


----------



## dgordo

jacmyoung said:


> Despite that fact you repeated it several times, it is still only ONE of the interpretations, the one TiVo used in 2008
> 
> There are two other interpretations, one by E*, one by TiVo in 2006 when they proposed the injunction. The latter two (a majority) agreed with each other, against the first one.
> 
> My understanding is the majority rules


What about Judge Folsom's interpretation? As the person who wrote the injunction he should know what he meant when he wrote it.


----------



## jacmyoung

dgordo said:


> What about Judge Folsom's interpretation? As the person who wrote the injunction he should know what he meant when he wrote it.


He did not write the injunction, I know this may be a shocking statement but please read on.

When he decided not to give E*'s interpretation, and for that matter TiVo's own interpretation in 2006 any reasonable consideration, he had abused his discretion. I know this may also be shocking to hear, but please bear with me

If he had followed the law to a T, he would have been compelled to (like Judge Rader did) review what TiVo had said what the injunction meant back in 2006, and what TiVo said what the same injunction meant in 2008, and concluded that (if the injunction must be read according to TiVo's interpretation in 2008), it would have been ambiguous and unenforceable.

Because the injunction was TiVo's injunction, not Judge Folsom's, he simply adopted TiVo's proposed injunction, therefore he should not have taken upon himself to interpret it, rather consider what TiVo's intentions, and consider what the law said.


----------



## HiDefGator

Curtis0620 said:


> It will kill innovation, as any blatant infinger like DISH will just ask for a re-trial for every trivial modification they make.


I'm not sure I follow you're reasoning. Are you suggesting that inventors will work at McDonald's instead of inventing stuff because after getting $100 million from the first jury and they will need a second trial if they want more money from someone that attempts a workaround?


----------



## tivonomo

HiDefGator said:


> I'm not sure I follow you're reasoning. Are you suggesting that inventors will work at McDonald's instead of inventing stuff because after getting $100 million from the first jury and they will need a second trial if they want more money from someone that attempts a workaround?


I'm not sure I follow that last sentence.

Inventors will continue to invent. The problem is *who will financially back* these inventors when it is so easy to steal and profit from someone else's invention?

And although it sounds like TiVo made a lot of money by getting a $100 million judgement in the first trial, how much of that was given to the lawyers. And does that _fully_ compensate TiVo?

Hardly.

To be certain, Dish Network wasn't (and isn't) the only company taking TiVo's technology for free. If Dish had been licensing along with DTV and instead paid that $100 million over the infringement period, that increases the legitimacy of TiVo's invention, encourages others to license, and increases the number of subs TiVo had access to for advertising and ratings services for example.

Truthfully, the entire industry is anti-TiVo. Most haven't felt compelled to license TiVo because the legal system encourages infringement. And the $100 Million ruling was hardly a deterrant to Dish (or most anyone else).

The courts are, in fact, killing innovation and an en banc ruling in favor of E* would only serve to destroy the system further by giving proven infringers too much benefit of the doubt.


----------



## scooper

tivonomo said:


> I'm not sure I follow that last sentence.
> 
> Inventors will continue to invent. The problem is *who will financially back* these inventors when it is so easy to steal and profit from someone else's invention?
> 
> And although it sounds like TiVo made a lot of money by getting a $100 million judgement in the first trial, how much of that was given to the lawyers. And does that _fully_ compensate TiVo?
> 
> Hardly.
> 
> To be certain, Dish Network wasn't (and isn't) the only company taking TiVo's technology for free. If Dish had been licensing along with DTV and instead paid that $100 million over the infringement period, that increases the legitimacy of TiVo's invention, encourages others to license, and increases the number of subs TiVo had access to for advertising and ratings services for example.
> 
> Truthfully, the entire industry is anti-TiVo. Most haven't felt compelled to license TiVo because the legal system encourages infringement. And the $100 Million ruling was hardly a deterrant to Dish (or most anyone else).
> 
> The courts are, in fact, killing innovation and an en banc ruling in favor of E* would only serve to destroy the system further by giving proven infringers too much benefit of the doubt.


Sounds like you feel that a contempt hearing IS the appropriate place to decide if a workaround is still infringing. A contempt hearing should STOP once the accused device is shown to be "More than colorably different" , since that makes it a new device - one that hasn't been accused of infrigement before.

And in truth - the legal system regarding enforcement of patents DOES need a major overhaul. It needs to be much streamlined from what it is now, so hearings like this don't take years and years.


----------



## CuriousMark

scooper said:


> Sounds like you feel that a contempt hearing IS the appropriate place to decide if a workaround is still infringing. A contempt hearing should STOP once the accused device is shown to be "More than colorably different" , since that makes it a new device - one that hasn't been accused of infringement before.
> 
> And in truth - the legal system regarding enforcement of patents DOES need a major overhaul. It needs to be much streamlined from what it is now, so hearings like this don't take years and years.


I also agree with that. Contempt hearings are the streamlined process that can take years off of the process once they get through the first trial. Making that first trial go faster would be an even bigger improvement, but I doubt we will see that happen. I think the colorable differences also needs to be expanded to include a determination of infringement. I think a device should only be considered new if it is both more than merely colorably different and is non-infringing by the doctrine of equivalents based on existing law of the case. That way a change that is more than colorable, but still infringes when settled law of the case is applied, doesn't get to escape to a new trial. Also once a trial is complete, the presumption of innocence should be suspended and a known infringer should not get a stay of any injunctions while their case plays out. This way both sides will be firmly on the side of getting to an answer quickly.


----------



## tivonomo

scooper said:


> Sounds like you feel that a contempt hearing IS the appropriate place to decide if a workaround is still infringing.


Correct. Because failure to comply with an injunction against the found infringement is indeed contempt. So whatever test you argue "should be applied" should be applied in a contempt proceeding.

And I believe that "More than colorably different" is only one test that should be applied in the contempt proceeding. Of course the argument then becomes what is "colorably" different. And in those cases, the district court Judge should have reasonable discretion on determining what truly is colorably different.

Obviously under the claims construction of this case, 10 buffers instead of 11 or parsing audio and video data in a different way are not colorably different. Again given the claims construction of this case.


----------



## scooper

What it sounds like to me is that both of your responses mean that "More than colorably different" needs to be redefined. 

But right now - once that determination of "More than colorably different" is found - that's it - no need to do anything else - no need to determine whether said difference is still infringing or not. That has made it a new device - with any such protections as the original had before the trial.

Otherwise, what is the point of "More than colorably different" ?


----------



## bobukcat

tivonomo said:


> To be certain, Dish Network wasn't (and isn't) the only company taking TiVo's technology for free. If Dish had been licensing along with DTV and instead paid that $100 million over the infringement period, that increases the legitimacy of TiVo's invention, encourages others to license, and increases the number of subs TiVo had access to for advertising and ratings services for example.
> 
> Truthfully, the entire industry is anti-TiVo. Most haven't felt compelled to license TiVo because the legal system encourages infringement. And the $100 Million ruling was hardly a deterrant to Dish (or most anyone else).
> 
> The courts are, in fact, killing innovation and an en banc ruling in favor of E* would only serve to destroy the system further by giving proven infringers too much benefit of the doubt.


To play point-counterpoint to your argument - perhaps TiVo should have been willing to accept a licensing fee that was more palatable to the industry if they wanted to rule the DVR market. Obviously most players (eventually including D*) felt that they could be much more profitable spending R&D to develop their own boxes (even if they do infringe patents there is still a considerable R&D spend around s/w, etc.) so perhaps TiVo was being unreasonable or at least contributed to their own predicament.

My problem with your argument that these cases should be settled in the contempt phase is that it leaves it up to a single person (the judge). In addition - in this case I do indeed believe that E* has done something unique and have had patents granted to indicate so, but the court applies legal rules such as that the lawyers didn't object to "parses" = "analyzes" to the trial phase so now they are stuck with that, even though a lot of stuff could have changed since that trial. That's just one example of the way the appeal / contempt process bothers me with regards to something as complex as a DVR design. I understand the reasons they do it to ensure the trial doesn't last for 10 years but I'm still not sure it's a reasonable trade-off in complex technical cases.


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## HiDefGator

I think all of you may be missing the reason they will send it back for a new trial. The infringement finding by the jury was based on parsing done in the media switch. The media switch was removed in the workaround. So Tivo then said yes but you still parse in the PID filter. The jury never agreed that parsing only in the PID filter justified an infringement finding. Rader, Moore, and Dyk have an issue with Folsom deciding that a jury would have still found infringement if the media switch had not been around at the trial. I think they would go along with the contempt hearing if what Tivo said infringed hadn't changed to something the jury never considered. This has nothing to do with a guilt or innocence anymore. The judges may all fully believe that Dish still infringes but they are still going to send it back for a new trial because a jury never said that what is currently being looked at justifies an infringement ruling. 

My explanation for my wife was a serial killer was found guilty of killing Bob by the jury and sentenced to prison. On the way to prison he managed to revive Bob. Then proclaimed himself innocent because he obviously didn't kill Bob. The prosecuter then said but you still killed Sue. Folsom then said yep you're still guilty because sure enough Sue is dead. But a jury never found him guilty for killing Sue, so he gets a new trial with a jury. It's not a perfect analogy, but it gets the idea across.


----------



## CuriousMark

scooper said:


> What it sounds like to me is that both of your responses mean that "More than colorably different" needs to be redefined.


not quite from my perspective. Colorable difference is fine as it stands, I would just add an infringement test on top of it. That would make a patent a bit more enforceable. The judge can apply law of the case and the infringer is not really loosing anything except the chance to delay by forcing a two year delay with a new trial.



> But right now - once that determination of "More than colorably different" is found - that's it - no need to do anything else - no need to determine whether said difference is still infringing or not. That has made it a new device - with any such protections as the original had before the trial.


Right, it is as if the device was redesigned from scratch and the infringer gets to act as if nothing that went before ever even happened. Of course that means a colorably different infringing product gets to stay on the market for another two years while the patentee is forced back to square one.



> Otherwise, what is the point of "More than colorably different" ?


It was a test designed to balance the rights of the patentee and infringer when a redesign almost always meant going back to the drawing board and producing a new product from scratch. Field modifiable parts where the more than colorably different item is in fact the same item that infringed was simply not a concern. If a device is more than colorably different, it is also different enough that the law of the previous case no longer applies and a new trial made sense. Even then, it is a test that didn't give the judge the discretion to apply the law of the case when he could have. So a new trial could be called for a device that was infringing wasting everyone's time except that of the infringer. I think it is time to narrow that door a bit.

Now I don't know law, so I am mostly talking based on these discussions here and a lawyer would probably tell me I am full of it, but until one does, and shows me my error, I think this is a good way to go to make things clearer and faster.


----------



## CuriousMark

HiDefGator said:


> I think all of you may be missing the reason they will send it back for a new trial. The infringement finding by the jury was based on parsing done in the media switch.


TiVo refuted that argument pretty well. Both experts telling the jury that the PID filter meets the parsing limitation in these claims seems pretty straight forward to me.



> I think they would go along with the contempt hearing if what Tivo said infringed hadn't changed to something the jury never considered.


Only Dish says the jury did not consider the PID filter as parsing. It wasn't controversial so it is just as reasonable to say that the jury did indeed consider it and agreed with experts on both sides that it parses.


----------



## HobbyTalk

CuriousMark said:


> TiVo refuted that argument pretty well. Both experts telling the jury that the PID filter meets the parsing limitation in these claims seems pretty straight forward to me.


It didn't seem to be that straight forward to some of the judges during the en banc hearing.


----------



## CuriousMark

HobbyTalk said:


> It didn't seem to be that straight forward to some of the judges during the en banc hearing.


True, they got sucked in by a good line in my opinion. Of course we all know what that is worth.


----------



## jacmyoung

The problem is TiVo can only point to this single claim term called "parse". They cannot say anything about the "audio and video data," "temporarily store", "extract", "convert"... all of them TiVo had successfully identified with specific software codes in the old DVRs, are now removed, this much is not even in dispute.

So parties are both engaged in a heated debate as whether the PID filter can even see the "audio and video data" when they are encrypted, meanwhile E* also pointed out all those other terms that were no longer there in the modifed DVRs, TiVo completely ignores them because facing those terms means certain defeat when it comes to infringement.

The question is, can we count on the judges to understand that TiVo must now again identify the specific software codes in the new software that perform all of the above functions, when E* had pointed out that those old codes were gone.


----------



## HiDefGator

CuriousMark said:


> TiVo refuted that argument pretty well. Both experts telling the jury that the PID filter meets the parsing limitation in these claims seems pretty straight forward to me.


Your version is like saying the jury knew both Bob and Sue were dead. If they based their decision on the facts about Bob and he is no longer dead then we can't know if they also would have returned guilty when just Sue is dead. It's guessing at what the jury would have decided with a different set of facts. IT'll never stand.


----------



## James Long

scooper said:


> What it sounds like to me is that both of your responses mean that "More than colorably different" needs to be redefined.


I believe "colorably different" begins when the design departs from the adjudicated design enough that a fresh look is needed (different chipsets) _or_ the design departs from the adjudicated design enough that infringement is avoided.

The first part of that definition is easy ... the infringer produces a new model with different chips and if the patent holder wants to accuse them of infringing on the new model a new trial would be needed. The second part is harder ... and is what this case has become ... the infringer adjusted their design enough that infringement may be avoided. At worst it infringes in a different way ... and not a way that the jury found to be infringing.

Defining what is "More than colorably different" is a key. Ending infringement is the goal.



HiDefGator said:


> My explanation for my wife was a serial killer was found guilty of killing Bob by the jury and sentenced to prison. On the way to prison he managed to revive Bob. Then proclaimed himself innocent because he obviously didn't kill Bob. The prosecuter then said but you still killed Sue. Folsom then said yep you're still guilty because sure enough Sue is dead. But a jury never found him guilty for killing Sue, so he gets a new trial with a jury. It's not a perfect analogy, but it gets the idea across.


I like that, although I'd make Bob a missing person who was found. Trials are not quick enough for a dead person to be revived and if the person was found not dead there would not be a murder trial.


----------



## jacmyoung

Well the analogy is not good because Bob (the DVR function) was never dead, in fact had Bob been dead the jury would have let the accused go. The prosecution wants Bob dead, not just somewhat dead, but deadly dead

But the accused refused, arguing that they found Sue in place of Bob. The procecution said but it is impossible because the order said Bob must be dead, therefore Sue must be dead too, even if Sue is not Bob.

The accused job is to demonstrate that Sue is not Bob, they are just identical twins. Had Sue been John, it would have been very difficult to prove it, but hopefully the accused can convince the judges Sue is Sue, Sue is not Bob nor John.

But the prosecution still insists Sue must also be dead, even if Sue is not Bob nor John

The question is, will the judges be willing to look at Sue, I mean really look at Sue to determine whether she can be John or not? If not, can she nevertheless still be Bob? The decision is important because it turns out this is a big family of identical kids, we have Bob, Sue, Joe, Mary, Nancy, Dave, ... all born by the same mother at the same time, in fact the prosecution actually implied she is the mother, just that those kids were all out of wedlock so they must all be dead


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## Greg Bimson

James Long said:


> I believe "colorably different" begins when the design departs from the adjudicated design enough that a fresh look is needed (different chipsets) or the design departs from the adjudicated design enough that infringement is avoided.


The "colorable difference" test has nothing to do with a design change. And that is where all of the arguments fall short.

EchoStar and Dish Network could add 17 new chipsets, output to 8 TV's, record 12 channels at once and make toast. The problem is that a comparasion will be made between this new receiver/toaster and the one adjudged as infringing, but only with respect to the infringed claims.

Judge Folsom found that the differences made by EchoStar and Dish Network did not affect claims 31 and 61 of the patent, and that is why the modified receivers are therefore "merely colorably different and infringements". TiVo and Dish Network both agreed during the trial that PID filtering met the definition of the "parsing" step of claim 31 and 61, so that part should have been easiest considering these parties couldn't agree to anything.


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## tivonomo

HiDefGator said:


> My explanation for my wife was a serial killer was found guilty of killing Bob by the jury and sentenced to prison. On the way to prison he managed to revive Bob. Then proclaimed himself innocent because he obviously didn't kill Bob. The prosecuter then said but you still killed Sue. Folsom then said yep you're still guilty because sure enough Sue is dead. But a jury never found him guilty for killing Sue, so he gets a new trial with a jury. It's not a perfect analogy, but it gets the idea across.


I think the Bob/Sue analogy is a horrible one. Two different people weren't "killed" in this case.

The scenario should be that Bob was sentenced to death for killing someone. That person didn't come back to life. :crying_sa

It just so happens that a well known surgeon is in the same prison. Bob's lawyers suggest that Bob secretly undergo a sex change operation and rename himself Sue.

The day Bob's is to be executed, his lawyers file an appeal. Bob is not Bob, he is Sue! Sue did not kill anyone!

Bob/Sue's lawyers argue that Sue is a "more than colorably different" person. (Bob had his skin darkened pharmaceutically just to be sure.) Of course, gender is irrelevant. Bob is still Bob despite the obvious differences. 

Execute him!


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## jacmyoung

tivonomo said:


> I think the Bob/Sue analogy is a horrible one. Two different people weren't "killed" in this case.
> 
> The scenario should be that Bob was sentenced to death for killing someone. That person didn't come back to life. :crying_sa
> 
> It just so happens that a well known surgeon is in the same prison. Bob's lawyers suggest that Bob secretly undergo a sex change operation and rename himself Sue.
> 
> The day Bob's is to be executed, his lawyers file an appeal. Bob is not Bob, he is Sue! Sue did not kill anyone!
> 
> Bob/Sue's lawyers argue that Sue is a "more than colorably different" person. (Bob had his skin darkened pharmaceutically just to be sure.) Of course, gender is irrelevant. Bob is still Bob despite the obvious differences.
> 
> Execute him!


And at that very moment, Bob's lawyer wakes up from his drunkenness, and pointed out to the audience who was attending the execution, and said, look that someone who Bob supposedly killed, he was sitting right there, his name was TiVo


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## tivonomo

jacmyoung said:


> And at that very moment, Bob's lawyer wakes up from his drunkenness, and pointed out to the audience who was attending the execution, and said, look that someone who Bob supposedly killed, he was sitting right there, his name was TiVo


So you are saying Rosenkranz is a drunk?:grin:

And please no more analogies bringing anyone back from the dead!


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## Tower Guy

tivonomo said:


> he is Sue!


Isn't it ironic that Johnny Cash sang both "A Boy named Sue", and "Folsom Prison Blues".


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## CuriousMark

Tower Guy said:


> Isn't it ironic that Johnny Cash sang both "A Boy named Sue", and "Folsom Prison Blues".


:up:


----------



## MCSuckaDJ

Greg Bimson said:


> TiVo and Dish Network both agreed during the trial that PID filtering met the definition of the "parsing" step of claim 31 and 61, so that part should have been easiest considering these parties couldn't agree to anything.


But they could still both be wrong. Irrespective of what the parties agreed to at trial, the en banc panel must determine that the PID filter does not meet the parsing requirement, or submit that TiVo now has the rights to every digital recording device in existence.

The PID filter performs essentially the same function as an NTSC tuner, graphic EQ, bandpass filter, digital preamp, or virtually any other piece of signal processing equipment. The core of TiVo's invention (that which made it patentable) was the startcode indexing that occurred at the media switch.



Tower Guy said:


> Isn't it ironic that Johnny Cash sang both "A Boy named Sue", and "Folsom Prison Blues".


No, it isn't.


----------



## jacmyoung

tivonomo said:


> And please no more...


You need to start your own website so you can keep saying so there.


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## tivonomo

jacmyoung said:


> You need to start your own website so you can keep saying so there.


Fine. Bring all of the hypothetical people back from the dead that you want. Say hi to Elvis and Marilyn for me.


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## Curtis52

MCSuckaDJ said:


> But they could still both be wrong. Irrespective of what the parties agreed to at trial, the en banc panel must determine that the PID filter does not meet the parsing requirement, or submit that TiVo now has the rights to every digital recording device in existence.


I'm not following the logic there. Not every digital recording device follows each and every step of the patent claim. Parsing is just a small portion of one of the steps.


----------



## scooper

If you're saying the PID filter is responsible for the parsing - you've opened up a HUGE can of worms.


----------



## jacmyoung

Curtis52 said:


> I'm not following the logic there. Not every digital recording device follows each and every step of the patent claim. Parsing is just a small portion of one of the steps.


Correct, that is why when E* asserted that they no longer "parse", no longer analyze "audio and video data", no longer "temporarily store", no longer "extract", no longer "obtain" and no longer "convert"...TiVo cannot simply say but hey you still "parse" and that is it, you still infringe.

Remember how they proved infringement during the jury trial, under a less burden of proof? TiVo had to pinpoint all the software codes that performed everyone of the above steps.

I think I now really understand what Judge Moore said to Mr. Waxman. Look, you don't even have the HARDWARE CLAIMS verdicts anymore, they were overturned. So why are you pointing to a piece of HARDWARE, without even telling us what kind of software codes that are in the modified DVRs that still meet the steps in the SOFTWARE CLAIMS? Anything that I can throw a pen at and hit, shall not apply here She was basically telling TiVo you should have spent time to again find all the software codes used by the modified DVRs, you know those you can bring to me but I cannot hit with my pen, to prove infringement.

I am not saying this will happen, but if they order a new trial, I wonder how they are going to provide instructions. One of them might just be to ask Judge Folsom before anything, conduct a pen throwing contest


----------



## dgordo

jacmyoung said:


> He did not write the injunction, I know this may be a shocking statement but please read on.
> 
> When he decided not to give E*'s interpretation, and for that matter TiVo's own interpretation in 2006 any reasonable consideration, he had abused his discretion. I know this may also be shocking to hear, but please bear with me
> 
> If he had followed the law to a T, he would have been compelled to (like Judge Rader did) review what TiVo had said what the injunction meant back in 2006, and what TiVo said what the same injunction meant in 2008, and concluded that (if the injunction must be read according to TiVo's interpretation in 2008), it would have been ambiguous and unenforceable.
> 
> Because the injunction was TiVo's injunction, not Judge Folsom's, he simply adopted TiVo's proposed injunction, therefore he should not have taken upon himself to interpret it, rather consider what TiVo's intentions, and consider what the law said.


I know you're not an attorney, but there is zero chance that this is what happened. Tivo's attorneys likely drafted their version of what they wanted the injunction to say and presented it to Folsom. At this point he likely asked for an explanation of what the injunction meant from Tivo's counsel. Then he, or more likely his clerk, made changes to the proposed injunction. Folsom knows what his injunction means.

Remember, Tivo originally wanted to have all infringing receivers removed from customers homes and Dish was able to prevent this by saying that the could stop the dvr service from working by using a software download. This is all the record and not in dispute. This is why I believe that the CAFC will at least rule that Dish was in fact in violation of the disablement provision.


----------



## jacmyoung

dgordo said:


> I know you're not an attorney, but there is zero chance that this is what happened. Tivo's attorneys likely drafted their version of what they wanted the injunction to say and presented it to Folsom. At this point he likely asked for an explanation of what the injunction meant from Tivo's counsel. Then he, or more likely his clerk, made changes to the proposed injunction. Folsom knows what his injunction means.


The problem is no one, not even Judge Folsom, could find a single quote anywhere from back then that said E* was to disable the DVR functions even if they no longer infringed. The only quotes discovered were those by Judge Rader, which I had used several times already so I will not repeat. Those were the exact quotes by TiVo which support E*'s position about the injunction.



> Remember, Tivo originally wanted to have all infringing receivers removed from customers homes and Dish was able to prevent this by saying that the could stop the dvr service from working by using a software download. This is all the record and not in dispute. This is why I believe that the CAFC will at least rule that Dish was in fact in violation of the disablement provision.


Incorrect, TiVo wanted to have all DVRs removed yes, but E* argued that those still at the warehouses and distributors were just empty boxes, no software installed yet, and if new non-infringing software were later installed they should be allowed, which Judge Folsom agreed. Don't try to dispute me on this one, because I am only trying to paraphrase what E* said in its brief, which TiVo did not dispute. This is why E* could use the third "Infringing Product" term (applied to the newly installed or replacement DVRs) used in the injunction to demonstrate why TiVo's interpretation of the injunction is contrary to what Judge Folsom had allowed back in 2006.

The only thing TiVo can rely on today is this so called "letter of the injunction", in the way TiVo is interpreting of course. You see I do not have to be a lawyer to understand who had said what, who could not say what, and who could not dispute what was said. Your above assertions have no quotes/records for support.

You know what likely had happened? Neither Judge Folsom nor TiVo had anticipated that E* could have downloaded a new non-infringing software that still kept the DVR functions. E* never told them they were working on such a thing. Judge Folsom and TiVo thought the injunction was therefore air tight, E* would lose those 4 million DVRs if E* did not settle. It was to their surprise E* actually found a way to do it without infringing. So they became vindictive, telling E* infringing or not, you were in violation. As a lawyer, you know very well without infringement, there cannot be a violation of an injunction against patent infringement.

Now let me take a step back to again try an "on the alternative argument". At this point, after being questioned by the judges, the only argument left for TiVo is that E* did not appeal last time. In other words, TiVo does not even seriously dispute that they may not have any ground to stand on as far as their colorable difference test, infringement theory, and legal inteprretation of an injunction against patent infringement, i.e. TiVo does not even seriously deny the possibility that *every one of their arguments could be factually and legally wrong*, but since the stupid E* did not appeal, so Gotcha!

What country are we living in? North Korea?


----------



## Greg Bimson

MCSuckaDJ said:


> But they could still both be wrong. Irrespective of what the parties agreed to at trial, the en banc panel must determine that the PID filter does not meet the parsing requirement, or submit that TiVo now has the rights to every digital recording device in existence.
> 
> The PID filter performs essentially the same function as an NTSC tuner, graphic EQ, bandpass filter, digital preamp, or virtually any other piece of signal processing equipment. The core of TiVo's invention (that which made it patentable) was the startcode indexing that occurred at the media switch.





scooper said:


> If you're saying the PID filter is responsible for the parsing - you've opened up a HUGE can of worms.


Then why in the world would EchoStar *concede, under oath*, that PID filtering meets the "parsing" step of the claim?

The "core" of the TiVo invention was claim 1; the fight was about the "parsing" done by the Media Switch. Let's actually talk about claims 31 and 61, which are NOT the "core" of the TiVo invention and have nothing to do with the parsing done by the Media Switch.


----------



## jacmyoung

Greg Bimson said:


> Then why in the world would EchoStar *concede, under oath*, that PID filtering meets the "parsing" step of the claim?
> 
> The "core" of the TiVo invention was claim 1; the fight was about the "parsing" done by the Media Switch. Let's actually talk about claims 31 and 61, which are NOT the "core" of the TiVo invention and have nothing to do with the parsing done by the Media Switch.


What f#$%() country are we living in? N. Korea?

Again on the alternative, say E* was stupid to admit something before, now they say no, we were wrong, this here is correct, do you just hold that against them, even if what they admitted was wrong and what they say now is correct?


----------



## HiDefGator

Greg Bimson said:


> The "core" of the TiVo invention was claim 1


Exactly! It was THE core evidence that led the jury to vote infringement. With it removed, it is a mistake to assume the jury would have reached the same conclusion. Even if the technical merits that lawyers and engineers can look at may still point to infringment.


----------



## Greg Bimson

jacmyoung said:


> Again on the alternative, say E* was stupid to admit something before, now they say no, we were wrong, this here is correct, do you just hold that against them, even if what they admitted was wrong and what they say now is correct?





HiDefGator said:


> Exactly! It was THE core evidence that led the jury to vote infringement. With it removed, it is a mistake to assume the jury would have reached the same conclusion. Even if the technical merits that lawyers and engineers can look at may still point to infringment.


EchoStar trotted out three "experts", testifying that PID filtering met the parsing step of claims 31 and 61:

1) The experts "even if what they admitted was wrong" means they perjured their testimony

2) Parsing in claims 31 and 61 by definition must be different than the parsing in claims 1 and 32 (for those keeping score, 31 and 61 are the "Software Claims", while 1 and 32 were the "Hardware Claims")

3) Because the jury found infringement on all four claims, but two different "parsing" theories were presented and one was accepted by all five experts, it should just be water under the bridge and EchoStar should get a do-over because all of their experts were lying or incorrect?

4) I'm glad to see the assumption that the jury found infringement based on only the "core of the invention". I recall that the jury sheets instructed the jury to find guilt or innocence on the "Hardware Claims" and the "Software Claims" separately. The Media Switch was argued within the finding of infringement of the "Hardware Claims", and the jury found that EchoStar met every claim limitation and was therefore guilty of infringement on claims 1 and 32. There was no argument over PID filtering meeting the parsing step within the "Software Claims", and the jury found that EchoStar met every claim limitation and was therefore guilty of infringement on claims 31 and 61.


----------



## HiDefGator

Rader, Moore, and Dyk must be idiots then because they clearly don't see it as black and white as you do. Maybe the other 6 that barely said a word during the orals can talk some sense into them.


----------



## plfarley

_*I recall that the jury sheets instructed the jury to find guilt or innocence on the "Hardware Claims" and the "Software Claims" separately. The Media Switch was argued within the finding of infringement of the "Hardware Claims", and the jury found that EchoStar met every claim limitation and was therefore guilty of infringement on claims 1 and 32. There was no argument over PID filtering meeting the parsing step within the "Software Claims", and the jury found that EchoStar met every claim limitation and was therefore guilty of infringement on claims 31 and 61.*
With this information the CAFC should rule for Tivo. It would be very clarifying for everyone if the Judges in their opinion indicated that Echostar attempted to apply Hardware Claim definitions onto the Software Claim definitions.
The Judges should realize the jury had the information regarding the definitions and the different Claims available to them to consider during their deliberations.

Regarding the determination of Colorable Difference, Judge Folsom is perfectly capable of making this decision (and which he did).
Then determining if the new product that is "not more than colorably different" infringes on any of the Software Claims is the next step. Again Judge Folsom should be allowed to perform the analysis on the test (because the jury had all of the Software Claims available to them to review and consider during the trial).

It boggles my mind that so many people have not been able (or maybe have been unwilling) to acknowledge that Echostar keeps stating "we do not infringe on the parsing as defined in the Hardware Claims" as their defense even though the question of infringement is not the Hardware Claims, but rather the definition of parsing as defined in the Software Claims._


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## jacmyoung

Greg Bimson said:


> There was no argument over PID filtering meeting the parsing step within the "Software Claims", and the jury found that EchoStar met every claim limitation and was therefore guilty of infringement on claims 31 and 61.


Bingo!

If the PID filter was never argued with respect to the software claims, then how can you now assume that had the PID been argued with respect to the software claims, the jury would have agreed or disagreed whether the PID had met some claim terms of the software claims?

It was again the media switch that met the software "parsing" claim.

This was precisely why Judge Moore pointed out the difference between the hardware claims and the software claims. The PID filter was argued to the jury only with respect to the hardware claims, and E*'s argument failed, because the jury rejected the idea that the PID met the hardware claims, TiVo succeeded in convincing the jury that it was the media switch that did the parsing with respect to the hardware claims.

In other words, the PID either failed on the hardware claims, or was never argued on the software claims. Now TiVo wants the judges to play the jury's role, to apply TiVo's PID argument on the software claims, depriving E*'s constitutional right to a jury trial on an issue that had never been in front of a jury.


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## plfarley

*Now TiVo wants the judges to play the jury's role, to apply TiVo's PID argument on the software claims, depriving E*'s constitutional right to a jury trial on an issue that had never been in front of a jury.*

It was "argued" and placed in front of the jury--when the experts from both sides testified as to definitions of parsing.

I realize Echostar people are unwilling to accept this--but it is the truth.


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## Greg Bimson

jacmyoung said:


> Bingo!
> 
> If the PID filter was never argued with respect to the software claims, then how can you now assume that had the PID been argued with respect to the software claims, the jury would have agreed or disagreed whether the PID had met some claim terms of the software claims?


How can there be an argument when every single expert testified that PID filtering met the parse step of the Software Claims?

Everyone agreed. No argument. Until now, because EchoStar is trying take back what they stated at trial.


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## tivonomo

jacmyoung said:


> In other words, the PID either failed on the hardware claims, or was never argued on the software claims. Now TiVo wants the judges to play the jury's role, to apply TiVo's PID argument on the software claims, depriving E*'s constitutional right to a jury trial on an issue that had never been in front of a jury.


A jury's purpose is to make a decision or find facts. They have already done that.

E* has raised no new open issue of infringement and therefore there are no new reasons to have a jury trial. The "claims as construed" still apply to the workaround very well. The PID filter's parsing was agreed upon by both sides. To say that E* has a constitutional right to now have a jury analyze this claim is absurd and pointless.


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## James Long

tivonomo said:


> E* has raised no new open issue of infringement and therefore there are no new reasons to have a jury trial.


Isn't that one of the questions that the justices want to answer with this en banc hearing? Seems like a waste of time if the answer is so cut and dried.

Oh well ... four more months.


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## bobukcat

Greg Bimson said:


> How can there be an argument when every single expert testified that PID filtering met the parse step of the Software Claims?
> 
> Everyone agreed. No argument. Until now, because EchoStar is trying take back what they stated at trial.


Does the PID filter still operate exactly the same in the workaround software as it did before? I also think that they agreed to the stipulation that it met the parsing step because the judge instructed everyone that for the purposes of the trial "parse" = "analyze", something I think they should have attacked at the first appeal.


----------



## scooper

Greg Bimson said:


> How can there be an argument when every single expert testified that PID filtering met the parse step of the Software Claims?
> 
> Everyone agreed. No argument. Until now, because EchoStar is trying take back what they stated at trial.


That's because 5 expert witlesses didn't realize what they were talking about, and at the time neither did anybody else.

And another reason for appeals is to CORRECT errors such as this.


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## tivonomo

scooper said:


> That's because 5 expert witlesses didn't realize what they were talking about, and at the time neither did anybody else.
> 
> And another reason for appeals is to CORRECT errors such as this.


And E* didn't appeal the terms "parse" or "automatically flow controlled" for that matter.

They won't be redefined.

I believe a lot of people here need to reread Folsom's ruling. The summary of arguments is factual and Folsom's ruling is hardly pushing the envelope.

http://phx.corporate-ir.net/External.File?item=UGFyZW50SUQ9NjU5NjB8Q2hpbGRJRD0tMXxUeXBlPTM=&t=1


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## tivonomo

James Long said:


> Isn't that one of the questions that the justices want to answer with this en banc hearing? Seems like a waste of time if the answer is so cut and dried.


It is indeed a waste of time to reargue the facts of the case. But the purpose of the en banc was to reconsider the tests that can take place in a contempt hearing and the interpretation of the disablement clause. Not rearguing what parses applies to and means.


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## HobbyTalk

tivonomo said:


> Not rearguing what parses applies to and means.


Funny, it appears that some of the Judges did just that. Are you saying the Judges are wasting their time?


----------



## tivonomo

HobbyTalk said:


> Funny, it appears that some of the Judges did just that. Are you saying the Judges are wasting their time?


I am saying they were asking questions because they are not familiar with the case. They didn't vote to hear this case based on the claim construction. There is no way in the time given to vote for the en banc to become adequately familiar with the case. This case was given en banc consideration in order to reexamine the tests that can take place in a contempt hearing.


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## jacmyoung

"Greg Bimson" said:


> How can there be an argument when every single expert testified that PID filtering met the parse step of the Software Claims?
> 
> Everyone agreed. No argument. Until now, because EchoStar is trying take back what they stated at trial.


Because the PID was never argued to the jury to be one of the items that contributed to the infringement of the software claims, it has to be the item on the record to be argued by both parties for or against, for the PID to be an adjudicated issue.

In fact if you read the appeal court decision to uphold the jury's verdict on the software claims, the PID was never even remotely a consideration at all, it was one of those software codes in the old software that TiVo identified to have met the "parse" limitation of the software claims, which had nothing to do with the PID at all.

The fact the experts agreed the PID also parsed, is not the same as saying such agreement had led to the jury's finding that the PID was part of the infringement when in the end it was the other thing TiVo argued that worked.

Besides, you and TiVo continue to ignore the fact E* had finally also clearly pointed out that the new software no longer has all the other codes that meet all of the other software claim terms I had listed above.

Do you not agree that in order to prove infringement by clear and convincing evidence, at a minimum TiVo has to also pinpoint the codes in the new software that met those other terms?

Are you saying TiVo only needs to prove ONE out of ten different terms, that was it?


----------



## James Long

tivonomo said:


> E* has raised no new open issue of infringement and therefore there are no new reasons to have a jury trial. [...] To say that E* has a constitutional right to now have a jury analyze this claim is absurd and pointless.





tivonomo said:


> It is indeed a waste of time to reargue the facts of the case. But the purpose of the en banc was to reconsider the tests that can take place in a contempt hearing and the interpretation of the disablement clause. Not rearguing what parses applies to and means.


The question I was referring to was regarding when a new trial is needed ... Rearguing the definitions is exactly what the Honorable Judge Folsom did - except he forgot to involve a jury. So if you say it is wrong to reargue the definitions you are saying Judge Folsom was wrong in how he handled this case.


----------



## jacmyoung

"tivonomo" said:


> I am saying they were asking questions because they are not familiar with the case.


Where did you get that idea? Those judges spent a lot of time reviewing the case before the oral argument, if you ask a lawyer or listened to the Judge Rader's interview, they had polled one another, often times had already made up their minds before the hearing.

"Educating those judges during the hearing" is as wishful thinking as it can get, all you need to go back to see is how successfully Mr. Waxman had "educated" Judge Rader last time.


----------



## tivonomo

James Long said:


> The question I was referring to was regarding when a new trial is needed ... Rearguing the definitions is exactly what the Honorable Judge Folsom did - except he forgot to involve a jury.


I'll play that game. What exact definition did Judge Folsom reargue?

I'll wait as long as it takes for you to find that answer.. 

Hell might have to freeze over though...



Judge_Folsom said:


> First, this Court instructed the jury as to the meaning of the claims. The jury was told that it had to apply this Court's interpretations of the claims. Dkt. No. 691 at 6. The Court must assume that the jury complied with its instruction and did not apply its own interpretation to the claims.


----------



## tivonomo

jacmyoung said:


> Where did you get that idea? Those judges spent a lot of time reviewing the case before the oral argument, if you ask a lawyer or listened to the Judge Rader's interview, they had polled one another, often times had already made up their minds before the hearing.
> 
> "Educating those judges during the hearing" is as wishful thinking as it can get, all you need to go back to see is how successfully Mr. Waxman had "educated" Judge Rader last time.


Where did _you_ get that idea?

Oral arguments are exactly for that reason - educating the judges.

Re: the en banc vote, they have a couple weeks to make a decision amongst all of their other responsibilities. They look at things at a high level because that is all they have time for... for you to think otherwise is unrealistic.


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## Greg Bimson

tivonomo said:


> Not rearguing what parses applies to and means.





HobbyTalk said:


> Funny, it appears that some of the Judges did just that. Are you saying the Judges are wasting their time?


The judges have only the case information and the briefs available to them. They asked questions seeking to clarify the position of each party. For example, Judge Moore had asked about the PID filtering. Counsel Waxman hammered home the point that all five expert witnesses testified that it met the step limitation of the claim. It appears Judge Moore's problem with the PID filtering was because EchoStar within their brief obfuscated one of TiVo's expert witnesses to state that PID filtering didn't meet the step. Clarification.


jacmyoung said:


> Because the PID was never argued to the jury to be one of the items that contributed to the infringement of the software claims, it has to be the item on the record to be argued by both parties for or against, for the PID to be an adjudicated issue.


Never argued to the jury.

Question: Does PID filtering meet the step of the "parse" claim within the Software Claims?

All five experts answered yes. I'm sorry, but that is speaking EXACTLY to the issue at hand, right in front of the jury. The reason it is such a problem is because it requires experts to recant their testimony given under oath in front of a jury.


James Long said:


> Rearguing the definitions is exactly what the Honorable Judge Folsom did - except he forgot to involve a jury. So if you say it is wrong to reargue the definitions you are saying Judge Folsom was wrong in how he handled this case.


No, Judge Folsom used the information from the trial to define "no open issues of infringement" and "mere colorable difference".

The _KSM_ standard applies. It doesn't require a jury. If a modified device is found to be "merely colorably different" against the claims as construed by the court, then a test for infringement must also be applied. Using the law of the case, the determination was made. One question in front of the _en banc_ was if Judge Folsom's evaluation was applied correctly. Hence the reason for rearguing the "parsing" step again.

It wasn't that Judge Folsom had reargued definitions, it was simply that EchoStar didn't like having their own experts' testimony from the trial used against them in the contempt proceeding.


----------



## tivonomo

Greg Bimson said:


> The judges have only the case information and the briefs available to them. They asked questions seeking to clarify the position of each party. For example, Judge Moore had asked about the PID filtering. Counsel Waxman hammered home the point that all five expert witnesses testified that it met the step limitation of the claim. It appears Judge Moore's problem with the PID filtering was because EchoStar within their brief obfuscated one of TiVo's expert witnesses to state that PID filtering didn't meet the step. Clarification.Never argued to the jury.
> 
> Question: Does PID filtering meet the step of the "parse" claim within the Software Claims?
> 
> All five experts answered yes. I'm sorry, but that is speaking EXACTLY to the issue at hand, right in front of the jury. The reason it is such a problem is because it requires experts to recant their testimony given under oath in front of a jury.No, Judge Folsom used the information from the trial to define "no open issues of infringement" and "mere colorable difference".
> 
> The _KSM_ standard applies. It doesn't require a jury. If a modified device is found to be "merely colorably different" against the claims as construed by the court, then a test for infringement must also be applied. Using the law of the case, the determination was made. One question in front of the _en banc_ was if Judge Folsom's evaluation was applied correctly. Hence the reason for rearguing the "parsing" step again.
> 
> It wasn't that Judge Folsom had reargued definitions, it was simply that EchoStar didn't like having their own experts' testimony from the trial used against them in the contempt proceeding.


Thanks for your clear, concise, and compelling arguments based on the facts of the case.


----------



## peak_reception

Well, Thanksgiving is almost here, so let's talk some turkey: 

Judges on the en-banc: 

1) Rader, yes, a slam dunk for DISH (judge on 1st panel)

2) Lourie, yes, a slam dunk for TiVo (judge on 1st panel)

3) Dyk, yes, sounding partial for DISH. 

4) Moore, yes, sounding partial for DISH. 

5) Gajarsa, yes, not showing partiality. 

6) Newman, yes, not showing partiality. 

7) Prost, yes, not showing partiality. 

8) Linn, ? , I think so but did he say anything? 

9) Michel? Same as Linn, or is Bryson #9? 

Mayer did not participate in the oral argument hearing, even though he ruled in TiVo's favor on the 3 judge panel. Said to be in a state of semi-retirement now. 

So, notwithstanding Mayer's status in the case, it sounds so far like 3 to 1 in favor of DISH. 

My guess is that if DISH gets to 5 then Mayer will stay on the sidelines and DISH wins. Why? Why else would he not attend the oral arguments unless he were taking leave from the case for whatever reason? 

2 more judges to go for DISH, from the 5 not already known or heard to be partial. For the first time in many years it looks to me like the odds are in DISH's favor, for a change, especially given the passion shown by Rader, Moore, and Dyk.


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## HiDefGator

peak_reception said:


> ... especially given the passion shown by Rader, Moore, and Dyk.


I didn't hear that same level of passion from anyone siding with Tivo.


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## jacmyoung

Greg Bimson said:


> Question: Does PID filtering meet the step of the "parse" claim within the Software Claims?


Yes it analyzes, but it cannot analyze any "audio and video data", and it does not "temporarily store said audio and video data", as such there cannot be a "source object" to "extract" said "audio and video data" from the PID filter which was not temporarily stored, therefore the source object cannot "convert" such "audio and video data" to a "video stream"&#8230;

So who cares if the PID parses? Again "parse" is only one of the many claim terms, each and everyone of them must be met to prove infringement.



HiDefGator said:


> I didn't hear that same level of passion from anyone siding with Tivo.


Wasn't it you who said the reason Judge Mayer skipped the oral argument might be that he had already seen the votes and knew it would have been a lost cause for him to try to help TiVo?


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## peak_reception

HiDefGator said:


> I didn't hear that same level of passion from anyone siding with Tivo.


True, not even from Judge Lourie. On the other hand, it didn't sound good for TiVo at the last oral hearing either, with Judge Rader ripping into TiVo.

Do you know if judge #9 is Michel or Bryson?


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## tivonomo

jacmyoung said:


> Yes it analyzes, but it cannot analyze any "audio and video data", and it does not "temporarily store said audio and video data", as such there cannot be a "source object" to "extract" said "audio and video data" from the PID filter which was not temporarily stored, therefore the source object cannot "convert" such "audio and video data" to a "video stream"&#8230;


There is no requirement to "convert" such "audio and video data" to a "video stream". You added that to the claim.

The relevant claim is:


> "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[.]"


The physical data source is the PID filter. The header of the data is parsed. And the data is temporarily stored at the PID filter as it is analyzed. Claim met.


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## tivonomo

peak_reception said:


> True, not even from Judge Lourie. On the other hand, it didn't sound good for TiVo at the last oral hearing either, with Judge Rader ripping into TiVo.
> 
> Do you know if judge #9 is Michel or Bryson?


Michel retired. It is Bryson. #10 is Mayer.


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## Greg Bimson

jacmyoung said:


> Yes it analyzes, but it cannot analyze any "audio and video data", and it does not "temporarily store said audio and video data", as such there cannot be a "source object" to "extract" said "audio and video data" from the PID filter which was not temporarily stored, therefore the source object cannot "convert" such "audio and video data" to a "video stream"&#8230;
> 
> So who cares if the PID parses? Again "parse" is only one of the many claim terms, each and everyone of them must be met to prove infringement.


And like I said, EchoStar must have their experts recant their entire testimony given during trial in order for any of those arguments to hold any water.


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## peak_reception

tivonomo said:


> Michel retired. It is Bryson.


 Ok thanks.



> #10 is Mayer.


 I'm not convinced.


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## tivonomo

peak_reception said:


> I'm not convinced.


Fair enough regarding Mayer. I'd hope you are at least convinced that Mayer voting is an option. That much is obvious given the IOP's of the CAFC. Given the rarity of en bancs with judges taking senior status from the original panel, you can choose to believe my 2 sources or not.


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## peak_reception

> I'd hope you are at least convinced that Mayer voting is an option.


Yes.


----------



## bobukcat

Greg Bimson said:


> And like I said, EchoStar must have their experts recant their entire testimony given during trial in order for any of those arguments to hold any water.


I disagree because as I stated before, Judge Folsom established that for the purposes of the trial "parses" = "analyzes". If the witnesses have a different meaning for the word parses ("separates" is one that I think was used but not allowed by Folsom) but have to agree that the PID filter performs the parsing role because it does some type of analysis of the data and therefore meets the courts' definition of parses they have a perfectly explainable reason to counter their testimony. Basically if they aren't forced to abide by "parses" = "analyzes" they could have disagreed that is met the parses role.


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## jacmyoung

"peak_reception" said:


> Yes.


But option for what? Only a majority decision is binding, therefore a minimum 5 out of 9 will be needed to produce a binding ruling, so what good will Judge Mayer do? Not as if he can break a tie because there will not be a tie.


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## jacmyoung

"Greg Bimson" said:


> And like I said, EchoStar must have their experts recant their entire testimony given during trial in order for any of those arguments to hold any water.


They already did, they said during the contempt hearing either in person or in writing they were wrong, did you forget?

Not only did they say they were wrong about that, they also pointed out that the jury said they were wrong.

E* experts argued the PID met the "parse" limitation for one reason and one reason alone, to try to invalidate the TiVo claims. The jury rejected E*'s such argument, found the claims valid. By doing so the jury rejected E*'s argument that the PID met the "parse" limitation as required by the claims.


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## peak_reception

jacmyoung said:


> But option for what? Only a majority decision is binding, therefore a minimum 5 out of 9 will be needed to produce a binding ruling, so what good will Judge Mayer do? Not as if he can break a tie because there will not be a tie.


I think he would step in if his involvement would help resolve something. I don't think he would step in just to complicate matters even more [i.e. 5 to 5 tie; now what?!] That's why I don't think he will step in.


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## tivonomo

peak_reception said:


> I think he would step in if his involvement would help resolve something. I don't think he would step in just to complicate matters even more [i.e. 5 to 5 tie; now what?!] That's why I don't think he will step in.


A tie would be in favor of TiVo. More likely his involvement would be to sway other judges and to avoid a tie scenario. But the truth is that historically about 4% of rehearings en banc end in a tie.


----------



## peak_reception

> More likely his involvement would be to sway other judges and to avoid a tie scenario.


 We don't even know that he feels passionately one way or the other. He may have sided with TiVo the first time around, but not felt strongly enough about it to even continue on to the next round. There are lots of possibilities; we just don't know. We may never know.


----------



## jacmyoung

"tivonomo" said:


> A tie would be in favor of TiVo. More likely his involvement would be to sway other judges and to avoid a tie scenario. But the truth is that historically about 4% of rehearings en banc end in a tie.


A tie means no binding decision, I don't know how it can be in either parties' favor.

He will not be involved to avoid a tie because there will not be a tie as long as he is not involved.


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## tivonomo

jacmyoung said:


> A tie means no binding decision, I don't know how it can be in either parties' favor.


I just said that 4% of en banc cases do end in a tie. Ties do happen. And I've also said before that a tie maintains the status quo. That would be Folsom's decision. NOT saying that it is likely to happen, but that is what would happen.


----------



## jacmyoung

"tivonomo" said:


> I just said that 4% of en banc cases do end in a tie. Ties do happen. And I've also said before that a tie maintains the status quo. That would be Folsom's decision. NOT saying that it is likely to happen, but that is what would happen.


Among the 4%, how many were the result of a judge not part of the active duty on the panel but later decided to inject him/herself in in order to create a tie? Did it ever happen?

He did not even show up at the oral argument, if he later tries to nullify a 5/4 decision in E*'s favor, wouldn't it be a big reason to appeal to the Supreme Court? That is to assume he will still be so passionate about supporting TiVo, but why he did not even bother to attend the oral argument if that is the case?


----------



## peak_reception

> if he later tries to nullify a 5/4 decision in E*'s favor, wouldn't it be a big reason to appeal to the Supreme Court?


 If the CAFC rules allow it then there's nothing to appeal.


----------



## jacmyoung

"peak_reception" said:


> If the CAFC rules allow it then there's nothing to appeal.


The way I read the rule is in rare cases a judge might be needed to break a tie to produce a binding ruling, but not brought in to nullify a binding majority decision.


----------



## BobaBird

tivonomo said:


> The relevant claim is:
> 
> 
> 
> "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[.]"
> 
> 
> 
> The physical data source is the PID filter. The header of the data is parsed. And the data is temporarily stored at the PID filter as it is analyzed. Claim met.
Click to expand...

From discussion in a previous thread about what the PID filter does, its place in that claim is as the input device. It parses the header data in the multiple-channel DBS stream to extract the desired single channel of broadcast data which is then sent to the physical data source.


----------



## jacmyoung

BobaBird said:


> From discussion in a previous thread about what the PID filter does, its place in that claim is as the input device. It parses the header data in the multiple-channel DBS stream to extract the desired single channel of broadcast data which is then sent to the physical data source.


Yes that is E*'s current explanation. The problem is the E* expert back then did argue the PID itself was the "physical data source." As I pointed out the reason they did so was to try to invalidate the software claims because if true, then TiVo's software claims would have been made obvious by the ancient PID art.

But E* had failed on that, the jury had found TiVo's software claims NOT invalid because they agreed with TiVo the PID was not the "physical data source." The E* expert now says he was wrong back then, he actually has the jury's decision to prove that he was wrong.

BTW, TiVo never argued that the PID "temporarily stores said video and audio data." It is Tivonomo's own argument. E* has argued that the PID cannot possibly analyze any "audio and video data" at this early stage because the data are scrambled, cannot be read. The PID only reads the header which is a 13-bit channel ID code, no audio and video data in it. Of course for that reason the PID cannot possibly isolate any "audio and video data" and "temporarily stores" said isolated data.

It is indeed such "audio and video data", after they are descrambled, parsed out by the physical data course, i.e. the media switch, after the PID process, then temporarily stored by the physical data source in a buffer, that can later allow the "source object" to "extract" such temporarily stored data, then convert it to a "video stream", and then store it in another "buffer" that is "obtained" by the "source object."

A step must rely on the one before it, without the first step, all the following steps are gone. E* pointed out that all the software codes TiVo identified in the old software that performed those above steps, they are now gone from the new software, this much TiVo does not even dispute.


----------



## tivonomo

jacmyoung said:


> BTW, TiVo never argued that the PID "temporarily stores said video and audio data." It is Tivonomo's own argument. E* has argued that the PID cannot possibly analyze any "audio and video data" at this early stage because the data are scrambled, cannot be read. The PID only reads the header which is a 13-bit channel ID code, no audio and video data in it. Of course for that reason the PID cannot possibly isolate any "audio and video data" and "temporarily stores" said isolated data.


You are drinking the E* legal team Kool-aid. The PID filter does analyze audio and video data. It's purpose is to filter such data. An analogy someone else shared was that of a letter in an envelope. You don't have to open and read the letter to know where the letter needs to go, how many stamps are required, etc.


----------



## scooper

tivonomo said:


> You are drinking the E* legal team Kool-aid. The PID filter does analyze audio and video data. It's purpose is to filter such data. An analogy someone else shared was that of a letter in an envelope. You don't have to open and read the letter to know where the letter needs to go, how many stamps are required, etc.


No it doesn't - all the PID filter does is read those 13 bits of the PID header and decide where to route them - it's basic packet reading.

However - to "parse audio and video data" you MUST read the packet's contents. There is no way the PID filter can do that.


----------



## tivonomo

jacmyoung said:


> BTW, TiVo never argued that the PID "temporarily stores said video and audio data." It is Tivonomo's own argument.


Straight from Judge Bryson in the 2008 panel decision:



Judge_Bryson said:


> it was reasonable for the jury to find that the temporary data buffer was simply an extension of the physical data source where data was stored pending its extraction for further processing.


----------



## James Long

scooper said:


> No it doesn't - all the PID filter does is read those 13 bits of the PID header and decide where to route them - it's basic packet reading.
> 
> However - to "parse audio and video data" you MUST read the packet's contents. There is no way the PID filter can do that.


True. Audio and video is separate at the uplink. The standard DISH uses uses separate PIDs to transmit each video stream separate from each audio stream. A raw look at the mux coming from a transponder will show many video feeds and many audio feeds (how many varies depending on the content of that transponder). The receiver knows which video and audio PID to use based on a table that is transmitted on that transponder. That table is what tells the receiver which PID is what for further processing. It is very similar to the way an ATSC TV tunes the channels on an OTA TV feed and is a basic function of satellite transmission that existed long before Tivo existed.


----------



## tivonomo

scooper said:


> No it doesn't - all the PID filter does is read those 13 bits of the PID header and decide where to route them - it's basic packet reading.
> 
> However - to "parse audio and video data" you MUST read the packet's contents. There is no way the PID filter can do that.


That is your opinion. In this case, parsing simply means analyze. And both sides argued that the PID Filter parses at trial. And if you need any more proof, internally it was undisputed that E*'s engineers referred to PID Filters as "parsers".

Besides, do you want to limit video and audio data to pictures or sounds or more reasonably any data related to that end product? The buffer travels along with the encrypted data. It all works together and is all necessary for the pictures and sounds on your TV to be displayed properly. Otherwise there would be no purpose for that header at all!


----------



## tivonomo

James Long said:


> True. Audio and video is separate at the uplink. The standard DISH uses uses separate PIDs to transmit each video stream separate from each audio stream. A raw look at the mux coming from a transponder will show many video feeds and many audio feeds (how many varies depending on the content of that transponder). The receiver knows which video and audio PID to use based on a table that is transmitted on that transponder. That table is what tells the receiver which PID is what for further processing. It is very similar to the way an ATSC TV tunes the channels on an OTA TV feed and is a basic function of satellite transmission that existed long before Tivo existed.


Only true if one substitutes their own definitions of the claims. The claim construction and arguments in this case are what is relevant.


----------



## scooper

James Long said:


> True. Audio and video is separate at the uplink. The standard DISH uses uses separate PIDs to transmit each video stream separate from each audio stream. A raw look at the mux coming from a transponder will show many video feeds and many audio feeds (how many varies depending on the content of that transponder). The receiver knows which video and audio PID to use based on a table that is transmitted on that transponder. That table is what tells the receiver which PID is what for further processing. It is very similar to the way an ATSC TV tunes the channels on an OTA TV feed and is a basic function of satellite transmission that existed long before Tivo existed.


I would go so far as to say that DBS PID processing is EXACTLY like ATSC PID processing, except there are far more PIDs to process in DBS.


----------



## James Long

tivonomo said:


> Only true if one substitutes their own definitions of the claims. The claim construction and arguments in this case are what is relevant.


A PID separator on a receiver that separates audio and video is the same as a separating all video mail that is my mailbox from the all audio mail that is my neighbors. Hint ... the mailboxes are 2 ft apart but have different ZIP+4 codes.

The receiver going to one mailbox for the video and another for the audio was a function of the very first receivers - long before Tivo. Tivo CANNOT hold a patent on this prior art ... so whatever they define in their patent MUST be something else other than separating the audio and video. It is already separated by the address. No receiver processing is needed. Everything in one mailbox is video and everything in the other mailbox is audio before the DVR function is introduced.


----------



## dgordo

jacmyoung said:


> You know what likely had happened? Neither Judge Folsom nor TiVo had anticipated that E* could have downloaded a new non-infringing software that still kept the DVR functions. E* never told them they were working on such a thing. Judge Folsom and TiVo thought the injunction was therefore air tight, E* would lose those 4 million DVRs if E* did not settle. It was to their surprise E* actually found a way to do it without infringing. So they became vindictive, telling E* infringing or not, you were in violation. As a lawyer, you know very well without infringement, there cannot be a violation of an injunction against patent infringement.


I didn't realize that E* had downloaded non-infringing software. What is your source for this? It clearly depends on what the injunction says; there is a fallacy going around that injunctions can old prohibit unlawful behavior. Injunctions can prohibit just about anything a judge wants to prohibit.



jacmyoung said:


> Now let me take a step back to again try an "on the alternative argument". At this point, after being questioned by the judges, the only argument left for TiVo is that E* did not appeal last time. In other words, TiVo does not even seriously dispute that they may not have any ground to stand on as far as their colorable difference test, infringement theory, and legal inteprretation of an injunction against patent infringement, i.e. TiVo does not even seriously deny the possibility that *every one of their arguments could be factually and legally wrong*, but since the stupid E* did not appeal, so Gotcha!
> 
> What country are we living in? North Korea?


I'm pretty sure that Tivo isn't conceding any of those points but rather doing what you are doing; making an on the alternative argument. They are saying that even if we are wrong on everything, the time to debate the merits of the injunction is long passed. I have no idea what type of legal system they have in North Korea, if any, but we have a legal system here based upon rules governing waiver. These rules are well known and serve a useful purpose. This is the way our legal system has been run since the founding of the union. There is nothing gotcha about it. The rules are clear, fail to follow the rules at your own peril.


----------



## dgordo

jacmyoung said:


> The way I read the rule is in rare cases a judge might be needed to break a tie to produce a binding ruling, but not brought in to nullify a binding majority decision.


Could you please provide a quote from where you read this?


----------



## dgordo

Another point that seems to be overlooked, eventually this case will end up back in Judge Folsom's court one way or another. Think he will suddenly become sympathetic to E* regardless of what the CAFC rules?


----------



## James Long

dgordo said:


> It clearly depends on what the injunction says; there is a fallacy going around that injunctions can only prohibit unlawful behavior. Injunctions can prohibit just about anything a judge wants to prohibit.


Personally I wish the contempt hearing was solely about not disabling the DVR functionality instead of not replacing the DVR functionality with non-infringing functionality. I would like to have seen how the "these devices can no longer ever become DVRs again" instruction (restated, not quoted) would have held up.

Not too well since there was discussion over whether the modified products infringed the patent. Discussion that should not have occurred if the Judge enforced the "disable forever" provision of the original injunction. Perhaps Judge Folsom was unsure of what his injunction really meant?



dgordo said:


> Another point that seems to be overlooked, eventually this case will end up back in Judge Folsom's court one way or another. Think he will suddenly become sympathetic to E* regardless of what the CAFC rules?


Not likely.


----------



## tivonomo

James Long said:


> A PID separator on a receiver that separates audio and video is the same as a separating all video mail that is my mailbox from the all audio mail that is my neighbors. Hint ... the mailboxes are 2 ft apart but have different ZIP+4 codes.
> 
> The receiver going to one mailbox for the video and another for the audio was a function of the very first receivers - long before Tivo. Tivo CANNOT hold a patent on this prior art ... so whatever they define in their patent MUST be something else other than separating the audio and video. It is already separated by the address. No receiver processing is needed. Everything in one mailbox is video and everything in the other mailbox is audio before the DVR function is introduced.


This is all about parsing the data in order to have the trick play function on the DVR. TiVo created an index at the media switch and E* simply moved where the analysis was done to the PID filter. The PID filter analyzes the headers to algorithmically determine an index. The claims require a specific place for the parsing to be done and at that point, E*'s workaround became invalid.


----------



## jacmyoung

Two things I am trying to respond to without quoting several of you.

One is to respond to dgordo, please understand, all of my arguments are based on the belief that the modified DVRs no longer infringed. E* had already conceded long ago that if the modified DVRs still infringed by clear and convincing evidence, they would in fact be in contempt.

Therefore you should not even bother to say, but you cannot say they had downloaded a non-infringing software because Judge Folsom said it was still infringing and the CAFC has not ruled on it yet.

Yes I can because all of my arguments, as well as E*'s, will only stand if the new software is non-infringing, end of the story.

The second point is this, I don't care how much some of you know how the PID works, in fact if I remember correctly P. Smith was really the one who knew all the technical aspects of any of those things, albeit it was sometimes difficult to read him

But whatever the technical details are not important as long as E* and TiVo are not arguing on them. The fact is, E* said the PID cannot analyze any "audio and video data" because at the PID stage, such data are scrambled, cannot be read by the PID. *TiVo does not dispute E*'s assertion that the audio and video data are scrambled*, TiVo's only response is, so what, the PID can still read them. The judges will have to read the two statements and decide which one is more believable.

That is why I said, we need to stick to what E* has said, and what TiVo has said, and go from there. The judges will not read what you and I have said, regardless how smart and correct we think our explanations are.

Oh BTW dgordo, you being a lawyer, I think it is reasonable to request that you cite the law if you have some questions about my understanding of the law, rather asking me to cite the law. You can correct me, I am all ears, but if you want to dispute me on an issue specific to a question of law, I don't think it is too much to ask that you explain to me, rather I explain to you. Because I am not a lawyer, you are.

I will never have the same demand on Tivonomo because he is no lawyer either, what's fair is fair.


----------



## scooper

dgordo said:


> Another point that seems to be overlooked, eventually this case will end up back in Judge Folsom's court one way or another. Think he will suddenly become sympathetic to E* regardless of what the CAFC rules?


Two comments (mine) here -

Folsom will not be too pleased to see this case back on his docket.

Dish / Echostar will be back at the CAFC if Folsom doesn't rule their new method is "more than colorably different" and if Folsom doesn't order a new trial based on that.

It goes without saying that he will not be sympathetic to E*. He'll do the others only because he will be forced to (via the law / decisions of the CAFC).


----------



## dgordo

jacmyoung said:


> Oh BTW dgordo, you being a lawyer, I think it is reasonable to request that you cite the law if you have some questions about my understanding of the law, rather asking me to cite the law. You can correct me, I am all ears, but if you want to dispute me on an issue specific to a question of law, I don't think it is too much to ask that you explain to me, rather I explain to you. Because I am not a lawyer, you are.
> 
> I will never have the same demand on Tivonomo because he is no lawyer either, what's fair is fair.


You made a factual statement that I was not familiar with based upon something you read. I didn't think it was too much to ask of you to show were you read that statement. Personally I dont think the statement you made was correct, but I don't know for sure, please back up your statement, "The way I read the rule is in rare cases a judge might be needed to break a tie to produce a binding ruling, but not brought in to nullify a binding majority decision."


----------



## tivonomo

dgordo said:


> You made a factual statement that I was not familiar with based upon something you read. I didn't think it was too much to ask of you to show were you read that statement. Personally I dont think the statement you made was correct, but I don't know for sure, please back up your statement, "The way I read the rule is in rare cases a judge might be needed to break a tie to produce a binding ruling, but not brought in to nullify a binding majority decision."


Get used to it. Jacmyoung has never responded to any of my requests for references for his so-called "facts". I can only interpret that as those facts were "made up" to "further" this debate.


----------



## jacmyoung

"dgordo" said:


> You made a factual statement that I was not familiar with based upon something you read. I didn't think it was too much to ask of you to show were you read that statement. Personally I dont think the statement you made was correct, but I don't know for sure, please back up your statement, "The way I read the rule is in rare cases a judge might be needed to break a tie to produce a binding ruling, but not brought in to nullify a binding majority decision."


It was my impression after reading the rules posted by tivonomo, and his research that only 4% of the en banc cases ended in a tie, and his refusal to respond to my question, among the 4% what % was the result of a judge later brought in to turn a majority decision into a tie?

My conclusion was therefore that any of those rare cases where there was a tie, was likely because the en banc had an even number of the judges in the first place, and no judge were later brought in to break the tie.

Have you ever read an en banc case where it had a majority decision made only later a judge was brought in to turn it into a tie?


----------



## jacmyoung

"tivonomo" said:


> The data was scrambled at the media switch as well, was it not?


No, the data is descrambled before the media switch so the media switch can look for the start codes in them. Don't question me, E* said so and TiVo did not dispute it.


----------



## tivonomo

jacmyoung said:


> No, the data is descrambled before the media switch so the media switch can look for the start codes in them.


Are start codes "audio and video data"? Or are they simply header information inside each data packet?


----------



## tivonomo

jacmyoung said:


> It was my impression after reading the rules posted by tivonomo, and his research that only 4% of the en banc cases ended in a tie, and his refusal to respond to my question, among the 4% what % was the result of a judge later brought in to turn a majority decision into a tie?
> 
> My conclusion was therefore that any of those rare cases where there was a tie, was likely because the en banc had an even number of the judges in the first place, and no judge were later brought in to break the tie.
> 
> Have you ever read an en banc case where it had a majority decision made only later a judge was brought in to turn it into a tie?


I didn't refuse to respond to your question, I probably just missed it.

The research was a published paper and it did not break down those 4% further. So I have no idea how many were en bancs with an even number of judges. And have no knowledge of why a judge would be "brought in to break the tie".

All we know from published procedures is that a judge from the original panel who elects Senior Status can still participate.


----------



## James Long

jacmyoung said:


> No, the data is descrambled before the media switch so the media switch can look for the start codes in them. Don't question me, E* said so and TiVo did not dispute it.


Until DISH or Tivo show up on the forum you'll just have to put up with people asking you for all the answers. Sorry.


----------



## tivonomo

James Long said:


> Until DISH or Tivo show up on the forum you'll just have to put up with people asking you for all the answers. Sorry.


Dish and TiVo are already public with their opinions. If one wants to discuss them, it really isn't that difficult to cut & paste their arguments from the briefs.

TiVo has all the relevant stuff on their IR website. Most people try to be helpful to others trying to understand their point in a discussion.


----------



## James Long

tivonomo said:


> Dish and TiVo are already public with their opinions. If one wants to discuss them, it really isn't that difficult to cut & paste their arguments from the briefs.


Their opinions (both companies) can be summarized in one line:
"We're right and we will win this."



> TiVo has all the relevant stuff on their IR website. Most people try to be helpful to others trying to understand their point in a discussion.


What they choose to believe is relevant is there. People tend to discuss a lot more than Tivo deems relevant.


----------



## tivonomo

James Long said:


> Their opinions (both companies) can be summarized in one line:
> "We're right and we will win this."
> 
> What they choose to believe is relevant is there. People tend to discuss a lot more than Tivo deems relevant.


You obviously haven't been to TiVo's website and read any briefs...:sure:

Both E* and TiVo's briefs reference all of the (relevant) facts in their arguments. All that differs is the interpretation of those facts. TiVo has included E*'s briefs as well as the opinions from Folsom and the CAFC at each of stage of the case.

Fair, balanced, and unbiased coverage of the case. What more can anyone ask for?


----------



## jacmyoung

"tivonomo" said:


> Are start codes "audio and video data"? Or are they simply header information inside each data packet?


Precisely! In MPEG streams there are video start codes indicating where a video I frame begins, and audio start codes too, with some other start codes. These codes, along with the actual frames are stored in the body of the stream and scrambled. The header is not scrambled, it contains only a 13-bit number that tells the channel numbers and some other channel ID data, no video or audio related data.


----------



## jacmyoung

"tivonomo" said:


> You obviously haven't been to TiVo's website and read any briefs...:sure:
> 
> Both E* and TiVo's briefs reference all of the (relevant) facts in their arguments. All that differs is the interpretation of those facts. TiVo has included E*'s briefs as well as the opinions from Folsom and the CAFC at each of stage of the case.
> 
> Fair, balanced, and unbiased coverage of the case. What more can anyone ask for?


You seem to want to convince us TiVo has been fair and balanced? Are you kidding?

TiVo only most recently decided to make public all the en banc filings, as I have speculated, probably because they realized this time things might go against them, by posting the files on their investors' relations site, at least if things don't go their way, the investors cannot say TiVo was not open about the information.

E* on the other hand had consistently warned it's investors of the worst case scenarios.


----------



## tivonomo

jacmyoung said:


> Precisely! In MPEG streams there are video start codes indicating where a video I frame begins, and audio start codes too, with some other start codes. These codes, along with the actual frames are stored in the body of the stream and scrambled. The header is not scrambled, it contains only a 13-bit number that tells the channel numbers and some other channel ID data, no video or audio related data.


My point is that start codes are not audio or video data, as defined by a number of people on this board. They are descriptive data regarding the order of the data.

E*'s algorithm as I recall is looking at the headers to determine the size and data type of the packet and then using that to approximate the time length of the video/audio data in the packet. In other words, they are inferring an index based on header data.


----------



## tivonomo

jacmyoung said:


> as I have speculated


You said enough right there. :nono2:

There are other places to get all of the pdf's such as legal blogs if you have a problem with TiVo making them available.

MY original point which James Long deviated from was that all of the facts are widely available. Should it really be that much of a trouble for anyone to copy and paste a quote or two to further this discussion? (I guess some arguments are easier to be made without referencing facts).

Bottom line, is that TiVo didn't pick or choose anything on their website. All of amicus curiae are there, every opinion, and the briefs for the en banc.

The reason they are there is because I believe is that the only way to get the CAFC filings is by going to the court and investors were asking for them.


----------



## jacmyoung

"tivonomo" said:


> My point is that start codes are not audio or video data. They are descriptive data regarding the order of the data.


Again you are making your own argument, because TiVo does not dispute the above E*'s assertions.



> E*'s algorithm as I recall is looking at the headers to determine the size and data type of the packet and then using that to approximate the time length of the video/audio data in the packet. In other words, they are inferring an index based on header data.


Again I don't care, I only care about what E* says and what TiVo says. I don't recall E* nor TiVo ever described the E* new software the way you are saying.


----------



## tivonomo

jacmyoung said:


> Again you are making your own argument, because TiVo does not dispute the above E*'s assertions..


I'm just saying that because the courts have already defined "indexing start codes" as "parsing audio and video data". Some here on this board (and E*) say header data is not audio and video data but then start codes would not be audio and video data... but that would contradict the claim construction of this case!



jacmyoung said:


> Again I don't care, I only care about what E* says and what TiVo says. I don't recall E* nor TiVo ever described the E* new software the way you are saying.


I'm recalling what E* wrote in the patent application for their new method.

If you don't care what E* or TiVo says, then why are you here. One of their arguments is going to win on each question of this en banc. Their arguments presented to the judges are all that is really relevant to this case.


----------



## CuriousMark

tivonomo said:


> E*'s algorithm as I recall is looking at the headers to determine the size and data type of the packet and then using that to approximate the time length of the video/audio data in the packet. In other words, they are inferring an index based on header data.


Sorry, but not quite.

E*'s algorithm looks at the start codes as they go to the decoders after being read from the hard drive. They then make a factor by averaging the number of bytes between start codes. This "factor" is used in trick play to guess how many bytes forward or back to jump. They then scan forward from the jump off location until they find a new start code and start sending the new data to the decoder.

This doesn't matter at all though. It has nothing to do with the parsing in these claims. The headers are looked at, when a PID is found that needs to be saved to the hard drive the "whole packet" is moved to the intermediate buffer. If only the header were moved, then Dish's argument would hold water.


----------



## tivonomo

CuriousMark said:


> Sorry, but not quite.
> 
> E*'s algorithm looks at the start codes as they go to the decoders after being read from the hard drive. They then make a factor by averaging the number of bytes between start codes. This "factor" is used in trick play to guess how many bytes forward or back to jump. They then scan forward from the jump off location until they find a new start code and start sending the new data to the decoder.
> 
> This doesn't matter at all though. It has nothing to do with the parsing in these claims. The headers are looked at, when a PID is found that needs to be saved to the hard drive the "whole packet" is moved to the intermediate buffer. If only the header were moved, then Dish's argument would hold water.


Better explanation. This is the reason I said "as I recall". I should have just looked up your explanation on the village.

Is it reasonable to call a start code a "header" for the frame it corresponds to? I started calling the start codes "headers" in response to the argument that parsing a "header" isn't "parsing audio and video data" which is essentially E*'s argument.


----------



## jacmyoung

"tivonomo" said:


> I'm just saying that because the courts have already defined "indexing start codes" as "parsing audio and video data". Some here on this board (and E*) say header data is not audio and video data but then start codes would not be audio and video data... but that would contradict the claim construction of this case!
> 
> I'm recalling what E* wrote in the patent application for their new method.
> 
> If you don't care what E* or TiVo says, then why are you here. One of their arguments is going to win on each question of this en banc. Their arguments presented to the judges are all that is really relevant to this case.


Did you read? I said I only care about what E* says and what TiVo says, or what you say if you are says what they are saying IN THE COURT FILINGS.

I don't even care what E* says in it's new patent specification because neither E* nor TiVo ever described the new patent specification in their court filings. E* only mentioned they got a new patent, that was it. The judges aren't going to go read E*'s new patent specifications.

Once again, you and Mark are only arguing/agreeing between the two of you, if only TiVo is saying what you are saying, but TiVo did not.

I don't care what you are saying as long as what you are saying is NOT what E* is saying or what TiVo is saying.


----------



## tivonomo

jacmyoung said:


> Did you read? I said I only care about what E* says and what TiVo says, or what you say if you are says what they are saying IN THE COURT FILINGS.


Well that is quite a boring discussion. The meaning of "parse audio and video data" is discussed in both filings. I still don't understand the narrow interpretation of "audio and video data" proposed by E*.


----------



## jacmyoung

"tivonomo" said:


> Well that is quite a boring discussion. The meaning of "parse audio and video data" is discussed in both filings. I still don't understand the narrow interpretation of "audio and video data" proposed by E*.


As long as TiVo does not dispute E*'s interpretation, there is nothing you can help.


----------



## tivonomo

jacmyoung said:


> As long as TiVo does not dispute E*'s interpretation, there is nothing you can help.




Of course they dispute E*'s interpretation. They have clearly argued that the PID filter parses audio and video data and E* argues that the header is not audio and video data.


----------



## spear61

tivonomo said:


> I still don't understand the narrow interpretation of "audio and video data" proposed by E*.


But at least one of the appeals court judges (the EE) does.


----------



## CuriousMark

tivonomo said:


> Better explanation. This is the reason I said "as I recall". I should have just looked up your explanation on the village.
> 
> Is it reasonable to call a start code a "header" for the frame it corresponds to? I started calling the start codes "headers" in response to the argument that parsing a "header" isn't "parsing audio and video data" which is essentially E*'s argument.


Yes I suppose that is reasonable.


----------



## jacmyoung

"tivonomo" said:


> Of course they dispute E*'s interpretation. They have clearly argued that the PID filter parses audio and video data and E* argues that the header is not audio and video data.


Yes E* argued the header did not contain any audio and video data, which TiVo did not dispute. E* also argued that the body of the steam is scrambled, only the header is readable, again TiVo does not dispute that. TiVo is only saying but it does not matter, even if the PID only reads the header, cannot possibly read anything in the body, it still is analyzing the data in the body.

This is not what I would call TiVo disputing E*'s interpretations, just making a different conclusion based on the same interpretations.


----------



## tivonomo

jacmyoung said:


> Yes E* argued the header did not contain any audio and video data, which TiVo did not dispute.


Yeah right... anyone can read TiVo's brief and read TiVo's clear position:



> EchoStar's sole argument as to the 50X units was that they no longer parsed video and audio data. A5292, 5523-5524. *In the original proceedings, however, both sides' experts testified that PID filtering is parsing of video and audio data. *See A2950 (EchoStar's expert Dr. Rhyne), 3128-3129 (EchoStar's expert Dr. Polish), 3500 (TiVo's expert Dr. Storer), 7729 (Dr. Polish); see also A5074-5079; TiVoPBr. 45-47. They also agreed that PID filters are part of the "physical data source," the structure that "parses" in claims 31 and 61. E.g., A2875 (EchoStar's expert Dr. Johnson), 1662-1663 (TiVo's expert Dr. Gibson); see also A7784 (EchoStar's counsel). It is undisputed that EchoStar's receivers still use PID filters (A48, 5067, 5071), which it even calls "parsers" (A5069, 5080, 5291).


----------



## jacmyoung

"tivonomo" said:


> Yeah right... anyone can read TiVo's brief and read TiVo's clear position:


That was not TiVo's position, rather E* expert said during the last trial, as I had explained to Greg, not only the same E expert now said his assertion back then was wrong, but the jury also rejected his such assertion.

TiVo's position on the PID back then was actually the opposite of E*'s back then, that the PID did not parse the audio and video data, E* quoted TiVo's expert on that, so did Judge Dyk. So whatever the position you call above has never been TiVo's position, TiVo only insisted since E* expert took that position, E* is stuck in that position, E* can not change it even if it is a wrong position.

BTW, I am not talking about the word "parse". It is undisputed that the PID also parsed, this is what in the above quote you have when both side experts agreed. The question now is, what does the PID parse?

E* said then the PID did parse audio and video data, E* now says it was wrong because E* lost that argument. Now E* says no the PID cannot possibly parse any "audio and video data" for the reasons I had stated above.

TiVo only says, but you said it before, so you stuck with it, it does not matter what you say now. Basically TiVo is not taking any position on this one, only asking the judges to consider E*'s old position, regardless what is E*'s current position, and regardless whether what E*' is saying now is correct or not.


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## James Long

tivonomo said:


> You obviously haven't been to TiVo's website and read any briefs...:sure:


I've been to the website that CuriousMark so kindly provided a link to. You're obviously wrong in your accusation.

Your later summary of Tivo's site is:


tivonomo said:


> Bottom line, is that TiVo didn't pick or choose anything on their website. All of amicus curiae are there, every opinion, and the briefs for the en banc.


But what I said was (emphasis added):


James Long said:


> What they choose to believe is relevant is there. *People tend to discuss a lot more than Tivo deems relevant.*


Are the jury slips on the Tivo website? (Just one example of something recently discussed that isn't there.) There is a lot more to this case than just the recent hearing.

The point stands: People tend to discuss a lot more than Tivo deems relevant.


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## jacmyoung

The bottom line, TiVo is not disputing what E* is saying now as far as what are the audio and video data, where are they, what is the header and what is in it, and what is scrambled or not. TiVo does not dispute any of such facts presented by E*.

TiVo is only saying, look the experts back then said this, so be it, end of the story, we don’t care what are the facts now, even though we cannot dispute such facts. TiVo is hoping the judges will also follow TiVo’s train of thought and only consider what the experts said back then, pay no attention to what are the facts that are presented by E* now which TiVo dose not question.

Well we know for a fact at least three judges are NOT following TiVo’s such train of thought. And we also know that no judge at the oral argument had shown he/she was actually following the same such TiVo’s train of thought.


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## tivonomo

James Long said:


> Are the jury slips on the Tivo website? (Just one example of something recently discussed that isn't there.) There is a lot more to this case than just the recent hearing.
> 
> The point stands: People tend to discuss a lot more than Tivo deems relevant.


You changed the entire discussion to suit your argument! We were talking about the opinions of Dish and TiVo - not things like "jury slips". Read my post again..



tivonomo said:


> Dish and TiVo are already public with their opinions. If one wants to discuss them, it really isn't that difficult to cut & paste their arguments from the briefs.
> 
> TiVo has all the relevant stuff on their IR website. Most people try to be helpful to others trying to understand their point in a discussion.


Literally, everything needed to discuss the en banc is on TiVo's website. TiVo or E* might cite things like Folsom's opinion or jury slips or testimony, but everything relevant has been quoted or referred to in the arguments presented to the en banc judges. So from now on there is no excuse for someone not to cite there source when saying what E* or TiVo argued.



tivonomo said:


> Dish and TiVo are already public with their opinions. If one wants to discuss them, it really isn't that difficult to cut & paste their arguments from the briefs.
> 
> TiVo has all the relevant stuff on their IR website. Most people try to be helpful to others trying to understand their point in a discussion.


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## James Long

tivonomo said:


> You changed the entire discussion to suit your argument!


You're ignoring what I said. So I suppose we're even? 

Feel free to re-read this thread to see what has been discussed here and then revisit the Tivo website and not find the documentation.

People tend to discuss a lot more than Tivo deems relevant.


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## jacmyoung

I don't see anything about the oral argument posted by TiVo, and since the majority of what were posted in the recent days were about the oral argument itself, what a judge said about what and what this or that lawyer responded about what, none of these are on the TiVo website, so Tivonomo's argument fails

Of course Tivonomo continues to fail to realize, anything he found refreshing in those filings by E* and TiVo on TiVo's website, had been discussed time and time again here at DBStalk, going back as far as two years. The fact he now insists we must quote everything for him is laughable, you need to go back and read thousands upon thousands of our posts before coming here and waste our time.

You do not hear Greg or Curtis asking us to quote for them do you? Because they have read them all already. Consider yourself lucky that we even try to respond to your questions. You don't get any credit for accusing us for not willing to quote for you.

That fact is, TiVo was only very recently willing to post all the filings for its investors to see, before that, TiVo had consistently painted a rosy picture of this case, to the contrary, E* had consistently warned its investors about the worst case scenario and still do so today. Maybe you are right TiVo now is finally "fair and balanced" but I still say E* is not "fair and balanced" because E* still continues to remind its investors the worst outcome.

So you can have all your fair and balanced approach from TiVo and thinking the TiVo investors will be rewarded by such approach, if that makes you happy.


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## harsh

jacmyoung said:


> The fact is, E* said the PID cannot analyze any "audio and video data" because at the PID stage, such data are scrambled, cannot be read by the PID. *TiVo does not dispute E*'s assertion that the audio and video data are scrambled*, TiVo's only response is, so what, the PID can still read them.


Unscrambling is one of the the first steps (if not the first) that the Echostar DVRs put a stream through. I suspect that they were stretching the truth at the very least.


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## harsh

jacmyoung said:


> That fact is, TiVo was only very recently willing to post all the filings for its investors to see, before that, TiVo had consistently painted a rosy picture of this case, to the contrary, E* had consistently warned its investors about the worst case scenario and still do so today.


I wouldn't be surprised if someone at TiVo had a "come to Jesus" with a finance person about not ignoring the possibility of losing. The end of this proceeding is likely either very close or very far away and the SEC will levy some big penalties if TiVo doesn't properly prepare their stockholders for both outcomes.


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## jacmyoung

harsh said:


> Unscrambling is one of the the first steps (if not the first) that the Echostar DVRs put a stream through. I suspect that they were stretching the truth at the very least.


Maybe, maybe not. It is up to TiVo to counter E*'s assertion, since it does not, and I don't think TiVo can be so lack of technical depth not to know when the descrambling takes place, my bet is E* is telling the truth. Besides, we can somewhat verify this too. When you try to tune to a channel that you are not authorized to receive, the DVR does allow you to tune to that channel, even let you see the programming info, but you get the popup telling you it is not viewable, i.e. scrambled. This likely means after the PID had selected the correct channel based on your request, the broadcast data are still scrambled. Of course this is only my speculation, I am not technically inclined to swear by it.


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## James Long

jacmyoung said:


> When you try to tune to a channel that you are not authorized to receive, the DVR does allow you to tune to that channel, even let you see the programming info, but you get the popup telling you it is not viewable, i.e. scrambled.


Nope. The popup appears (013 or 014 "This is a subscription channel which has not been purchased.") without the receiver receiving the PIDs for the channel. The receiver does not even have to tune to the transponder. Subscription identification information for channels is located in a master table available to receivers on ALL transponders in the system. If the receiver has not been authorized to view a channel the tuner never tries to receive the channel.

While most channels are encrypted (to prevent those with non Echostar receiving equipment from viewing the signals) legit receivers never bother to tune unauthorized channels. In most cases (there are 7518 channels in the system) the channels do not even appear in the guide unless authorized. The popup isn't based on whether the channel streams are scrambled or not ... it is based solely on authorization.


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## Curtis52

I wonder why Dish thinks a start code is audio and video data but a PID code isn't. I wonder what a start code looks like on the screen. Is it a picture of a starting pistol?


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## James Long

Curtis52 said:


> I wonder why Dish thinks a start code is audio and video data but a PID code isn't. I wonder what a start code looks like on the screen. Is it a picture of a starting pistol?


There are I-frames in the MPEG data that are used as a "reset". Receive one of these frames and one gets one complete screen full of data. The P-frames and B-frames do not include a complete image, only information on how the image is changing.

Running forward in normal speed through the data stream (the way MPEG video is normally expected to be viewed) this works nicely. But when one is running through the stream faster or backwards the receiver needs a way of getting to a nice clear frame (an I-frame) quickly.

Keeping a time based index of where I-frames are in the data makes skipping through the data smoother. 10 seconds back or 30 seconds forward is a precise point in the data. Years ago my 501 did a great job of being precise to the second when using the jump back and forward features. After the software was changed in the attempt to avoid infringement the index was gone and preciseness was gone. The point predicted based on data rate is often not the correct point. If it is not an I-frame the picture will sometimes blend into the old picture. Or there will be a pause until an I-frame is found in the data. (Decreased use of I-frames to save bandwidth does not help this situation.)

I just hope the "experts" who are involved in this case are not confusing what Tivo's complete process does (a design that includes encoding analog signals to get data streams to manipulate) with what a non DVR satellite receiver does and did long before Tivo had a clue.


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## scooper

If you had truly "unlimited" bandwidth - all you would ever send is I-frames, especially in a DVR situation. However, since you don't - you need to strike a balance between I frames and some amount of B and P frames.


And to answer tivonomo - the receiver will not know about what type of frame it is at the PID filter - that will come only after it has routed the selected packets through the PID filter to the decryption engine, and then the packet types become visible.


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## harsh

jacmyoung said:


> Maybe, maybe not. It is up to TiVo to counter E*'s assertion, since it does not, and I don't think TiVo can be so lack of technical depth not to know when the descrambling takes place, my bet is E* is telling the truth.


Reverse engineering through parsing court transcripts is the least valid scientific method I can think of to arrive at the truth.


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## jacmyoung

James Long said:


> Nope. The popup appears (013 or 014 "This is a subscription channel which has not been purchased.") without the receiver receiving the PIDs for the channel. The receiver does not even have to tune to the transponder. Subscription identification information for channels is located in a master table available to receivers on ALL transponders in the system. If the receiver has not been authorized to view a channel the tuner never tries to receive the channel.
> 
> While most channels are encrypted (to prevent those with non Echostar receiving equipment from viewing the signals) legit receivers never bother to tune unauthorized channels. In most cases (there are 7518 channels in the system) the channels do not even appear in the guide unless authorized. The popup isn't based on whether the channel streams are scrambled or not ... it is based solely on authorization.


Whatever the details if TiVo does not dispute the facts presented by E*, then there is no dispute of material facts. The only question left to answer will be the question of law. Remember I said earlier, if, and only if, the CAFC remand the case for a new action, E* will be able to motion Judge Folsom for a summary judgment of non-infringement, because a summary judgment is proper when there is no dispute of materail facts, then a jury, which is the fact finder, is no longer necessary.

Now even though I said I did not care about anything not said by E* or TiVo, I indeed am interested in the technical aspect of an MPEG receiver. I recall in the old days I had a free-to-air MPEG sat receiver, it had its own PID filter, but no descrambling capability. But it was still able to lock on to an E* transponder, allow me to tune to a specific channel, even had some raw channel ID displayed on the screen, just no video nor audio, if the channel was scrambled. If your theory is correct that all the descrambling had been done before the PID filter tuning to those channels, then shouldn't I have been able to watch all those encrypted channels?


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## jacmyoung

Curtis52 said:


> I wonder why Dish thinks a start code is audio and video data but a PID code isn't. I wonder what a start code looks like on the screen. Is it a picture of a starting pistol?


It is not what E* thinks, rather what the TiVo patent specification says. In the TiVo patent specification as well as in trial, TiVo described "audio and video data" as audio and video start codes. This much is 100% confirmed by the PTO examiner in the most recent patent reexamination disclaimer made by the PTO and officially published before the oral argument.

Why do you think TiVo never disputed E*'s claim? TiVo is not stupid, but TiVo knows they cannot dispute E*'s claim because if they did E* will be able to go to court later and argue that TiVo at minimum was inconsistent, at worst had lied.

The only thing TiVo can do is to argue but you said so and so before, that is just too bad.


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## James Long

jacmyoung said:


> I recall in the old days I had a free-to-air MPEG sat receiver, it had its own PID filter, but no descrambling capability. But it was still able to lock on to an E* transponder, allow me to tune to a specific channel, even had some raw channel ID displayed on the screen, just no video nor audio, if the channel was scrambled. If your theory is correct that all the descrambling had been done before the PID filter tuning to those channels, then shouldn't I have been able to watch all those encrypted channels?


Please reread what I said. I said a _legit_ receiver does not attempt to tune a channel unless the channel is authorized. What FTA equipment does is irrelevant to the operation of legit equipment.

The core channel information (names, numbers, authorization info) is transmitted separately from the channel content (audio and video streams). The stream that carries that information on DISH (and DirecTV) satellites is not encrypted. That stream carries information on all (currently) 7518 channels ... including "channels" that do not exist (placeholders) and have no audio and/or video content.

The PIDs carrying audio and video data can be captured without decryption. I've seen some reports where it appears that audio feeds were not encrypted (people saying they could hear the audio for a scrambled program). That would place the decryption of data AFTER the separation of streams from the mux. (All audio in my neighbor's mailbox, all video in my mailbox, without decrypting a single byte.)

I've also seen reports that in the past the files as stored on the hard drive are not encrypted. DISH did add encryption to the external drive files. I'm not sure if the internal drive files are encrypted or not. This file storage encryption is added my the receiver so it is irrelevant to the encryption of the received PID streams.


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## jacmyoung

James Long said:


> Please reread what I said. I said a _legit_ receiver does not attempt to tune a channel unless the channel is authorized.


Are you saying my DTV DVRs are illegit? Because they do tune to channels I am not authorized to receive, including providing me with the programming info, only no video nor audio, just a message asking me to call to activate.


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## James Long

jacmyoung said:


> Are you saying my DTV DVRs are illegit? Because they do tune to channels I am not authorized to receive, including providing me with the programming info, only no video nor audio, just a message asking me to call to activate.


You mentioned FTA receivers in your prior post - which would not be a legit method of receiving DISH or DirecTV subscription services.

Try something. Go to your full screen guide. I'm assuming your receiver has one the video of the current tuned channel in the corner and audio still playing. Find a non-authorized channel in the EPG. Try to select it. Does your receiver tune away from the video on the screen to give you the error? DISH receivers (the ones that matter here) do not. There is no attempt to tune an unauthorized channel.


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## Greg Bimson

jacmyoung said:


> That was not TiVo's position, rather E* expert said during the last trial, as I had explained to Greg, not only the same E expert now said his assertion back then was wrong, but the jury also rejected his such assertion.


But now let's use an argument against that was used elsewhere...

Who said "the jury also rejected his such assertion"? Dr. Rhyne testifed that he changed his position once the jury found EchoStar guilty. I don't think there is a need for an expert if they can always change their position once a jury renders a verdict. I certainly didn't notice any case law that states an "expert" opinion is worthless once a verdict is rendered against the party that hired them.

I also notice that EchoStar never did refute TiVo's position that all five experts which testified at trial stated that PID filtering met the limitation of the parse step within claims 31 and 61. The only assertions EchoStar attempts to make are that one of TiVo's experts, Dr. Storer, stated that PID filtering is parsing but don't confuse it with the parsing in the claim, yet that was the argument against claims 1 and 32, and that because EchoStar was the losing side their "expert" testimony is now null and void. EchoStar also didn't even introduce any other evidence used to show how the "parse" step was met regarding claims 31 and 61.

Even if using EchoStar's claim at face value:

all five experts testifed that PID filtering met the parse step of claims 31 and 61
subtract three experts whose testimony is no good because they lost the case
subtract one expert who had to testify parsing in two different ways against four different claims

and you are left with one expert that testified PID filtering met the parse step of claims 31 and 61, no other evidence was introduced to meet the parse step of claims 31 and 61, and the jury found EchoStar guilty of infringing those claims.

Not bad for an on-alternative argument.


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## jacmyoung

Expert opnions are "worthless" if they are in contrast to the facts or the patent specifications. Jury's findings are "worthless" if they cannot be supported by the facts. Which was why the jury's hardware verdicts were thrown out.

Remember what I said about the "intrinsic" and "extrinsic" evidence? Expert opinions are extrinsic evidence, the patent specification is intrinsic evidence, if in dispute, the intrinsic evidence wins. Don't ask me, ask the CAFC.


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## Greg Bimson

jacmyoung said:


> Remember what I said about the "intrinsic" and "extrinsic" evidence? Expert opinions are extrinsic evidence, the patent specification is intrinsic evidence, if in dispute, the intrinsic evidence wins. Don't ask me, ask the CAFC.


You left out an important distinction: not only is the patent specification "intrinsic", the claim constructions and definitions are as well, and it is those claim constructions and definitions that are the law of the case.

And in order to win this _en banc_ appeal, EchoStar will need to convince a majority of judges that ALL of the information presented at trial is worthless. That's certainly an interesting scenario.


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## jacmyoung

Greg Bimson said:


> And in order to win this _en banc_ appeal, EchoStar will need to convince a majority of judges that ALL of the information presented at trial is worthless. That's certainly an interesting scenario.


Have you read ALL of the information at trial? We hardly even touched 5% of it during the last several days.


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## jacmyoung

Greg Bimson said:


> You left out an important distinction: not only is the patent specification "intrinsic", the claim constructions and definitions are as well, and it is those claim constructions and definitions that are the law of the case.


That does not change the fact the expert opinions are extrinsic evidence. In fact given the most recent PTO and TiVo disclaimers, how much do you want to bet if a new trial is ordered, the claim term "audio and video data" will be further constructed according to the new disclaimer in the reexamination? Just a reminder, the claim term "audio and video data" was never constructed during the last trial because it was not a point of contention, E* knew their old DVRs did parse audio and video start codes by the media switch.


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## HiDefGator

Greg Bimson said:


> And in order to win this _en banc_ appeal, EchoStar will need to convince a majority of judges that ALL of the information presented at trial is worthless. That's certainly an interesting scenario.


they aren't currently trying to cnvince the en banc judges they don't infringe, just that the workaround deserves a new trial. then they can work on convincing 12 new east texans they don't infringe.


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## spear61

HiDefGator said:


> they aren't currently trying to cnvince the en banc judges they don't infringe, just that the workaround deserves a new trial. then they can work on convincing 12 new east texans they don't infringe.


You hit the nail on the head. And, I'd guess that is exactly what will happen with the appeals court likely providing their definition of "parsing" to be used by the district court in his deliberations.


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## Greg Bimson

HiDefGator said:


> they aren't currently trying to cnvince the en banc judges they don't infringe, just that the workaround deserves a new trial. then they can work on convincing 12 new east texans they don't infringe.


Except now you've posed the interesting scenario:

If an evaluation of the workaround requires a new trial, that would mean the CAFC would have to find that either the workaround is more than colorably different (if using the _KSM_ standard) or there should be a new standard created by the CAFC to evaluate workarounds. Meanwhile, TiVo was able to use all of the information presented at trial to prove to Judge Folsom that the changes were merely colorable with respect to the claims.


spear61 said:


> You hit the nail on the head. And, I'd guess that is exactly what will happen with the appeals court likely providing their definition of "parsing" to be used by the district court in his deliberations.


Not possible:

1) the claim terms were defined in the Markman hearings prior to the trial. Upon affirmed appeal, they are not able to be changed.
2) if the CAFC reverses Judge Folsom because they've come up with a new definition of "parsing", TiVo has an excellent chance at SCOTUS review, because of point 1.
3) if the CAFC orders a new trial, they cannot issue a new definition of parsing because a new trial will lead to new Markman hearings which will define "parsing".


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## HiDefGator

I think they will just clarify for Folsom what "more than colorably different" means when it comes to evaluating software changes and send it back for a new trial.


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## scooper

HiDefGator said:


> I think they will just clarify for Folsom what "more than colorably different" means when it comes to evaluating software changes and send it back for a new trial.


That's assuming Tivo will actually decide to prosecute it.


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## jacmyoung

Greg Bimson said:


> 2) if the CAFC reverses Judge Folsom because they've come up with a new definition of "parsing", TiVo has an excellent chance at SCOTUS review, because of point 1.
> 3) if the CAFC orders a new trial, they cannot issue a new definition of parsing because a new trial will lead to new Markman hearings which will define "parsing".


No one is saying the CAFC will issue a new definition of the term "parse" but they can certainly remand for a claim construction of the term "audio and video data" then determine based on this term whether the modified DVRs still infringe or not.

As far as a new trial, as I said if it is ordered E* will likely not go to a jury trial, rather motion for a summary judgment of non-infringement based on the new PTO and TiVo disclaimers, if Judge Folsom again plays hard ball, E* will just appeal to the same CAFC again.


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## Greg Bimson

HiDefGator said:


> I think they will just clarify for Folsom what "more than colorably different" means when it comes to evaluating software changes and send it back for a new trial.


I'm trying to wrap my head around this, honestly...

Using _KSM_, Judge Folsom found that the changes were merely colorably different. Are you saying that the CAFC will no longer use the _KSM_ standard, or are you saying that the CAFC will somehow use the _KSM_ standard to re-interpret the devices as more than colorably different?



jacmyoung said:


> No one is saying the CAFC will issue a new definition of the term "parse" but they can certainly remand for a claim construction of the term "audio and video data" then determine based on this term whether the modified DVRs still infringe or not.


A "claim construction"? The trial finding guilt and the appeals process have been over for years. There is no "claim construction" other than those on the record already. Asking for new claim constructions is changing rules midstream.


jacmyoung said:


> As far as a new trial, as I said if it is ordered E* will likely not go to a jury trial, rather motion for a summary judgment of non-infringement based on the new PTO and TiVo disclaimers, if Judge Folsom again plays hard ball, E* will just appeal to the same CAFC again.


That's why I am continually asking this question:

Many are stating the CAFC will order a new trial. Under what grounds?

Some are stating that the CAFC will say these devices are "more than colorably different" under the KSM standard. Under what grounds exactly would the CAFC find that Judge Folsom abused discretion?

I am having a big issue believing this is overturned so easily without providing any legal basis. Sure, EchoStar wants everyone to believe that the injunction is unclear or that the finding of mere colorable difference was used providing new infringement theories, but everything used to find mere colorable difference was presented at the trial and the injunction is not unclear. It was simply an attempt to confuse the issues.

Meanwhile, I still think the CAFC wants to have a new standard. It would explain why the dissenting judge did not have much case law in his dissenting opinion, but when it came time for the _en banc_ to ask questions he didn't ask any. Judge Rader wanted it placed in front of the panel in order to clarify the four questions and to possibly create a new standard.


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## HiDefGator

As a software engineer I find the changes Dish did to be far more than colorably different. Maybe they still infringe and maybe they don't, that isn't for me to decide. But to call them less than colorably different seems bizarre to me. I think Folsom did a one man infringment trial. Instead he should have looked at what they did and said it's not trivial. I need expert testimony to help me decide if they still infringe or not. And at that point he should have stopped and ordered a new trial. Instead he took the most expedient approach and decide it all himself. At one time I googled the term "more than colorably different" and the example cases that popped up were for software that had the menu items renamed or the menu colors changed. The changes Dish made were not a fraud and they were a significant attempt at avoiding infringement. So I don't think there is a problem with KSM, just how it was applied here.


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## scooper

HiDefGator said:


> As a software engineer I find the changes Dish did to be far more than colorably different. Maybe they still infringe and maybe they don't, that isn't for me to decide. But to call them less than colorably different seems bizarre to me. I think Folsom did a one man infringment trial. Instead he should have looked at what they did and said it's not trivial. I need expert testimony to help me decide if they still infringe or not. And at that point he should have stopped and ordered a new trial. Instead he took the most expedient approach and decide it all himself. At one time I googled the term "more than colorably different" and the example cases that popped up were for software that had the menu items renamed or the menu colors changed. The changes Dish made were not a fraud and they were a significant attempt at avoiding infringement. So I don't think there is a problem with KSM, just how it was applied here.


Bravo - I couldn't say it better. Folsom went too far on his "infringement trial" and THIS is the mistake that Dish is looking to have redressed.


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## Greg Bimson

HiDefGator said:


> ...But to call them less than colorably different seems bizarre to me. I think Folsom did a one man infringment trial. Instead he should have looked at what they did and said it's not trivial. I need expert testimony to help me decide if they still infringe or not. And at that point he should have stopped and ordered a new trial...


Two things...

1) Infringement evaluation is not the first test. Colorable difference evaluation is the first test.

2) Once a colorable difference evaluation is completed and shown as mere colorable difference, an infringement evaluation is then commenced.

I think the problem rests on the fact if EchoStar was able have the 522/625 make toast as well, everyone is thinking that is a "more than colorable difference". Colorable difference rests on evaluation of the accused device against the adjudged device with respect to the infringed claims.

Just adding toaster functionality to a device doesn't make it more than coloraby different to the device found infringing. And neither does changing software so that pieces of the box are now rendered useless UNLESS those pieces are essential to the claims; we end up back at the fact that all five experts testified during trial that the PID filtering met the "parse" step of the claim, which of course wasn't removed from the "new software".


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## scooper

Greg Bimson said:


> Two things...
> 
> 1) Infringement evaluation is not the first test. Colorable difference evaluation is the first test.
> 
> 2) Once a colorable difference evaluation is completed and shown as mere colorable difference, an infringement evaluation is then commenced.
> 
> I think the problem rests on the fact if EchoStar was able have the 522/625 make toast as well, everyone is thinking that is a "more than colorable difference". Colorable difference rests on evaluation of the accused device against the adjudged device with respect to the infringed claims.
> 
> Just adding toaster functionality to a device doesn't make it more than coloraby different to the device found infringing. And neither does changing software so that pieces of the box are now rendered useless UNLESS those pieces are essential to the claims; we end up back at the fact that all five experts testified during trial that the PID filtering met the "parse" step of the claim, which of course wasn't removed from the "new software".


The "expert witlesses" is another thing that should be thrown out.
Furthermore - the PID filter does NOT "parse audio and video data" - so it still fails.


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## Greg Bimson

But the PID filter does "parse audio and video data from broadcast data".


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## jacmyoung

"scooper" said:


> The "expert witlesses" is another thing that should be thrown out.
> Furthermore - the PID filter does NOT "parse audio and video data" - so it still fails.


The reason Greg cannot wrap his head around this concept of a new trial is because according to him there simply cannot be a new trial when there was a trial already

But if he can get pass that mental blockage, he will see that a new trial means, well a new trial, new claim constructions and all, as long as the issue was not adjudicated fully already in the previous trial, or put it in another way, as long as the work around had created "open issues" that warrant a new trial.

Since the claim term "audio and video data" was never construed nor adjudicated last time, of course if there is a new trial it can be one of the issues that requires new claim constructions, among several other things.

If Greg were correct, there could never have been a new trial if a previous trial had gone through it's own full course, which is certainly not true.


----------



## jacmyoung

"Greg Bimson" said:


> But the PID filter does "parse audio and video data from broadcast data".


That is your opinion my friend, E* says no and explained why, TiVo does not dispute the facts provided by E*, only that TiVo said they did not matter. It is up to the judges to decide if E* had raised a legit question about whether the PID actually parses "audio and video data" or not. E* does not have to prove it, as long as E* had sufficiently raised fair ground for doubt that the PID might not parse "audio and video data", a new trial would be necessary to find out for sure.


----------



## Greg Bimson

> 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."





jacmyoung said:


> That is your opinion my friend, E* says no and explained why, TiVo does not dispute the facts provided by E*, only that TiVo said they did not matter.


TiVo doesn't dispute that EchoStar said that PID filtering meets the definition above. EchoStar, due to a changing wind, has recently decided, hey, we need a new definition even though we agreed during trial that we met the limitation on this definition. If you give us enough time, we can explain everything away.

We need a do-over.


----------



## jacmyoung

"Greg Bimson" said:


> But, hey, we need a new definition even though we agreed during trial that we met the limitation on this definition.
> 
> We need a do-over.


That was before the PTO disclaimers were published. And just read your own quote, the term "audio and video data" was NOT construed.

The PTO's current published patent specification defines "audio and video data" to mean * locations of the I frames and an index of such start location info*. TiVo does not dispute this definition.

BTW, the PTO things are admitted as evidence, the only question left for the judges to answer is, whether the above definition is relevant to the determination of the infringement issue with respect to the modified DVRs.

Do you think it is relevant? Before you answer the question, please understand TiVo does not dispute that the modified DVRs no longer parsed I frame start codes.

Again, stop reading the experts, start using your own head and look at the facts above. As I said, facts (intrinsic evidence) trump opinions (extrinsic evidence) regardless whose opinions.


----------



## tivonomo

Greg Bimson said:
 

> TiVo doesn't dispute that EchoStar said that PID filtering meets the definition above. EchoStar, due to a changing wind, has recently decided, hey, we need a new definition even though we agreed during trial that we met the limitation on this definition. If you give us enough time, we can explain everything away.
> 
> We need a do-over.


Greg,

_Please understand_ that your argument makes no sense with most of this group because it doesn't agree with E*'s desparate pleas to the court (a.k.a. briefs).


----------



## Greg Bimson

jacmyoung said:


> That was before the PTO disclaimers were published. And just read your own quote, the term "audio and video data" was NOT construed.


Hmm. Can't rule on the PTO disclaimers as they weren't brought before Judge Folsom. And the phrase "parses audio and video data from said broadcast data" was defined, and even EchoStar agreed that PID filtering met this step limitation.


jacmyoung said:


> The PTO's current published patent specification defines "audio and video data" to mean * locations of the I frames and an index of such start location info*. TiVo does not dispute this definition.


Sure TiVo disputes it.


jacmyoung said:


> BTW, the PTO things are admitted as evidence, the only question left for the judges to answer is, whether the above definition is relevant to the determination of the infringement issue with respect to the modified DVRs.


The judges were not asked to evaluate against this loosely-defined "new PTO definition".


jacmyoung said:


> Do you think it is relevant? Before you answer the question, please understand TiVo does not dispute that the modified DVRs no longer parsed I frame start codes.
> 
> Again, stop reading the experts, start using your own head and look at the facts above. As I said, facts (intrinsic evidence) trump opinions (extrinsic evidence) regardless whose opinions.


Try the court's definition. That is what is being used to evaluate the issues at hand.


----------



## jacmyoung

"Greg Bimson" said:


> TiVo doesn't dispute that EchoStar said that PID filtering meets the definition above. EchoStar, due to a changing wind, has recently decided, hey, we need a new definition even though we agreed during trial that we met the limitation on this definition. If you give us enough time, we can explain everything away.
> 
> We need a do-over.


Exactly, when E* now disputes TiVo' position, as well as it's own position in a way from back then, the court must determine whether such dispute has merit. If you listened to the oral argument, one judge even pointed out E* now disputes such position. The question is whether E*s such dispute has merit. If so the PID issue must be tried in a new trial because the PID itself was never adjudicated to be the infringing item last time. It was the media switch.

And let me say this again, if there is a new trial, the term "audio and video data" will be construed based on the new PTO disclaimer which TiVo does not dispute.

You can of course believe what you want, I can do the same, but at the end of the day, it is fair to say one also must be willing to actually face the facts, including facing those facts that you do not think are relevant, and ask self, who is actually right on this argument as far as the start codes are concerned AT THIS VERY MOMENT? Step out of the box and asnwer a simple question, the answer to this question is of your own, not some experts'. I am sure we are all capable of answering this question.

After that, if you say, so who cares, they all admitted that even though we know now they might be all wrong based on the new facts in front of us, if that is your position, I have no argument with you.


----------



## Greg Bimson

jacmyoung said:


> If so the PID issue must be tried in a new trial because the PID itself was never adjudicated to be the infringing item last time. It was the media switch.


Really? Where's the checkbox on the jury form that asked the jury to define each part of infringement, specifically that the "media switch" was the "infringement"?


----------



## inkahauts

You know, at what point will the costs of this whole trial make it obvious that Echostar should have just licensed the darn thing from tivo in the first place, because it would have cost them less than the costs of this trial?


----------



## MCSuckaDJ

inkahauts said:


> You know, at what point will the costs of this whole trial make it obvious that Echostar should have just licensed the darn thing from tivo in the first place, because it would have cost them less than the costs of this trial?


Assuming $2 per month per sub and a linear proliferation of DVRs from the start of the lawsuit to today, E* would have paid TiVo roughly a billion dollars in licensing fees by now. The point you speak of is an indeterminate point in the future, but it is definitely not now.


----------



## James Long

Greg Bimson said:


> But the PID filter does "parse audio and video data from broadcast data".


There is a filter that does that ... but said filter existed in every receiver DISH has ever used, including non-DVRs and receivers that existed before Tivo.

What differentiates Tivo's patented PID filter from the filter that predates Tivo?


----------



## scooper

MCSuckaDJ said:


> Assuming $2 per month per sub and a linear proliferation of DVRs from the start of the lawsuit to today, E* would have paid TiVo roughly a billion dollars in licensing fees by now. The point you speak of is an indeterminate point in the future, but it is definitely not now.


You have to remember that IF E* starts paying any licensing fees - they will be paying them until this '389 patent expires. Something like 2017 ? (I'm probably wrong on that, but you get the idea...)

either that or they will have to stop selling DVRs.

At this point - E* will keep fighting.


----------



## jacmyoung

"Greg Bimson" said:


> Really? Where's the checkbox on the jury form that asked the jury to define each part of infringement, specifically that the "media switch" was the "infringement"?


Because during the last trial, E* said hey PID it was, TiVo said no, the media switch was my technology, even though PID also parsed, but the media switch was the real thing our patented technology really was.

And TiVo won, E* lost.


----------



## jacmyoung

"MCSuckaDJ" said:


> Assuming $2 per month per sub and a linear proliferation of DVRs from the start of the lawsuit to today, E* would have paid TiVo roughly a billion dollars in licensing fees by now. The point you speak of is an indeterminate point in the future, but it is definitely not now.


Had E* licensed TiVo's patent in the first place, it would have been something similar to the DTV deal, and like DTV E* could have easily ditched TiVo later on.

Even so DTV has paid much more in licensing fees than E* had paid TiVo in damages, so far.


----------



## Greg Bimson

James Long said:


> There is a filter that does that ... but said filter existed in every receiver DISH has ever used, including non-DVRs and receivers that existed before Tivo.
> 
> What differentiates Tivo's patented PID filter from the filter that predates Tivo?


Patents do not require everything within their claims to be free from "prior art". For example, TiVo's patent requires any format of moving picture broadcast. Therefore, it can use the patented MPEG process.


jacmyoung said:


> Because during the last trial, E* said hey PID it was, TiVo said no, the media switch was my technology, even though PID also parsed, but the media switch was the real thing our patented technology really was.


Great piece of fiction!


----------



## spear61

James Long said:


> There is a filter that does that ... but said filter existed in every receiver DISH has ever used, including non-DVRs and receivers that existed before Tivo.
> 
> What differentiates Tivo's patented PID filter from the filter that predates Tivo?


Yes

One of the Appeals judges pointed out that many many electronic devices have PID filters. I took her discourse to mean there is nothing uniique about PID filters and it would be like saying " I have a patent on wheels, therefore all motor car makers must pay me royalties 120 years after cars (with wheels) were in existance.


----------



## jacmyoung

Greg Bimson said:


> Great piece of fiction!


I did not say it, E* said it and TiVo did not dispute it, even Judge Folsom agreed during the hearing that both parties' positions with regard to the PID parsing had "flip flopped." Just because you failed to read, does not make it a fiction.


----------



## jacmyoung

spear61 said:


> Yes
> 
> One of the Appeals judges pointed out that many many electronic devices have PID filters. I took her discourse to mean there is nothing uniique about PID filters and it would be like saying " I have a patent on wheels, therefore all motor car makers must pay me royalties 120 years after cars (with wheels) were in existance.


Of course TiVo did not say PID was the only thing that proved infrignement, there are many other things, combined to prove infringement.

The problem is E* during the contempt proceeding was overly confident, they only raised the single issue (other than the automatic flow control) of the PID *did not parse "as described by the TiVo patent."*

TiVo was very good at pointing out what the E* expert admitted back then. Only after Judge Folsom's ruling, did E* begin to touch on other terms, such as the PID does not parse "audio and vidoe data,", does not "temporarily store said audio and vidoe data," there is no longer a "source object" to "extract" said "audio and video data..." But it was a little too late.

Now I said from back then it was difficult to imaging how the highly paid E* attorneys could have missed so many things. But then again it is possible that they had determined they were going to lose in front of Judge Folsom no matter what, so they saved some cards for the CAFC, that is the only explanation I can come up with in order to justify their pay grade

It was a very risky move if true, as evident the CAFC majority on the merits panel also ruled in TiVo's favor, if not for Judge Rader, things could have been very different. I think this speculation can be true only if we take into the consideration of Charlie's personality. Anyone else would not have risked so much, to hold his cards at Judge Folsom, to only show them at the CAFC.


----------



## Curtis52

11-23-10 F3Q2011 conference call transcript:

"Tony Wible - Janney

And there's been a lot of people opining about their views on litigation (inaudible). Can you guys put in your view as to how long you think the various scenarios could play out? In other words, if on one extreme there's a remand and a new trial, how long that would go? And middle ground scenario in the case if there's a remand and a quick summary judgment. And then obviously the timeline should you win, how long for the injunction or a timing on Supreme Court appeal by Dish.

Tom Rogers

Well Tony, I've seen a lot of scenarios commented on out there. I think the first point is that we have a high degree of confidence in the Court of Appeals and this (inaudible) proceeding, bringing this to a conclusion. The decision from the Court of Appeals should be the final word on a patent case and I think that's where our head is and that's where our anticipation lies.

Obviously people have commented on the possibility of other scenarios, you point to summary judgment on a remand, and summary judgment is a quick proceeding. If there was a new trial, look we're not starting from scratch, discovery, and other things have largely taken place. It would be much accelerated from something that was a start from scratch proceeding.

If we win in enforcement of an injunction, I think this District Court Judge here has seen this case hang around long enough. And we would anticipate that he would move with great dispatch. But all of those are scenarios with the exception and the last thing that I mentioned, our view is that the Court of Appeals is going to give us a victory here. And we are going to be able to implement that victory with speed."

transcript


----------



## jacmyoung

Curtis52 said:


> 11-23-10 F3Q2011 conference call transcript:
> 
> "Tony Wible - Janney
> 
> And there's been a lot of people opining about their views on litigation (inaudible). Can you guys put in your view as to how long you think the various scenarios could play out? In other words, if on one extreme there's a remand and a new trial, how long that would go? And middle ground scenario in the case if there's a remand and a quick summary judgment. And then obviously the timeline should you win, how long for the injunction or a timing on Supreme Court appeal by Dish.
> 
> Tom Rogers
> 
> Well Tony, I've seen a lot of scenarios commented on out there. I think the first point is that we have a high degree of confidence in the Court of Appeals and this (inaudible) proceeding, bringing this to a conclusion. The decision from the Court of Appeals should be the final word on a patent case and I think that's where our head is and that's where our anticipation lies.
> 
> Obviously people have commented on the possibility of other scenarios, you point to summary judgment on a remand, and summary judgment is a quick proceeding. If there was a new trial, look we're not starting from scratch, discovery, and other things have largely taken place. It would be much accelerated from something that was a start from scratch proceeding.
> 
> If we win in enforcement of an injunction, I think this District Court Judge here has seen this case hang around long enough. And we would anticipate that he would move with great dispatch. But all of those are scenarios with the exception and the last thing that I mentioned, our view is that the Court of Appeals is going to give us a victory here. And we are going to be able to implement that victory with speed."
> 
> transcript


Good info Curtis and thanks. Reading the analyst's Q for Rogers, it was almost as if he was reading the exact scenarios laid out by me Of course Rogers was correct, there is no certainty at this point. TiVo can say what TiVo believes, E* can say what E* believes, at the end of the day an investor must exercise his own judgment. Analyst's views are important because they are the experts in the stock market. Unfortunately they can be wrong very often. But at least this analyst is considering the different scenarios, I think this is a responsible way to go about it.

BTW I want to comment on what Rogers said below:



> Additionally, it is worth pointing out that the United States PTO recently affirmed the validity without amendment or narrowing of all claims of our time or pattern at issue for the third time, making our pattern even stronger. We believe this action will benefit us in all of our ongoing litigations involving the patterns.


The definition of a "stronger patent" is that it more "narrowly" defines the innovation in order to differenciate it from all the prior art. A stronger (narrower) patent is more difficult to be infringed on. Therefore by definition it will make it more difficult for TiVo to prove infringement against ATT/MSFT/Verizon, period. Yes it will make it more difficult for ATT/MSFT/Verizon to invalidate the patent, but also make the job easier for them to prove non-infringement. For one thing, the disclaimers in the new PTO prosecution history will certainly be used by ATT/MSFT/Verizon in their own claim constructions, if it gets that far.


----------



## Curtis52

"Shares of Echostar (SATS) are down 33 cents, or 1.6%, at $20.34, having briefly plunged from a high of $21, as Bloomberg reports a judge has found the company destroyed evidence in the suit brought by TiVo (TIVO).

TiVo shares are down 15 cents, or 1.6%, at $8.66, after having spiked briefly at the open.

More on this as it develops."

Barrons


----------



## dgordo

Curtis52 said:


> "Shares of Echostar (SATS) are down 33 cents, or 1.6%, at $20.34, having briefly plunged from a high of $21, as Bloomberg reports a judge has found the company destroyed evidence in the suit brought by TiVo (TIVO).
> 
> TiVo shares are down 15 cents, or 1.6%, at $8.66, after having spiked briefly at the open.
> 
> More on this as it develops."
> 
> Barrons


Update: Although TiVo shares popped on first word of this item, it now appears the destruction of evidence has to do with a more prosaic matter, Echostar's $2.5 billion contract dispute with Voom HD Holdings LLC, a unit of Cablevision (CVC), according to Bloomberg's Bob Van Voris.


----------



## Curtis52

Thanks dgordo. Interesting case.

"Voom argued that the TiVo case shows EchoStar's "general disregard for the judicial process."

Bloomberg


----------



## jacmyoung

Curtis52 said:


> Thanks dgordo. Interesting case.
> 
> "Voom argued that the TiVo case shows EchoStar's "general disregard for the judicial process."
> 
> Bloomberg


Or you can say Charlie's risk taking behavior.

Interesting though, Voom is using the TiVo case to argue on their own case, if that is really what they are saying to the judge in the Voom case, it can backfire. Hopefully the Voom attorneys know not to do that and it is just a Voom PR department doing this.

BTW I thought Voom is history. Still recall the good old Voom days when I was with DISH


----------



## RasputinAXP

I can't read "the Broccoli case" and not giggle a bit in my head.

"Your honor, if it please the court, I AM TASTY EVEN WITHOUT MELTED CHEESE. I rest my case."


----------



## Greg Bimson

Tom Rogers said:


> Additionally, it is worth pointing out that the United States PTO recently affirmed the validity without amendment or narrowing of all claims of our time or pattern at issue for the third time, making our pattern even stronger. We believe this action will benefit us in all of our ongoing litigations involving the patterns.





jacmyoung said:


> The definition of a "stronger patent" is that it more "narrowly" defines the innovation in order to differenciate it from all the prior art. A stronger (narrower) patent is more difficult to be infringed on.


But that is not the definition used by TiVo CEO Tom Rogers. As a matter of fact, Rogers went out of his way to state the patent was stronger because it has been thrice reviewed and remained intact "without amendment or narrowing of all claims".


----------



## jacmyoung

Greg Bimson said:


> But that is not the definition used by TiVo CEO Tom Rogers. As a matter of fact, Rogers went out of his way to state the patent was stronger because it has been thrice reviewed and remained intact "without amendment or narrowing of all claims".


What he will never admit is the disclaimers asserted by E* which TiVo does not dispute.

The wording of the claims do not change, no doubt it is a good thing for TiVo, else as I explained before TiVo would not even be able to enforce its patent for any activities prior to the amendment. So kudos to TiVo for that.

But any new actions will have to take into consideration of such new disclaimers during claim constructions. The effect of such disclaimers is to narrow the claims, even though the claim terms do not change.


----------



## Curtis0620

$2.5 Billion to VOOM. There goes the TiVo buyout money.


----------



## Curtis0620

jacmyoung said:


> Yup, another $1B to TiVo, there goes the company


They will just raise the receiver fees again to make up for it.


----------



## jacmyoung

Curtis0620 said:


> $2.5 Billion to VOOM. There goes the TiVo buyout money.





Curtis0620 said:


> They will just raise the receiver fees again to make up for it.


$2.5B there goes the company, TiVo'd better act quick, if Voom gets the money first, TiVo is toast

Is DISH liable in the Voom case? I thought it was only E*.


----------



## Greg Bimson

jacmyoung said:


> What he will never admit is the disclaimers asserted by E* which TiVo does not dispute.


Remind me where EchoStar and Dish Network have filed some motion regarding these "disclaimers", and if TiVo has responded that they don't dispute it.

TiVo's disputed plenty, even at the PTO.


----------



## James Long

jacmyoung said:


> $2.5B there goes the company, TiVo'd better act quick, if Voom gets the money first, TiVo is toast
> 
> Is DISH liable in the Voom case? I thought it was only E*.


Both companies were one when the case began.

BTW: Before anyone gets too excited (too late), VOOM has not been awarded the $2.5 billion.
Voom Case at NY Courts


----------



## peak_reception

Tom Rogers:


> Well Tony, I've seen a lot of scenarios commented on out there. I think the first point is that we have a high degree of confidence in the Court of Appeals and this (inaudible) proceeding, bringing this to a conclusion. The decision from the Court of Appeals should be the final word on a patent case and I think that's where our head is and that's where our anticipation lies.


Some things are best left "inaudible." :grin:


----------



## jacmyoung

"Greg Bimson" said:


> Remind me where EchoStar and Dish Network have filed some motion regarding these "disclaimers", and if TiVo has responded that they don't dispute it.
> 
> TiVo's disputed plenty, even at the PTO.


This info was provided by tivonomo. There was a news report a week before the oral argument, E* filed a letter to the en banc panel, citing disclaimers in the newly published PTO reexam documents, asked the CAFC to lift the injunction and order a new trial on that basis. TiVo responded by saying E* was just trying to delay and the PTO reexam was irrelevant to the en banc review.

He and I discussed this issue extensively at the time, I am surprised you do not recall.


----------



## Greg Bimson

A letter to the court. No motion to move the court to consider. I got it.

I just sent a letter to the court myself. It must therefore be undisputed that the EchoStar legal team is a bunch of buffoons. After all, EchoStar never counter-argued anything!


----------



## jacmyoung

"Greg Bimson" said:


> A letter to the court. No motion to move the court to consider. I got it.
> 
> I just sent a letter to the court myself. It must therefore be undisputed that the EchoStar legal team is a bunch of buffoons. After all, EchoStar never counter-argued anything!


What are you trying to say? You know better than the attorneys working for E* and TiVo? E*'s filing and TiVo's response are perfectly legit legal filings in front of the en banc panel as part of the records which the en banc ruling will be based on.

If TiVo did not dispute the disclaimer claim, then the only decision for the en banc panel to make with respect to this particular request of E* is whether the disclaimers are relevant to the issue of infringement by the modified DVRs, and ultimately the contempt issue.

It was not a motion, rather a small piece of exchange between the two parties to influence the en banc panel when it makes the decision.


----------



## jacmyoung

"Curtis52" said:


> "Shares of Echostar (SATS) are down 33 cents, or 1.6%, at $20.34, having briefly plunged from a high of $21, as Bloomberg reports a judge has found the company destroyed evidence in the suit brought by TiVo (TIVO).
> 
> TiVo shares are down 15 cents, or 1.6%, at $8.66, after having spiked briefly at the open.
> 
> More on this as it develops."
> 
> Barrons


Wow! Just had a chance to look at TiVo's daily chart, after this misleading report, there was some large volume on the very brief up swing of it's stock, it then tanked with low volume after the clarification on the new update. Someones had unloaded some large holdings on that initial misleading news report.

Oh BTW this is not a news news, the Voom ruling and the judge's comments happened many days ago, there was ample time and a no brainer, and no excuse to have such a misleading news report. This is exactly why I don't play against the big guys anymore.


----------



## Greg Bimson

jacmyoung said:


> What are you trying to say? You know better than the attorneys working for E* and TiVo? E*'s filing and TiVo's response are perfectly legit legal filings in front of the en banc panel as part of the records which the en banc ruling will be based on.


No, I just posed a scenario...


jacmyoung said:


> If TiVo did not dispute the disclaimer claim, then the only decision for the en banc panel to make with respect to this particular request of E* is whether the disclaimers are relevant to the issue of infringement by the modified DVRs, and ultimately the contempt issue.


Precisely. And TiVo's stance is that they aren't relevant to this issue, specifically because none of this was ruled upon by Judge Folsom. The _en banc_ review is only concerned about the methods in which Judge Folsom found contempt, not the introduction of so-called evidence that was not available to Judge Folsom at the time. And TiVo certainly hasn't "disputed" anything, other than now is not the time to "dispute" it. It needs to be fleshed out at the district court level.


jacmyoung said:


> It was not a motion, rather a small piece of exchange between the two parties to influence the en banc panel when it makes the decision.


Correct. However, the _en banc_ will not bother reviewing this "disclaimer", as it was not ruled upon nor argued at the district court level.


----------



## jacmyoung

Greg Bimson said:


> No, I just posed a scenario...Precisely. And TiVo's stance is that they aren't relevant to this issue, specifically because none of this was ruled upon by Judge Folsom. The _en banc_ review is only concerned about the methods in which Judge Folsom found contempt, not the introduction of so-called evidence that was not available to Judge Folsom at the time. And TiVo certainly hasn't "disputed" anything, other than now is not the time to "dispute" it. It needs to be fleshed out at the district court level.Correct. However, the _en banc_ will not bother reviewing this "disclaimer", as it was not ruled upon nor argued at the district court level.


Judge Folsom never even mentioned a word of the "audio and video data" in his final judgment, did you read? Yet this term was the focal point of the oral argument. So please think before you make a claim.


----------



## Curtis52

Pretty funny:

"But this is a worrisome list of excesses, and should certainly raise eyebrows in the TiVo case.

Of a piece with this, in addition to the problem of EchoStar's overall strategy of delay, avoidance and misappropriation in the TiVo case, is also EchoStar's fantastic claim that upholding the lower court's contempt proceeding would inflict serious hardship on the firm, causing it to lose a substantial fraction of its present and future customer base (to the tune of $90 million per month). Unfortunately, this customer base was built, indisputably (that is, undisputed even by EchoStar which does not challenge the underlying infringement finding), on the back of TiVo's misappropriated technology. *It is like the child who murders her parents and then throws herself on the mercy of the court as an orphan.* It seems absurd to listen to EchoStar claim hardship from the prospect of losing business it never earned in the first place."

Forbes blog


----------



## jacmyoung

"Curtis52" said:


> Pretty funny:
> 
> "But this is a worrisome list of excesses, and should certainly raise eyebrows in the TiVo case.
> 
> Of a piece with this, in addition to the problem of EchoStar's overall strategy of delay, avoidance and misappropriation in the TiVo case, is also EchoStar's fantastic claim that upholding the lower court's contempt proceeding would inflict serious hardship on the firm, causing it to lose a substantial fraction of its present and future customer base (to the tune of $90 million per month). Unfortunately, this customer base was built, indisputably (that is, undisputed even by EchoStar which does not challenge the underlying infringement finding), on the back of TiVo's misappropriated technology. It is like the child who murders her parents and then throws herself on the mercy of the court as an orphan. It seems absurd to listen to EchoStar claim hardship from the prospect of losing business it never earned in the first place."
> 
> Forbes blog


Happy Thanksgiving Curtis!

What did Forbes mean when it said E* did not even challenge the underlying infringement finding? Is this a Holliday Prank?


----------



## phrelin

TiVo appears to be trying to get beyond discussing its lawsuits, but the reality is that without the lawsuits there is still nothing concrete to support its short-term viability. These reports show why Charlie's "draw things out" strategy tends to work against TiVo's expanding lawsuit universe:

From Digital Trends:


> It's no secret that TiVo is struggling, but after reporting record losses this third quarter, many are starting to question how exactly the DVR company plans to turn itself around.
> 
> TiVo's spiraling losses continue, as the DVR service reported an 11 percent revenue fall this quarter. This equates to a net loss of $20.6 million, over three times the company's loss last year. TiVo CEO Tom Rogers claims a significant amount has been eaten up due to its various legal battles.


From the SF Chronicle and Business Insider article headlined No End In Sight For TiVo Losses:


> Competition from cable providers and online sources like Hulu continues to hurt: the company lost 112,000 subscribers during the quarter, and nearly 500,000 since last year, and now has a total of 2.3 million. Churn rates rose slightly to 2% per month, up from 1.7% a year ago.
> 
> The company expects technology-provider deals with European providers, like Virgin Media in the UK and Canal in Scandinavia, will eventually help it by giving it access to 7 million new customers. A forthcoming iPad app, which will let users search, browse, and discover content from their iPad without interrupting what they're watching on TV, could attract some subscribers TiVo is also experimenting with pricing for its own services, with lower up-front prices and higher subscription rates. That's led to higher subscription rates and revenue-per-subscriber, but creates a short-term hit on revenue.


From the Wall Street Journal:


> Meanwhile, a federal appeals court is hearing a high-stakes patent dispute between TiVo and rivals Dish Network Corp. (DISH) and EchoStar Corp. (SATS) over DVRs. In March, a three-judge panel of the court sided with TiVo in a 2-to-1 ruling, but in May, the appeals court withdrew its ruling for TiVo. A win for TiVo could help the company in other related litigation.
> 
> TiVo on Tuesday said it expects a decision from the court in the "next several months," and said it remains confident.
> 
> Earlier Tuesday, investment firm Kaufman Bros. said it was maintaining its hold investment rating on TiVo's shares, saying right now, investment lies entirely on the litigation outcome. The firm added that recently, shares have performed poorly because strident questioning from a few of the judges on the panel was perceived as negative for TiVo.


Then there is this analysis:


> TiVo Inc. (NASDAQ: TIVO) is one of those companies that has many loyal subscribers and it almost fits into being a cult stock. The shares are lower after earnings and guidance today, but TiVo's real flaw is something that many of us remember from a Seinfeld episode&#8230; Shrinkage! Not all is bad, but core metrics need real improvements.
> 
> ...The good news is that the customer defections are slowing.... The bad news is that it still is on par with the same rate of decline as you saw in the statistics on smokers back in the 1990′s.


The problem for TiVo is that as a whole subscription TV (cable, telcom, and satellite) is losing customers as the alternative options are growing. TiVo has no exclusive claims on internet TV.

In the meantime, the number of "listed" Echostar/Dish active DVR's also is shrinking. So the Dish Network lawsuit represents a possible one-time significant revenue shot and then rapidly dwindling license fees.


----------



## tivonomo

jacmyoung said:


> Judge Folsom never even mentioned a word of the "audio and video data" in his final judgment, did you read? Yet this term was the focal point of the oral argument. So please think before you make a claim.


"The focal point" of the oral argument? Really?

I must have listened to a different oral argument than you did.


----------



## jacmyoung

"tivonomo" said:


> "The focal point" of the oral argument? Really?
> 
> I must have listened to a different oral argument than you did.


Rarely have we ever listened to or read the same things


----------



## Curtis52

Interesting article:

"[T]he trial court's injunction-enforcement proceeding doesn't even come close to violating some Seventh Amendment right to a full trial because there is no such right. EchoStar's recent reply brief fully concedes that, even if a new case were brought, the proceedings in it could be at least as abbreviated as they were in the district court's injunction-enforcement proceeding. EchoStar agrees in that brief that the court could have entered a preliminary injunction, without requiring TiVo to post a bond, and granted summary judgment, enhanced damages and attorney fees, as well as a permanent injunction. So then there's nothing but a distinction without a difference between the proceedings the district court did use and those that even EchoStar says would be A-OK.

law.com


----------



## jacmyoung

Curtis52 said:


> Interesting article:
> 
> "[T]he trial court's injunction-enforcement proceeding doesn't even come close to violating some Seventh Amendment right to a full trial because there is no such right. EchoStar's recent reply brief fully concedes that, even if a new case were brought, the proceedings in it could be at least as abbreviated as they were in the district court's injunction-enforcement proceeding. EchoStar agrees in that brief that the court could have entered a preliminary injunction, without requiring TiVo to post a bond, and granted summary judgment, enhanced damages and attorney fees, as well as a permanent injunction. So then there's nothing but a distinction without a difference between the proceedings the district court did use and those that even EchoStar says would be A-OK.
> 
> law.com


It then begs the question, why do it in another summary judgment if it is going to be just as swift and done by the same district judge?

Because it would be a judgment in reversal, ordered by the CAFC, only then E*'s argument would have made some logical sense.

The distinction is, one judgment was against E*, the next judgment E* asks for will be against TiVo instead. At least this is what E* is trying to do.


----------



## jacmyoung

I just noticed lately "the Villagers" had run out of things good to say about TiVo now they are all on this vast liberal conspiracy of buying off the CAFC judges. What a bunch of losers

Just a recap, most sitting CAFC judges were nominated by President Bush, jr. or sr., and Mr. Waxman, the lead TiVo attorney, was nominated to an official post by President Clinton, he rose to fame making the oral argument to the Supreme Court in Boumediene v. Bush which upheld habeas corpus rights for detainees at Guantanamo Bay. Good for him, but liberal conspiracy?


----------



## Jhon69

jacmyoung said:


> Happy Thanksgiving Curtis!
> 
> What did Forbes mean when it said E* did not even challenge the underlying infringement finding? Is this a Holliday Prank?


Or someone saw something that could be contested because Dish Network now has their own DVR patent?.


----------



## jacmyoung

Now here is something interesting about the PTO site. On 12/1, the PTO dismissed TiVo's petition to include a bunch of patent related publications in the current reexamination proceeding. Doing so would have effectively delayed the publication of the reexamination certification.

The PTO dismissed the TiVo petition because TiVo requested/petitioned after the PTO had already issued a decision for publication of the termination certification, and made no effort to explain why the proceeding should be delayed to accommodate the new information TiVo wanted to add to the proceeding.

The question then is, why in the world would TiVo, after having its claims affirmed, want to delay the publication of the recertification? I spoke several times about how the court may begin to consider the "disclaimers" in the PTO patent prosecution history, only after the PTO certifies them and makes into publication.

Hmmm...


----------



## dfd

jacmyoung said:


> Now here is something interesting about the PTO site. On 12/1, the PTO dismissed TiVo's petition to include a bunch of patent related publications in the current reexamination proceeding. Doing so would have effectively delayed the publication of the reexamination certification.
> 
> The PTO dismissed the TiVo petition because TiVo requested/petitioned after the PTO had already issued a decision for publication of the termination certification, and made no effort to explain why the proceeding should be delayed to accommodate the new information TiVo wanted to add to the proceeding.
> 
> The question then is, why in the world would TiVo, after having its claims affirmed, want to delay the publication of the recertification? I spoke several times about how the court may begin to consider the "disclaimers" in the PTO patent prosecution history, only after the PTO certifies them and makes into publication.
> 
> Hmmm...


Are you suggesting that the en banc panel could introduce evidence itself without either party getting a chance to question it?


----------



## jacmyoung

dfd said:


> Are you suggesting that the en banc panel could introduce evidence itself without either party getting a chance to question it?


What I am suggesting is TiVo might have been preparing for a remand and a new action, in such scenario TiVo wanted to at least try to stop the publication of the recertification so that the "disclaimers" may not be introduced in that new action as evidence in support of E*'s contention that their modified DVRs no longer infringed.

The en banc panel had already received E*'s filing regarding what E* contended as the new "disclaimers" in the PTO reexamination. TiVo had also responded to such filing, not disputing the existence of the "disclaimers" only that the PTO proceeding was irrelevant to the en banc review. If the reexamination is not final and not published by the PTO, the court might not be able to rely on such evidence. In this case it was TiVo that tried to delay the publication, and the PTO denied such TiVo's petition, argued that the publication must be done as scheduled, in accordance with the "special dispatch" requirement under the law.

The question you need to ask is not what I am trying to suggest, rather why TiVo wanted to delay the publication of the recertification, which TiVo bragged about why it would make the TiVo patent stronger.


----------



## dgordo

jacmyoung said:


> It then begs the question, why do it in another summary judgment if it is going to be just as swift and done by the same district judge?
> 
> Because it would be a judgment in reversal, ordered by the CAFC, only then E*'s argument would have made some logical sense.
> 
> The distinction is, one judgment was against E*, the next judgment E* asks for will be against TiVo instead. At least this is what E* is trying to do.


Its all hypothetical, but chances that Folsom grants a summary motion in favor of Dish, less than zero.


----------



## scooper

Which means it will probably be back at the CAFC again....


----------



## HiDefGator

scooper said:


> Which means it will probably be back at the CAFC again....


dang it. now you ruined the ending for me.


----------



## jacmyoung

dgordo said:


> Its all hypothetical, but chances that Folsom grants a summary motion in favor of Dish, less than zero.


I wouldn't bet on it if I were you, and that is not because "less than zero" is not possible


----------



## dgordo

jacmyoung said:


> I wouldn't bet on it if I were you, and that is not because "less than zero" is not possible


I always thought a negative number was less than zero.


----------



## jacmyoung

dgordo said:


> I always thought a negative number was less than zero.


Probability (or as you said chances) cannot be less than zero. So let's assume you meant zero chance.

I can forgive you for not being good at statistics, yet not forgive you for making a 100% prediction as a lawyer, even though you were clever enough to call it hypothetical. Even in a hypothetical scenario, a good lawyer does not make 100% prediction in front of his client. I am no lawyer, but had been a client before, no lawyer had ever made a 100% prediction to me. I certainly will not hire a lawyer who likes to make such prediction


----------



## dgordo

jacmyoung said:


> Probability (or as you said chances) cannot be less than zero. So let's assume you meant zero chance.
> 
> I can forgive you for not being good at statistics, yet not forgive you for making a 100% prediction as a lawyer, even though you were clever enough to call it hypothetical. Even in a hypothetical scenario, a good lawyer does not make 100% prediction in front of his client. I am no lawyer, but had been a client before, no lawyer had ever made a 100% prediction to me. I certainly will not hire a lawyer who likes to make such prediction


1. Although I mostly slept through my stats class, I know that Paul Dirac and Eugene Wigner would disagree.
2. How would you know what a good lawyer would say? i have heard many good lawyers make absolute predictions and they were correct.
3. Neither party in this case is my client.


----------



## peak_reception

Only about 4 - 5 more months to go to the next ruling. :sure: 

What was it that Judge Folsom said about cases like these? That they never end, something like that.


----------



## jacmyoung

On 12/3 the CAFC issued another order compelling the E. TX court to transfer a patent case. How many of such orders do we need to see?



> Applying Fifth Circuit law in cases arising from dis-trict courts in that circuit, this court has held that man-damus may be used *to correct a patently erroneous denial of transfer*.


----------



## James Long

jacmyoung said:


> On 12/3 the CAFC issued another order compelling the E. TX court to transfer a patent case. How many of such orders do we need to see?
> 
> 
> 
> Applying Fifth Circuit law in cases arising from dis-trict courts in that circuit, this court has held that man-damus may be used *to correct a patently erroneous denial of transfer*.
Click to expand...

I'm sure DISH would like to see one more ... getting their case out of East Texas. 

BTW: Who owns the patent on the 'patently erroneous denial of transfer'? Judge Folsom?
If another judge erroneously denies a transfer do they pay him royalties?
Or does he have to take them to court to collect the royalties?


----------



## jacmyoung

James Long said:


> I'm sure DISH would like to see one more ... getting their case out of East Texas.
> 
> BTW: Who owns the patent on the 'patently erroneous denial of transfer'? Judge Folsom?
> If another judge erroneously denies a transfer do they pay him royalties?
> Or does he have to take them to court to collect the royalties?


Judge Folsom did have one from early on, but lately the orders were mostly against the other judges, Judge Ward if I recall correctly got several such orders.

If you also recall Judge Ward initially was the judge on the E* v. TiVo case that was transferred from the DE court, and possibly on the TiVo v. ATT/MSFT and the verizon cases too, but he later transferred all of them to Judge Folsom.

Unfortunately E* will have no luck trying to transfer the TiVo case out of Judge Folsom's courtroom because the case has been with Judge Folsom for too long, E*'s hope is to go through Judge Folsom then appeal to the CAFC.

It is already a common practice when companies are sued for patent infringement in the E. TX court, the first thing they will try is to get the case transferred out of that court, and they now have the CAFC's orders as incentive to try it.

I will comment on the follwing as well:



peak_reception said:


> Only about 4 - 5 more months to go to the next ruling. :sure:
> 
> What was it that Judge Folsom said about cases like these? That they never end, something like that.


I do not disagree with peak_reception's post at all. But I will not be surprised if the CAFC makes a ruling sooner rather than later, they might even do so in a way that could practically put an end to this Judge Folsom's long lasting case. Not saying this is likely, only that people should not be surprised if this happens.


----------



## HobbyTalk

James Long said:


> I'm sure DISH would like to see one more ... getting their case out of East Texas.
> 
> BTW: Who owns the patent on the 'patently erroneous denial of transfer'? Judge Folsom?
> If another judge erroneously denies a transfer do they pay him royalties?
> Or does he have to take them to court to collect the royalties?


I think he has a monopoly on this. Monopolies are good


----------



## jacmyoung

"HobbyTalk" said:


> I think he has a monopoly on this. Monopolies are good


Judge Folsom being the chief judge of that district court probably had some to do with the culture, I even commented in the past his court did great services to it's local community, I had hoped my local officials had similar balls.

Buy there is downside to everything, it is clear most legit companies now want to stay as far away from his district as possible for obvious reasons, if the CAFC keeps moving cases out of the district, it can have some real impact to the local economy, which basically relies on patent trolls (again I emphasize TiVo is not one) to bring traffic and revenue.


----------



## tivonomo

jacmyoung said:


> Buy there is downside to everything, it is clear most legit companies now want to stay as far away from his district as possible for obvious reasons, if the CAFC keeps moving cases out of the district, it can have some real impact to the local economy, which basically relies on patent trolls (again I emphasize TiVo is not one) to bring traffic and revenue.


Do you always have to make stuff up??

For starters, the economy in EDTX is one of the strongest in the US. Also, TX has had the most jobs created of any state despite getting a disproportionately lower amount of the stimulus bill.


----------



## jacmyoung

"tivonomo" said:


> Do you always have to make stuff up??
> 
> For starters, the economy in EDTX is one of the strongest in the US. Also, TX has had the most jobs created of any state despite getting a disproportionately lower amount of the stimulus bill.


It sure took some time for you to come up with a response, yet still totally off the base

I never said TX economy was one of the bad ones, in fact several of my good friends had moved from CA to TX, and try to get me to move too. With the way CA is going, I might. Did you not read what I said I wished my local officials had the same kind of balls?

The issue here is EDTX having been so good in attracting all the patent cases and bringing in traffic and revenue this way in the past, is now frequently being ordered by the CAFC to move those cases out, before they get on the way. That is the point here, until you know how to put things in their proper context after reading them, you will never have a clue.


----------



## jacmyoung

TiVo is preparing for a final conclusion of this litigation:

http://biz.yahoo.com/e/101217/tivo8-k.html



> The Company is currently engaged in litigation with EchoStar Communications Corporation and the Amendment extends the expiration date of the Rights Agreement from January 9, 2011 to the close of business on the date that is six months after the date that a final, non-appealable order or judgment is entered in connection with such litigation fully resolving all outstanding material issues and any judgment(s) that may be executed thereon.


Speculation time. First of all, TiVo does not anticipate any settlement with E*. Secondly, any lawyer correct me if I am wrong, to have *a final, non-appealable order or judgment* in this case requires the en banc either fully affirm Judge Folsom's existing order and judgment without any reversal at all, and E*'s appeal would be rejected by the Supreme Court.

Or if there is any partial or full reversal or vacating of the order and judgment, Judge Folsom would be asked to follow the en banc order to issue an amended order or judgment in a summary fashion, only then the timeline can be meaningful for the above language. In this case however, TiVo is preparing for E*'s argument to prevail, because this is exactly what E* is asking the en banc panel to do, vacating the injunctive order, resolve the infringement issues in a summary proceeding ASAP.

There can be other in-between court resolutions, however seems to me the above language is parepared for a total win, or a total loss, not something in between.

Since TiVo themselves had conceded recently that there will likely be some reversal at least if not all, then it is reasonable to speculate that TiVo is preparing for a loss. Of course preparing for a loss does not mean a loss is certain, but TiVo is clearly preparing for such possibility.

As I said before, throughout this litigation, E* had always prepared its investors for the worst, now TiVo is also doing it. IMHO, it should have always been that way, prepare for the worst, but hope, or fight for the best.


----------



## harsh

jacmyoung said:


> TiVo is preparing for a final conclusion of this litigation:
> 
> http://biz.yahoo.com/e/101217/tivo8-k.html


I don't see your conclusion at all. TiVo has gone from "date certain" timing to one that depends on the final resolution of the Echostar case.

I submit that this is an admission of "no end in sight" from TiVo.


----------



## jacmyoung

harsh said:


> I don't see your conclusion at all. TiVo has gone from "date certain" timing to one that depends on the final resolution of the Echostar case.
> 
> I submit that this is an admission of "no end in sight" from TiVo.


If so I think you missed the point of this filing, it is about the ending of TiVo's poison pill, which TiVo had never done before, this is the very first time.


----------



## harsh

jacmyoung said:


> If so I think you missed the point of this filing, it is about the ending of TiVo's poison pill, which TiVo had never done before, this is the very first time.


And the other four amendments weren't?


----------



## jacmyoung

harsh said:


> And the other four amendments weren't?


Someone maybe able to dig them out, I recall they all extended the prior agreements, maybe with some modification or another. One thing I know is, none of them mentioned this TiVo v. E* case. This latest one not only mentions this case, but is governed by the conclusion of this case.

If your interpretation of this one is TiVo now anticipates this case to drag on for a long time, which means TiVo did not have such anticipation before, I can't say it is an unreasonable interpretation, I just don't agree with it.


----------



## Curtis52

The danger of a takeover by Dish wil be over after the ruling and TiVo has most of Dish's money. The poison pill will have outlived it usefulness. Thus the judgment date tie-in.


----------



## jacmyoung

Curtis52 said:


> The danger of a takeover by Dish wil be over after the ruling and TiVo has most of Dish's money. The poison pill will have outlived it usefulness. Thus the judgment date tie-in.


We know for a fact TiVo wanted to settle but Charlie resisted. To somehow believe then instead Charlie wanted to take TiVo over to me has always been TiVo supporters' way of justifying their positive outlook, a self fulfilling wish.

Maybe TiVo will prevail, just don't make yourself believe that TiVo really saw the danger of an E* takeover. If TiVo wins, the poison pill will be useful to prevent any less than ideal takeover offer by any buyer, but if TiVo loses, the poision pill will be useless.

So why is it that TiVo is preparing for the poison pill to end at the conclusion of this litigation? Again I am not saying this is a sign that TiVo sees itself losing, rather a clear sign they are preparing for the possibility of losing.


----------



## harsh

jacmyoung said:


> This latest one not only mentions this case, but is governed by the conclusion of this case.


It isn't "governed by" the result of the litigation in the sense that the impact of the agreement is independent of the outcome of the case. The agreement is simply terminated by reaching a anniversary milestone after final settlement.


> If your interpretation of this one is TiVo now anticipates this case to drag on for a long time, which means TiVo did not have such anticipation before, I can't say it is an unreasonable interpretation, I just don't agree with it.


That's your right.

Any particular reason (or an alternative interpretation)?


----------



## jacmyoung

harsh said:


> It isn't "governed by" the result of the litigation in the sense that the impact of the agreement is independent of the outcome of the case. The agreement is simply terminated by reaching a anniversary milestone after final settlement.


The agreement (poison pill) is useful if the company has good value so such poison pill may prevent a takeover at less than what is considered a good value by the investors.

Let's suppose Curtis was correct that Charlie may try a hostile takeover of TiVo if he does not win, TiVo by removing the poison pill protection 6 months after the court win, would allow Charlie a hostile takeover move to succeed, that makes no sense at all.

Should TiVo lose however, TiVo's value will tank, maintaining a poison pill would be meaningless, therefore it makes sense to terminate it.

If as you argue the two are not related, then TiVo is very stupid to make them appear linked between the two, there is no need to, they did not have to link the two before, so why now?


----------



## HobbyTalk

Curtis52 said:


> The danger of a takeover by Dish wil be over after the ruling and TiVo has most of Dish's money. The poison pill will have outlived it usefulness. Thus the judgment date tie-in.


I would think that if TiVo wins it would make it more of a takeover target as they would then have some future. If they lose then their value drops greatly and would be hard to sell at any price.


----------



## Curtis52

HobbyTalk said:


> I would think that if TiVo wins it would make it more of a takeover target as they would then have some future. If they lose then their value drops greatly and would be hard to sell at any price.


The poison pill was created to prevent Dish from taking over TiVo to avoid a trial altogether or the need for a settlement after final judgment. Six months after the final judgment it will be too late. The ink on the settlement will be long dry by then and the incentive and danger will have passed. Or not. TiVo can always revise the date again if they need to. It looks like they got tired of bumping it out and had the idea that they could cut down on the number of revisions needed.


----------



## jacmyoung

Curtis52 said:


> TiVo can always revise the date again if they need to.


Of course.



> It looks like they got tired of bumping it out and had the idea that they could cut down on the number of revisions needed.


Or should we say TiVo got tired of this long drawn out litigation that they are preparing for the posibility that Charlie might just have to be left the last one standing, whether people like it or not?

The bottom line is, even TiVo had conceded they are not likely to get a 100% win with this en banc review, if so, you can bet unless Charlie gets what he wants, a partial ruling will push him to continue to fight until he exhausts all legal means. But as you said this time TiVo is showing sign of fatigue.


----------



## tivonomo

Curtis52 said:


> The poison pill was created to prevent Dish from taking over TiVo to avoid a trial altogether or the need for a settlement after final judgment.


The poison pill was created well before TiVo sued Dish. It was created after the 2000 bubble popped and TiVo obviously felt the share price undervalued their patent portfolio.


----------



## jacmyoung

tivonomo said:


> The poison pill was created well before TiVo sued Dish. It was created after the 2000 bubble popped and TiVo obviously felt the share price undervalued their patent portfolio.


However TiVo does now make a direct link between the poison pill and this litigation.

Basically TiVo seems to signal that once this litigation is final, TiVo will no longer have the use of this poison pill. Curtis' interpretation has his merit, I just don't think his conclusion makes the best sense, but that is just my opinion.


----------



## James Long

Seems like there is nothing to say here except banter ... and while banter can be fun it can also get out of hand (as it did in recent, now redacted posts).

Perhaps it is time to rest until the next court ruling?


----------



## RTCDude

James Long said:


> Seems like there is nothing to say here except banter ... and while banter can be fun it can also get out of hand (as it did in recent, now redacted posts).
> 
> Perhaps it is time to rest until the next court ruling?


Are there any rough guesses when that ruling might be?


----------



## scooper

RTCDude said:


> Are there any rough guesses when that ruling might be?


Anywhere from 3 - 6 months.


----------



## dgordo

RTCDude said:


> Are there any rough guesses when that ruling might be?


My rough guess is March, + or - 1 month.


----------



## James Long

And then the appeal ... we may see daylight by 2012 (just in time for the end of the world).


----------



## HobbyTalk

Curtis52 said:


> The poison pill was created to prevent Dish from taking over TiVo to avoid a trial altogether or the need for a settlement after final judgment.


Please show where this is the case. A link to such facts would be fine.


----------



## Voyager6

I found *this* that says the Poison Pill was adopted in Jan 2001.



> ALVISO, Calif., Jan. 12, 2001 The Board of Directors of TiVo Inc. ("TiVo") (Nasdaq: TIVO) has declared a dividend distribution of one Preferred Share Purchase Right on each outstanding share of TiVo common stock. Subject to limited exceptions, the Rights will be exercisable if a person or group acquires 15% or more of the Company's common stock or announces a tender offer for 15% or more of the common stock. Under certain circumstances, each Right will entitle shareholders to buy one one-hundredth of a share of newly created Series B Junior Participating Preferred Stock of the Company at an exercise price of $60.00 per share. The TiVo Board will be entitled to redeem the Rights at $.01 per Right at any time before a person has acquired 15% or more of the outstanding common stock.
> 
> The Rights are intended to enable all TiVo shareholders to realize the long-term value of their investment in the Company. They do not prevent a takeover, but should encourage anyone seeking to acquire the Company to negotiate with the Board of Directors prior to attempting a takeover. The Rights Plan will expire in January 2011.


----------



## phrelin

James Long said:


> And then the appeal ... we may see daylight by 2012 (just in time for the end of the world).


!rolling

Sorry I missed this post as it would have made my Christmas even more cheery.


----------



## Albie

James Long said:


> And then the appeal ... we may see daylight by 2012 (just in time for the end of the world).


So James, are you predicting a final resolution to come out on December 20, 2012? :lol: Sounds about right to me given all that has happened to date.


----------



## phrelin

I have no idea what this really means, but from The Morning Bridge:


> It's potentially good news for DISH/Echostar as the U.S. Court of Appeals struck down a rule saying that patent-battle losers should pay 25% of expected profits on a patent-infringing product. The decision came in the Uniloc USA v. Microsoft suit (with Microsoft decreed the infringer) and will no doubt make its appearance any minute now in the various DISH/Echostar filings seeking to reduce (or reject) penalties in the TiVo case.


----------



## jacmyoung

Probably not in this TiVo v. E* case rather in future cases. Besides I don't recall the damages in the TiVo v. E* case were based solely on the 25% rule.

If you all recall back when I mentioned the I4I v. MS case, the CAFC upheld a $250M damage ruling against MS, because MS failed to challenge the methods used in the damage calculation. As I recall in that case the 25% rule was relied on in part, but the I4I expert also used several other reasonable estimates.

This time MS made sure they challenged the 25% rule, and just so happened that in this new case the plaintiff relied solely on the 25% rule without other basis. This time the CAFC used this case to formally struck down the 25% rule.

One other item of interest, on 1/5/11 the CAFC issued another order to transfer a patent case against Microsoft from E. TX to W. Washington. This was the same order the CAFC made on 11/8/10, only that it decided to change the order from non-precedential to precedential.

Any lawyer can tell us how often or why a non-precedential decision is later changed to a precedential one? Sounded to me the CAFC wanted to lay the ground for more of such orders to come.


----------



## jacmyoung

In today's ILOR v. Google case, the CAFC touched on the issue of award of enhanced damages and attorney fees. Below is a quote of the related paragraphs:



> The objective baselessness standard for enhanced damages and attorneys' fees against a non-prevailing plaintiff under Brooks Furniture is identical to the objective recklessness standard for enhanced damages and attorneys' fees against an accused infringer for § 284 willful infringement actions under In re Seagate Technology, LLC, 497 F.3d 1360 (Fed. Cir. 2007) (en banc). Relying on the Supreme Court's decision in Safeco Insur-ance Co. of America v. Burr, 551 U.S. 47 (2007), we held that: [P]roof of willful infringement permitting enhanced damages requires at least a showing of objective recklessness. . . . Accordingly, to establish willful infringement, a patentee must show by clear and convincing evidence that the infringer acted despite an objectively high likelihood that its actions constituted infringement of a valid patent. . . . The state of mind of the accused infringer is not relevant to this objective inquiry. If this threshold objective standard is satisfied, the patentee must also demonstrate that this objectively-defined risk (determined by the record developed in the infringement proceeding) was either known or so obvious that it should have been known to the accused infringer.


To award any enhanced damages and attorney fees in a patent case, the court must first find by clear and convincing evidence of willful infringement, in this contempt proceeding, it means the court must have found E* willfully infringed by the use of the *modified DVRs*.

Not only did Judge Folsom not conclude willful infringement by the use of the modified DVRs, but he actually said E* might have acted in good faith when they modified the DVRs and continued to use them.

Here the district court clearly made an error by awarding enhanced damages and attorney fees. Of course I am no lawyer, could have missed something here, any experts can chime in.


----------



## jacmyoung

So what's up with E* stock price shooting up lately? Did people forget about the $1 billion TiVo payout?


----------



## harsh

jacmyoung said:


> So what's up with E* stock price shooting up lately?


If I had to hazard a guess, it may have something to do with Jim DeFranco's steady divestiture.


> Did people forget about the $1 billion TiVo payout?


You can't use logic nor simple math to reason stock value.


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## phrelin

harsh said:


> You can't use logic nor simple math to reason stock value.


OMG! You mean it isn't a pure science????


----------



## jacmyoung

harsh said:


> If I had to hazard a guess, it may have something to do with Jim DeFranco's steady divestiture.You can't use logic nor simple math to reason stock value.


What are you saying, E* stocks shooting up because he has been selling his E* stocks?


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## audiomaster

James Long said:


> I believe jacmyoung is referring to "Invester's Village" ... a discussion site that hosts a Tivo forum where the issue is also discussed.


Now I know where Dish got the idiot that does some of the installs in my area! They should give him back.


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## jacmyoung

So Charlie just spent another billion dollars to buy another satellite company, not too long ago he bought some airwave for mobile application at $700M, his Echostar also has been on a buying spree lately, at this rate of spending, he will not have enough to pay TiVo that's for sure

But then again both E* and DISH stocks are going up so maybe he will be able to pay TiVo after all.


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## jacmyoung

Looks like an E* v. TiVo case is finally on at E. TX. Can't wait to see how that comes out, NOT!


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## phrelin

DISH Network Statement on U.S. District Court Order to Lift Stay


ENGLEWOOD, Colo., Feb. 9, 2011 /PRNewswire/ -- DISH Network L.L.C., issued the following statement today concerning the most recent U.S. District Court order:

"We are pleased that the court granted our motion to lift the stay in our patent infringement action against TiVo. The patent in this case withstood two re-exam petitions by TiVo seeking to invalidate it. We look forward to the trial."


SOURCE DISH Network Corporation


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## phrelin

And with my failing memory, I don't even know what they're talking about in the news release.


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## scooper

phrelin said:


> And with my failing memory, I don't even know what they're talking about in the news release.


I believe we're talking about the Dish workaround that Dish got a patent for...


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## phrelin

scooper said:


> I believe we're talking about the Dish workaround that Dish got a patent for...


Ah! Thank you.


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## jacmyoung

scooper said:


> I believe we're talking about the Dish workaround that Dish got a patent for...


No this is a case E* filed against TiVo in 2005, then stayed by the court pending TiVo's request for reexamination of the E* asserted patents. After 4 years one of the 4 E* patents survived the reexaminations

Now the stay of this case is lifted so Charlie can go at it with TiVo, only in this case he is the plaintiff.

It is interesting to note that in the order, the judge quoted Judge Folsom saying PTO reexaminations often complicate a patent case, not simplify it. If this is true, shouldn't the infringement issues in the TiVo v. E* case (not this instant E* v. TiVo case we are talking about) be reviewed too? Because after the reexamination, things might not be as simple as what were adjudicated back in 2006?


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## phrelin

jacmyoung said:


> No this is a case E* filed against TiVo in 2005, then stayed by the court pending TiVo's request for reexamination of the E* asserted patents. After 4 years one of the 4 E* patents survived the reexaminations
> 
> Now the stay of this case is lifted so Charlie can go at it with TiVo, only in this case he is the plaintiff.
> 
> It is interesting to note that in the order, the judge quoted Judge Folsom saying PTO reexaminations often complicate a patent case, not simplify it. If this is true, shouldn't the infringement issues in the TiVo v. E* case (not this instant E* v. TiVo case we are talking about) be reviewed too? Because after the reexamination, things might not be as simple as what were adjudicated back in 2006?


Is this not about a workaround patent?


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## jacmyoung

phrelin said:


> Is this not about a workaround patent?


E* can't assert the workaround patent against TiVo, first it is a new patent, second by the virtue of "working around" TiVo's patent, TiVo cannot infringe on E*'s new patent. E*'s new patent is purely a defensive measure.


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## Jhon69

Yea! Now the boot's on the other foot isn't it Tommy boy!(Tom Rogers).


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## Doug Brott

How is this thing still going? It's like the 17th inning when the umpire blew a call at the plate in the 9th.


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## jacmyoung

Doug Brott said:


> How is this thing still going? It's like the 17th inning when the umpire blew a call at the plate in the 9th.


Although not the most accurate analogy but it is more like the 17th inning when the umpire realized the teams did not switch after the 9th inning.


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## phrelin

Ok. So according to The Morning Bridge:


> The bitter patent battles between Charlie Ergen's EchoStar/DISH companies and TiVo flared yesterday as a Texas judge ruled that EchoStar's 2005 patent-infringement lawsuit against TiVo could be reopened. Ruled U.S. Magistrate Caroline Craven, "To continue the stay would only further delay this case without the likelihood of further simplification of the issues."
> 
> ...Said TiVo of the Texas results, "The suit, originally brought by EchoStar on four patents, has been whittled down to one patent, a patent on which EchoStar has changed its position on the meaning of claim terms." DISH shot back with, "We are pleased that the court granted our motion to lift the stay in our patent infringement action against TiVo. The patent in this case withstood two re-exam petitions by TiVo seeking to invalidate it. We look forward to the trial."


Regarding simplification of the issues, what on Earth are the issues in this 2005 case???


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## CuriousMark

phrelin said:


> Ok. So according to The Morning Bridge: Regarding simplification of the issues, what on Earth are the issues in this 2005 case???


If I read it right, the last remaining patent is about what data formats are used for storing programs on the hard drive.

Supposedly this is a patent that Dish bought from IBM after TiVo sued and was most likely bought specifically for use in this countersuit.


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## peak_reception

So...

What has been, about three and a half months now?



peak_reception said:


> "E*'s mind" is not what counts. As I've said before, that is a completely solipsistic approach which is not what courts and judges care about one bit. E* does not get to decide _on their own, in their own mind_, what an injunction requires. The judge who wrote it knows and decides what it means. Higher up judges can correct the author judge if the question is raised and disputed. E* neither raised nor disputed the Injunction.
> 
> If this does go TiVo's way (which I doubt it will), it won't be because of E*'s clever evasion of the Injunction. In fact, if anything, that will be E*'s undoing if it goes against them. If it goes against TiVo it will be because the CAFC will find that Judge Folsom incorrectly applied the law regarding contempt proceedings where there is outstanding question of more-than-colorable difference to be decided first (by a jury). In which case they will remand the case back to Folsom and the case drags out for another couple of years if the parties won't settle. Of course TiVo can appeal to the Supreme Court also.
> 
> I wonder how many of us will live to see the end of this :sure:


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## jacmyoung

While I agree in the end E*'s state of mind should not matter, the only thing matters in a patent case is the question of continuing infringement or not, I do want to point out what Judge Moore said at the end of the en banc hearing. She said both sides could have easily walked out of the courtroom after the language of the injunction was finalized and thinking they won and their plans would prevail, and it happened all the time according to her.

She wasn't saying E*'s state of mind mattered, rather that TiVo was unreasonable to insist the other side seek clarification for its state of mind at the time.

Charlie's latest comment during the earning call had similar point, he said he was confident they no longer violated TiVo' patent. He knew that was the bottom line.

He also said he was a cardplayer in TiVo v. E*, as if we have not said so enough here


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## jacmyoung

Now Motorola is suing TiVo for infringement of their early DVR patents, on behalf of Verizon. And recently all the rage has been smartphones, tablets/iPads and remote streaming. This year we expect to see no less than 40 new smartphones/tablets to roll out, the only folks who are still obsessed with a DVR seem to be those waiting for the new DirecTiVo and it is still nowhere to be found after three years.

How time has changed yet some things are still the same.


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## peak_reception

> Charlie's latest comment during the earning call had similar point, he said he was confident they no longer violated TiVo' patent. *He knew that was the bottom line.*


Well, that is hard to disagree with after all this time. The verdict will fall one way or the other based on that eventual bottom line. But for now the CAFC may issue a split decision of sorts, finding DISH In Contempt for not following the disablement clause (notwithstanding Judge Moore's comments about the injunction), but also finding that Judge Folsom erred in applying the colorably different standard.

So they fine DISH some more millions for being in contempt, but also send the case back to District Court for a more exhaustive look at the workaround -- probably in the form of a new trial -- to determine infringement or not.

I still think we'll all be dead before this is ultimately decided. :grin:


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## jacmyoung

"peak_reception" said:


> I still think we'll all be dead before this is ultimately decided. :grin:


Which was why I brought up the new FAD to show before we are all dead, there might still things other than DVRs to look forward to. Remote streaming is the new FAD, both Charlie and TiVo seem to recognize it. Though I think Charlie's lastest moves show he is more into the new FAD.

But as far as the bottom line, I had said it before, since in a patent case, sanctions are mostly based on damages, which are based on infringement, without infringement there is no basis for sanctions in this regard, what's left are the attorney fees/court costs.

But again if infringement is not found, there is no chance the court would sanction the law firm for reckless presentation. They had the legal basis to advise their client that if you no longer violate the patent, you cannot violate an injunction against infringement.

So what have we left? Nothing really, contempt or not.


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## peak_reception

> They had the legal basis to advise their client that if you no longer violate the patent, you cannot violate an injunction against infringement.


 Yes you can still violate an injunction by not obeying what the judge tells you to do, _even if it turns out in the end_ (which hasn't been determined yet) that you no longer infringe.


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## jacmyoung

"peak_reception" said:


> Yes you can still violate an injunction by not obeying what the judge tells you to do, even if it turns out in the end (which hasn't been determined yet) that you no longer infringe.


The point here is the award of attorney fees requires the case to be exceptional, here E* or its attorneys must be found that they had no basis to believe they would be fine if they modified the DVRs to prevent infringement back in 2006 and 2007.

Keep in mind back then the court never told E* you had to disable even if you managed to stop infringement. Such "clarification" was given by Judge Folsom only in 2010 in his contempt ruling.


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## James Long

jacmyoung said:


> Keep in mind back then the court never told E* you had to disable even if you managed to stop infringement.


The court didn't say to disable _UNLESS_ you manage to stop infringement. They just gave a cold hard DISABLE order. Period. No ifs, ands or buts. Just DISABLE storage to the hard drive.


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## jacmyoung

James Long said:


> The court didn't say to disable _UNLESS_ you manage to stop infringement. They just gave a cold hard DISABLE order. Period. No ifs, ands or buts. Just DISABLE storage to the hard drive.


Yes, from the "Infringing Products", not "regardless if they are no longer Infringing Products." If you really meant to disable, period! Then don't place the "Infringing Products" limitation in there to possibly cause confusion. Instead use "the Named Products" or something to that extent. An order must be clear, without any chance for misinterpretation, otherwise it cannot be enforced.

I know we can disagree on the interpretation, but my point is, unless my interpretation is totally baseless the court may not award attorney fees and costs to the other side even if the court ultimately decides my interpretation is unreasonable, unless of course if the "Infringing Products" continued to infringe therefore continued to be "Infringing Products."


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## James Long

Without "infringing products" the order would apply to devices that had not been adjudicated. The "infringing products" were clearly specified - and should have been disabled. It would have been interesting to see the courts revisit the cold hard question of simply disobeying a court order (whether the order remained valid or not).


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## jacmyoung

James Long said:


> Without "infringing products" the order would apply to devices that had not been adjudicated.


Not true, as I have pointed out, "Named Products" would have limitated them to only those adjudicated during the trial, i.e. the 8 named DVRs, regardless if they later were modified or not, which will fit your "cold & hard" interpretation perfectly. Yet "Infringing Products" is certainly a term that is more limiting than the "Named Products" term.

For this reason the term "Infringing Products" is not the perfect fit for the "cold & hard" version of intepretation, the "Named Products" would have been the perfect fit, but then had the order used the "Named Products" E* would have definitely appealed it.


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## James Long

jacmyoung said:


> Not true,


Actually, you have expressed an opinion. Whether or not your opinion is true isn't really the point. It is just your opinion.


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## jacmyoung

James Long said:


> Actually, you have expressed an opinion. Whether or not your opinion is true isn't really the point. It is just your opinion.


Which part is not correct that "Named Products" would have been more suitable for the "cold and hard" interpretation than the use of the term "Infringing Products"?

Which part is not correct that "Named Products" would have only addressed the adjudicated products but not other not adjudicated DVRs?

Again it is not whether my opinion is "true" or not, rather whether my belief has its own merit, even if you do not agree or do not think it is "true", because as I have said by law, the court can only sanction me if my opinion or interpretation is entirely baseless. As long as my opinion/interpretation has some basis, even if not "true" it does not rise to the level of being "exceptional" therefore sanctions are not appropriate, by law.


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## James Long

jacmyoung said:


> Again it is not whether my opinion is "true" or not, rather whether my belief has its own merit, even if you do not agree or do not think it is "true", because as I have said by law, the court can only sanction me if my opinion or interpretation is entirely baseless. As long as my opinion/interpretation has some basis, even if not "true" it does not rise to the level of being "exceptional" therefore sanctions are not appropriate, by law.


Last I checked, you were not on trial in Texas ... so don't take it so personally. The court isn't going to sanction you for your errors. Sanctioning DISH/SATS? Much more likely.


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## jacmyoung

James Long said:


> Last I checked, you were not on trial in Texas ... so don't take it so personally. The court isn't going to sanction you for your errors. Sanctioning DISH/SATS? Much more likely.


Nor were you, but if you cannot dispute my opinions, you cannot say I am more wrong than you or you are more correct tham me Likewise you cannot say E* is more wrong than TiVo or TiVo is more correct than E* because I am taking E*'s position, you take TiVo's.

If the appeals court in the end supports E* not TiVo, I would not say you have committed errors in your interpretation, you just lost your argument, even though your argument may have merit.

Sanctions are entirely different, either you, or I must have committed an error so exceptional that there would have been no reason for me or you to have concluded the argument would have possibly be correct, only then the sanctions may apply.

Therefore by law, if you cannot absolutely say E*'s opinion is totally baseless, you must conclude E* cannot be much more likely to be sanctioned, it is simple deduction. Whether what the court will ultimately do is not even relevant as far as the deduction is concerned. That is to assume you are willing to deduct on your own independent of the court, even though we all agree the court final decision will be what matters.


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## James Long

jacmyoung said:


> If the appeals court in the end supports E* not TiVo, I would not say you have committed errors in your interpretation, you just lost your argument, even though your argument may have merit.


Perhaps we could just say you were wrong for completely missing where my argument fits in to all of this?
The court isn't deciding if I'm right and you're wrong. 
A win or loss for DISH/SATS isn't a win or loss for me.


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## jacmyoung

James Long said:


> Perhaps we could just say you were wrong for completely missing where my argument fits in to all of this?
> The court isn't deciding if I'm right and you're wrong.
> A win or loss for DISH/SATS isn't a win or loss for me.


The point is I have made an argument that you have refused to dispute, except to say I am wrong, that is not how you prove wrong.

If your only point is that only the court decision will matter, that I have already agreed with you. We have no argument on that.

A win or loss for E* isn't a win or loss for me either, I don't even have DISH anymore, I am with DirecTV, at least you are in some form speaking for DISH service. But I do believe what I believe, I hope you do too, even if the court in the end disagrees with you. Conviction is what is driving us forward, I would not want to lose that.


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## James Long

jacmyoung said:


> at least you are in some form speaking for DISH service.


Not true. I do not speak for DISH. Unless otherwise stated, I only speak for myself. (When stated, I speak as a moderator.)


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## jacmyoung

"James Long" said:


> Not true. I do not speak for DISH. Unless otherwise stated, I only speak for myself. (When stated, I speak as a moderator.)


Charlie will ultimately speak for E*, why bother speak about E* for yourself? Basically the same question you asked me about this case.


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## MCSuckaDJ

jacmyoung said:


> Which part is not correct that "Named Products" would have been more suitable for the "cold and hard" interpretation than the use of the term "Infringing Products"?


The injunction uses the term "Infringing Products" simply as a "label" (a marker that exists so that the extended description found in the following parenthesis doesn't need to be used). By labeling "label," now when I want to say "a marker that exists so that the extended description found in the following parenthesis doesn't need to be used," all I have to use is "label." By changing your "label" to "Named Products" instead of "Infringing Products," you have not changed the list of products, nor the order to disable them.
Whether or not the "Infringing Products" are still infringing products, they are still "Infringing Products."

You're getting caught up in semantics. The appeals court decision will not and cannot redefine what "Infringing Products" is, they can only determine whether E* had the right to comply with the intention of the injunction by making the "Infringing Products" not infringing products.


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## scooper

Does it really matter any more what happens with this case ?

Tivo has been paid damages for a period of when Echostar was clearly infringing, and now Echostar has their own patent on their underlying mechanism for their DVRs. I don't see Echostar shutting down any DVRs short of armed marshals holding a gun to the heads of the operators at Dish's uplink centers. And THAT ain't going to happen.

The only thing really broke now is Tivo's business model of suing any and everyone else out of the DVR business - which was never theirs to begin with.


----------



## James Long

jacmyoung said:


> Charlie will ultimately speak for E*, why bother speak about E* for yourself? Basically the same question you asked me about this case.


Not recently. But if you get to express your opinion others get to express theirs. If you want others to shut up set an example. 

For clarity - despite the false accusations, I don't speak for DISH/SATS.


----------



## jacmyoung

"James Long" said:


> Not recently. But if you get to express your opinion others get to express theirs. If you want others to shut up set an example.
> 
> For clarity - despite the false accusations, I don't speak for DISH/SATS.


Where did I try to shut others up? You on the other hand by telling me since I have no stake in this case, my opinion does not matter to you only the court opinion, implying that I should shut up


----------



## jacmyoung

"MCSuckaDJ" said:


> The injunction uses the term "Infringing Products" simply as a "label" (a marker that exists so that the extended description found in the following parenthesis doesn't need to be used). By labeling "label," now when I want to say "a marker that exists so that the extended description found in the following parenthesis doesn't need to be used," all I have to use is "label." By changing your "label" to "Named Products" instead of "Infringing Products," you have not changed the list of products, nor the order to disable them.
> Whether or not the "Infringing Products" are still infringing products, they are still "Infringing Products."
> 
> You're getting caught up in semantics. The appeals court decision will not and cannot redefine what "Infringing Products" is, they can only determine whether E* had the right to comply with the intention of the injunction by making the "Infringing Products" not infringing products.


Semantics make or break an injunction, it happened many times, I had posted more than one case demonstrating this, with sementics more hair triggering than in this case.

Just look at your own opinion, Infringing Products are infringing products, whether they still infringe or not, then look at mine, Infringing Products are infringing products if they still infringing, but if they no longer infringe, they are no longer Infringing Products.

Are you so bold to declare your opinion is the only possible correct one, and mine is without merit or basis? If the answer is no, sanctions may not apply, even if your opinion has more merit than mine.

By law, you must demonstrate that my opinion is so baseless that no reasonable person could have ever held such opinion, in order to justify sanctions in the form of attorney fees and court costs.

To the contrary, Judge Folsom in the past said more than once this case was not exceptional, in his most recent ruling he even stated E* could have held its such opinion in good faith, only that he disagreed with E*.


----------



## James Long

jacmyoung said:


> Where did I try to shut others up? You on the other hand by telling me since I have no stake in this case, my opinion does not matter to you only the court opinion, implying that I should shut up


Perhaps you should try reading the thread and not falsely quote others?

Any real news in the real case (and I mean Tivo vs DISH/SATS not any other case)?


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## jacmyoung

"James Long" said:


> Perhaps you should try reading the thread and not falsely quote others?


Where did I falsely quote others?



> Any real news in the real case (and I mean Tivo vs DISH/SATS not any other case)?


Those other cases I mentioned are related to this case. For example the ATT and VZ cases (now involving MS and Motorola) are currently in pre claim construction phases, which among many things they argue the E* initiated PTO reexamination had limited several key claim terms in the TiVo patent that clearly support their contention they (ATT and VZ) do not infringe.

The countersuing by MS and Motorola are also relevant in that they demonstrate TiVo does not hold the earliest DVR patent, there are many DVR patents, owned by various DVR makers, including that of E*'s own patent, are all legit DVR inventions with equal standings.


----------



## MCSuckaDJ

jacmyoung said:


> Just look at your own opinion, Infringing Products are infringing products, whether they still infringe or not, then look at mine, Infringing Products are infringing products if they still infringing, but if they no longer infringe, they are no longer Infringing Products.


By omitting quotation marks, you have mischaracterized my opinion. "Infringing Products" are "Infringing Products", whether or not they are infringing products.

And don't get me wrong, I totally think E* is going to come out on top here, just not for any of the weird-ass reasons you've presented.


----------



## jacmyoung

"MCSuckaDJ" said:


> By omitting quotation marks, you have mischaracterized my opinion. "Infringing Products" are "Infringing Products", whether or not they are infringing products.
> 
> And don't get me wrong, I totally think E* is going to come out on top here, just not for any of the weird-ass reasons you've presented.


The weird-ass reasons are pretty much the same ones presented by E* in their briefs though I swear some of those I said it first only to see them appear in E*'s briefs later

The point is, the court must rely on what E* says and what TiVo says in their briefs to draw its own conclusion, therefore if you believe E* will come out on top, you must accept the strong likelihood they come out on top based on those same weird-ass reasons.


----------



## Tower Guy

jacmyoung said:


> Where did I try to shut others up?


I no longer post to this forum.


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## harsh

The question in my mind is whether or not the term "infringing products" fails because it goes beyond the scope of the proceedings.


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## jacmyoung

harsh said:


> The question in my mind is whether or not the term "infringing products" fails because it goes beyond the scope of the proceedings.


The term "Infringing Products" was right on the money when it came to the "scope of the proceedings" or should we say the patent law. It limited the prohibition to the products that infringed, no more, no less. As such it is reasonable for E* to read it such way without having to further seek clarification.

For TiVo and later Judge Folsom to simply call that term just a "label" without any limiting effect, that needs clarification, because it necessarily went beyond what the patent law allowed what an injunction could and could not prohibit.

Unfortunately such "clarification" was done after the fact, during the contempt proceeding, not at the time the injunction was written, otherwise E* would have surely appealed it, and as Judge Rader had said, the appeals court at that time would have thrown it out with "a stroke of pen."

When an injunction as Judge Rader pointed out should have been thrown out "with a stroke of pen" had E* appealed it, you can see clearly why it had no ground to stand on. Even if one can insist but E* did not appeal it so that was just too bad, deep down one must admit it is a rather weak argument.

So you feel lucky the other guy was too stupid, can you continue to count on such luck?


----------



## peak_reception

> The term "Infringing Products" was right on the money when it came to the "scope of the proceedings" or should we say the patent law. It limited the prohibition to the products that infringed, no more, no less. As such it is reasonable for E* to read it such way without having to further seek clarification.


 Except that the "Infringing Products" remain "Infringing Products" unless or until a judge or jury rules otherwise.


----------



## jacmyoung

peak_reception said:


> Except that the "Infringing Products" remain "Infringing Products" unless or until a judge or jury rules otherwise.


Should a judge or a jury rule in the future that the modified DVRs are not "Infringign Products", those "Infringing Products" will not be considered "Infringing Products" from the time the modification was done, not from the time such ruling is made.


----------



## Greg Bimson

harsh said:


> The question in my mind is whether or not the term "infringing products" fails because it goes beyond the scope of the proceedings.


It cannot go "beyond the scope of the proceedings", as the entire problem is that the "Infringing Products" were not disabled, as was written in the injunction, and "Infringing Products" is defined within the injunction.

It "commits violence" to the definition of "Infringing Products" given within the injunction; there cannot be another definition...


jacmyoung said:


> Should a judge or a jury rule in the future that the modified DVRs are not "Infringign Products" [sic], those "Infringing Products" will not be considered "Infringing Products" from the time the modification was done, not from the time such ruling is made.


I realize it is semantics, but this is incorrect. It should read, changes in bold:Should a judge or a jury rule in the future that the modified DVRs are not *infringing products* those "Infringing Products" will not be considered *infringing products* from the time the modification was done, not from the time such ruling is made.​Yet it will not have an effect upon the definition of "Infringing Products" within the injunction until the injunction is modified. After all, one District Court judge and two of three Court of Appeals judges have opined contempt can be found for failure to disable without the need to evaluate infringement.

Of course, that can change with the decision from the Court of Appeals, but I still don't believe that will happen.


----------



## phrelin

Just for clarification, by "infringing products" do you guys still mean the ones (all but 192,708 of them that is) that were listed in the original order - the DP-501, DP-508, DP-510, DP-522, DP-625, DP-721, DP-921, and DP-942?


----------



## Greg Bimson

phrelin said:


> Just for clarification, by "infringing products" do you guys still mean the ones (all but 192,708 of them that is) that were listed in the original order - the DP-501, DP-508, DP-510, DP-522, DP-625, DP-721, DP-921, and DP-942?


And now that I re-read what harsh wrote...

For clarification, "infringing products" means products found as infringements. "Infringing Products' is defined in the original order as you've stated, phrelin.



harsh said:


> The question in my mind is whether or not the term "infringing products" fails because it goes beyond the scope of the proceedings.


And that is the point Dish Network et al, as well as jacmyoung are making.

The problem is that the entire argument about failure to disable hinges on Dish Network's stance that "Infringing Products" means something other than the definition within the injunction: the eight products phrelin listed.

And that causes a problem as the proceedings dictated that another infringement evaluation had to be rendered.


----------



## jacmyoung

"Greg Bimson" said:


> The problem is that the entire argument about failure to disable hinges on Dish Network's stance that "Infringing Products" means something other than the definition within the injunction: the eight products phrelin listed.


Incorrect. E* does not argue the "Infringing Products" are other than the 8 named DVRs, I have no idea how you made such conclusion.

E* says the term "Infringing Products" indeed defined the 8 named DVRs at the time the term was used, but if later the products changed and became noninfringing products, the term "Infringing Products" no longer applied.

If later a judge or a jury decides the same 8 named DVRs no longer were infringing products since 2007 after the modification was done, how can you insist from 2007 on till whenever the new ruling will be made, those DVRs are still "Infringing Products"? Having the court declare a product noninfringing while at the same time the same products must still be defined as "Infringing Products", seems illogical.


----------



## James Long

jacmyoung said:


> Incorrect. E* does not argue the "Infringing Products" are other than the 8 named DVRs, I have no idea how you made such conclusion.


Perhaps you can explain it to you in your next line:


> E* says the term "Infringing Products" indeed defined the 8 named DVRs at the time the term was used, but if later the products changed and became noninfringing products, the term "Infringing Products" no longer applied.


DISH/SATS froze the "Infringing Products" in time. That is their argument. Thanks for so clearly stating it. Perhaps you can convince you what you were saying.



> If later a judge or a jury decides the same 8 named DVRs no longer were infringing products since 2007 after the modification was done, how can you insist from 2007 on till whenever the new ruling will be made, those DVRs are still "Infringing Products"? Having the court declare a product noninfringing while at the same time the same products must still be defined as "Infringing Products", seems illogical.


It is up to the court to decide if the product ceases to infringe. So far that ruling has not been made.


----------



## jacmyoung

"James Long" said:


> Perhaps you can explain it to you in your next lineISH/SATS froze the "Infringing Products" in time. That is their argument. Thanks for so clearly stating it. Perhaps you can convince you what you were saying.
> 
> It is up to the court to decide if the product ceases to infringe. So far that ruling has not been made.


But if the court later (say in 2012) decides the products ceased to infringe since 2007 after the modification, then what? How will you then define those products from 2007 to 2012? The "Infringing Products" that did not infringe?


----------



## harsh

Greg Bimson said:


> And now that I re-read what harsh wrote...


I crafted my post verrrrry carefully. 

Not having read the text of the decision, I wasn't sure how the connection made between the listed DVRs and the term "Infringing Products". Several times in this thread, there's been an assertion that all DISH's DVRs infringed at one time or another.

I don't appreciate the courts using multiple terms to represent the same thing. I suppose the defendants love it as it opens the door for alternate interpretations.


----------



## jacmyoung

"harsh" said:


> I crafted my post verrrrry carefully.
> 
> Not having read the text of the decision, I wasn't sure how the connection made between the listed DVRs and the term "Infringing Products". Several times in this thread, there's been an assertion that all DISH's DVRs infringed at one time or another.
> 
> I don't appreciate the courts using multiple terms to represent the same thing. I suppose the defendants love it as it opens the door for alternate interpretations.


Precisely. I will not be surprised if it is the case when E* lawyers saw that term they loved it.


----------



## L3G3ND

Who are the 10 Judges for the en banc case Rader, Lourie, Mayer, Dyk, Moore and?? 

Jaymac do u actually believe E* is likely to win the case? 
if you had to bet would you bet on E* or are you playing devil's advocate? 

Assuming the original 3 do not change their minds -- Tivo would only need to win 3 of the remaining 7 votes to "win."


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## HobbyTalk

You know what they say about assuming.  If nothing else this case has shown that nothing should be assumed.


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## jacmyoung

"HobbyTalk" said:


> You know what they say about assuming.  If nothing else this case has shown that nothing should be assumed.


How about a fact then? For the "new guy" in case not aware, one of the two judges who ruled in TiVo's favor had since decided to semi-retire and did not participate in the en banc hearing, he is not likely to be part of the final ruling, even though technically he is still eligible if he feels strongly enough to "make a tie" when necessary.


----------



## Greg Bimson

jacmyoung said:


> Incorrect. E* does not argue the "Infringing Products" are other than the 8 named DVRs, I have no idea how you made such conclusion.


Really? From the very first filing, which was posted here, on page 9 of the attachment, and emphasis is mine: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.*​The attempt was to change the definition of "Infringing Product". From the get-go.


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## jacmyoung

The attempt is clearly made to argue the term "Infringing Products" defined those 8 named products that were adjudicated to infringe at the time of the framing of the injunction, but may not continue to define the same named products once they no longer infringed.

I asked James this question, I will ask you the same. If later (say in 2012) the court declares those same named products are no longer infringing beginning in 2007 when the new software were installed, how should the court define those products from 2007 to 2012? Infringing Products? Ex-Infringing Products? Or Infringing Products that did not infringing? Or simply call them non-infringing products?

Which one of the above, or maybe some other terms, might be more reasonable definition of those same named products from 2007 to 2012?

Please don't tell me the court will have no duty nor power to again properly define those 8 named products for the time period from 2007 to 2012. My only question to you is, when the court sets out to define them, which one of the above terms will be more likely, if they are declared non-infringing?


----------



## James Long

jacmyoung said:


> Please don't tell me the court will have no duty nor power to again properly define those 8 named products for the time period from 2007 to 2012. My only question to you is, when the court sets out to define them, which one of the above terms will be more likely, if they are declared non-infringing?


None of the above.


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## jacmyoung

"James Long" said:


> None of the above.


Which means the term "Infringing Products" would not properly define those 8 named DVRs from 2007 to 2012, I gather?


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## Greg Bimson

jacmyoung said:


> The attempt is clearly made to argue the term "Infringing Products" defined those 8 named products that were adjudicated to infringe at the time of the framing of the injunction, but may not continue to define the same named products once they no longer infringed.


Hence, an attempt to redefine a term that was already defined within the injunction.

Then again, I'm trying to figure out "once they no longer infringed" means. There is a decision that "the same named products" still infringe.


jacmyoung said:


> Please don't tell me the court will have no duty nor power to again properly define those 8 named products for the time period from 2007 to 2012. My only question to you is, when the court sets out to define them, which one of the above terms will be more likely, if they are declared non-infringing?


The court has every duty and power to define or redefine those 8 named products. We aren't anywhere near that point, yet.

However, as it stands now, based upon Judge Folsom's decision, there is still only one definition of "Infringing Products", and that is one challenge to Judge Folsom's decision at the Court of Appeals. We can worry about the plethora of redefinitions that may be needed once the decision is rendered from the Court of Appeals.


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## Jhon69

jacmyoung said:


> The attempt is clearly made to argue the term "Infringing Products" defined those 8 named products that were adjudicated to infringe at the time of the framing of the injunction, but may not continue to define the same named products once they no longer infringed.
> 
> I asked James this question, I will ask you the same. If later (say in 2012) the court declares those same named products are no longer infringing beginning in 2007 when the new software were installed, how should the court define those products from 2007 to 2012? Infringing Products? Ex-Infringing Products? Or Infringing Products that did not infringing? Or simply call them non-infringing products?
> 
> Which one of the above, or maybe some other terms, might be more reasonable definition of those same named products from 2007 to 2012?
> 
> Please don't tell me the court will have no duty nor power to again properly define those 8 named products for the time period from 2007 to 2012. My only question to you is, when the court sets out to define them, which one of the above terms will be more likely, if they are declared non-infringing?


The court will have to be adjourned because of The End of The World!!!.:eek2:


----------



## jacmyoung

"Greg Bimson" said:


> . We can worry about the plethora of redefinitions that may be needed once the decision is rendered from the Court of Appeals.


If the en banc panel orders a new action to determine whether the same 8 named DVRs still infringed after the 2007 design around, then there is a strong possibility that once the decision is made after that new action the definition will change.

So long as that possibility exists (if they order the new action), don't you think the issue of contempt must wait? Because if the contempt stands and sanctions are upheld, while the new action also takes place, what if on 12/1/2012 (before the world ends, just to keep John happy), the court declares the same 8 named DVRs no longer infringed since 2007 on, therefore the term Infringing Products no longer properly defined those products, again since 2007 on, only then should the contempt be reversed and money returned to E*?

The point is, a new action will naturally put all things on hold, if not vacated. Can't have a half baked reversal and a new action at the same time, technically or legally it is not doable, at least from what I can understand, but then what do I know?


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## Greg Bimson

jacmyoung said:


> The point is, a new action will naturally put all things on hold, if not vacated. Can't have a half baked reversal and a new action at the same time, technically or legally it is not doable, at least from what I can understand, but then what do I know?


You're banking on "a new action". That causes a problem, yes.

However, it is still quite possible the injunction stands as-is, and that some "new action" will still require the "Infringing Products" to be disabled. That is exactly why I state there are a "plethora of redefinitions that may be needed once the decision is rendered from the Court of Appeals."

The Court of Appeals had the four questions they wanted answered, and can determine separate courses of action for each one as they deem fit. From an earlier post:


jacmyoung said:


> Having the court declare a product noninfringing while at the same time the same products must still be defined as "Infringing Products", seems illogical.


But that is exactly a "legal" scenario that is possible. Legal and illogical are not mutually exclusive.


----------



## jacmyoung

Greg Bimson said:


> You're banking on "a new action". That causes a problem, yes.


I am not banking on anything, some TiVo people now accept the notion that the en banc panel could order a new action, but still believe the contempt could hold at the same time, I just explained why both may not happen at the same time technically or legally. If the result of the new action can possibly reverse the contempt and sanction in a future time, then the contempt and sanction issues must be put on hold until such time the result of that new action is out.


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## jacmyoung

Greg Bimson said:


> But that is exactly a "legal" scenario that is possible. Legal and illogical are not mutually exclusive.


Bingo! Your use of the word "possible" itself makes E*'s arguement for them. Because when you say that is a scenario that can be legally "possible", you are also saying such scenario may not happen. In other words such scenario is uncertain, not clear which way it can fall. When you and I say the "scenario" we mean the scenario in which the court may continue to define the procucts as Infringing Products from 2007 to 2012, even if it also decides the same products did not infringe from 2007 to 2012.

If the injunction had led to a scenario that both sides agree might or might not be possible, the injunction was not clear, and I think you have agreed if the injunction was not clear, it could not be enforced.

An order must be clear enough so the person who reads it can only conclude that it would lead to a scenario that is certain, not merely possible.


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## James Long

There are always possibilities. The plaintiff could withdraw the case, an appeals court can do all sorts of things to lower court rulings. There is no such thing as an order that does not face possibilities.


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## jacmyoung

"James Long" said:


> There are always possibilities. The plaintiff could withdraw the case, an appeals court can do all sorts of things to lower court rulings. There is no such thing as an order that does not face possibilities.


Is it then possible the en banc panel might found the order wasn't clear enough? They did ask that question, in fact the way the question was framed it almost read to say they had already thought the order wasn't clear, just that where the order wasn't clear, what should we do about it?


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## Greg Bimson

jacmyoung said:


> Is it then possible the en banc panel might found the order wasn't clear enough? They did ask that question, in fact the way the question was framed it almost read to say they had already thought the order wasn't clear, just that where the order wasn't clear, what should we do about it?


We've already had this discussion, as it was one of the four questions asked within the _en banc_ panel's review...

Someone on the panel wanted to know what they should do with "an ambiguous injunction". I said that TiVo needed to show that the injunction is not ambiguous and that even if it were, Dish Network et al needed to request clarification. It was telling during the oral arguments at CAFC that the panel didn't like how Dish Network et al decided to redefine the defined term "Infringing Products" in order to show ambiguity when there was none.

And I've said it for years:

The injunction states that those eight models of DVR were to be disabled for the life of the patent. They need to be disabled.

If Dish Network et al found some way to make a good portion of those DVR's have non-infringing functionality, in order to avoid the disable clause, Dish Network et al should go to the court and request clarification to the injunction. After all, when it came time to even remotely think about warranty replacements, Dish Network et al filed a motion for clarification to figure out how to implement their warranty program with the injunction in place.

So requesting clarification and asking the court if their non-infringing software could be loaded onto DVR's which were to be disabled was the best course of action. Of course, there would be a reason why Dish Network et al didn't want to do that...


----------



## jacmyoung

Show me one single federal circuit rule that says an order maybe ambiguous and still be enforced as long as the defendant is given the opportunity to seek clarification.

The law has always been if the order is ambiguous it cannot be enforced, period.

Therefore in my view when the question was asked what the court should do where the order was not clear, your first answer misses the point when you say but the order was indeed clear, your second answer on the other hand has no legal basis unless you can show us where did it ever say the defendant must seek clarification.


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## Greg Bimson

jacmyoung said:


> Show me one single federal circuit rule that says an order maybe ambiguous and still be enforced as long as the defendant is given the opportunity to seek clarification.





> d) Is it proper for a district court to hold an enjoined party in contempt where there is a substantial question as to whether the injunction is ambiguous in scope?


The CAFC asked the question. The problem is that the injunction is not ambiguous. The attempt was to create ambiguity where there wasn't any.


jacmyoung said:


> Therefore in my view when the question was asked what the court should do where the order was not clear, your first answer misses the point when you say but the order was indeed clear, your second answer on the other hand has no legal basis unless you can show us where did it ever say the defendant must seek clarification.


Huh?

The defendants seeked clarification when they wanted to initiate their warranty program. They could have asked for clarification regarding replacment software for DVR's that were ordered disabled. There wasn't any ambiguity.

And remember, that question from the CAFC doesn't imply that the injunction is ambiguous; the implication is that the scope (targeted DVR's) is ambiguous.


----------



## jacmyoung

"Greg Bimson" said:


> And remember, that question from the CAFC doesn't imply that the injunction is ambiguous; the implication is that the scope (targeted DVR's) is ambiguous.


If the scope is ambiguous, does it not make the order ambiguous?


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## jadebox

> The defendants seeked clarification when they wanted to initiate their warranty program. They could have asked for clarification regarding replacment software for DVR's that were ordered disabled.


I think _they _should have asked. But, were they legally obligated to ask?



> And remember, that question from the CAFC doesn't imply that the injunction is ambiguous; the implication is that the scope (targeted DVR's) is ambiguous.


I'd argue that the injuction _is_ ambiguous _because _the scope isn't well defined.

A question I have, that I haven't seen addressed here, is whether the order to disable to DVR functionality was intended to punish Echostar or to stop the ongoing infringement.

If it was to punish Echostar, then the work-around was contrary to what the court wanted. If it was to stop the infringment, then the work-around did that.

I don't think the purpose of court injuctions is to punish. They are intended to prevent future harm. On the other hand, courts don't like it when their orders are not followed ... whatever the reason.

-- Roger


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## jacmyoung

Good question, I don't think anyone, including TiVo had argued the injunction is to serve any purpose other than to stop infringement, TiVo was quoted during the framing of the injunction that its proposed injunction was to stop the infringement, "nothing more, nothing less."

Punishment is in the form of damages and sanctions.


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## Curtis52

jadebox said:


> A question I have, that I haven't seen addressed here, is whether the order to disable to DVR functionality was intended to punish Echostar or to stop the ongoing infringement.
> 
> If it was to punish Echostar, then the work-around was contrary to what the court wanted. If it was to stop the infringment, then the work-around did that.


The work-around did that?

Anyway, disablement would have prevented infringement for sure.


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## jadebox

Curtis52 said:


> The work-around did that?


It was EchoStar's intent. Whether it really did or not is another question.

-- Roger


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## jacmyoung

"Curtis52" said:


> The work-around did that?


If successful, yes.



> Anyway, disablement would have prevented infringement for sure.


So would a successful work-around, for sure.

On the other hand, if TiVo insists even if the work-around was successful it was still not good enough, then TiVo is basically saying this injunction went beyond prevention, into punishment. Not only is it against the established intent of an injunction in a patent case, more importantly it will be contrary to the TiVo's own statement back then that this injunction of theirs was to stop further infringement, "nothing more, nothing less."


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## MCSuckaDJ

jadebox said:


> I don't think the purpose of court injuctions is to punish. They are intended to prevent future harm.


And you'd be right. That precedent was set by Arbek and KSM.
But that doesn't mean it can't happen. Note that E* has already been at the wrong end of a punitive injunction in the distants case.


----------



## Greg Bimson

jacmyoung said:


> On the other hand, if TiVo insists even if the work-around was successful it was still not good enough, then TiVo is basically saying this injunction went beyond prevention, into punishment.


But at this point, the only ruling says that the workaround still infringes the patent, so this is still putting the cart before the horse...


Greg Bimson said:


> The defendants seeked clarification when they wanted to initiate their warranty program. They could have asked for clarification regarding replacment software for DVR's that were ordered disabled.





jadebox said:


> I think they should have asked. But, were they legally obligated to ask?


And hence the problem:

I now have a "work-around" that can make a product that is an infringement as well as subject to a disable, recall or destruction order into a non-infringing product. I also have a way to keep my warranty replacement process ongoing. Either of these may run afoul of the wording within the injunction.

Dish Network did file a motion, later withdrawn, to clarify the injunction regarding the warranty replacement. No legal obligation to do so. But they did not file a clarification regarding the disable order.

And let's not forget that Judge Folsom did mention that an injunction disabling the DVR's ruled infringing upon the Time Warp patent was to level the playing field, so to speak. It would stop infringement as well as scale back Dish Network's ill-gotten gains, the customers that Dish Network so desparately wanted but that TiVo needed.

This entire CAFC proceeding right now isn't as much about TiVo and Dish Network as much as it is to create a new standard for field-modifiable devices in case there are more court cases somewhat like this one.


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## jacmyoung

"MCSuckaDJ" said:


> And you'd be right. That precedent was set by Arbek and KSM.
> But that doesn't mean it can't happen. Note that E* has already been at the wrong end of a punitive injunction in the distants case.


The distants case was not a patent case, that is a very important distinction. In a patent case, the only purpose of an injunction is to prevent further infringement, no more, no less.


----------



## jacmyoung

"Greg Bimson" said:


> This entire CAFC proceeding right now isn't as much about TiVo and Dish Network as much as it is to create a new standard for field-modifiable devices in case there are more court cases somewhat like this one.


How did you come up with this conclusion? I did not read anywhere in TiVo's briefs that they asked the federal circuit to establish a new standard. Good for them actually because had they asked to have a new standard, they would have basically admitted they had no prior case law for support.

The mere need for a new standard would weaken the contempt argument because without the standard, naturally one cannot violate it.


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## Greg Bimson

> d) Is it proper for a district court to hold an enjoined party in contempt where there is a substantial question as to whether the injunction is ambiguous in scope?


If the CAFC wants the answer to this question, then the CAFC wants to create a new standard.

Let's face it. _KSM_ is overbroad when it comes to this case.


----------



## jacmyoung

"Greg Bimson" said:


> If the CAFC wants the answer to this question, then the CAFC wants to create a new standard.
> 
> Let's face it. KSM is overbroad when it comes to this case.


Even if you are correct, TiVo's answers to the question did not show that they asked for a new standard, in fact it was E* that argued TiVo was trying to establish some new standard and TiVo, for very good reason, denied such assertion. TiVo also said KSM was right on.

Sounded to me you have some different ideas than TiVo. Guess what I have some different ideas than E* as well, but since the court will not read my ideas, I did not think of mentioning them


----------



## harsh

jacmyoung said:


> How about a fact then? For the "new guy" in case not aware, one of the two judges who ruled in TiVo's favor had since decided to semi-retire and did not participate in the en banc hearing, he is not likely to be part of the final ruling, even though technically he is still eligible if he feels strongly enough to "make a tie" when necessary.


Can someone who hasn't witnessed the proceedings in question cast a vote?

That seems awfully prejudicial.


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## Curtis52

harsh said:


> Can someone who hasn't witnessed the proceedings in question cast a vote?


Audio of the hearing is available for anyone that wants to listen.


----------



## harsh

Curtis52 said:


> Audio of the hearing is available for anyone that wants to listen.


Is a complete audition of the hearings required to be eligible to vote?


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## Greg Bimson

harsh said:


> Can someone who hasn't witnessed the proceedings in question cast a vote?
> 
> That seems awfully prejudicial.


Sure, but you have to remember the guy that wasn't at the _en banc_ was one of the three judges that listened to these arguments during the original appeal.

So the judge in question has heard the arguments before. He voted in favor of TiVo last time.


----------



## Curtis52

harsh said:


> Is a complete audition of the hearings required to be eligible to vote?


I don't think they are even required to read the briefs. All of that is left to their own judgement.


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## jacmyoung

Curtis52 said:


> I don't think they are even required to read the briefs. All of that is left to their own judgement.


If this is the case, I would use the word "imagination" to better describe it


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## jacmyoung

Let me go one step further to point out why TiVo should not prevail.

If TiVo insists the term "Infringing Products" was just a "short hand" to refer to the 8 named DVRs that did not have any narrowing meaning, then there are other "short hand" terms they could have used, such as "Named Products" or "Said Products" that would have done a better job at being a "short hand" that did not carry any narrowing meaning.

But as I said before, any use of the "Named Products" or "Said Products", while they would have much more clearly conveyed TiVo's current position (meaning the "Infringing Proudcts" was not as clear), would have caused E* to appeal such term, and have the injunction thrown out "with a stroke of pen". Such trickery cannot stand, that is just my opinion.


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## Greg Bimson

jacmyoung said:


> Let me go one step further to point out why TiVo should not prevail.
> 
> If TiVo insists the term "Infringing Products" was just a "short hand" to refer to the 8 named DVRs that did not have any narrowing meaning, then there are other "short hand" terms they could have used, such as "Named Products" or "Said Products" that would have done a better job at being a "short hand" that did not carry any narrowing meaning.
> 
> But as I said before, any use of the "Named Products" or "Said Products", while they would have much more clearly conveyed TiVo's current position (meaning the "Infringing Proudcts" was not as clear), would have caused E* to appeal such term, and have the injunction thrown out "with a stroke of pen". Such trickery cannot stand, that is just my opinion.


It is a staple of the English language.

The eight named DVR's were listed, and then collectively defined as "Infringing Products" It doesn't matter that infringing products has a different meaning as "Infringing Products".

It doesn't matter how it is labeled. Just that the label is defined with capital letters. There isn't any "trickery", and there isn't any double meaning.


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## jacmyoung

It matters if you must demonstrate such label clearly conveyed the very meaning TiVo asserts NOW, that is regardless the products still infringed or not, why? As I had pointed out, there are MANY other labels that could have MORE clearly conveyed such meaning, which naturally demonstrates that the label "Infringing Products" was not as clear.

Again I am not saying you may not use this term for the purpose of short hand labeling of the named DVRs, but if you wanted to convey the exact meaning which you stand now (which TiVo did not stand then because they said they only wanted to prevent infringement, nothing more nothing less.) such label was not clear. If there are many other labels that are clearer, then this label is not clear.

You did not dispute what the rule was if the wording is not clear.


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## Greg Bimson

jacmyoung said:


> It matters if you must demonstrate such label clearly conveyed the very meaning TiVo asserts NOW, that is regardless the products still infringed or not, why? As I had pointed out, there are MANY other labels that could have MORE clearly conveyed such meaning, which naturally demonstrates that the label "Infringing Products" was not as clear.


Whichever label would have been chosen doesn't change the fact the label was defined clearly within the injunction. Whether the term could be "Named Products", "Listed Products" or "Infringing Products", it can only have one meaning if they all related to the eight listed DVR's. It is an attempt to create confusion where there is none.


jacmyoung said:


> Again I am not saying you may not use this term for the purpose of short hand labeling of the named DVRs, but if you wanted to convey the exact meaning which you stand now (which TiVo did not stand then because they said they only wanted to prevent infringement, nothing more nothing less.) such label was not clear. If there are many other labels that are clearer, then this label is not clear.


Okay, but if that is the stance, the issue here is that Dish Network went to the Court of Appeals after appeal of the trial verdict asking to have the injunction stayed, because it would affect more than three million of their customers. The defined term didn't change, only Dish Network's belief of the definition did.

And it all stems from trying to redefine a term defined within the injunction.


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## James Long

To extend into the absurd ...
The court could refer to the products found to be infringing as "Joes Barbecue Sauce" as long as the term was defined.

The term used by the court was defined. It doesn't matter if different language could have been used. English is a robust language, many different words mean the same thing. Many words mean different things. Which is why even simple words get defined - as they were in this case - so there is no confusion. And even though the court did not use the more clear "Joes Barbecue Sauce" label ... both parties accepted the definition for the label the court choose.

It isn't the label that is in dispute ... it is obedience to the injunction.


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## jacmyoung

The fact that TiVo must now argue the logical meaning of a key term (repeated three times in the order) "doesn't matter" for whatever the reason, could be it was just a "short hand", could also be that TiVo actually meant, as they were quoted back then to only prevent infringement, nothing more, nothing less.

Regardless, if you must now argue the logical meaning of a key term in the order "did not matter" then it is an absurd argument because every word in a clearly framed order must matter, if the law requires that the order may not have any ambiguity. Such requirement does not allow the occasion in which the logical meaning of a word in an order simply "does not matter", not to mention the meaning of a key word.

I had asked you two this question, if the court later found the products no longer infringed after 2007, could the court still define the products as the "Infringing Products"? I recall James you said no, Greg simply said the court has not made such call yet, therefore avoided answering the question.


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## James Long

jacmyoung said:


> I had asked you two this question, if the court later found the products no longer infringed after 2007, could the court still define the products as the "Infringing Products"? I recall James you said no,


Your recall incorrectly - and what I stated doesn't matter was the words defined. What matters is that those words were defined. They could have called the products found to infringe "Chocolate Peanut Brittle". Perhaps if they had it would be easy to understand that it isn't what YOU think those words mean - it matters what the parties said those words mean.


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## phrelin

Ah, but Charlie would change the recipe for Chocolate Peanut Brittle by switching to sugar instead of corn syrup to confuse the issue in hopes that someone on the other side or on the court would get involved in the recipe details....


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## jacmyoung

"James Long" said:


> Your recall incorrectly - and what I stated doesn't matter was the words defined. What matters is that those words were defined. They could have called the products found to infringe "Chocolate Peanut Brittle". Perhaps if they had it would be easy to understand that it isn't what YOU think those words mean - it matters what the parties said those words mean.


I asked you if later the court declares the products no longer infringed after 2007, would the term "Infringing Products" still properly define the products after 2007? I guess neither of you liked to answer it.


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## Greg Bimson

jacmyoung said:


> Regardless, if you must now argue the logical meaning of a key term in the order "did not matter" then it is an absurd argument because every word in a clearly framed order must matter, if the law requires that the order may not have any ambiguity. Such requirement does not allow the occasion in which the logical meaning of a word in an order simply "does not matter", not to mention the meaning of a key word.


"Infringing Products" was defined in the order. Of course it matters. What doesn't matter is any other interpretation of "Infringing Products" _because_ it was defined within the injunction.

The proper noun "Infringing Products" has only one meaning, and it was given within the injunction.


jacmyoung said:


> I had asked you two this question, if the court later found the products no longer infringed after 2007, could the court still define the products as the "Infringing Products"? I recall James you said no, Greg simply said the court has not made such call yet, therefore avoided answering the question.


I believe I said wait until some kind of ruling comes out. However:

The eight products listed in the injunction and defined as "Infringing Products" will still be defined in that manner until the injunction is modified. Right now, the decision under review is that "Infringing Products" are to be disable irrespective of infringement status, simply because that is the order of the court. The review may determine that some kind of test may need to be done on the modified "Infringing Products" subject to the disable order, and if the "Infringing Products" are no longer found infringing then the injunction could be modified to allow Dish Network to keep non-infringing DVR functionality running on the "Infringing Products".

Yes, surprisingly, damages for ongoing infringement and contempt of an order are two different issues, not one.


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## jacmyoung

You still refuse to answer my question, if later the court declares that those DVRs no longer infringed from 2007 on, do you think the term "Infringing Products" will still have properly defined those DVRs from 2007 and on?


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## phrelin

You know there is a fundamental problem with the definition.

If, in 2007 after the "Infringing Product" list was promulgated, Dish took two-thirds of their inventory of 501's, 508's, etc. which they called PVRs at the time, pulled the insides out of them and put them in red cases calling them a new line of Dish Red Hot DVRs 2070, 2071, etc., with new firmware and replaced most of the listed ones, we couldn't even have a sensible discussion about this.


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## scooper

Then you get into the "colorable difference" arguement.


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## Greg Bimson

jacmyoung said:


> You still refuse to answer my question, if later the court declares that those DVRs no longer infringed from 2007 on, do you think the term "Infringing Products" will still have properly defined those DVRs from 2007 and on?


Yes.

After all, according to the injunction, the "Infringing Products" were to have their DVR functionality (something about storage to and playback from the hard drive) disabled. At that time, the "Infringing Products" would no longer be infringing and they would still be subject to the injunction.


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## dfd

"Greg Bimson" said:


> Yes.
> 
> After all, according to the injunction, the "Infringing Products" were to have their DVR functionality (something about storage to and playback from the hard drive) disabled. At that time, the "Infringing Products" would no longer be infringing and they would still be subject to the injunction.


Ding, ding, ding.

Give the man a prize.

Any attempt to set a different meaning to "Infringing Products" defies rational thought.


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## MCSuckaDJ

Greg Bimson said:


> Yes.
> 
> After all, according to the injunction, the "Infringing Products" were to have their DVR functionality (something about storage to and playback from the hard drive) disabled. At that time, the "Infringing Products" would no longer be infringing and they would still be subject to the injunction.


Exactly right. And the question for the courts is not whether those products are infringing products (which they may not be) or "Infringing Products" (which they always will be). It's whether someone can comply with an injunction by achieving the goal of said injunction, without actually following the instructions of said injunction.


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## jacmyoung

"Greg Bimson" said:


> Yes.
> 
> After all, according to the injunction, the "Infringing Products" were to have their DVR functionality (something about storage to and playback from the hard drive) disabled. At that time, the "Infringing Products" would no longer be infringing and they would still be subject to the injunction.


While you answered with a yes, what follows it does not explain the answer, so I assume you answered yes for the sake of a yes.

If at a point in time the products are declared non-infringing, naturally the term "Infringing Products" no longer properly defines those products from that point of time forward. Yes the term still properly defined those products up to that point of time, just not after that point.

I find it difficult to justify that those products may still be collectively called the "Infringing Products" from 2007 on by the court while at the same time the court declares them non-infringing from 2007 on. It would be a mess to explain it.

So I guess don't the court ever order a new action, what if after the new action those products are declared non-infringing from 2007on? What should the court collectively define those products? "Non-Infringing Products"? If so since when? If you say since 2012 when the court makes such declaration, then why not from 2007 to 2012? After all it does declare those products non-infringing from 2007 on.

The conclusion then is, there cannot be a new action to again try to determine if those products infringed from 2007 on, or not.

But why then even TiVo does not deny that such new action is possible?


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## James Long

jacmyoung said:


> If at a point in time the products are declared non-infringing, naturally the term "Infringing Products" no longer properly defines those products from that point of time forward.


Sure it does. That is the LABEL that the parties have decided to apply to those devices.

They could be called "Joes Barbecue Sauce", "Chocolate Peanut Brittle" or "Rubber Baby Buggy Bumpers" ... it is just a label that was clearly defined to be those receivers. It just makes it easier to refer to them as "Infringing Products" (once that definition is made) than to have to use the definition every time one wanted to refer to the receivers adjudicated to be infringing.


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## jacmyoung

"James Long" said:


> Sure it does. That is the LABEL that the parties have decided to apply to those devices.
> 
> They could be called "Joes Barbecue Sauce", "Chocolate Peanut Brittle" or "Rubber Baby Buggy Bumpers" ... it is just a label that was clearly defined to be those receivers. It just makes it easier to refer to them as "Infringing Products" (once that definition is made) than to have to use the definition every time one wanted to refer to the receivers adjudicated to be infringing.


So let me get this straight, you guys are basically trying to convince me when the court decided to issue an order, it can choose any label among who knows how many labels out there, those labels don't even have to mean much, as long as the chosen label is attached to the products, that is it.

If so how was the term "Infringing Products" chosen? Did TiVo just pull it out of its own$ %& and it just so happened to be that one? It did not really mean anything right? Just a label, so what were the odds that among millons of labels it just so happened this one landed on Judge Folsom's desk?

Please don't tell me TiVo did not think long and hard about which label to use, just reached down and pulled one out just like that.

Every word in an injunction us carefully chosen, worked on, hammered out over and over, to make sure they are clear. For TiVo to now argue they did not carefully choose those words, some of them were jusy labels that do not carry their usual meanings, just pulled out of a hat like that, if this were the case, TiVo nevertheless conceeds the wording if its injunction was not carefully chosen.

How would a not so carefully worded order sound to you? Should it ve enforced, or should we have tried to more carefylly word it


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## James Long

They picked a less creative label than "Brown Chicken Brown Cow" but yes ... the definition of the label given is more important than the words used.

That is why they define the label.


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## MCSuckaDJ

jacmyoung said:


> So let me get this straight, you guys are basically trying to convince me when the court decided to issue an order, it can choose any label among who knows how many labels out there, those labels don't even have to mean much, as long as the chosen label is attached to the products, that is it.


Exactly.


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## jacmyoung

"James Long" said:


> They picked a less creative label than "Brown Chicken Brown Cow" but yes ... the definition of the label given is more important than the words used. That is why they define the label.


The "Named Products" would have been less creative and more appropriate wouldn't it? At least E* would have less argumet, so why not chose a less creative label, a label that arguably better convey the intent of the order? Why went through the trouble and came up with a very specific term that had a serious implication to it? There had to be a reason. If the words are put in there for no good or better reason, what does it say about the order in the first place?

I can think of a few more common and less creative labels, like "Said Products" or "Listed Products". Please don't tell me TiVo did not know those common labels and just so happened have come upon this one.


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## James Long

The term they used was defined. I'm sorry they didn't clear it with you.


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## jacmyoung

"James Long" said:


> The term they used was defined. I'm sorry they didn't clear it with you.


Defined without reason?


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## James Long

jacmyoung said:


> Defined without reason?


Defined for clarity.


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## jacmyoung

"James Long" said:


> Defined for clarity.


To clarify about what? That to disable even if the products are non-infringing? If so did this label do the job of clarifying such intent?

If a label is also there to serve a purpose of clarification, then it does mean something doesn't it? Otherwise how can it bring more clarity?

If you agree this label was there for clarity also, why do you then insist E* should not have read that label for clarity?


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## James Long

jacmyoung said:


> To clarify about what? That to disable even if the products are non-infringing? If so did this label do the job of clarifying such intent.
> 
> If a label is also there to serve a purpose of clarification, then it does mean something doesn't it? Otherwise how can it bring more clarity?


Definitions are used to define things. Labels are there to label things.
The definition defines what the label means.

Perhaps they should have used "Brown Chicken Brown Cow" as the label. You might understand that the label is a label and a definition is a definition if you don't try to confuse the issue by using the label as the definition.

If it doesn't make sense, fine. Just don't become a lawyer or deal with them. 

(Note: Replying to original posts and not delayed edits.)


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## jacmyoung

I asked you why TiVo used that label but not other many labels, you said that label was chosen for clarity. Maybe you did not mean it? So why did TiVo choose that label over all the other labels, many of which as I pointed out are less creative and better at conveying its intent?


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## Greg Bimson

jacmyoung said:


> To clarify about what? That to disable even if the products are non-infringing? If so did this label do the job of clarifying such intent?


The label is defined.


jacmyoung said:


> If you agree this label was there for clarity also, why do you then insist E* should not have read that label for clarity?


Because DISH needed an explanation how they followed the injunction, even if they didn't follow the injunction.


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## jacmyoung

Greg Bimson said:


> The label is defined.Because DISH needed an explanation how they followed the injunction, even if they didn't follow the injunction.


Why give them such opportunity for such explanation? If you choose to give E* such opportunity by offering that label intentionally, then you had anticipated that such label could have been used to interpret differently, whether you will agree with it or not, therefore such label was not clear, because you knew it would be used, so don't put in there, don't give E* that opportunity.

Are you still so sure TiVo had intentionally chosen that label so E* could use it later to its advantage? Do you really think TiVo was that stupid?

If not, then why did TiVo choose that label over many other equally good or better labels?


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## phrelin

"jacmyoung" said:


> Defined without reason?


 Sometimes judges screw up in their wording. If he had said Infringing Product with a parenthetical "such as" there would not be this problem.


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## James Long

jacmyoung said:


> I asked you why TiVo used that label but not other many labels, you said that label was chosen for clarity.


I did not say that. I said the label was _*defined*_ for clarity, not _*chosen*_ for clarity.

DISH would like to define those products as the named receivers with the adjudicated software.
Tivo would like to define those products as the named receivers regardless of the software.

Don't forget the first Jedi mind trick ... 
DISH: These are not the receivers ordered disabled.
Tivo: Damn straight they are!


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## Greg Bimson

jacmyoung said:


> Why give them such opportunity for such explanation? If you choose to give E* such opportunity by offering that label intentionally, then you had anticipated that such label could have been used to interpret differently, whether you will agree with it or not, therefore such label was not clear, because you knew it would be used, so don't put in there, don't give E* that opportunity.


Try it this way:

Dish Network had no intention to disable DVR's once the injunction became active. Therefore, ANY argument could be crafted to use as an excuse: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.​Is there any wonder why this argument failed in front of Judge Folsom and failed with the CAFC during the original appeal?


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## scooper

James Long said:


> I did not say that. I said the label was _*defined*_ for clarity, not _*chosen*_ for clarity.
> 
> DISH would like to define those products as the named receivers with the adjudicated software.
> Tivo would like to define those products as the named receivers regardless of the software.
> 
> Don't forget the first Jedi mind trick ...
> DISH: These are not the receivers ordered disabled.
> Tivo: Damn straight they are!


If Tivo would have been smart - they would have gotten a list of infringing unit SERIAL NUMBERS - then there would be absolutely no doubt .

As far as the "Jedi Mind Trick" -

if the units don't currently have the same Software ruled as infringing - they are not the same units.


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## James Long

scooper said:


> if the units don't currently have the same Software ruled as infringing - they are not the same units.


But are they only colorably different? Judge Folsom said the new software also infringed ... and there is still the whole matter of the "disable the hard drive" specification in the injunction.

If a software change causes the receivers to no longer infringe then perhaps the Jedi trick would work. It would really tick off those that think the receivers should be shut down even if actual infringement of the patent can be avoided via software. But as long as the software infringes it is hard to say the receivers have magically morphed in the middle of the night.


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## scooper

It would not surprise me if the Appeals court tells Folsom that his "infringement analysis" was anything but and he is going to to have to completely re-do it - properly this time.


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## jacmyoung

James Long said:


> But are they only colorably different? Judge Folsom said the new software also infringed ... and there is still the whole matter of the "disable the hard drive" specification in the injunction.
> 
> If a software change causes the receivers to no longer infringe then perhaps the Jedi trick would work. It would really tick off those that think the receivers should be shut down even if actual infringement of the patent can be avoided via software. But as long as the software infringes it is hard to say the receivers have magically morphed in the middle of the night.


Well hello, in each of my posts I have always put in this condition that IF the DVRs with the new software were no longer infringing...

So basically you do not disagree with us, you just do not believe the modified DVRs avoided infringement. That is fine because I do not disagree with you if the modified DVRs did not avoid infringement, E* will fail.

The question has always been that if in a new action the court declares those modified DVRs no longer infringed since 2007? If I read your above post correctly, you agree E*'s "trick" will have worked?


----------



## jacmyoung

Greg Bimson said:


> Try it this way:
> 
> Dish Network had no intention to disable DVR's once the injunction became active.


Did TiVo know E* had no intention to disable the DVRs back in 2006 when they proposed the injunction? If they did know, why didn't TiVo label those DVRs with a better term so TiVo could nail them later? After all do you not agree it has been mainly this label that was used by E* to make their argument and E* has so far suceeded in delaying it because of it? Whose fault was that?

If TiVo did not know E* had no intention to disable the DVRs, thinking back then they had nailed it, which was obviously wrong, can you then be confident that this time TiVo finally had it right? Because after all the wording of the injunction did not change much at all, the only change was the preapproval wording, which BTW Judge Folsom himself refused to follow, because according to him he had no time to preapprove.

So what makes you think TiVo will fare better this time? If you believe things will change for the better, things must change first, so far things have not changed, if there has been any change, i.e. the preapproval, it did not change for the better, if it did not make things worse that is.


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## James Long

jacmyoung said:


> Well hello, in each of my posts I have always put in this condition that IF the DVRs with the new software were no longer infringing...


Really? I think you've missed a few posts. You can always reedit.



> So basically you do not disagree with us, you just do not believe the modified DVRs avoided infringement. That is fine because I do not disagree with you if the modified DVRs did not avoid infringement, E* will fail.


Perhaps you should stop trying to say what I believe? I can handle it in my own posts and you so often get it wrong.



> The question has always been that if in a new action the court declares those modified DVRs no longer infringed since 2007? If I read your above post correctly, you agree E*'s "trick" will have worked?


Since you asked, your reading skills have not improved. I'm reflecting the judgments of the court and a third party view and yet you keep trying to pidgenhole me (and others) in to sides. Please don't.


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## James Long

jacmyoung said:


> Did TiVo know E* had no intention to disable the DVRs back in 2006 when they proposed the injunction?


Has Tivo lost yet? There have been setbacks and delays but have they lost?

It seems that wording was good enough to get them to where they are. I doubt there is any more precise language that Tivo could have asked for in the injunction that would have actually made a difference in the grand scheme of things.

People who win suits generally expect the loser to do as instructed. If they win an injunction that says disable the hard drive they expect the hard drive to be disabled. With a little experience they realize that won't happen until after the appeals but "let it be written let it be done" it will happen. Right?

Sorry. The armed marshals with guns have not arrived on scene.


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## jacmyoung

James Long said:


> Has Tivo lost yet? There have been setbacks and delays but have they lost?


TiVo clearly believes they have been victimized more and more everyday there is a delay. It has been three years since they started the contempt proceeding. You'd think in the mean time they would have tried to change things little for a better chance of winning moving forward, but did they?

The only change they managed to make was to add that preapproval provision, yet the court slammed the door on it by telling the parties it had no time to accommodate that change.

If the court cannot even follow through with its own "improved" order, why do you believe it should prevail on the old, "less improved" order? Is it only the court that may decide not to follow its own order, that E* cannot do the same?

I am not saying E* did not follow the order, just playing devil's advocate. At a minimum the court can make an effort to show how a clear order, such as that preapproval provision, may be followed, if you want E* to do the same to follow an order?


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## jadebox

James Long said:


> Sure it does. That is the LABEL that the parties have decided to apply to those devices.
> 
> They could be called "Joes Barbecue Sauce", "Chocolate Peanut Brittle" or "Rubber Baby Buggy Bumpers" ... it is just a label that was clearly defined to be those receivers. It just makes it easier to refer to them as "Infringing Products" (once that definition is made) than to have to use the definition every time one wanted to refer to the receivers adjudicated to be infringing.


I don't think it's that simple.

"Infringing Products" is a label for a collection of products that were found to have infringed on the patent. By changing the software, EchoStar can arigue, those products no longer exist. Essentially, EchoStar would say, they destroyed the infringing products.

There are, of course, still products with names that are the same as ones named in the injuction. But, they aren't the same products. After all, a name is just a label ....

As an analogy ... a bottle of Joe's Barbecue Sauce is emptied and filled with Chocolate Peanut Brittle. Is it the same product even though the label says "Joes Barbecue Sauce?"

-- Roger


----------



## Greg Bimson

jacmyoung said:


> Did TiVo know E* had no intention to disable the DVRs back in 2006 when they proposed the injunction? If they did know, why didn't TiVo label those DVRs with a better term so TiVo could nail them later? After all do you not agree it has been mainly this label that was used by E* to make their argument and E* has so far suceeded in delaying it because of it? Whose fault was that?


TiVo did not know until April, 2008, that Dish Network had no intention of disabling the DVR's. That was when Dish Network sent out a letter to their dealers detailing that they installed new software on the "Infringing Products".

The delay is not being promulgated by the defined term "Infringing Products". The delay is being promulgated by the infringement analysis AND the interpretation that the injunction may be overbroad by having a non-infringing product within its scope. At least that is what Judge Rader wrote in his opinion, and it also appears within the four questions that the _en banc_ posed.


jadebox said:


> "Infringing Products" is a label for a collection of products that were found to have infringed on the patent. By changing the software, EchoStar can arigue, those products no longer exist. Essentially, EchoStar would say, they destroyed the infringing products.


If Dish Network and EchoStar did say "those products no longer exist", that would have been a bit better defense than they followed the injunction by redefining "Infringing Products".

However, I still go back to the injunction: the eight named DVR's (defined as "Infringing Products" within the injunction) were to have their DVR functionality disabled for the life of the Time Warp patent once the injunction was in full force and effect. In essence, you are saying that if DISH/SATS complied with the injunction by disabling DVR functionality within the "Infringing Products", the software change to the "Infringing Products" would have those products become non-infringing products and therefore no longer subject to the injunction.

That's simply an unrealistic interpretation.


----------



## jacmyoung

How do you interpret the preapproval provision? Is it reasonable to say following such provision if E* seeked preapproval, the court would have followed through and reviewed it? I can understand scheduling issue but it has been almost a year now, there is no sign the court has any interest in following through with that order.

If the court had found time to do a review it is possible it had approved it for implementation? And E* would not be in violation by now?

So what do you suppose the en banc do if you say they should lift the injunction and uphold contempt? Up to when? Up to the point when the court had stopped following its own order?


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## Greg Bimson

The injunction is currenly stayed, so the pre-approval requirement is also stayed. Since there is no active order, there cannot be contempt.


jacmyoung said:


> So what do you suppose the en banc do if you say they should lift the injunction and uphold contempt? Up to when? Up to the point when the court had stopped following its own order?


If the _en banc_ panel at the CAFC upholds contempt and lifts the stay:

1) Upholding contempt only applies to the failure to disable and the sales of merely colorably different products which infringe, and
2) Lifting the stay then triggers the need for DISH/SATS to get pre-approval from the court for the workaround.

If Judge Folsom's decision is upheld completely, once the stay is lifted, even if there is a non-infringing workaround, then DISH/SATS will need to disable DVR functionality on the "Infringing Products" until they go to Judge Folsom and receive approval for the workaround.


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## jacmyoung

E* had already gone to Judge Folsom for preapproval, repeatedly, if the en banc lifts the stay, should the court be held in contempt for so far not following up with the requirement? Surely had the court followed up during the stay, it is possible the court could have approved the implemention at the time the stay is lifted? If so E* would not be in contempt when the stay is lifted?

So you now have the scenario where E*'s violation of the order is possibly the result of the court not doing it own work.

Should the en banc then wait for the court to tell them when it will have time to do the review and to decide whether to preapprove or not, before lifting the stay?


----------



## Greg Bimson

jacmyoung said:


> E* had already gone to Judge Folsom for preapproval, repeatedly, if the en banc lifts the stay, should the court be held in contempt for so far not following up with the requirement?


What requirement? Currently, there isn't any requirement, as the injunction is stayed.


jacmyoung said:


> Surely had the court followed up during the stay, it is possible the court could have approved the implemention at the time the stay is lifted? If so E* would not be in contempt when the stay is lifted?
> 
> So you now have the scenario where E*'s violation of the order is possibly the result of the court not doing it own work.


It depends upon the outcome of the appeal as well as DISH/SATS ability to file their motion.

I know that Dish Network had a couple of different scenarios regarding workarounds. Does anyone recall if Dish Network actually filed a motion for consideration, yet?


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## jacmyoung

E* made the request twice if I recall correctly, the first time TiVo replied and Judge Folsom said he did not have time, even though he acknowledged it was very important to resolve the preapproval issue for the parties. The second time I don't know if TiVo replied or not but Judge Folsom again said he had no time to address it.

But this has nothing to do with if such provision is in effect or not, as long as how such provision is carried out now may have a serious impact on the parties if and when the stay is lifted, you cannot blame E* for not following the order when the possibility exists that the process could have avoided any future violation.

If the stay is lifted, how fast do you think Judge Folsom must act on such request before the court is itself found to have violated the preapproval order? A week? A month? Six months? We know Judge Folsom is booked solid for a few months at any given time.


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## Greg Bimson

Bolded for emphasis:


jacmyoung said:


> But this has nothing to do with if such provision is in effect or not, as long as how such provision is carried out now may have a serious impact on the parties if and when the stay is lifted, *you cannot blame E* for not following the order* when the possibility exists that the process could have avoided any future violation.


I get it.

No one can blame DISH/SATS for not disabling units because they don't want to disable the units, as it may impact existing customers and more importantly DISH/SATS' bottom lines.

So court orders are simply "guidelines". I understand now.



jacmyoung said:


> E* made the request twice if I recall correctly, the first time TiVo replied and Judge Folsom said he did not have time, even though he acknowledged it was very important to resolve the preapproval issue for the parties. The second time I don't know if TiVo replied or not but Judge Folsom again said he had no time to address it.


That's why I asked if DISH/SATS filed a motion. I don't recall if it was a motion for consideration, etc., or simply a request for a hearing to determine next steps.


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## James Long

jacmyoung said:


> If the stay is lifted, how fast do you think Judge Folsom must act on such request before the court is itself found to have violated the preapproval order? A week? A month? Six months? We know Judge Folsom is booked solid for a few months at any given time.


We will know after the appeals court ruling. After all - one of the questions is whether or not a contempt proceeding is the proper place to handle a modification. If the appeals court says there needs to be a jury trial the whole schedule gets thrown for a loop.

Personally I hope preapproval gets thrown out. Notification should be enough, with the defendant taking the risk that their modification is not good enough if they decide to market a modified product. Requiring preapproval puts an unneeded delay on the defendant's ability to market a non-infringing product. If the product turns out to be infringing the plaintiff can be compensated financially. Notification seems fair - but not a preapproval.


----------



## jacmyoung

"Greg Bimson" said:


> Bolded for emphasis:I get it.
> 
> No one can blame DISH/SATS for not disabling units because they don't want to disable the units, as it may impact existing customers and more importantly DISH/SATS' bottom lines.
> 
> So court orders are simply "guidelines". I understand now.That's why I asked if DISH/SATS filed a motion. I don't recall if it was a motion for consideration, etc., or simply a request for a hearing to determine next steps.


E* filed the request, TiVo replied, that was a motion, the court ruled on it, it happened twice already.


----------



## jacmyoung

"James Long" said:


> We will know after the appeals court ruling. After all - one of the questions is whether or not a contempt proceeding is the proper place to handle a modification. If the appeals court says there needs to be a jury trial the whole schedule gets thrown for a loop.
> 
> Personally I hope preapproval gets thrown out. Notification should be enough, with the defendant taking the risk that their modification is not good enough if they decide to market a modified product. Requiring preapproval puts an unneeded delay on the defendant's ability to market a non-infringing product. If the product turns out to be infringing the plaintiff can be compensated financially. Notification seems fair - but not a preapproval.


Preapproval is the same as notification, when TiVo insisted E* should have notified, it of course also meant the court would then decide whether to ok it or not. That was why the preapproval was added, not simply notification.

If a part of the order is thrown out, the whole thing gets thrown out. I don't know how the court can keep an order in part, an order in part is of course no longer the same order, i. e. the order that was issued by Judge Folsom would no longer exist before it has a chance to be in effect.

But then again E* quickly informed the court it's design around after the last order was in force didn't they? Because TiVo took them to court soon after. If we can agree E* was not in violation during the stay of the order and you also believe a simple notification was fine, E* did just that you know, willingly or not they did.

Are we saying then the only thing left is the new trial? If the new trial is in E*'s favor, E* would have done what you believe was proper?


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## dfd

"jacmyoung" said:


> Preapproval is the same as notification, when TiVo insisted E* should have notified, it of course also meant the court would then decide whether to ok it or not. That was why the preapproval was added, not simply notification.
> 
> If a part of the order is thrown out, the whole thing gets thrown out. I don't know how the court can keep an order in part, an order in part is of course no longer the same order, i. e. the order that was issued by Judge Folsom would no longer exist before it had a chance to be in effect.


Pre approval is not the same as notification.

Pre approval requires approval.

Notification does not.

English.


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## James Long

jacmyoung said:


> Preapproval is the same as notification, when TiVo insisted E* should have notified, it of course also meant the court would then decide whether to ok it or not. That was why the preapproval was added, not simply notification.


Any preapproval that is more than an acknowledgement of notification is a problem.

Notification is being up front about changes so the parties are not arguing a year later that something changed that the court and plaintiffs didn't know about.

Preapproval is the court deciding if the changes can be put in to effect. Preapproval could involve a judgement as to whether the changes were enough to avoid infringement or were enough to make the product more than colorably different. Not just an acknowledgement that there was a claim of change.

Notification would not require any response from the court. Preapproval would.



> If a part of the order is thrown out, the whole thing gets thrown out. I don't know how the court can keep an order in part, an order in part is of course no longer the same order, i. e. the order that was issued by Judge Folsom would no longer exist before it has a chance to be in effect.


Appeals courts CAN do all sorts of things. Their answers are rarely "yes/no" on an order. They like to give essay answers.


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## jacmyoung

But they cannot throw out a part of the order and keep the rest. Taking away a part, the same order no longer exists, once it no longer exists, well it no longer exists.

Again E* did inform the court soon after the last order went into effect, because TiVo took them to court. Was that notification not enough? Because we seem to agree E* cannot violate during the stay, and you believe notification was good enough, E* did just that you know. So if the en banc throws out the new order, request a new trial, and the new trial ends up in E* favor, it would be just fine for E*?

Well then you are saying what I am saying, with the only exception that there might be a few weeks between when the stay was lifted in 2008, to the time E* notified the court once the contempt process started.

So if E* prevails in a new trial, E* would just be in violation for that few weeks back in 2008? You know from the time the stay was lifted, to the time they notified the court?


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## Greg Bimson

jacmyoung said:


> But they cannot throw out a part of the order and keep the rest. Taking away a part, the same order no longer exists, once it no longer exists, well it no longer exists.


The CAFC may mandate that Judge Folsom modify his order. They may just let the order stand as-is (like they did almost three years ago).

And you wonder why I say we may as well wait for the CAFC ruling. 


jacmyoung said:


> Again E* did inform the court soon after the last order went into effect, because TiVo took them to court. Was that notification not enough? Because we seem to agree E* cannot violate during the stay, and you believe notification was good enough, E* did just that you know. So if the en banc throws out the new order, request a new trial, and the new trial ends up in E* favor, it would be just fine for E*?


I don't think DISH/SATS will get off that easy. I really think the CAFC will stick it to DISH/SATS for failure to disable because they won't want DISH/SATS or any other possible infringers to be able to ignore a court order. I have to believe that part of the contempt will stand.

However, DISH/SATS did not inform the court during the last stay. The first Judge Folsom heard that the order wasn't followed was during briefs filed by TiVo _after_ the injunction was in effect. I still remember that during one of the hearings DISH/SATS said TiVo could have figured out there was a pending workaround because they could have ready DISH/SATS 10-Q and Judge Folsom questioned how the court could be notified.

And I still have a difficult time dragging Joe Sixpack's DVR back into court for another evaluation. It is nonsense that a DVR that has been dragged into court and evaluated as an infringement does not stay under that court's jurisdiction due to any modifications that have been applied to it.


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## phrelin

Greg Bimson said:


> And I still have a difficult time dragging Joe Sixpack's DVR back into court for another evaluation. It is nonsense that a DVR that has been dragged into court and evaluated as an infringement does not stay under that court's jurisdiction due to any modifications that have been applied to it.


Nonsense has been forced on plaintiffs and defendants over the years. Should be interesting to see what the court will do.

When, again, might the court do something? Seems like it's been forever.


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## jacmyoung

Greg if you really believe the en banc panel is fed up and will likely establish new standards to help TiVo, all I can say is don't hold your breath because if there is a need to have a new standard, it necessarily proves there was a lack of some standard, or the existing standard is not clear.

E* cannot violate a standard or a rule that did not exist or was not clear. Be careful what you wish for.


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## Greg Bimson

jacmyoung said:


> Greg if you really believe the en banc panel is fed up and will likely establish new standards to help TiVo...


New standard? The standard on any recall or destroy order has been absolute. The standard for "disable" will probably be, as well, and that is not a new standard.

I simply expect existing standards to be upheld.


phrelin said:


> When, again, might the court do something? Seems like it's been forever.


I'd expect a decision soon, as defined by Dish Network.


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## jacmyoung

"Greg Bimson" said:


> New standard? The standard on any recall or destroy order has been absolute. The standard for "disable" will probably be, as well, and that is not a new standard.
> 
> I simply expect existing standards to be upheld.I'd expect a decision soon, as defined by Dish Network.


Ok, I thought you said at one point KSM was no good, the Qs asked by the en banc implied they wanted to establish some new standard. Maybe I read you wrong. So long we are on the same page on this one.


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## jacmyoung

"Greg Bimson" said:


> However, DISH/SATS did not inform the court during the last stay...


I almost missed this one, you said over and over if the order is stayed there is no requirement, why you said the court does not have to review for preapproval for example, why then you seemed to say E* should have notified during the last stay?

Why is that notifying after the stay was lifted was not good enough that it should have been done during the last stay?


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## Greg Bimson

jacmyoung said:


> I almost missed this one, you said over and over if the order is stayed there is no requirement, why you said the court does not have to review for preapproval for example, why then you seemed to say E* should have notified during the last stay?





jacmyoung said:


> Again E* did inform the court soon after the last order went into effect, because TiVo took them to court.





Greg Bimson said:


> However, DISH/SATS did not inform the court during the last stay. The first Judge Folsom heard that the order wasn't followed was during briefs filed by TiVo after the injunction was in effect.


Just pointing out that DISH/SATS never informed the court of the workaround. TiVo did.

However, just for giggles, yes, DISH/SATS should have filed a motion for clarification, stay or not. But that would have ruined their gameplan to game the system by forcing an appeal during a contempt proceeding. Notice how DISH/SATS did nothing until the 30 May 2008 hearing, and once DISH/SATS learned that TiVo was filing a motion for contempt, DISH/SATS went to Delaware to file their declaratory suit regarding infringement of the modified devices.

It still goes back to my point that as crystal clear the order to disable was written, DISH/SATS had no intention to follow it. It is telling from the original reply to TiVo's motion for contempt that of the 20 pages allotted, DISH/SATS spent 17 discussing the new software and less than two discussing how they adhered the injunction.

DISH/SATS waited for TiVo to do something, and then had to play from a defensive position. If DISH/SATS' position was so strong, they'd have been on the _offensive_.


----------



## jacmyoung

Greg Bimson said:


> Just pointing out that DISH/SATS never informed the court of the workaround. TiVo did.


Not true, before the injunction was lifted, E* publicly said they had done the work around, right after the injunction was lifted, but before any court actions, E* contacted TiVo, not only informed TiVo of the work around, but provided TiVo with the new software code so TiVo could examine the work around.



> However, just for giggles, yes, DISH/SATS should have filed a motion for clarification, stay or not.


If so, the court should follow through with the motion and act on it, not simply saying it had no time, stay or not. So I do not want to hear another excuse that the court does not have to review E*'s new work around for pre-approval, just because during the stay such is not required. Other wise you are holding E* to a higher standard than the court.

E* during the last stay failed to inform the court, that was a big no, even though you insisted during the stay nothing really needs to be done, so now during the stay, it is a big no if the court decides it simply has no time to follow through with its own pre-approval order.



> But that would have ruined their gameplan to game the system by forcing an appeal during a contempt proceeding.


But if the court actually made the effort to review E*'s pre-approval motion in the past year, it could have ruined TiVo's game plan too you know, because what if after the review the court decided to pre-approve the new work around for implementation already? So you see can't have it both ways.



> Notice how DISH/SATS did nothing until the 30 May 2008 hearing, and once DISH/SATS learned that TiVo was filing a motion for contempt, DISH/SATS went to Delaware to file their declaratory suit regarding infringement of the modified devices.


Many things happened between E* and TiVo before 5/30/08, you just forgot about them.



> DISH/SATS waited for TiVo to do something, and then had to play from a defensive position. If DISH/SATS' position was so strong, they'd have been on the _offensive_.


E* initiated the contact with TiVo after the stay was lifted, believing that after TiVo looked at the new code TiVo would have agreed they no longer infringed, that was it, but TiVo decided to go after E* anyway.

Now E*'s is again taking initiative, motioned the court for pre-approval, stay or not, as you said, but the court decided no, it had no time to deal with it. So why do you think it would have made any difference back then had E* initiated any sort of "offense" back then? What exactly the difference it would have made? Still the same court, same judge, same TiVo, right?


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## James Long

Greg Bimson said:


> Just pointing out that DISH/SATS never informed the court of the workaround. TiVo did.





jacmyoung said:


> Not true, before the injunction was lifted, E* publicly said they had done the work around, right after the injunction was lifted, but before any court actions, E* contacted TiVo, not only informed TiVo of the work around, but provided TiVo with the new software code so TiVo could examine the work around.


Do you understand the difference between informing the public and informing the court?
That's why Judge Folsom was ticked at DISH ... they _*didn't*_ inform the court.


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## Greg Bimson

Along with the fact that the court was never informed...


jacmyoung said:


> If so, the court should follow through with the motion and act on it, not simply saying it had no time, stay or not. So I do not want to hear another excuse that the court does not have to review E*'s new work around for pre-approval, just because during the stay such is not required. Other wise you are holding E* to a higher standard than the court.


Funny. Other than just over $100 million, over seven years of litigation is still being tied up in the courts and blame for failure to act on a motion is being placed on the arbiter, who is supposed to remain blameless. That must sum up respect for both the courts and the law.


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## jacmyoung

Greg Bimson said:


> Along with the fact that the court was never informed...Funny. Other than just over $100 million, over seven years of litigation is still being tied up in the courts and blame for failure to act on a motion is being placed on the arbiter, who is supposed to remain blameless. That must sum up respect for both the courts and the law.


We don't know if in the end E* will have to pay anything do we? I know you believe E* will, but still it is not a fact yet.

So shall we stick to what we know? So far so much was said about how E* did not follow the orders, yet you can not dispute that the court had also failed to follow its own order. I am not blaming the court, there are circumstances which may explain why a specific order is not followed to the extent you or I believe should be followed.

If you don't believe the court should be blamed for not making an effort to follow through with its own order, does that not make you think twice when you insist how important it is for E* to follow the order, in the way you think it must be followed?

You want me to respect the court, you must show me why I should respect the court when you can no longer dispute that the court itself did not follow through with its own order.

You want me to respect the law, when you said yourself KSM (the guiding case law) was no good?


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## jacmyoung

James Long said:


> Do you understand the difference between informing the public and informing the court?
> That's why Judge Folsom was ticked at DISH ... they _*didn't*_ inform the court.


Yes they did, only that they did so after the stay was lifted. I thouhgt you agreed when the order was stayed there was no requirement of anything so naturally it would be fine if E* informed the court during that status meeting? After all isn't what that status meeting after the lifting of the stay was designed for?

Or did you mean TiVo forced E* to inform? No TiVo did not. Soon after the stay was lifted, E* told TiVo everything and provided the new code, TiVo did not say it would bring the contempt charge so TiVo could not have forced E* to tell at that time. I don't know who was the first to tell the court in that status meeting about the work around, but even if TiVo was the first to tell, E* was next, TiVo could not have informed the court had E* not told TiVo about it.

So what now the defendant beware not to tell the plaintiff anything? Who knows the plaintiff might beat the defendant to it and tell the court, therefore prove that the defendant did not inform, despite the fact the plaintiff could not have been the first to inform had the defendant not informed first?


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## Martin Tupper

James Long said:


> We will know after the appeals court ruling. After all - one of the questions is whether or not a contempt proceeding is the proper place to handle a modification. If the appeals court says there needs to be a jury trial the whole schedule gets thrown for a loop.
> 
> Personally I hope preapproval gets thrown out. Notification should be enough, with the defendant taking the risk that their modification is not good enough if they decide to market a modified product. Requiring preapproval puts an unneeded delay on the defendant's ability to market a non-infringing product. If the product turns out to be infringing the plaintiff can be compensated financially. Notification seems fair - but not a preapproval.


Notification should be enough for _new_, modified products being brought to market. While those products may still run the risk of being no more than colorably different than the "Infringing Products", they have not yet been adjudicated.

However, pre-approval should be required before any of the existing "Infinging Products", which actually were adjudicated, found to be infringing, and ordered to be disabled, should be allowed to be re-enabled. As far as the courts are concerned, those boxes use infringing software. It should be incumbent on the defendant to demonstrate that it no longer does, before being allowed to start them back up again.


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## Curtis52

After the stay was lifted, Dish apparently thought it was important to immediately inform its distributors of the workaround but not the court. TiVo informed the court and the status meeting was set up weeks later.


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## Greg Bimson

jacmyoung said:


> We don't know if in the end E* will have to pay anything do we? I know you believe E* will, but still it is not a fact yet.


Uh, DISH/SATS paid just over $100 million back in 2008.


jacmyoung said:


> If you don't believe the court should be blamed for not making an effort to follow through with its own order, does that not make you think twice when you insist how important it is for E* to follow the order, in the way you think it must be followed?


There is currently no order to follow, as the order is stayed.


jacmyoung said:


> You want me to respect the law, when you said yourself KSM (the guiding case law) was no good?


I said in this case _KSM_ is overbroad. That does not equate to the case law being "no good".


jacmyoung said:


> Yes they did, only that they did so after the stay was lifted. I thouhgt you agreed when the order was stayed there was no requirement of anything so naturally it would be fine if E* informed the court during that status meeting? After all isn't what that status meeting after the lifting of the stay was designed for?


We asked the court for a stay because if the injunction is not stayed, we'll have to disable DVR functionality from 3 million users. And since the stay, we've come up with a completely new interpretation of the injunction that doesn't require us to disable anything.

It's funny how DISH/SATS interpreted the injunction two different ways and didn't remotely attempt to get clarification from the court, yet they didn't bother making any argument about the injunction upon appeal because they interpreted the injunction two different ways.


----------



## jacmyoung

Greg Bimson said:


> Uh, DISH/SATS paid just over $100 million back in 2008.


Then what are you complaining about?



> There is currently no order to follow, as the order is stayed.I said in this case _KSM_ is overbroad. That does not equate to the case law being "no good".


Not only there was never a requirement to notify in the old order, but as you insist during the stay there is no rerquirement even if there is a requirement, then why are you complaining that E* did not notify during the last stay?



> We asked the court for a stay because if the injunction is not stayed, we'll have to disable DVR functionality from 3 million users. And since the stay, we've come up with a completely new interpretation of the injunction that doesn't require us to disable anything.


E* never changed its interpretation, TiVo did. As Judge Moore pointed out at the end of the hearing, each party can easily walk away from the injunction believing based on its own interpretation it has won.

TiVo on the other hand told both E* and the court back then its injunction only served to prevent infringement, "nothing more, nothing less." Now TiVo insist its injunction prevents the DVR service even if the DVR service no longer infringed.



> It's funny how DISH/SATS interpreted the injunction two different ways and didn't remotely attempt to get clarification from the court, yet they didn't bother making any argument about the injunction upon appeal because they interpreted the injunction two different ways.


Show me where was the other interpretation? E*'s interpretation had always been if the products still infringed, they would have to be disabled, if later no longer infringed then no, such interpretation was derived from what TiVo had told them back then, that the order was to prevent infringement, nothing more, nothing less, of course TiVo now says differently.

If you are referring to E*'s first appeal where E* told the appeals court the DVRs would be disabled if not stayed, at that time they had not successfully stopped infringement, there was no telling if their work around would work, they said so even in their quarterly 10K I believe. Of course at that time E* had no way out had the order not stayed, because the DVRs with the old software did infringe, they would have to disable them if the order was not stayed, there was no work around at that time.


----------



## jacmyoung

Curtis52 said:


> After the stay was lifted, Dish apparently thought it was important to immediately inform its distributors of the workaround but not the court. TiVo informed the court and the status meeting was set up weeks later.


E* publicly stated they had a work around installed even before the injunction was lifted, I recall the first time I heard it was at the end of 07. Soon after the stay was lifted E* also contacted TiVo, not only told TiVo officially what they did, but provided the source code, thinking TiVo would be satisfied. Had TiVo been satisfied, it would have been over, notification would not have been an issue.

But TiVo ran to the court. Yes technically TiVo was the first to inform the court, but you can't be serious to use that against E* since had E* never disclosed it, you would not be able to argue that E* was not the first to inform, wouldn't you?

So long as we can agree that during the stay, there is no requirement, therefore you cannot find any violation for not notifying the court during the stay.

So now what, it hinges on who was the first to run to the court to inform? The second guy gets slammed for not running fast enough? Again E* was not forced to inform, it informed TiVo before it knew TiVo would run to the court.


----------



## Greg Bimson

Greg Bimson said:


> Uh, DISH/SATS paid just over $100 million back in 2008.





jacmyoung said:


> Then what are you complaining about?





jacmyoung said:


> We don't know if in the end E* will have to pay anything do we? I know you believe E* will, but still it is not a fact yet.


I am simply pointing out that you believe DISH might not have to pay anything, but my point was simply they have done so already, and it is all that TiVo has to show for seven years of litigation.


jacmyoung said:


> TiVo on the other hand told both E* and the court back then its injunction only served to prevent infringement, "nothing more, nothing less." Now TiVo insist its injunction prevents the DVR service even if the DVR service no longer infringed.


That's because TiVo received an injunction that the adjudged infringing products with an end user must have DVR functionality disabled. Disablement would stop infringement, and if DISH/SATS wanted to do something other than disable DVR functionality on those receivers, it should have asked the court for clarification.

Considering DISH/SATS would later ask the court to examine the validity of their warranty replacement program with respect to the injunction, they certainly could have asked if modifying the receivers in a way other than the process mandated by the court would still be within the framework of the injunction.

Instead, we get the two pages of "we followed the injunction", by redefining a defined term within the injunction, preceded by 17 pages of how this software makes the devices no longer infringing.


jacmyoung said:


> E* publicly stated they had a work around installed even before the injunction was lifted, I recall the first time I heard it was at the end of 07. Soon after the stay was lifted E* also contacted TiVo, not only told TiVo officially what they did, but provided the source code, thinking TiVo would be satisfied. Had TiVo been satisfied, it would have been over, notification would not have been an issue.


No one ever thought DISH/SATS was going to apply the workaround to devices ordered disabled. The assumption was that DISH/SATS was going to use the workaround on devices still within their supply chain.

Heck, even the former VP of Legal for DISH/SATS, David Moskowicz, said during an analyst call that the court would have to bless the changes.


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## jacmyoung

Greg Bimson said:


> I am simply pointing out that you believe DISH might not have to pay anything, but my point was simply they have done so already,


Of course I meant additional costs. I did not say I believe, I said we did not know, maybe we should talk about what is already known.



> and it is all that TiVo has to show for seven years of litigation.


Whose fault was that? You are not suggesting E* was at fault for defending itself? Maybe the court is at fault? But wait you respect the court. Maybe the law is at fault, but you also respect the law, the only one left to blame is TiVo then.



> Considering DISH/SATS would later ask the court to examine the validity of their warranty replacement program with respect to the injunction, they certainly could have asked if modifying the receivers in a way other than the process mandated by the court would still be within the framework of the injunction.


Let's suppose E* did ask for clarification back then, would you not agree the court would have allowed it? That is if the court had determined indeed the modified DVRs would no longer infringe? But how long do you think it would take for the court to decide? It has been three years the court has not made a final decision yet. What if in the end the modified DVRs were found to not infringe, and the court realizes back five years ago it would indeed have been fine had E* installed the new software to prevent infringement? Who is suppose to pay back the loss if E* was right?

On the other hand TiVo can always collect damages and even enhanced damages if in the end E* was wrong. Now if there is a way for E* to recover any loss if E* is correct in the end, I can see your point more.

It is already proven that the court is not capable of handling any noftifications, at least not on issues as complex. After repeatedly notified the court of their new work around proposals, the court had made it clear it simply had no time to handle such notification. It was not because the order was stayed, the court did not say that, the reason was the court simply had no time to handle such issues, even if the stay is lifted, the court still will have no time to handle such notification.

Wasn't that enough to at least show the notification requirement, at least for issues of such complexity, was meaningless?



> Heck, even the former VP of Legal for DISH/SATS, David Moskowicz, said during an analyst call that the court would have to bless the changes.


When did he say that?


----------



## scooper

If the court says it has no time for notifications (when the court THEMSELVES obligated themself to), then why shouldn't Echostar presume they are OK to deploy ? As Jacmyoung just pointed out - IF the workaround is still found to be infringing, there's always additional damages available.

This also brings the further issue - if the court doesn't have to follow it's own orders (i.e. the notifications) - then why should anyone else worry about following the court's orders ?


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## Greg Bimson

Greg Bimson said:


> and it is all that TiVo has to show for seven years of litigation.





jacmyoung said:


> Whose fault was that? You are not suggesting E* was at fault for defending itself? Maybe the court is at fault? But wait you respect the court. Maybe the law is at fault, but you also respect the law, the only one left to blame is TiVo then.


I'm not assigning blame, just pointing out the hypocritical nature of this next thought:


jacmyoung said:


> Let's suppose E* did ask for clarification back then, would you not agree the court would have allowed it? That is if the court had determined indeed the modified DVRs would no longer infringe? But how long do you think it would take for the court to decide? It has been three years the court has not made a final decision yet. What if in the end the modified DVRs were found to not infringe, and the court realizes back five years ago it would indeed have been fine had E* installed the new software to prevent infringement? Who is suppose to pay back the loss if E* was right?


Speed of the court is supposed to work against TiVo while DISH/SATS defends itself, yet if DISH/SATS wants the court to consider something such as a workaround, it is supposed to be fast-tracked?

I recall that the "motion" to consider the workaround was under seal. We don't know what type of "motion" it is. I can assume if DISH/SATS moved the court that it simply wouldn't be placed on the back-burner.

But I still don't know what Judge Folsom is supposed to consider, because the briefs are sealed.


----------



## jacmyoung

Greg Bimson said:


> I'm not assigning blame, just pointing out the hypocritical nature of this next thought:Speed of the court is supposed to work against TiVo while DISH/SATS defends itself, yet if DISH/SATS wants the court to consider something such as a workaround, it is supposed to be fast-tracked?
> 
> I recall that the "motion" to consider the workaround was under seal. We don't know what type of "motion" it is. I can assume if DISH/SATS moved the court that it simply wouldn't be placed on the back-burner.
> 
> But I still don't know what Judge Folsom is supposed to consider, because the briefs are sealed.


My above comment was simply to show that notification or not, makes no difference. Who cares what if some of the docs are sealed? We know E* told the court their new designs were in beta testing, they wanted the court to review them for preapproval so they could implement them if the court approved them for implementation. After all the new order said just that, get approval for implementation.

Now the notification is given, the court has no time to review them. Why do you believe notification during the stay last time would have made any difference? The court would still have no time back then, the stay would lift, TiVo would bring E* to court. Maybe TiVo would not be able to argue hey they did not notify. But then would the damages be less because of that? Would TiVo have asked for $500M instead of $1B? Would the court have assessed $500M damages instead of $200M? None of the damages seemed to be related to anything but the infringement anyway, so what difference would the notification have made?

Do you agree or not that at a minimum, if TiVo or the court wants to argue that notification would be a good idea back then, that they would at least have tried to show E* notification would actually be a better way to do things? So why after all the argument about notification, simply slam the door on it and say hey I have no time to deal with it after all?


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## Greg Bimson

jacmyoung said:


> My above comment was simply to show that notification or not, makes no difference. Who cares what if some of the docs are sealed? We know E* told the court their new designs were in beta testing, they wanted the court to review them for preapproval so they could implement them if the court approved them for implementation. After all the new order said just that, get approval for implementation.


That's why I asked (also because I don't know) what the sealed documents are.

Put it this way: if it isn't a motion, it could be considered a waste of the court's time.


jacmyoung said:


> Why do you believe notification during the stay last time would have made any difference? The court would still have no time back then, the stay would lift, TiVo would bring E* to court.


Because there would have been a motion for clarification of the injunction, something that Judge Folsom would most likely have considered. Complaining that the court has no time while the courts go through their appeals process twice during the past five years while failing to disable as instructed is a bit disingenuous.


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## jacmyoung

"Greg Bimson" said:


> That's why I asked (also because I don't know) what the sealed documents are.
> 
> Put it this way: if it isn't a motion, it could be considered a waste of the court's time.


Wouldn't a notification back then also a waste of court's time?

There were no less than 10 sealed docs submitted, including source codes and non-infringement analyses by a law firm, even though they were sealed the titles said it all. No one said it would be a waste of time, not TiVo nor the court, the court even recognized the need for resolution, only that it had no time to do it.

In your view what kind of "notification" would not be a waste of time?



> .Because there would have been a motion for clarification of the injunction, something that Judge Folsom would most likely have considered.


I thought we were discuss notification, not clarification. E* at that time was clear that if they made the DVRs non-infringing, it would be fine because TiVo told them the order would not prevent anything non-infringing. If you are clear, why must you seek clarification?



> Complaining that the court has no time while the courts go through their appeals process twice during the past five years while failing to disable as instructed is a bit disingenuous.


I am not complaining that the court has no time, the court says it has no time, I am happy because it helps my argument that notification would have been useless.


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## Greg Bimson

jacmyoung said:


> Wouldn't a notification back then also a waste of court's time?
> 
> There were no less than 10 sealed docs submitted, including source codes and non-infringement analyses by a law firm, even though they were sealed the titles said it all. No one said it would be a waste of time, not TiVo nor the court, the court even recognized the need for resolution, only that it had no time to do it.
> 
> In your view what kind of "notification" would not be a waste of time?


A motion, which is by definition NOT a "notification". DISH/SATS would like the court to rule on something. That implies a motion would be required.


jacmyoung said:


> I thought we were discuss notification, not clarification. E* at that time was clear that if they made the DVRs non-infringing, it would be fine because TiVo told them the order would not prevent anything non-infringing. If you are clear, why must you seek clarification?


If it is clear that "Infringing Products" must be redefined in order to get some kind of tortured interpretation, maybe you aren't clear.

The expectation from the formation of the injunction until its issuance was that the "Infringing Products" were to be disabled. Instead, we get this half-baked theory that whatever changes made to software make all receivers non-infringing, yet no court needs to make that determination?

DISH/SATS argument is that making a formerly infringing DVR non-infringing means the injunction is ambiguous and overbroad because an injunction cannot have a scope that targets a product that is non-infringing.

However take the case if DISH/SATS actually followed the injunction: a DVR which has its DVR functionality removed for the life of the injunction is now a non-infringing product. DISH/SATS argument that a non-infringing product cannot be subject to an injunction because it is no longer infringing is a collateral attack on the injunction.

Oh, and there is a ruling that these same receivers are still infringing, which makes the argument moot.

Yes, the Court of Appeals could strike down parts of the injunction if they feel it is overbroad. But I certainly cannot see where ordering the DVR's found infringing disabled is overbroad. The Court of Appeals certainly didn't have a problem with the injunction during the last appeal; they let the injunction stand and removing their stay caused it to become active.


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## L3G3ND

Do u work for dish? or echostar?


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## jacmyoung

If you can see the en banc throws out part of the current injunction, do you then not agree the entire current injunction must be thrown out?

Once a part of the order is gone, the order, as issued by the court, no longer exists as issued. Now the en bank can order the district court to reconsider a new order, but there will no longer be any effective order since 3/10.

If you also can see that the en banc may order a new trial, you then must also agree it is possible later the court may find those DVRs no longer infringed since 2007? If so damages from 2007 up will also be gone?

So even if you are correct that E* must be found in violation of the disabling provision, you do not deny that the possibility exists that E* might not have to pay much?

That is if the en banc throws out the current order, orders a new action and later the district court finds the DVRs non-infringing since 07.

Now you see why you and I may be in agreement, that is if later the DVRs may be found non-infringing since 07. With the exception that you believe E* still violated the old order but as I pointed out so far the sanctions are mostly based on damages, which are based on infringement, so no infringement from 07 the monetary penalty will be gone.

The contempt would just be a formality. How do you like that? I am not trying to brush off a violation, only to point out, no infringement, no violation, even if you strongly believe there was violation, it had no substance, if the infringement had stopped after the modification in 07.


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## Greg Bimson

jacmyoung said:


> If you can see the en banc throws out part of the current injunction, do you then not agree the entire current injunction must be thrown out?
> 
> Once a part of the order is gone, the order, as issued by the court, no longer exists as issued. Now the en bank can order the district court to reconsider a new order, but there will no longer be any effective order since 3/10.


It depends, specifcally on what is tossed...

For example, the infringement regarding the Hardware Claims were reversed and remanded, and the injunction mentions they were found infringing. However, that change did not cause the injunction to be rewritten.

And I still don't believe the injunction will be reversed and rewritten.


jacmyoung said:


> If you also can see that the en banc may order a new trial, you then must also agree it is possible later the court may find those DVRs no longer infringed since 2007? If so damages from 2007 up will also be gone?
> 
> So even if you are correct that E* must be found in violation of the disabling provision, you do not deny that the possibility exists that E* might not have to pay much?


Well, one dollar of the $2.25 (or four-ninths) of the award is for contempt. I suspect that DISH/SATS would only be assessed four-ninths of the current award. That is still a fairly large chunk of change.



jacmyoung said:


> That is if the en banc throws out the current order, orders a new action and later finds the DVRs non-infringing.


That's a pretty big IF.

I suspect that a new trial will not happen. Based upon the injunction, all that is needed is the _KSM_ two-prong test for contempt of the order against infringement.

If anything, it may be ordered that the infringement analysis will have to be redone, and it can be redone within a contempt proceeding.


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## Greg Bimson

With the edit of the preceding post:


jacmyoung said:


> Now you see why you and I may be in agreement, that is if later the DVRs may be found non-infringing since 07. With the exception that you believe E* still violated the old order but as I pointed out so far the sanctions are mostly based on damages, which are based on infringement, so no infringement from 07 the monetary penalty will be gone.


Yes, but the problem is once the injunction under review becomes active and still has the disable clause. DISH/SATS won't be able to "interpret" and will most likely have to disable those DVR's.


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## jacmyoung

"Greg Bimson" said:


> With the edit of the preceding post:Yes, but the problem is once the injunction under review becomes active and still has the disable clause. DISH/SATS won't be able to "interpret" and will most likely have to disable those DVR's.


That is not the point, the point is you agreed part of the current injunction could be thrown out, I just explained if that happens then the entire current order is out. Also the sanction was in the form of "enhanced damages" which can be more than the actual damages up to three times of them. Judge Folsom added one dollar to the $1.25 to make it $2.25. If the damages no longer exist then the enhanced damages no longer stand. No damages, no enhanced damages either.

Put it this way, you'd better hope that the en banc does not order a new action. If they do, in all practicality E* wins.


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## peak_reception

Just over 4 months now since the en-banc oral arguments. My sense is that the longer it takes, the better E*s odds of some kind of remand, relief, or extension, become. 

Complications take more time to hash out. If TiVo were to win on all counts I bet we would have known it by now. Splitting the baby is probably now in progress. Just a guess of course.


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## Greg Bimson

jacmyoung said:


> Put it this way, you'd better hope that the en banc does not order a new action. If they do, in all practicality E* wins.


But NOT if the disable clause stands.


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## jacmyoung

Greg Bimson said:


> But NOT if the disable clause stands.


I had tried to explain, whether the disable clause stands or not will have no practical meaning, if the modified DVRs are found non-infringing since 2007, after a new action. Without infringement, there will be no damages, therefore no enhanced damages. Violation of the disabling clause without sanctions will just be a formality, even if it stands.

In other words, it will be just what I said all along, which had been what the law said all along, no infringement, no violation, even if you believe there was violation.


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## Greg Bimson

jacmyoung said:


> I had tried to explain, whether the disable clause stands or not will have no practical meaning, if the modified DVRs are found non-infringing since 2007, after a new action.


Don't you think that is a big "IF"?

What you are basically saying with this sentence is that the CAFC will find the modified DVR's non-infringing (which is far from a slam dunk). More likely would be a reversal of the infringment analysis, which means even if a new action is required, the disable clause would still stand.


jacmyoung said:


> In other words, it will be just what I said all along, which had been what the law said all along, no infringement, no violation, even if you believe there was violation.


Only if the CAFC rules that there is no infringement, and like I said, that is a fairly large task.


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## jacmyoung

Let me try an easy way, which was the point made from the very beginning, no infringement, no punishment, even if the court finds violation. A finding of violation without punishment is a hollow finding. There is no means under the current patent law to punish anyone if infringement is not there.

This is not about some "big if" rather a bottom line statement. Again I have never disputed, nor has E*, that if the DVRs continued to infringe, they would be in the wrong.

The CAFC is not tasked to do infringement analysis, though they can overturn the lower court's conclusion, then remand the issue for further proceeding. There were times when the issues were so clear that after the remand the lower courts simply resolved the issues in summary proceedings or the parties simply dropped the issues.


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## Greg Bimson

jacmyoung said:


> Let me try an easy way, which was the point made from the very beginning, no infringement, no punishment, even if the court finds violation. A finding of violation without punishment is a hollow finding. There is no means under the current patent law to punish anyone if infringement is not there.


You are missing the point. It goes to both the original finding of contempt by Judge Folsom and again by the CAFC in their 2-1 decision. Both courts have stated that failure to follow the disable order is a contemptable offense. If upheld, that means there is ample law to punish if contempt of an order is found. It gets quite simple if the CAFC upholds Judge Folsom's finding of contempt on the disable clause.


jacmyoung said:


> The CAFC is not tasked to do infringement analysis, though they can overturn the lower court's conclusion, then remand the issue for further proceeding. There were times when the issues were so clear that after the remand the lower courts simply resolved the issues in summary proceedings or the parties simply dropped the issues.


DISH/SATS has asked the CAFC to review whether PID filtering meets the step of the claim. If the CAFC says that PID filtering does not meet that step of the claim, the CAFC will have in essence provided their own infringement analysis. Contrary to that point, if the CAFC says that PID filtering does meet that step limitation, it is still quite possible the CAFC could find an error with the infringement analysis and order Judge Folsom to perform another infringement analysis (reverse and remand).

All of these issues do not need to be linked together. Taken in combination, there are plenty of outcomes.


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## jacmyoung

Without infringement, there is no practical means to punish a party for violation in a patent case, if you disagree maybe you can show us an example, since you believe there are plenty of ways?

The only meaningful sanction in a patent case against violation is enhanced damages, which requires damages, which requires infringement.

Of course the reason this is the case is because the court has always held that in a patent case, if there is no infringement, there is no violation, as such there was never another form of punishment established.

I am no lawyer, I am more than happy if someone can show us other examples of sanctions, attorney fees and costs notwithstanding as I had explained before.


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## Greg Bimson

There are plenty of ways to punish contempt. This is no longer "a patent case". It is a contempt case. As currently ruled, failure to disable is punishable by contempt, and sanctions can take many forms.

Or perhaps you need to show us a case where "there is no practical means to punish a party for violation".

Where I will agree is that if the sanction isn't stiff enough, DISH/SATS will simply ignore the court's order to disable.


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## jacmyoung

"Greg Bimson" said:


> Or perhaps you need to show us a case where "there is no practical means to punish a party for violation".


In a patent case, please don't take things out of context.

This is the first time I heard anyone saying this case is no longer just a patent case.

Even when you look at the sanction imposed by Judge Folsom, it was based on damages. Personally I have not read a single patent case where sanctions were based on those other than damages, which were based on infringement.

If you can't show me an example, that is fine, but don't tell me this is no longer a patent case unless you really know what you are talking about.


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## Greg Bimson

jacmyoung said:


> In a patent case, please don't take things out of context.


The patent case was decided almost five years ago. This is completely about contempt.


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## jacmyoung

"Greg Bimson" said:


> The patent case was decided almost five years ago. This is completely about contempt.


It is still a patent case. If it is just a civil contempt case, the state court or the fifth circuit, rather the cafc would be reviewing it.


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## Greg Bimson

There's this thing called jurisdiction...


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## jacmyoung

Greg Bimson said:


> There's this thing called jurisdiction...


Precisely. If this case is no longer a patent case, the fifth circuit would have had the jurisdiction over it, not CAFC.

In fact to some degree Judge Folsom said the same thing you said, he said when it came to the issue of contempt, the regional law (i.e., the fifth circuit law) should govern, not patent law, despite the fact the patent law has specific rule in governing contempt of an injunction against infringement, basically that no infringement, no violation, period.

So you are correct that Judge Folsom tried to move away from patent law to justify his contempt holding. While I am not in the position to question such approach, I had pointed out that Judge Folsom had not found a meaningful form of sanction that was not based on infringement. Therefore even if he could be correct, there would be no punishment to fit the "crime" so to speak. As such it would only make the court look weak for having no mechanism to enforce an injunction against infringement, if infringement does not exist.

One thing to point out is, Judge Rader in his dissent stated that no one could have even interpreted the injunction to mean anything other than what E* had interpreted. If you notice I had never held such a strong argument, I always said TiVo could have its interpretation, E* could have its own. TiVo could even have more reason to argue its interpretation was more reasonable, and the court could even agree with TiVo, but as long as E*'s interpretation had some merit, even if the merit was not as strong, E* still should win.

But here, we have the Chief Judge on the record of taking the position that TiVo's interpretation (therefore Judge Folsom's interpretation) simply was not possible, not my words. But how could that happen that TiVo and Judge Folsom did not know how to interpret their own injunction? I think the key here is what TiVo had told the court at the time the injunction was framed and issued to E*, as Judge Rader pointed out, TiVo told both Judge Folsom and E* at the time that its proposed injunction was to prevent further infringement, nothing more, nothing less. In such context, of course one simply cannot interpret the injunction to mean E* was still in violation even if the infringement had stopped.


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## jacmyoung

On 3/16/11 the CAFC decided on a case that was very interesting. The case is linked below:

http://www.cafc.uscourts.gov/images/stories/opinions-orders/10-1247.pdf

Judge Mayer issued the opinion. Correct me if I am wrong, Judge Mayer was one of the two judges who sided with TiVo during the last panel review, of which the majority ruling was later vacated by the en banc panel.

In any event the above case had the opposite results, the patent holder accused the defendants of infringement, after the trial the district court invalidated the relevant patent claims. On appeal the CAFC upheld the lower court decision to invalidate the claims. What was interesting was at the meantime there was a PTO reexamination resulted in the PTO reaffirming the relevant claims. But after the PTO learned the CAFC decision affirming the invalidity finding, the PTO withdrew its final certification of the reexamination.

At the same time after the CAFC affirmed the case, the winning party (the defendant) sought reward of attorney fees and cost against the losing patent holder, and the district court sided with the defendant again, awarded the costs.

On appeal, as linked above, the CAFC panel reversed the award. One of the major reasons of the reversal of the sanctions, was because the CAFC panel had taken judicial notice of the PTO reexamination, and in part relied on such PTO reexamination to demonstrate that the losing party, i.e. the patent holder, had good reasons to bring on the original patent case, as such no sanctions were warranted. The winning party argued in part that the PTO reexamination was irrelevant since it was after the courts had made those decisions. But Judge Mayer disagreed.

Recall in this TiVo v. E* case we have a similar situation where E* had motioned the CAFC to take judicial notice of the PTO reexamination in support of E*'s contention that the modified DVRs no longer infringed. The CAFC granted such motion, although the CAFC panel at that time did not rely on the PTO reexamination, in part probably because the PTO proceeding was still in its infancy.

Lately however after the PTO concluded the reexamination, E* again argued to the en banc panel how the PTO examiner's own definitions of the claims clearly supported E*'s contention that the modified DVRs no longer infringed. TiVo did not dispute such contention, TiVo only argued that the court had performed its own review already, the PTO reexamination was irrelevant and E* was only trying to delay the process.

If the same opinion Judge Mayer issued in the above case is applied here, it is reasonable to argue that the PTO's reexamination, which supports E*'s non-infringement arguments (which TiVo does not even dispute, TiVo only argues that it was irrelevant), should have the same significance here.


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## jacmyoung

"harsh" said:


> Can someone who hasn't witnessed the proceedings in question cast a vote?
> 
> That seems awfully prejudicial.


Now if we can revisit this issue a bit. Since last majority decision, Judge Mayer went into semi retirement status, probably for that reason he did not participate in the en banc hearing. But it had been pointed out by some, especially the TiVo supporters that the rules allow Judge Mayer to cast his vote in the en banc decision since he is still an eligible cafc judge. In fact lately a newly appointed cafc judge actively participated in several decisions even though she wasn't present in those hearings.

Of course the TiVo supporters wanted to see Judge Mayer participate in the final vote, but given this latest decision, issued by Judge Mayer himself, I wonder if they still wish the same? It seems to me if the same standard is appllied, at a minimum Judge Mayer would vacate the sanctions imposed by Judge Folsom.


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## jacmyoung

I decided to dig even deeper on the issue of the PTO reexamination.

Recall in a recent decision to lift the stay of a case E* filed against TiVo by a judge in the E. TX court? That was a countersuit file by E* after TiVo filed this case several years ago. TiVo got the PTO to invalidate those claims E* used in that case, while the E. TX court stayed the case. On appeal E* finally after years managed to get one of the several claims reaffirmed by the board of appeals. E* then asked the court to lift the stay of that case, TiVo opposed, presumably arguing that the appeal was not over. My guess is TiVo was appealing that board decision to affirm that last claim, to the CAFC.

But the judge at the E. TX court disagreed with TiVo, in part she quoted Judge Folsom in one of his latest rulings that the PTO reexamination process often complicated the issue, not simplifying it, therefore it would not serve any purpose to continue to stay the case if staying the case was to simplify the potential issues for court economy.

The reason I mentioned the above most recent development is, we now have two judges who were instrumental in supporting TiVo, came out to address the PTO reexamination process, implying that such issue may land support to E*. Keep in mind we all agree that in a civil case, judges want parties to settle, not having to make decisions for them. Even though this might be to far fetched, I like to think the judges are sending parties signals.

Charlie was quoted to offer a settlement with TiVo right before the en banc review decision. While clearly TiVo did not accept that offer (a pretty low offer I agree, and who knows after the en banc maybe Charlie even decided to put that offer on hold), but TiVo stated in the past they always wanted to settle with E*.

I have always said E* and TiVo are two like-minded companies, should have worked together. Both of them are now in difficult positions due to competitions, they need to work together more so than ever. Working together is good for everyone, including us consumers.

But hey what do I know?


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## jacmyoung

It appears Judge Folsom has begun to transfer his cases in anticipation of his retirement. He recently transferred duties in both the TiVo v. ATT and v. Verizon cases to a magistrate judge. Since parties have to consent to have a magistrate judge to preside over a civil case, one might assume the parties did consent to let the magistrate judge take over from Judge Folsom.

This will likely lead to the complaint by the TiVo supporters how justice is not served due to the delay in the TiVo v. E* case, if a new action is ordered Judge Folsom will not be there for TiVo, no one can again, like the majority on the merits panel, simply trust the judge's expertise rather than doing their own independent denovo review.

But before we hear such complaint, let me point out the fact that the delay was mostly caused by the court and TiVo. Recall it was Judge Folsom who wanted a hearing, which TiVo did not object, in fact TiVo made suggestions as to how the colorable difference issues could be handled in that hearing.

In the end TiVo argued, and Judge Folsom agreed, it did not matter, E* was in contempt on the face of the order anyway. They did not need those analyses. The delay was TiVo's own doing. More significant is that the delay had allowed the PTO reexamination to reach its conclusion, now the PTO patent prosecution history clearly supports E*'s contention that the modified DVRs no longer infringe.


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## Tower Guy

jacmyoung said:


> More significant is that the delay had allowed the PTO reexamination to reach its conclusion, now the PTO patent prosecution history clearly supports E*'s contention that the modified DVRs no longer infringe.


That's like saying that you broke out of jail and then the law changed that put you in jail so you can't be re-incarcerated for jail breaking.


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## jacmyoung

Tower Guy said:


> That's like saying that you broke out of jail and then the law changed that put you in jail so you can't be re-incarcerated for jail breaking.


That's not like it at all.

The PTO reexamination is not about the law, it is about what the patent really means. E* succeeded in getting the PTO to clarify what does the term "parse audio and video data" means, it turns out it means exactly what E* said in court, not what TiVo said in court.

Such clarification clearly supports E*'s contention that the new software and the modified DVRs do not infringe. This much TiVo does not even dispute, TiVo only says but it is irrelevant.

Now ask yourself, if after the PTO clarification, there is no dispute that the modified DVRs no longer infringe, how the court may apply the law, which still is the same, not changed? Should the court nevertheless insists E*'s modified DVRs still infringe?

Who was the one that issued the patent? The PTO correct? Where did TiVo gain the legally patent protected exclusion right? From the PTO, not the court. Therefore when the PTO supports E* that the modified DVRs no longer infringe, the court needs to take notice, or else maybe the court can now start issuing patents instead.


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## Voyager6

But doesn't Judge Folsom want the DVR's shut down "even if they no longer infringe"? That quote is what really set Judge Rader off. No wonder Folsom has not found the time to review the new software E* sent many moons ago. Or was it over a year ago? He has already determined that it doesn't matter to him what the new software does. He'll just reject it outright. The appeals court is going to have to slap Folsom down hard in order for E* to get a fair review of it's existing software and also the new software.


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## jacmyoung

"Voyager6" said:


> But doesn't Judge Folsom want the DVR's shut down "even if they no longer infringe"? That quote is what really set Judge Rader off. No wonder Folsom has not found the time to review the new software E* sent many moons ago.


That was not why Judge Folsom did not review the new software, in fact he said he agreed with E* and recognized the urgency in reviewing the new software, just that the court had no time to do it, not because he did not care, nor because the order was stayed, rather that he had no time.

In response, it helps to point out the above fact to demonstrate why the preapproval provision is unenforceable, therefore the injunction should be vacated.

I think the above approach is better than trying to second guess the judge. He might have tried very hard to encourage E* to settle, yet when he realized it would not work, he might have decided he had done all he could, instead offered E* an opening to get the order vacated. You never know so I would not try to second guess him.

It is of course up to E* to drive such point through.


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## Tower Guy

jacmyoung said:


> Who was the one that issued the patent? The PTO correct? Where did TiVo gain the legally patent protected exclusion right?


It's not the patent or validity of the patent that should put E* in contempt, it's the attempt to thwart the injunction that Folsum issued. Any other issues and arguments do not allow E* to ignore the disabling injunction. Once the court issued an injunction that E* failed to follow to the letter, E* is in contempt. Once E* was in contempt, there is no "get out of jail free" card available. This is in spite of all the creative spins by the E* legal team.

On the surface, the en blanc panel is faced with a dilemma, enforce the injunction even though the new software may not infringe, or allow a potential infringer to abuse the legal system. I don't expect such a black and white decision.

I predict a middle of the road finding. The panel could find E* in contempt of Folsum's valid injunction, and remand the new software for a new trial if E* is willing to pay TiVo extra damages and/or obey the original injunction while the new trial takes place. The panel also has the option of finding a period of contempt from the date of the injunction until the PTO issued new patent findings for the TiVo patent. If that decision is handed down, the injunction has been validated, and then new software can be contested only from the date of the PTO finding forward.

In other words, it's the infringement at the time of various points in the proceeding, not the legality as it exists now.


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## jacmyoung

Of course I was talking about the infringement issue not the contempt issue, I stated too many times why there was no contempt I do not intend to repeat it.

Once the PTO clarifies a claim term, the meaning of it of course has been true going all the way back to the day the patent was issued. If such meaning clearly demonstrates that the modified DVRs no longer infringe, of course it means they longer infringed on the day the modification was done, not at the time the PTO made such clarification.


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## dgordo

And we finally have a decision. Contempt is upheld on disablement provision but remanded for a new hearing on infringement based upon a "new standard."


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## dgordo

see attached


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## L3G3ND

nevermind didnt' se the link b4 do you guys view this as a win/win or a win for tivo?

Does Dish still need to shut down their DVRs? it says they have 30 days to do so for a bunch of DVRs in the ruling at the end? or am i misreading?


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## RasputinAXP

> As a result of our consideration of this case en banc, we hold that the two-step KSM analysis is unsound in contempt cases and we clarify the standards governing contempt proceedings in patent infringement cases. We therefore vacate the district court's finding of contempt of the infringement provision of the permanent injunction, and remand to the district court to make a factual deter-mination of colorable differences under the new standard we lay out here. *We thus vacate in part the damages awarded to TiVo for EchoStar's continued infringement. *However, we once again affirm the district court's finding of contempt of the disablement provision of the perma-nent injunction and its sanctions award in its entirety because we conclude that EchoStar waived arguments of overbreadth and vagueness with regard to that provision.


:grin:


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## dgordo

Split the baby


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## RasputinAXP

> DYK, Circuit Judge, with whom Chief Judge RADER and Circuit Judges GAJARSA, LINN, and PROST join, dissenting-in-part.


That's a pretty interesting dissent. It boils down to Dish winning one and losing on two, 6-5. The dissent calls a lot of the Opinion into question with respect to equating the VIP series DVRs with the Infringing Products, and specifically questions why there seem to be two definitions of Infringing Products when they initially spelled it out with model numbers.



> TiVo characterized the injunction as prohibiting the "continued provision of DVR functions through the exact units previously found to infringe-whether or not they have purportedly been modified by the downloading of new software." Br. of Pl.-Appellee TiVo, Inc. at 21, TiVo, Inc. v. EchoStar Corp., No. 2009-1374 (Fed. Cir. Jun. 25, 2010). The district court simi-larly characterized the injunction as "not limited to in-fringing software." TiVo, Inc. v. EchoStar Corp., 640 F. Supp. 2d 853, 874 (E.D. Tex. 2009) [hereinafter Contempt Opinion]. The language of the injunction itself contradicts this interpretation.
> 
> First, contrary to TiVo's argument, the definition of the term "Infringing Products" on its face does not simply refer to devices with particular model numbers; it re-quires that those products be "Infringing." The term "Infringing Products" appears in the introductory para-graph of the injunction, which enters judgment "against Defendants for willful infringement . . . by Defendants' following DVR receivers (collectively the 'Infringing Products'): DP-501; DP-508; DP-510; DP-522; DP-625; DP-721; DP-921; and the DP-942." J.A. 161. The injunction was thus written to address devices with particular model numbers that had been found by the jury to be infringing. The verdict form itself is framed in terms of whether particular model numbers infringed.


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## dgordo

http://www.dbstalk.com/showthread.php?t=192336


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