# TiVo vs Echostar ... Discussion leading to September 4th Hearing



## Curtis52

Re: TiVo Inc. v. EchoStar, et al.. Case No. 2-Q4CV-01

Dear Judge Folsom:

Pursuant to the Court's April 23, 2008 Order (Docket No. 822), plaintiff TiVo submits two topics of discussion for the status conference on May 30, 2008: (1) Enforcement of the Court's Permanent Injunction, and (2) Determination of the damages TiVo sustained during the stay of the injunction. The issues relating to each topic are set forth in Section B of this letter.

To provide prompt resolution of these issues, TiVo requests:
• A hearing at the earliest possible date to determine whether EchoStar should be held
in contempt for its failure to disable the DVR functionality in the Infringing Products and for its placement of new infringing DVRs (and new EchoStar products that are only colorably different); and

• Permission to serve limited discovery to obtain additional information before determining the damages TiVo sustained during the stay of the injunction, and, if necessary, bringing a motion for an order to show cause why EchoStar is not in contempt for the continuing use of the Infringing Products, changed only by downloading modified, but still infringing, software (and new EchoStar products that are only colorably different).

TiVo is also prepared to address any questions that the Court may have about the pending Bill of Costs that TiVo submitted on September 22, 2006, which is awaiting resolution. TiVo's requested costs total $333,600.03.

A. BACKGROUND

On September 8, 2006, this Court entered a Final Judgment and Permanent Injunction against all defendants (collectively "EchoStar") for willful infringement of U.S. Patent No. 6,233,389 (the "Barton Patent"). The amount of the judgment was $93,969,159.00, which included the jury verdict of $73,991,964.00, supplemental damages of $13,819,160.00, and prejudgment interest of $6,158,035.00. (Amended Final Judgment and Permanent Injunction, Docket No. 806 (attached as Exhibit A), and Order Re Supplemental Damages and Prejudgment Interest for the Period of August 1, 2006 to September 8, 2006, Docket No. 819).

The Permanent Injunction required EchoStar to do, among other things, the following:

(a) cease "making, using, offering to sell, selling, or importing into the United States," the infringing models of EchoStar DVR receivers (DP-501, DP-508, DP-510, DP-522, DP-625, DP-721, DP-921 and DP-942, the "Infringing Products") "and all other products that are only colorably different therefrom in the context of the Infringed Claims"; and

(b) "disable the DVR functionality (i.e., disable all storage to and playback from a hard disk drive of television data) in all but 192,708 units of the Infringing Products that have been placed with an end user or subscriber. The DVR functionality . . . shall not be enabled in any new placements of the Infringing Products." (Amended Final Judgment and Permanent Injunction, Ex. A, at 2).

The injunction's exception for 192,708 units represents the then-existing units on which the jury had awarded TiVo lost profits damages. (Verdict Form, Docket No. 690).

TiVo did not seek an injunction on these specific units. Lost profits have not been awarded for any units placed after the jury verdict, so the injunction's "lost profits" exception could not logically apply to any units placed after the jury verdict.

This Court denied EchoStar's request for a stay of injunction but, on October 3, 2006, the Federal Circuit granted a stay pending appeal. In persuading the Federal Circuit to enter a stay, EchoStar argued that if it were unable to offer DVRs, it faced "a high risk of losing a significant portion of its existing and potential subscribers" and "if the injunction were to cause just half of EchoStar's current customers with DVRs to leave EchoStar for another provider, EchoStar's revenues would fall by nearly $90 million per month." (EchoStar's Emergency Motion to Stay The District Court's Injunction, at 18 (citing Martin Decl. ¶ 8) (emphasis in original)).

On November 28, 2007, in connection with the reexamination proceedings initiated by EchoStar, the United States Patent and Trademark Office confirmed the validity of all of the claims of the Barton Patent. On January 31, 2008, the Federal Circuit affirmed the jury's finding that EchoStar infringed claims 31 and 61 (the "software claims") of the Barton Patent. TiVo Inc. v. EchoStar Commc'ns Corp., 516 F.3d 1290, 1310 (Fed. Cir. 2008). The Federal Circuit reversed the jury's finding of literal infringement of claims 1 and 32 (the "hardware claims"), and declined to rule on whether there was nevertheless sufficient evidence of infringement under the doctrine of equivalents, "leav[ing] that issue for the district court to resolve in the event that, on remand, TiVo decides to continue to pursue the hardware claims in light of this decision." Id. at 1305.

The Federal Circuit stated that the stay pending appeal would dissolve when the appeal became final, and "[a]t that time, the district court can make a determination as to the additional damages, if any, that TiVo has sustained while the stay of the permanent injunction has been in effect." Id. at 1312.

EchoStar requested rehearing of this decision by both the panel and the Circuit en banc but this motion was denied on April 11, 2008. The mandate of the Federal Circuit issued April 18, 2008. On this date, pursuant to the January 31, 2008 Order, the stay dissolved and the Permanent Injunction took effect.1

B. TOPICS OF DISCUSSION

1. Enforcement of the Permanent Injunction

Although the injunction required EchoStar to "disable the DVR functionality," with respect to the Infringing Products, EchoStar has refused to do so. Despite the plain language of the injunction, EchoStar argues that it need not disable the DVR functionality because it has modified its software so that it supposedly no longer infringes TiVo's patent. On May 12, 2008, EchoStar made its modified source code available for review by TiVo. EchoStar also waived privilege and produced to TiVo three opinions of counsel relating to EchoStar's modified software. After review of the software that EchoStar provided and the opinion letters, TiVo does not believe that the modifications avoid infringement. In fact, TiVo believes that EchoStar is violating the Court's injunction in at least three different ways.

1 As security for payment of the judgment, the parties agreed to the deposit of monies in an escrow account. The amount in escrow totals $104,241,309 through April 30, 2008. EchoStar has announced that it intends to file a petition for writ of certiorari to the U.S. Supreme Court, thereby delaying payment of the escrowed funds to TiVo.

First, TiVo believes that EchoStar is in violation of the injunction by failing to "disable the DVR functionality," and by selling new DVRs, regardless of any changes to the software. In fact, what EchoStar is doing now is what it proposed to the Court in 2006, and which the Court rejected. Specifically, EchoStar's 2006 proposal was that the Court enjoin only "the provision of infringing DVR software upon activation." (EchoStar's (1) Opposition to TiVo's Motion for Entry of Judgment and (2) Cross-Motion to Stay any Injunction Pending Appeal, Docket No. 737, at 16). In opposing EchoStar's language, TiVo warned that EchoStar's formulation would be a recipe for abuse:

This clever formulation is an invitation for EchoStar to engage in mischief. Such an injunction would only result in EchoStar providing what it deemed as "non-infringing" DVR software to its already-found-to-be-infringing DVRs, creating the opportunity for interminable disputes to determine what exactly is "infringing DVR software." (TiVo's (1) Reply Re Motion for Entry of Judgment and Permanent Injunction and (2) Opposition to EchoStar's Cross-Motion to Stay Injunction, Docket No. 747, at 11). This Court rejected EchoStar's proposal and adopted, instead, the straightforward "disable the DVR functionality" provision that appears in the Permanent Injunction.

If EchoStar believed that the "disable the DVR functionality" provision of the injunction was inappropriate, EchoStar could have challenged it, but - despite multiple opportunities before both this Court and the Federal Circuit - it chose not to do so. EchoStar cannot simply ignore the Court's unambiguous Order, even if EchoStar were to contend, which it has not previously done, that the injunction as written is inappropriate. W. Water Mgmt., Inc. v. Brown, 40 F.3d 105, 108 (5th Cir. 1994) (prohibiting defendants from arguing in a contempt proceeding that injunction was overbroad because "collateral attack on an injunction during contempt proceedings is prohibited if earlier review of the injunction was available" (citing United States v. Ryan, 402 U.S. 530, 532 n.4 (1971))).

Nevertheless, EchoStar has proceeded as if its proposed injunction language had been accepted, not rejected, and has refused to disable the DVR functionality. EchoStar announced to the public that it had modified its software and instructed its distributors that this modified software obviates the effect of the Court's injunction in this case. EchoStar's notice to its distributors, and another notice clarifying the first, are attached as Exhibit B to this letter.

Second, EchoStar is misusing the Court's language that requires EchoStar to "disable the DVR functionality (i.e., disable all storage to and playback from a hard disk drive of television data) in all but 192,708 units of the Infringing Products that have been placed with an end user or subscriber." (Amended Final Judgment and Permanent Injunction, Ex. A, at 2 (emphasis added)). In particular, EchoStar is taking the position that it can place new infringing DVRs on an ongoing basis, as long as the total number of infringing DVRs does not exceed 192,708. The Court's language, however, is clear: the 192,708 number applies to existing DVRs that had already been placed with customers. The injunction prohibited EchoStar from delivering any new infringing DVRs.

Third, even if EchoStar's injunction language were adopted, EchoStar would still be violating it. All EchoStar has done to the infringing products is download a modified version of its software to its otherwise unmodified set top boxes. TiVo was given access to some of EchoStar's modified software this week and is in the process of reviewing it. The changes described in the opinion letters produced by EchoStar do not render the products noninfringing, and TiVo has seen nothing so far in its review of source code that changes this. However, to avoid any doubt, TiVo will complete its analysis of the allegedly new software and, with the Court's permission, will request written discovery on both the Infringing Products and those believed to be only colorably different (attached as Exhibit C) and possibly two depositions, depending on the content of EchoStar's discovery responses and documents.

EchoStar's violations of the injunction constitute contempt of court. The standard as set forth by the Fifth Circuit is that "[a] party commits contempt when he violates a definite and specific order of the court requiring him to perform or refrain from performing a particular act or acts with knowledge of the court's order." SEC v. First Fin. Group, 659 F.2d 660, 669 (5th Cir. 1981). Regarding the modified software, the court need only compare it to the original infringing product. Unless there is "more than a colorable difference" between the two, a contempt proceeding is appropriate. KSM Fastening Sys., Inc. v. H.A. Jones Co., 776 F.2d 1522, 1532 (Fed. Cir. 1985). Then, so long as the modified software "falls within the . . . adjudicated scope of the [patent] claims," EchoStar is in contempt of court. KSM Fastening, 776 F.2d at 1530.

Until EchoStar is held in contempt, it will continue to conduct its business as if the injunction were never issued. TiVo is prepared to make a motion now for an Order To Show Cause Regarding Contempt with respect to EchoStar's failure to disable the DVR functionality and its placement of new infringing DVRs (grounds one and two above).

With respect to EchoStar's modified software, TiVo requests permission to serve limited
discovery to obtain additional technical information before bringing a motion on ground
number three.2 While TiVo believes that EchoStar is in contempt on all three grounds, the2 Although EchoStar voluntarily provided some information about the modified software, it refused to provide other information that TiVo requested. For example, EchoStar provided TiVo access to the relevant source code but refused to allow TiVo to analyze the code using the same software used by EchoStar to develop the code, which is necessary for the efficient analysis of the code. EchoStar also refused to produce any documents relating to the first two grounds appear to be primarily legal issues. TiVo can present these right away. To provide timely relief from EchoStar's continuing infringement and violation of the Court's injunction, TiVo requests a hearing on EchoStar's failure to disable the DVR functionality and its placement of new infringing DVRs at the earliest available time.

2. Determination of Damages During the Stay of the Injunction

The Federal Circuit remanded the case with instructions that the District Court determine the damages that TiVo incurred during the period that the injunction was stayed. TiVo, 516 F.3d at 1312. The Federal Circuit's recent decision mAmado v. Microsoft Corp., 517 F.3d 1353, 1361-62 (Fed. Cir. 2008), makes clear that damages for infringement taking place after the injunction should be at a royalty rate higher than what the jury found to be an appropriate pre-verdict reasonable royalty. Id. at!362n.2. hi assessing post-verdict damages, the trial court must consider financial and economic information related to the change in the parties' bargaining positions and economic circumstances as a result of the determination of liability, as well as the evidence and arguments presented in connection with the granting of the injunction and the stay. Id. at 1362.

To that end, TiVo asked EchoStar to provide certain information related to the assessment of damages during the stay period, e.g., the number of infringing units and financial information related to EchoStar's nationwide "Better Than TiVo" advertising campaign undertaken during the stay period to attract new customers at TiVo's expense.

EchoStar refused to provide informally most of the damages information that TiVo has requested. Accordingly, TiVo requests permission for limited formal discovery relating to the damages issues. Once TiVo has obtained the information from EchoStar, TiVo will promptly file a motion requesting those damages.


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## Curtis52

Exhibit C attached to Tivo filing - 1st Set of Interrogatories
II. INTERROGATORIES
1. Identify for each model of EchoStar product that has digital video recorder (DVR)
functionality, including, but not limited to, DP-501, DP-508, DP-510, DP-721, DP-921, DP-522,
DP-625, DP-942, ViP 322, ViP 611, ViP 612, ViP 622, ViP 722, ViP 211 (new version that can
be converted into a DVR with addition of an external hard disk drive): (1) whether all units at
end-users' sites have software that EchoStar contends does not infringe the Barton patent and, if
applicable, what date EchoStar first changed the software to a version that it currently contends
is not infringing in those units and how the software was changed from the version adjudged to
be infringing; (2) whether all units at EchoStar's distributors have software that EchoStar
contends does not infringe the Barton patent and, if applicable, what date EchoStar first changed
the software to a version that it currently contends is not infringing in those units and how the
software was changed from the version adjudged to be infringing; and (3) whether all newly
manufactured units have software that EchoStar contends does not infringe the Barton patent
and, if applicable, what date EchoStar started incorporating a version of software that it currently
contends is not infringing in those units and how the software was changed from the version
adjudged to be infringing.
2. Describe with specificity for each model of EchoStar product that has digital
video recorder (DVR) functionality, including, but not limited to, DP-501, DP-508, DP-510, DP-
721, DP-921, DP-522, DP-625, DP-942, ViP 322, ViP 611, ViP 612, ViP 622, ViP 722, ViP 211
(new version that can be converted into a DVR with addition of an external hard disk drive), the
limitation or limitations of the Barton patent claims that EchoStar currently contends the product
does not meet and why EchoStar believes the element or elements are not met.
3. Identify all individuals, including but not limited to EchoStar employees,
EchoStar attorneys, and outside counsel, by name and employer/firm, who were involved in any
communications concerning changes to EchoStar's products that it contends render the products
noninfringing of the Barton patent, and the date and duration of each communication.
4. Provide the total number of (a) DVR placements and (b) DISH subscriber
households possessing or using an EchoStar DVR on an end-of-month or end-of-quarter basis
from September 8, 2006 through the present.
5. Provide the total and gross number of DVR placements per DISH subscriber
household on an end-of-month or end-of quarter basis from September 8, 2006 through the
present.
6. Provide the total number of new DISH Network subscribers with an EchoStar
DVR as a percentage of the total number of new DISH Network subscribers from September 8,
2006 to the present, on a monthly or quarterly basis.
7. Provide the monthly or quarterly churn (i.e., turnover) rate for DISH Network
subscribing households receiving or using DVR(s), and with DISH Network subscribing
households not receiving or using DVR(s), from September 8, 2006 through the present.
8. Provide the monthly or quarterly total Average Revenue Per Unit ("ARPU") for
DISH Network subscribing households receiving or using DVR(s), and with DISH Network
subscribing households not receiving or using DVR(s), from September 8, 2006 through the
present.
9. Provide EchoStar's incremental profitability on its DVR customers (including
EchoStar's revenues associated with its DVR customers and EchoStar's direct and/or variable
costs associated with its DVR customers) on a monthly or quarterly basis from September 8,
2006 through the present.
10. Provide EchoStar's total expenditure on advertising that (a) mentions DVR and/or
(b) mentions TiVo or that compares EchoStar's products to TiVo's, on a monthly basis from
December 31, 2005, to the present.


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## Curtis52

Exhibit C Attached to Tivo Filing - Documents to be produced
II. DOCUMENTS TO BE PRODUCED
1. All source code modules or schematics that were modified to allegedly avoid
infringement of the Barton patent for each of the following models of EchoStar digital video
recorders (DVRs): DP-501, DP-508, DP-510, DP-721, DP-921, DP-522, DP-625, and DP-942.
2. All documents relating to all changes made to allegedly avoid infringement of the
Barton patent for each of the following models of EchoStar DVRs: DP-501, DP-508, DP-510,
DP-721, DP-921, DP-522, DP-625, and DP-942.
3. All source code, block diagrams, schematics, bills of materials, and parts lists for
any EchoStar products with DVR functionality (other than those listed in requests #1-2),
including, but not limited to, ViP 322, ViP 611, ViP 612, ViP 622, ViP 722, ViP 211 (new
version that can be converted into a DVR with addition of an external hard disk drive).
4. All documents relating to the operation of the software in any EchoStar products
with DVR functionality (other than those listed in requests #1-2), including, but not limited to,
ViP 322, ViP 611, ViP 612, ViP 622, ViP 722, ViP 211 (new version that can be converted into
a DVR with addition of an external hard disk drive).
5. Documents sufficient to determine, on an end-of-month or end-of-quarter basis
from September 8, 2006, through the present: (1) the total number of DVR placements; (2) the
total number of DISH subscriber households possessing or using an EchoStar DVR; and (3) the
average number of DVR placements per DISH subscriber household possessing or using an
EchoStar DVR.
6. Documents sufficient to determine the total number of new DISH Network
subscribers with an EchoStar DVR as a percent of the total number of new DISH Network
subscribers from September 8, 2006, to the present, on a monthly or quarterly basis.
7. Documents sufficient to. show the monthly or quarterly churn (i.e., turnover) rate
for DISH Network subscribing households receiving or using DVR(s), and with DISH Network
subscribing households not receiving or using DVR(s), from September 8, 2006 through the
present.
8. Documents sufficient to show the monthly or quarterly total Average Revenue Per
Unit ("ARPU") for DISH Network subscribing households receiving or using DVR(s), and,
separately, for DISH Network subscribing households not receiving or using DVR(s), from
September 8, 2006 through the present.
9. Documents sufficient to show EchoStar's incremental profitability on its DVR
customers (including EchoStar's revenues associated with its DVR customers and EchoStar's
direct and/or variable costs associated with its DVR customers) on a monthly or quarterly basis
from September 8, 2006 through the present.
10. Any and all studies or investigations, and the relevant results thereof, addressing
in whole or in part the effect of DVR possession or usage on churn, pay-per-view or VOD usage,
ARPU, or marginal profit.
11. Documents sufficient to determine EchoStar's total expenditure on advertising
that: (a) mentions DVRs; and/or (b) mentions TiVo or compares EchoStar's products to TiVo's,
on a monthly basis from September 8, 2006, to the present.


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## jacmyoung

None of the above should be any surprise at all. I do want to point out that Tivo did not try to address the hardware claim.

So what is this talk about the hardware claim was just a matter of asking judge for a slam dunk summary ruling?

Now obviously DISH will respond and I don't know how the hardware non-infringement will be used, but DISH will most certainly argue that their new software is more than colorably different so the judge should not rule DISH in contempt, rather arrange the discovery of the new software claim, and the injunction should be stayed while the judge pursues such course.

Of course the judge does not have to rule in DISH's favor, he can still find DISH in contempt of court, and give DISH the opportunity to appeal. The appeals court had stayed the injunction once in the past against the judge's will, and reversed part of the jury verdict afterwards. DISH is certainly going to count on that again, if they do not settle with Tivo by then.

So my prediction was correct that unlike some of you falsely believed the hardware issue could be easily resolved, it is in fact something Tivo rather not touch at this time. A motion for summary judgement is a very dangerous path to take.


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## Greg Bimson

Wow. Not even a mention on the hardware claims.

This appears to be a fairly decent job by TiVo's attorneys. They want DISH/SATS to be found in contempt for violating the injunction immediately. They also are asking for a boat load of discovery items when DISH/SATS tries to mount its "new software doesn't infringe" defense.


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## Greg Bimson

jacmyoung said:


> So what is this talk about the hardware claim was just a matter of asking judge for a slam dunk summary ruling?


I always said it was 50/50.

This probably is being kept in the back pocket in case TiVo cannot get what they want through the software issues.


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## Curtis52

This is the good part:

"If EchoStar believed that the "disable the DVR functionality" provision of the injunction was inappropriate, EchoStar could have challenged it, but - despite multiple opportunities before both this Court and the Federal Circuit - it chose not to do so. EchoStar cannot simply ignore the Court's unambiguous Order, even if EchoStar were to contend, which it has not previously done, that the injunction as written is inappropriate. W. Water Mgmt., Inc. v. Brown, 40 F.3d 105, 108 (5th Cir. 1994) (prohibiting defendants from arguing in a contempt proceeding that injunction was overbroad because "*collateral attack on an injunction during contempt proceedings is prohibited if earlier review of the injunction was available*" (citing United States v. Ryan, 402 U.S. 530, 532 n.4 (1971)))."


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## jacmyoung

Curtis52 said:


> This is the good part:
> 
> "If EchoStar believed that the "disable the DVR functionality" provision of the injunction was inappropriate, EchoStar could have challenged it, but...


Except this is not what DISH is saying, DISH contends that they are in compliance with the injunction. They can bring up the hardware issue without attacking the injunction.


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## jacmyoung

Greg Bimson said:


> I always said it was 50/50.
> 
> This probably is being kept in the back pocket in case TiVo cannot get what they want through the software issues.


It would be too late by then.

I have always said the appeals court made it clear they would have difficulty upholding a verdict that is not produced by the jury, I think Tivo's lawyers at least somewhat saw it the similar way and decided not to risk it.

In fact since Tivo's lawyers are anticipating that DISH will appeal (by not motion a summary judgement on the hardware claim), it is my opinion that we will not likely see a settlement, contrary to what the analyst had thought.


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## Greg Bimson

jacmyoung said:


> Except this is not what DISH is saying, DISH contends that they are in compliance with the injunction. They can bring up the hardware issue without attacking the injunction.


In a literal sense, DISH/SATS is out of compliance of the injunction. What TiVo is arguing is that DISH/SATS had many places to argue that the language of the injunction could or should be changed. New software does not change what the plain language of the injunction directed: shut down DVR functionality in listed, infringing units. It does not say only shut down DVR functionality on units that still infringe. Hardware issue or software issue, the injunction order states to disable all DVR storage and playback functions for listed units, and those "only colorably different".

As I've said many times before, changing a standing injunction is difficult, and it is why parties settle prior to an injunction becoming active in full force and effect. The wording already causes a problem.

Regarding addressing the hardware claims later:


jacmyoung said:


> It would be too late by then.
> 
> I have always said the appeals court made it clear they would have difficulty upholding a verdict that is not produced by the jury, I think Tivo's lawyers at least somewhat saw it the similar way and decided not to risk it.
> 
> In fact since Tivo's lawyers are anticipating that DISH will appeal (by not motion a summary judgement on the hardware claim), it is my opinion that we will not likely see a settlement, contrary to what the analyst had thought.


Where did this come from?

Like I said before, it was 50/50 that hardware would even be brought up. The injunction does currently have enough teeth in it to warrant a shut down of DVR functionality. If DISH/SATS proceeds to shut down offending, listed DVR's, then the only way to go after a licensing agreement is to go after the hardware claims, so the rest of DISH/SATS DVR's are enjoined.

And since the hardware claims have not been addressed by TiVo here, those claims certainly can be addressed at a later date.


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## jacmyoung

Greg Bimson said:


> ...Regarding addressing the hardware claims later:Where did this come from?...


It came from when some of you insisted the hardware verdict reversal could be easily taking care of, if the Tivo lawyers thought the same way, they would certainly have made it an issue now. The reason they did not was likely not what you said that they believed the software verdict was more than enough, rather to pursue the hardware claim would be very risky. Remember Tivo already made a mistake by not bring up the equivalents issue before, probably due to over confidence, I am sure they would not have done it again.

I never cared what you said about the 50/50 chance, I did not argue with you on that, rather that your notion a summary judgment would be a slam dunk, not so according to Tivo.



> ... The injunction does currently have enough teeth in it to warrant a shut down of DVR functionality...


That is again your opinion. Yours will be proven only when DISH fails on all appeals on a contempt of court ruling, we don't know that yet.



> If DISH/SATS proceeds to shut down offending, listed DVR's, then the only way to go after a licensing agreement is to go after the hardware claims, so the rest of DISH/SATS DVR's are enjoined...


Apparently Tivo thinks otherwise, they knew DISH will not shut down their DVRs, nor will DISH settle, that is why they are asking for all DVRs now and maximum damages, without a hardware claim in hand. If Tivo fails in this attempt to shut off the DVRs, bringing back the hardware claim will be moot. They either do it now or decided not to rely on it.


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## spear61

I know Charlie likes to talk about being a gambler and doubling down, but seems a dangerous thing to do when he says he loses 90 million of income each month if TIOV prevails. It seems to me the injunction and following actions can be honestly argued for either party. That means the resolution is cloudy. And, if the TIVO arguement carrys, even for a month or so, Charlie would see a major loss of his customer base with Directv lurking at the sidelines with their ad campaign and warehouses ready to go.


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## Greg Bimson

jacmyoung said:


> It came from when some of you insisted the hardware verdict reversal could be easily taking care of, if the Tivo lawyers thought the same way, they would certainly have made it an issue now. The reason they did not was likely not what you said that they believed the software verdict was more than enough, rather to pursue the hardware claim would be very risky. Remember Tivo already made a mistake by not bring up the equivalents issue before, probably due to over confidence, I am sure they would not have done it again.
> 
> I never cared what you said about the 50/50 chance, I did not argue with you on that, rather that your notion a summary judgment would be a slam dunk, not so according to Tivo.


1) never said it was easy or a slam dunk, always said it was 50/50 that TiVo would ask for a summary judgment, and 50/50 that it would even be granted by Judge Folsom. I felt that was the easiest, quickest method to go after the hardware claims. Did state that if I were TiVo I'd go after the hardware only to make the injunction more bulletproof, but because I am not on anyone's legal team, I don't know what plans TiVo may have regarding the hardware.

2) TiVo did not have to bring up the equivalents issue. If it is a mistake that TiVo did not bring up the equivalents issue to the Court of Appeals, it is a _much larger mistake that DISH/SATS did not bring up the injunction wording to the Court of Appeals_ as changing a standing injunction is difficult:


> If EchoStar believed that the "disable the DVR functionality" provision of the injunction was inappropriate, EchoStar could have challenged it, but - despite multiple opportunities before both this Court and the Federal Circuit - it chose not to do so. EchoStar cannot simply ignore the Court's unambiguous Order, even if EchoStar were to contend, which it has not previously done, that the injunction as written is inappropriate.


In other words, shut down the DVR's until we figure out if the new software is infringing, because that is what the injunction states.


jacmyoung said:


> Apparently Tivo thinks otherwise, they knew DISH will not shut down their DVRs, nor will DISH settle, that is why they are asking for all DVRs now and maximum damages, without a hardware claim in hand.


No, the reason to ask for higher damages and the shut down is to increase the amount of the licensing agreement. TiVo is trying to settle for a lot of money. Any court inflicted damage would be considered in a licensing agreement.

DISH/SATS always plays this game of brinksmanship. When DISH was "owned" by Rupert Murdoch and NewsCorp's lobbying to stop the Echostar/DirecTV merger, DISH walked the plank and immediately paid $600 million to DirecTV. When DISH found they were going to lose the distant network case, DISH walked the plank offered $100 million to settle and keep the distants alive. TiVo is just trying to get more money because DISH/SATS is once again taking a walk down the plank, which usually means DISH/SATS will pay a lot not to be pushed off the plank.


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## peak_reception

Under


> B. TOPICS OF DISCUSSION


 is the following information which is surprising to me:



> On May 12, 2008, EchoStar made its modified source code available for review by TiVo. EchoStar also waived privilege and produced to TiVo three opinions of counsel relating to EchoStar's modified software.


 Did the court order E* to provide this? Otherwise, why would they? (maybe trying to scare TiVo off?). I know it's just through attorneys but I'm surprised that they're dealing with each other like this outside of court unless there was some offer of settlement from E* which accompanied the code.


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## jacmyoung

Greg Bimson said:


> ...2) TiVo did not have to bring up the equivalents issue. If it is a mistake that TiVo did not bring up the equivalents issue to the Court of Appeals, it is a _much larger mistake that DISH/SATS did not bring up the injunction wording to the Court of Appeals..._


_

But DISH couldn't, because during the last appeal, the injunction was most certainly appropriate based on both the software and hardware infringement verdicts. There was no justification for DISH to argue the wording of the injunction. DISH isn't arguing about the wording of the injunction now either, at least not yet, so to even bring it up is a strawman argument.




... Any court inflicted damage would be considered in a licensing agreement...

Click to expand...

No, fair trade rules regulate certain aspects of fair contract negotiations. Tivo will be able to ask for maximum damages, but when it comes to a new license agreement, Tivo must be fair. If they allow DirecTV to use its license for $.80/ea, for example, and then turn around insist DISH pay $12/ea (like Curtis had hoped), they will be easily struck down by the feds.




...DISH/SATS always plays this game of brinksmanship. When DISH was "owned" by Rupert Murdoch and NewsCorp's lobbying to stop the Echostar/DirecTV merger, DISH walked the plank and immediately paid $600 million to DirecTV...

Click to expand...

Totally wrong example. DISH simply kept its end of the bargain to pay DirecTV after the FCC denied the merger move. DISH had agreed to such payment (though I do not recall it was $600 million) to DirecTV as part of the merger deal, Charlie simply kept his end of contractual obligation.




...When DISH found they were going to lose the distant network case, DISH walked the plank offered $100 million to settle and keep the distants alive...

Click to expand...

And in the end decided not to, simply turned off the distants. We have been at this before, had DISH wanted the distants so badly, they could still pursue the settlement deal, but since it was clear FOX would not allow that, DISH did not bother.




... TiVo is just trying to get more money because DISH/SATS is once again taking a walk down the plank, which usually means DISH/SATS will pay a lot not to be pushed off the plank.

Click to expand...

Like I said before Tivo of course wants the maximum damages, but Tivo can not use such threat to blackmail DISH into an unreasonable license agreement._


----------



## Curtis52

peak_reception said:


> Under is the following information which is surprising to me:
> 
> Did the court order E* to provide this? Otherwise, why would they? (maybe trying to scare TiVo off?). I know it's just through attorneys but I'm surprised that they're dealing with each other like this outside of court unless there was some offer of settlement from E* which accompanied the code.


The date on the TiVo request for documents was 4-3-2008. Dish provided some of the documents but not others. This was all done out of court.


----------



## jacmyoung

peak_reception said:


> Under is the following information which is surprising to me:
> 
> Did the court order E* to provide this? Otherwise, why would they? (maybe trying to scare TiVo off?). I know it's just through attorneys but I'm surprised that they're dealing with each other like this outside of court unless there was some offer of settlement from E* which accompanied the code.


Likely because DISH thought it may convince Tivo that the new software claim has its merit. But Tivo is saying DISH did not offer enough codes and info, and is seeking more from the judge.

BTW, since Tivo is seeking "new evidence", I think some of you can stop arguing that there will be no talk of any new evidence necessary, can't you?


----------



## jacmyoung

So far Tivo has shown to disagree with you guys on two things:

1) Unlike you, Tivo did not think it was a good idea to revisit the hardware claim.

2) Unlike you, Tivo saw value in the new evidence DISH had claimed, so much so Tivo initiated the request to obtain such new evidence from DISH, and when DISH provided only partial evidence, Tivo felt compelled to ask the judge to get the rest of the new evidence for them.

Who said the hardware claim could be easily resolved? Who said "new evidence" was irrelevant?


----------



## Herdfan

jacmyoung said:


> 1) Unlike you, Tivo did not think it was a good idea to revisit the hardware claim.


Let me add "at this time". TiVo can always pursue the hardware claim in the future. It is something thye have in their back pocket to help "encourage" DISH to settle.

But for now, TiVo thinks the software claim has enough merit to get what they want, but if for some reason they lose, they can just drag out the hardware claim and start all over.


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## HobbyTalk

And by the time that is all over the patents will have expired. Sure, E* may have to pay some damages when that is all over but TiVo will be dead in the water by that time... maybe even bankrupt.


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## Curtis52

As far as additional damages that have been accruing while the stay was in effect, no one has considered that it isn't just about lost royalties during that time. At the trial, TiVo was awarded $32.66 million for lost profits on 192,708 units with lifetime subscriptions that TiVo could have sold had Dish not infringed. That number needs to increase for the two years of the injunction stay. TiVo could have sold units during that time too. The $125 million estimate is way low.


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## James Long

Exhibit A is the final injunction we've already seen.
Exhibit B is the two notices DISH sent out to their agents that we've seen.
Exhibit C is attached ... questions Tivo has of DISH.
Exhibit D is a certificate of service (not attached).


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## peak_reception

> The date on the TiVo request for documents was 4-3-2008.


 I missed that. thanks Curtis (and jacmyoung)

I'm working my way through the TiVo agenda and I'm surprised by how awkward and unfocused TiVo's language and agenda setting is. Even the structure of "*B. TOPICS OF DISCUSSION*" is disjointed: 


> *1. Enforcement of the Permanent Injunction*


(so far so good)



> *1 As security for payment of the judgment...*


(an important issue but wedged in here with its own redundant number 1. for no reason)



> *First, TiVo believes that EchoStar is in violation of the injunction by failing to "disable the DVR functionality," and by selling new DVRs, regardless of any changes to the software.*


(ah yes, failing to disable DVR functionality)



> *Second, EchoStar is misusing the Court's language that requires EchoStar to "disable the DVR functionality*


 (ah yes, failing to disable DVR functionality. "second" is actually just more of "first")



> *Third, All EchoStar has done to the infringing products is download a modified version of its software*


 (ah, here is "second")

Then they [TiVo lawyers] drop the hammer: 


> *EchoStar's violations of the injunction constitute contempt of court.*


 But without so much as a number or letter to anchor and emphasize it.

And then a misrepresentation of E*'s position as follows:


> *Until EchoStar is held in contempt, it will continue to conduct its business as if the injunction were never issued.*


 It's always a bad idea to put words in an opponent's mouth when they can obviously refute your claim. Of course E* will deny, and has already denied, pretending the injunction was never issued. TiVo lawyers could've scored more effectively by saying something like *"Until EchoStar is held in contempt it will continue to make of the Court's order what it pleases, thereby inflicting further damage and necessitating further litigation."*

Then there's more discussion of E*'s modified software, as started in "Third" above (should've been "Second"), and finally:



> *2. Determination of Damages During the Stay of the Injunction*


 This is where the oddly wedged topic of escrow deposit [second number 1. above] should've gone, consolidated with the main topic.

And finally, in the last paragraph of "TOPICS OF DISCUSSION" before "Determination of Damages" there's this sentence:


> *EchoStar also refused to produce any documents relating to the first two grounds appear to be primarily legal issues.*


 Unless it got munched up a little between the original and the version pasted here, there's one or more words missing "which" (the missing word?) make the sentence difficult to understand.

I'm surprised that there would any sloppiness at all in such an important document. This one has awkward construction, untidy language (sloppy at its worst), and -- most importantly -- unfocused argument.

I went through the one section [B. TOPICS OF DISCUSSION] like this but really the whole document suffers from many of the same shortcomings. I found the opening (which I don't even touch on here) to be especially weak.

Of course Judge Folsom will not rule one way or the other due to whichever side argues more or less elegantly. But obviously a tight, clean, well-constructed argument will carry greater weight when well-presented.

TiVo's lawyers will probably be better with legal manuevers than they are with language.... Hopefully so for their sake.

I'll probably be the only one interested but I wonder if E*'s reply will be more effectively presented?


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## Curtis52

I've got to agree with you that it's a little disjointed.

The "1" you referred to was actually a footnote that got stuck in there inadvertently in the copy and paste process.

Here are the actual documents:

http://southernme.com/DAVY_v_GOLIATH/5-16_filing_with_exhibits.pdf


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## peak_reception

jacmyoung said:


> So far Tivo has shown to disagree with you guys on two things:
> 
> 1) Unlike you, Tivo did not think it was a good idea to revisit the hardware claim.
> 
> 2) Unlike you, Tivo saw value in the new evidence DISH had claimed, so much so Tivo initiated the request to obtain such new evidence from DISH, and when DISH provided only partial evidence, Tivo felt compelled to ask the judge to get the rest of the new evidence for them.
> 
> Who said the hardware claim could be easily resolved? Who said "new evidence" was irrelevant?


I do think most of us are surprised that TiVo is not pursuing the hardware claims at this time. Does that mean that they can't revisit them in the future? For now they're focusing on the injunction and the new software.

i don't agree that TiVo is admitting that they see "value" in the new software by asking for additional discovery. It simply means that they want to know exactly what they will need to tear down in order to argue against E*'s "now we're non-infringing" claims.

So yes, it does look like things will drag on longer now. By TiVo engaging with the workaround software now it does seem like there will be extensions to accommodate that all-important issue. It certainly is all-important now that TiVo is passing on the hardware front.


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## Curtis52

peak_reception said:


> So yes, it does look like things will drag on longer now. By TiVo engaging with the workaround software now it does seem like there will be extensions to accommodate that all-important issue. It's certainly all-important now that TiVo is passing on the hardware front.


I'm thinking that the DVRs will be shut down (sans settlement) and then any dragging out will be on Dish's dime.


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## peak_reception

Curtis52 said:


> I've got to agree with you that it's a little disjointed.
> 
> The "1" you referred to was actually a footnote that got stuck in there inadvertently in the copy and paste process.


Ok I see now why that footnote got squeezed in there. Bottom of the page. I also see that another such footnote explains the sentence which doesn't make sense. Still a disjointed and ineffective presentation though in my opinion.



> Here are the actual documents:
> 
> http://southernme.com/DAVY_v_GOLIATH/5-16_filing_with_exhibits.pdf


Thanks (and to James too). Always good to work with the originals (or facsimiles thereof). Facsimiles thereof?? I've been reading too much lawyer craft today :nono2:


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## peak_reception

Curtis52 said:


> I'm thinking that the DVRs will be shut down (sans settlement) and then any dragging out will be on Dish's dime.


 I'm surprised TiVo didn't make a more direct and forceful argument for that. There's too much pussy-footing around in their agenda if that's the primary mission at this point. Yes, Judge Folsom knows what they [TiVo] want. I just think the bloaty, unfocused agenda they submitted actually makes it easier for Folsom to 'workaround' or finesse his own injunction in order to resolve the new software issue(s) before punishing E* with DVR shutdowns which E* will rightly argue is a Draconian measure for their business [and that whatever infringement *may* still be occurring is less Draconian for TiVo to endure while the issues are sorted out].


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## Curtis52

peak_reception said:


> I'm surprised TiVo didn't make a more direct and forceful argument for that. There's too much pussy-footing around in their agenda if that's the primary mission at this point. Yes, Judge Folsom knows what they [TiVo] want. I just think the bloaty, unfocused agenda they submitted actually makes it easier for Folsom to 'workaround' or finesse his own injunction in order to resolve the new software issue(s) before punishing E* with DVR shutdowns which E* will rightly argue is a Draconian measure for their business [and that whatever infringement *may* still be occurring is less Draconian for TiVo to endure while the issues are sorted out].


Well, here is what Judge Folsom wrote on the subject of whether an injunction makes sense:

"The balance of hardships weighs in favor of granting a permanent injunction. As 
discussed, Plaintiff faces ongoing irreparable injury as Defendants' infringement continues. As a relatively new and small company, every day of Defendants' infringement affects Plaintiff's business. And, as discussed above, Plaintiff's primary product, its DVRs, are those with which Defendants' infringing products directly compete. The harm caused by such infringement weighs heavily in favor of an injunction. *Enjoining Defendants will likely cause some harm - but on balance, Defendants will endure less harm than Plaintiff*. The infringing products do not form the core of Defendants' satellite transmission business. And the injunction will not interfere with Defendants' satellite transmission.

The hardship of disabling DVR capabilities to Defendants' DVR customers is a 
consequence of Defendants' infringement and does not weigh against an injunction. Defendants do not dispute that, with software updates transmitted directly to the infringing products, the DVR capabilities of the infringing products can be disabled. This process, though cumbersome, is not on balance a weighty hardship for Defendants. Similarly, any impact of the injunction on Defendant's authorized distributors is also a consequence of Defendants' infringement and does not weigh against an injunction. Again, distributors' sales of Defendants' core products will not be affected by the injunction. Lastly, the public interest would not be disserved by a permanent injunction. The public has an interest in maintaining a strong patent system. This interest is served by enforcing an adequate remedy for patent infringement --- in this case, a permanent injunction. The infringing products are not related to any issue of public health or any other equally key interest; they are used for entertainment. The public does not have a greater interest in allowing Defendants' customers' to continue to use their infringing DVRs."


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## Greg Bimson

jacmyoung said:


> Who said the hardware claim could be easily resolved? Who said "new evidence" was irrelevant?


I said the hardware claim could be resolved, but TiVo believes otherwise. Why even bother to address something that only has a 50/50 chance, when as simple violation of the wording of the injunction may require the shut down?

After all, if Echostar's lawyers gave TiVo's lawyers some of the code, it does mean they are talking outside of the court, which means room for settlement was possible. But even in this sense, TiVo is pushing for a ruling from the court to put DISH in contempt and having the DVR's shut down whilie trying to determine whether or not the new software infringes. That simple act says they are trying to accomodate DISH, but because they aren't received documents they requested, have the court issue a contempt order while trying to iron this out.


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## Curtis52

By requesting pertinent information, it's clear that TiVo is acting in good faith. By stonewalling those efforts, it's clear that Dish isn't acting in good faith.


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## peak_reception

That's clear and direct all right (what Curtis highlighted in bold and all the rest of those two paragraphs 3 posts back). Did he write that last Fall? If he's in the same frame of mind this Spring and Summer then I would have to agree that he's going to bring the hammer down on E* regarding the DVRs already in the injunction, no matter what they argue.


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## Curtis52

peak_reception said:


> That's clear and direct all right (what Curtis highlighted in bold). Did he write that last Fall? If he's in the same frame of mind this Spring and Summer then I would have to agree that he's going to bring the hammer down on E* regarding the DVRs already in the injunction, no matter what they argue.


He wrote that 8-17-06 when he denied Dish a stay during their appeal.


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## peak_reception

Curtis52 said:


> He wrote that 8-17-06 when he denied Dish a stay during their appeal.


So EchoStar's appeal to the Federal Court took about a year and a half?!

I think Judge Folsom is going to try to close out this case as soon as possible. The pressure to settle wil be intense, particularly on E*


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## James Long

Personally, I disagree with the judge's opinion (as quoted by Curtis here):


Curtis52 said:


> "The balance of hardships weighs in favor of granting a permanent injunction. As discussed, Plaintiff faces ongoing irreparable injury as Defendants' infringement continues. As a relatively new and small company, every day of Defendants' infringement affects Plaintiff's business. And, as discussed above, Plaintiff's primary product, its DVRs, are those with which Defendants' infringing products directly compete. The harm caused by such infringement weighs heavily in favor of an injunction.


A "relatively new and small company"? They have been around long enough to create a DVR that DISH allegedly infringes on. And they have survived years of alleged infringement.



> *Enjoining Defendants will likely cause some harm - but on balance, Defendants will endure less harm than Plaintiff*. The infringing products do not form the core of Defendants' satellite transmission business. And the injunction will not interfere with Defendants' satellite transmission.


While DVRs are not the core business they are a key part of the business and disabling them _would_ cause irreparable harm to the defendants.



> The infringing products are not related to any issue of public health or any other equally key interest; they are used for entertainment. The public does not have a greater interest in allowing Defendants' customers' to continue to use their infringing DVRs."


Tivo's products are equally "unimportant" as they are "used for entertainment". Why not just order all entertainment companies out of business since it is not in the public interest to keep them running - even for a temporary period while an appeal is processed?

But regardless of my personal feelings about the judge's wrongness, the appeals court IMMEDIATELY stated that he was wrong in not staying the injunction for appeals. THEY saw the irreparable harm to DISH, THEY saw that Tivo could survive another two years without injunctive relieve. The appeals court saw it right.

Judge Folsom was _WRONG_ ... and history has now shown that. It's time to move on to the future ... looking forward to DISH's response (due this next week) and real court activity (set for May 30th). Not two year old opinions.


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## spear61

Curtis52 said:


> Well, here is what Judge Folsom wrote on the subject of whether an injunction makes sense:
> 
> " *....As a relatively new and small company, every day of Defendants' infringement affects Plaintiff's business.* .....
> 
> *The public has an interest in maintaining a strong patent system. This interest is served by enforcing an adequate remedy for patent infringement --- in this case, a permanent injunction.*


Curtis52 - You have convinced me. I think the judge is going to put the hammer down on Dish. Think about it. Dish has nearly accomplished what concerned the judge -- TIVO is struggling to survive and Dish has done everthing possible to put them out of business. I think it's past the point of infringing software. The judge wants to punish Dish and set an example by enforcing "*an adequate remedy for patent infringement"*


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## jacmyoung

Since Judge Folsom's opinion and refusal to stay the injunction prior to DISH's appeal in 8/06, many things had happened:

1) The appeals court took the case and stayed the injunction;
2) The appeals court over-turned the hardware claim;
3) The appeals court suggested the parties (really Tivo) to address the hardware claim;
4) The appeals court upheld the software claim and the injunction back to the judge for execution;
5) DISH claimed new software downloaded to all offending DVRs;
6) The injunction took effect without addressing the hardware claim;
7) DISH claimed the new software was no longer infringing, and they were in compliance with the injunction after certain steps taken;
8) Tivo requested new software info from DISH, DISH complied in part, even though there was no legal requirement DISH to comply at the time;
9) Tivo decided not to address the hardware claim at this time;
8) Tivo requested contempt ruling by the judge;
9) Tivo stated the new software still infringed based on the partial evidence DISH provided to them, but then said they also needed more evidence to be sure.
10) Both sides seem to agree Tivo's filing was a little confusing.

Now we are waiting to see how DISH will respond.

But as far as what the judge's opinion is now compared to that of 8/17/06. I don't think much has changed as far as past infringement is concerned, but if he is reasonable, his view of future infringement will be based on what Tivo is asking him to do, that is in part to collect all DISH's new evidence on the new software claim.

Since Tivo is asking for such, and since such discovery (colorable difference) is not a lengthy one, would it be unreasonable for DISH to ask that the injunction is stayed for this short time while the judge heeds Tivo's such request?

I think in light of the fact that as it stands now, DISH's hardware never infringed, since hardware infringement was one of the two basis how the injunction was constructed, and additionally, Tivo clearly showed great deal of interest in the new software claim by DISH, and DISH as well by working with Tivo on Tivo's inquiry outside of the court, there is very little reason to insist DISH turning off all DVRs under injunction while the judge trying to determine the colorable difference issue, as I said it is a rather short discovery course.

Now I think Tivo was actually very careful with its request, it did not necessarily emphasize "colorable difference" issue, rather tried to give the judge the impression they merely were asking for more evidence so they could prove the new software still infringes. But the problem is Tivo did open this can of worm by initiating such request, and DISH can argue that as such, DISH should at least be given the opportunity to hear the "colorable difference" argument while the DVRs stay on.

Keep in mind, judges do not issue contempt of court ruling before colorable difference hearing, only after, if they find the new devices are no more than colorably different. Such hearing might not be needed if DISH were the only one asking for it, but since Tivo is in effect asking for it first...

Tivo did not say the new software was only colorably different, rather that in their view it was still infringing, even though they needed more evidence. Meaning even Tivo was not arguing the new software was no more than colorably different.

What that may mean? Will if the new software is more than colorably different, as so far Tivo did not try to dispute that, the judge is required to start a new discovery on the new software infringement, which will be a rather lengthy discovery.

And since as I speculated, if the judge stays the injunction during the discovery of colorable difference, and subsequently finds in favor of DISH (since as I said Tivo did not even try to dispute it at this time), then the judge is less likely to remove the stay while he proceeds to the next more lengthy discovery on the new software infringement issue.

Of course the above is my speculation only, and hopefully not too much more confusing than Tivo's lawyers


----------



## Curtis52

spear61 said:


> Curtis52 - You have convinced me. I think the judge is going to put the hammer down on Dish. Think about it. Dish has nearly accomplished what concerned the judge -- TIVO is struggling to survive and Dish has done everthing possible to put them out of business. I think it's past the point of infringing software. The judge wants to punish Dish and set an example by enforcing "*an adequate remedy for patent infringement"*


Yep. Judge Folsom was 100% correct when he wrote:

"A stay of the permanent injunction is not warranted. Defendants' identification of issues and rulings it plans to appeal is lengthy. Upon review, it seems that the Court has previously considered each at length. Although Defendants may prevail on some of the issues, they have not demonstrated a strong likelihood of success on appeal that would overturn the jury's verdict on all infringed claims. "

The appeals court should have never granted the stay. I'll bet he's glad to have the case back in his court to set things right.


----------



## jacmyoung

Curtis52 said:


> ...The appeals court should have never granted the stay. I'll bet he's glad to have the case back in his court to set things right.


Of course here is my other half of speculation. It is certainly possible the Judge will find DISH in contempt, if so that means he will not even listen to Tivo on the new software request.

The catch is the appeals court did stay the injunction last time, so DISH will have a soild case asking the appeals court to do it again, why? Since the judge this time ignored both Tivo and DISH on the review of the new software claim.

You do not believe the appeals court even had a reason to stay the injunction last time but they did so anyway, why do you think they will not stay it this time on appeal, considering there is now actually a good reason to hear the appeal?


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## spear61

I think the judge had moved way past technical details of infringing when he issued his order *His injuction dealt with remedies.* The remedy had two parts. One was money. He set a schedule for Dish to pay TIVO a bunch of money. The second part was a punitive slap. He told Dish they were forbidden to sell or service, enable, etc certain models of Dish receivers. Perfectly within his rights as a judge to punish patent offenders and having nothing to do with damage to Dish or Dish's representatives or customers or anything else. However, it may well be that the new models not specifically listed in the injunction are home free. I suspect the old ones are toast.

I am just happy that it appears that I have one of the 192,000+ receivers allowed to continue operations


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## jacmyoung

spear61 said:


> I think the judge had moved way past technical details of infringing when he issued his order *His injuction dealt with remedies.* The remedy had two parts. One was money. He set a schedule for Dish to pay TIVO a bunch of money. The second part was a punitive slap. He told Dish they were forbidden to sell or service, enable, etc certain models of Dish receivers. Perfectly within his rights as a judge to punish patent offenders and having nothing to do with damage to Dish or Dish's representatives or customers or anything else. However, it may well be that the new models not specifically listed in the injunction are home free. I suspect the old ones are toast.
> 
> I am just happy that it appears that I have one of the 192,000+ receivers allowed to continue operations


The judge of course is within his power to do so, the question is whether the appeals court will agree. They disagreed with him in the past, and DISH is of course counting on them again this time, in the event the judge refuses to stay the injunction like the last time.

However, judging from Tivo's filing, I think there is still a chance the judge this time will carefully look into the new software issue. I personally will also not ignore the hardware issue which is different than when the injunction was formulated, if of course DISH makes the hardware claim an issue.


----------



## peak_reception

jacmyoung says:


> Since Judge Folsom's opinion and refusal to stay the injunction prior to DISH's appeal in 8/06, many things had happened:
> 
> 1) The appeals court took the case and stayed the injunction;
> 2) The appeals court over-turned the hardware claim;
> 3) The appeals court suggested the parties (really Tivo) to address the hardware claim;
> 4) The appeals court upheld the software claim and the injunction back to the judge for execution;
> 5) DISH claimed new software downloaded to all offending DVRs;
> 6) The injunction took effect without addressing the hardware claim;
> 7) DISH claimed the new software was no longer infringing, and they were in compliance with the injunction after certain steps taken;
> 8) Tivo requested new software info from DISH, DISH complied in part, even though there was no legal requirement DISH to comply at the time;
> 9) Tivo decided not to address the hardware claim at this time;
> 8) Tivo requested contempt ruling by the judge;
> 9) Tivo stated the new software still infringed based on the partial evidence DISH provided to them, but then said they also needed more evidence to be sure.
> 10) Both sides seem to agree Tivo's filing was a little confusing.


 Other than that old bugaboo, #2 [it was reversed, not overturned], that's an interesting 10 count, as is your ensuing discussion. However, it may well be that the only number to matter when all is said and done will be #4. *Judge Folsom seems to have made up his mind on the critical issues. Now that it's back in his court it's hard to imagine that he'll have a sudden epiphany over how he mis-judged things the first time around. * Possible, but seemingly unlikely given his comments in post 29.

For this reason I agree with you that TiVo erred in engaging so much with E* (and with Judge Folsom in their agenda) on the matter of DISH's new software deployment and whether it is 'colorably different' or not.

Wouldn't a better strategy for TiVo have been to focus like a laser beam on the listed infringing devices in the "final and permanent injunction" and why those DVRs need to be shut down *now* before any new formulations are introduced?

TiVo _is_ asking for that, through a contempt of court hearing, but they spend a lot more time discussing DISH's new software. Seems like a mistake. I could be wrong but it seems to me that shutting down the listed DVRs* would be virtually a done deal if that was TiVo's first, foremost, and overriding objective. Why? Because 1) it's already in the injunction. 2) it's already been upheld without comment or correction by the Federal Court of Appeals, and 3) it's not liable to be heard on appeal again because it was already reviewed and upheld in the same form the first time.

TiVo could drive home the point that DISH seems determined to bend and finesse the injunction into what they wish it to be rather than the clear and lawfully given directive of what they *need* to do before proceeding to other issues. I don't think they effectively make that case in their written presentation, diluted as it is with all the discussion of new software and such. I can't help but think that E* is encouraged by TiVo's apparent willingness to be drawn so easily into the debate on new software before the injunction as standing in full effect, is enforced.

[speculation alert #1] >>> DISH might've even baited them [TiVo counsel] into this by supplying information and code to them beforehand, hoping it would make them mad and cause them to fire back and further engage the issue. If so, it seems to have worked. The new software is looking more and more like, even in TiVo's view, a key issue that needs to be settled before everything else can be settled. It's a fight they [TiVo] want to engage but it may well drag things out for months more.

[speculation alert #2] >>> Could it possibly be that TiVo is so confident now of ultimate success that they are more than willing to drag this out for months to come in order to rack up even higher damages from E* once all is decided?

* thus forcing a settlement to TiVo's advantage.


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## jacmyoung

I don't necessarily believe Tivo erred on the new device issue. Despite our discussion about how clear-cut the injunction is, they must also realized the new device issue is a mine field that must be dealt with. I also am not giving DISH too much credit on the bait issue. DISH was likely only trying to act in good faith.

I totally agree Judge Folsom might have made up his mind already, and it will be up to the appeals court to offer some relief for DISH. I however don't see DISH wanting to settle this late in the game, it makes no real difference now, they might as well stick it to the very end.

And I think Tivo sees that too, and acted accordingly.


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## spear61

Could be that the judge will double down on the monetary damages and let the boxes go.


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## jacmyoung

Just learned from the other site that DISH is seeking suggestions on what Tivo features people like for DISH DVRs. If that is true, it could be the first indication that DISH is ready to talk about a license agreement with Tivo, and wants to know the important features to be included in the agreement.

Of course it could also mean something entirely opposite but very unlikely, that DISH is so confident that their new software is non infringing, that they are preparing to go head on with Tivo after being cleared by the court.

What will happen from now to 5/23 or a few days after will be very interesting.

Frankly it may be the best thing for both parties anyway.

If true, I still think Tivo's future is not bright, their deals with cable can't go very smoothly simply because cable has no track record to make any new hardware/software work right, and the initial testings had already pointed to that direction. And don't ever think Tivo's prospect with DirecTV getting any better as the result of this.

But I will say this, cooperation between DISH and Tivo on the DVR development will most cetainly give clear edge to DISH's DVRs, in addition to what they have that is already better than their competitions.


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## Greg Bimson

spear61 said:


> [speculation alert #1] >>> DISH might've even baited them [TiVo counsel] into this by supplying information and code to them beforehand, hoping it would make them mad and cause them to fire back and further engage the issue. If so, it seems to have worked. The new software is looking more and more like, even in TiVo's view, a key issue that needs to be settled before everything else can be settled. It's a fight they [TiVo] want to engage but it may well drag things out for months more.


I think a few people have missed what TiVo is trying to do (and I'm using the court document, but edited):


> A hearing at the earliest possible date to determine whether EchoStar should be held in contempt for its failure to disable the DVR functionality in the Infringing Products and for its placement of new infringing DVRs (and new EchoStar products that are only colorably different)


So TiVo wants a hearing to force DISH/SATS to comply with the injunction order, and...


> Permission to serve limited discovery to obtain additional information before determining the damages TiVo sustained during the stay of the injunction, and, if necessary, bringing a motion for an order to show cause why EchoStar is not in contempt for the continuing use of the Infringing Products, changed only by downloading modified, but still infringing, software (and new EchoStar products that are only colorably different).


Would like the court to grant access to all of the information DISH/SATS feels they'll present regarding the new software, and then produce a show cause order to fight DISH/SATS regarding the new software if it still infringes. This is because DISH/SATS claims the new software has been in operation for a while, and the damages would be tied to the date when the software was implemented.

What TiVo has done is somewhat brilliant. They've divided the problem into two pieces: DISH/SATS non-compliance with the injunction, and the software issues to be started in a separate hearing. Now, the only issue with the contempt proceeding according to TiVo is that DISH/SATS is not following the injunction. The software needs "discovery".

TiVo is going to do what DISH/SATS has done. TiVo is going to drag out the fight on the software claim, because according to TiVo DISH/SATS is dragging their heels giving TiVo the information they need.

In other words, this is the setup to find DISH/SATS in contempt while DISH/SATS addresses the software. So we are now down to two outcomes: settlement (most likely) or shut down (somewhat likely).


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## spear61

Greg - Got your quote from someone else - was not me.

All I say is that the judge has been upheld on patent infringement, that he issued a punitive injuntion to punish Dish for chosing to ignore the patent laws, that the punishment included monetary penalties, and an additonal penalty (prohibitaton of the use of DVR functions in certain boxes- no more- no less.


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## peak_reception

> What will happen from now to 5/23 or a few days after will be very interesting.


Yes, 5-23 and then (especially) 5-30 and how things shake out going forward from there.


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## jacmyoung

Greg Bimson said:


> I think a few people have missed what TiVo is trying to do (and I'm using the court document, but edited):So TiVo wants a hearing to force DISH/SATS to comply with the injunction order, and...Would like the court to grant access to all of the information DISH/SATS feels they'll present regarding the new software, and then produce a show cause order to fight DISH/SATS regarding the new software if it still infringes. This is because DISH/SATS claims the new software has been in operation for a while, and the damages would be tied to the date when the software was implemented.
> 
> What TiVo has done is somewhat brilliant. They've divided the problem into two pieces: DISH/SATS non-compliance with the injunction, and the software issues to be started in a separate hearing. Now, the only issue with the contempt proceeding according to TiVo is that DISH/SATS is not following the injunction. The software needs "discovery".
> 
> TiVo is going to do what DISH/SATS has done. TiVo is going to drag out the fight on the software claim, because according to TiVo DISH/SATS is dragging their heels giving TiVo the information they need.
> 
> In other words, this is the setup to find DISH/SATS in contempt while DISH/SATS addresses the software. So we are now down to two outcomes: settlement (most likely) or shut down (somewhat likely).


But of course as always you completely rule out the possibility that DISH may prove its new software non-infringing, if so Tivo's move to mix the damages with discovery will be a mistake.

I think you have put too much stock on Tivo's "still infringing, software" as if it is a matter of fact, when it was merely Tivo's claim. Because of two things:

1) When DISH voluntarily provided the limited codes to Tivo, they must have given Tivo the info most in favor of DISH's non-infringing claim;
2) Tivo insists that additional new evidence to be obtained in a new discovery attempt to demonstrate the new device is still infringing.

Tivo does not have it, they only made a claim to start off right.


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## jacmyoung

peak_reception said:


> Yes, 5-23 and then (especially) 5-30 and how things shake out going forward from there.


I was actually referring to between now and the DISH response, not after If nothing happens then what is after 5/30 will be again interesting.


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## jacmyoung

BTW, let's not have the illusion that somehow dragging it out may be in Tivo's best interest. It has always being DISH who wish to drag things out, not Tivo.

There is absolutely no incentive for Tivo wanting to drag things out, regardless if DISH may prevail or not. DISH can fold anytime if they figure things will not end up in their favor. Tivo on the other hand will always want things end sooner than later. The longer it drags on the less favorable it is for Tivo from a strategic standpoint.

The best option should be to not address the new software issue, only do so if DISH succeeds in convincing the judge to stay the injunction while looking at the new evidence. The reason for Tivo's emphasis on the discovery of the new evidence is because, unlike what some of you believe that the new evidence is irrelevant, Tivo actually agrees with me that the new evidence may be crucial in judge's future ruling, and for that reason Tivo had no choice but take preemptive steps.

Not to drag thing out rather the opposite, to wrap it up as soon as they can by having all evidence sooner than later and make their case sooner than later. This is of course not ideal compared to waiting for judge's reaction to DISH's new evidence then react accordingly, if there is a good chance the judge will not take DISH's new claim seriously due to the language of the injunction. Keep in mind the discovery of the new device can be brought up later at anytime, even if after the case is concluded.

Unless of course Tivo saw a very good chance judge will in fact look at DISH's new device claim seriously, and produce a ruling in favor of DISH. The risk of such outcome could only be assessed after looking at the new evidence. Unilke us, Tivo did have the opportunity to look at some of the new evidence, and must have determined such evidence deserved serious attention.


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## Greg Bimson

jacmyoung said:


> But of course as always you completely rule out the possibility that DISH may prove its new software non-infringing, if so Tivo's move to mix the damages with discovery will be a mistake.


I'm not ruling out the possibility, unless you expect DISH/SATS to shut down a few million DVR's while trying to prove the new software doesn't infringe. Mixing the damages with the discovery is one point; the insistance that DISH/SATS follow the exact wording of the injunction is the other. If TiVo manages to separate the damages and the discovery as one hearing, but the contempt proceeding as another, TiVo wins, unless DISH/SATS really wants to start paying contempt fines.


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## Greg Bimson

jacmyoung said:


> BTW, let's not have the illusion that somehow dragging it out may be in Tivo's best interest. It has always being DISH who wish to drag things out, not Tivo.


This is unreal.

TiVo wants to drag out the possibility that the new software does not infringe. They will fight that DISH/SATS is already in contempt of court by continuing to sell infringing DVR's and also refusing to disable DVR's. If TiVo can simply get the court to address that DISH/SATS is not following the injunction, this will be over quickly.

The new software infringement is being introduced as a separate finding of fact.


jacmyoung said:


> The best option should be to not address the new software issue, only do so if DISH succeeds in convincing the judge to stay the injunction while looking at the new evidence.


The injunction will not be stayed. Nothing has "changed" nor is "new evidence". DISH/SATS will need a motion to show cause to state why the injunction should no longer be valid, and that will be done separate from the fact that DISH/SATS is most likely in contempt of the injunction.


jacmyoung said:


> The reason for Tivo's emphasis on the discovery of the new evidence is because, unlike what some of you believe that the new evidence is irrelevant, Tivo actually agrees with me that the new evidence may be crucial in judge's future ruling, and for that reason Tivo had no choice but take preemptive steps.


Look at what the preemptive steps are:

1) A hearing *at the earliest possible date* to determine that DISH/SATS is in contempt because they did not follow the injunction order

2) A discovery motion to address the new software before possibly filing a show cause order to determine if the new software is outside of the scope of the injunction.

So if the judge accepts this as two steps, the contempt proceeding will only find out if the infringing DVR's have had their functionality removed and are no longer being sold. That hearing will now take all of TEN MINUTES.

A separate hearing will determine whether or not the new software infringes. Discovery on that could take weeks, even months. If DISH/SATS is forced to shut down the DVR's pending the software review and it could take months, what exactly do you think DISH/SATS will do?

I'd think they'd settle this thing once and for all.


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## Greg Bimson

The biggest misunderstanding of all:


James Long said:


> But regardless of my personal feelings about the judge's wrongness, the appeals court IMMEDIATELY stated that he was wrong in not staying the injunction for appeals. THEY saw the irreparable harm to DISH, THEY saw that Tivo could survive another two years without injunctive relieve. The appeals court saw it right.


No, the Court of Appeals did not think Judge Folsom was wrong. The Court of Appeals will normally stay an injunction if the District Court judge does not. However, no matter how wrong anyone believes this action is, it is the Court of Appeals that *affirmed Judge Folsom's position* by lifting the stay and having it in full force and effect before the case was back in Judge Folsom's chambers.


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## peak_reception

I don't think anything of importance will happen between now and DISH's response on 5-23.

DISH and TiVo had their out-of-court contact on May12. DISH supplied some code and info. DISH also supplied three (meant to be intimidating?) letters of legal counsel claiming that the software workaround doesn't infringe. DISH also *might* have made a settlement offer along with the other materials. (?)

TiVo for their part have flatly said in their agenda that the software workaround still infringes, even while requesting more discovery on it:


> EchoStar also waived privilege and produced to TiVo three opinions of counsel relating to EchoStar's modified software. After review of the software that EchoStar provided and the opinion letters, TiVo does not believe that the modifications avoid infringement.


TiVo doesn't seem to have been impressed by the 3 lawyers (patent attorneys?) DISH hired to say their new software doesn't infringe. And if a settlement offer was made by E*/DISH, it was rebuffed.

So I thnk there will be nothing new now until May 23.



> There is absolutely no incentive for Tivo wanting to drag things out


If TiVo is convinced they'll prevail on the software workaround issue there is: higher damages. But only for that issue.


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## jacmyoung

The problem with your thinking Greg, is you have already concluded that DISH must shut off all DVRs on the list before anything else may happen.

Not so slam dunk even according to Tivo, else they would not have tried to bring in the new device issue so soon, as I said it can be introduced anytime after the DVRs are shut off.

There is a real risk, even if the judge has already made up his mind, that he would insist DVRs be shut off before anything else, which means he will find DISH in contempt, that DISH may prevail on appeal. Why?

DISH suceeded in doing so once already, in part to get the appeals court to stay the judge's ruling during the appeal, and in the other part had part of the verdict overturned. They can do it again, which can drag things out for very long again while they continue to use the DVRs. It is such potential and real risk that Tivo wants to avoid, hence their pre-emptive measure on the new evidence.


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## peak_reception

> TiVo wants to drag out the possibility that the new software does not infringe. They will fight that DISH/SATS is already in contempt of court by continuing to sell infringing DVR's and also refusing to disable DVR's.


+1 Yes, this is the key for TiVo.


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## jacmyoung

peak_reception said:


> ...If TiVo is convinced they'll prevail there is: higher damages.


They can always seek higher damages later, the new infringing devices will have to pay, there is no time limitation, no need to take such risk to bring the issue in now, unless of course Tivo saw a real danger that passively reacting to DISH's new device argument may put Tivo in a serious handicap, meaning the judge ends up staying the injunction while considering the new evidence.

Again, when DISH's lawyers gave Tivo the limited new evidence, you can bet such new evidence was worked in DISH's favor to demonstrate non-infringing software. If Tivo saw such evidence and could have decided DISH had no chance, they would not have risked to even bringing such issue, just ask for teh contempt ruling to shut off all DVRs, and get to the new infringing software anytime they wish.

Even if for argument sake you are correct Tivo wanted to drag things out for higher damages, it would still be better if they did not bring up this issue, and let DISH continue to use the new and infringing new product under some false pretense, so Tivo can come back later to ask for more damages.

The likely reason Tivo did what it did, was because after they saw the limited evidence provided by DISH, they realized such new issue must be given serious attention, sooner than later.


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## peak_reception

jacmyoung said:


> Tivo actually agrees with me that the new evidence may be crucial in judge's future ruling, and for that reason Tivo had no choice but take preemptive steps.


I missed that in their agenda. Oh here it is:



> *On further review of the materials DISH has provided to us, and after consulting jacmyoung's post #37 at DBTalk.com, we conclude that this new evidence of non-infringement is something we need to deal with now. As jacmyoung so aptly puts it, we have no choice.*


  Just having some fun with you jac. I'm actually in the middle of your and Greg's view on the matter of why TiVo has engaged the new software issue so extensively in their agenda. *If it can wait until the contempt of court hearing is over, let it wait! * Maybe it can't wait though... yet another key to how things will proceed.


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## Greg Bimson

jacmyoung said:


> The likely reason Tivo did what it did, was because after they saw the limited evidence provided by DISH, they realized such new issue must be given serious attention, sooner than later.


Judge, I have two issues I'd like to bring up...

1) DISH/SATS is defying the court's order. They are selling listed DVR's, and they haven't shut down listed DVR's functions. I'd like a hearing on that ASAP, please.

2) DISH/SATS claims they have new, non-infringing software. I'd like a discovery motion and hearing to receive all the evidence possible regarding this new software. Once we've made a determination on infringement, we'll get back to the court.

The software was brought up so that it wouldn't impact the contempt proceeding.


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## jacmyoung

Greg Bimson said:


> ...The software was brought up so that it wouldn't impact the contempt proceeding.


Here is where you and I disagree. The new device issue will have impact on the contempt proceeding, and will negatively impact Tivo more so than DISH for obvious reason.

Because even if you are correct that only the language of the injunction should be relied on in a contempt hearing, the issue of a new device will always be the most crucial evidence in the proceeding to be heard, because that is usually what a contempt hearing is all about, to determine whether the new device is more than colorably different or not.

Now the judge may disregard the new evidence even after finding that the new device is more than colorably different, becasue he only sticks to the language of the injunction, but the appeals court has shown flexbility in the past, and had overturned part of the verdict that the injunction was built on.

To insist that the new device issue is totally separate from a contempt proceeding is simply to ignore the law.


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## Greg Bimson

jacmyoung said:


> Here is where you and I disagree. The new device issue will have impact on the contempt proceeding, and will negatively impact Tivo more so than DISH for obvious reason.
> 
> Because even if you are correct that only the language of the injunction should be relied on in a contempt hearing, the issue of a new device will always be the most crucial evidence in the proceeding to be heard, because that is usually what a contempt hearing is all about, to determine whether the new device is more than colorably different or not.


I agree that we disagree. TiVo is asking that listed receivers, as well as those not colorably different, be shut down, like the injunction states. And TiVo does put a good argument forth that if DISH/SATS didn't like the wording of the injunction, there were several chances for them to get it changed. Once an injunction is in full force and effect, it takes a power of ten to get relief from an injunction.

And that is the reason why TiVo has decided to bring up this software and ask the judge to put it outside of the initial contempt hearing. TiVo is trying to gain a monetary advantage in a licensing agreement, by having the weight of the court behind them.


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## jacmyoung

Greg Bimson said:


> ...And that is the reason why TiVo has decided to bring up this software and ask the judge to put it outside of the initial contempt hearing. TiVo is trying to gain a monetary advantage in a licensing agreement, by having the weight of the court behind them.


Here is why I have trouble figuring out how you even came to such impression that Tivo brought up this new device issue so to urge the judge to put it outside of the initial contempt hearing. The contempt argument by Tivo has three parts, the new software is the 3rd part, Tivo's argument is that after reviewing the limited source code, the new software is still infringing, therefore DISH is still in contempt, even if DISH could argue away the first two parts.

In the exhibits, Tivo did go into length to seek new software info, date and details, but again no where did it link such attempt to the assessment of additional damages, because in Tivo's view DISH is still infringing, with or without the new software.

In the second part of the filing on the damage issue, again Tivo did not mention a word of the new software.

Tivo did make it clear that despite its view of the still-infringing new software, it wants more discovery and more detailed info on the new software just to be sure. But again nowhere did Tivo link such request to the assessment of additional damages. You tried to put them together at your own desire.

And I will go one step further to speculate why Tivo did not link the new software discovery to the asessment of additional damages. Because it only complicates the damage assessment. Tivo wants maximum damages, and does not want the new software issue to interfere with such determination, which is why Tivo did not mention a word of the new software when it addressed the damage issue.

Tivo would not have even mentioned the new software issue in the contempt argument either if it had that choice, but apparent Tivo believed the new software issue will be a big factor in the contempt hearing so Tivo made it part 3 of its three-part contempt argument.


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## James Long

Greg Bimson said:


> The biggest misunderstanding of all:


Save the insults for your children or wife.

Judge Folsom made the MISTAKE of not staying the injunction pending appeal. The appeals court fixed that quickly ... and in it's final ruling pointed out other mistakes Judge Folsom made. Judge Folsom is not flawless.


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## Greg Bimson

***THE GLOVES ARE NOW OFF***


James Long said:


> Save the insults for your children or wife.
> 
> Judge Folsom made the MISTAKE of not staying the injunction pending appeal. The appeals court fixed that quickly ... and in it's final ruling pointed out other mistakes Judge Folsom made. Judge Folsom is not flawless.


It is insulting that you believe Judge Folsom's refusal to stay his injunction is a mistake, yet the Court of Appeals simply agreed with Judge Folsom by lifting the injunction and *letting it take effect simply by removing the stay*. So simply put, the entire judicial system has made a mistake, because they haven't ruled for DISH/SATS.

The people that are arguing DISH/SATS has a chance are the ones that believe an injunction can be rewritten by an infringer in minutes.


jacmyoung said:


> Here is why I have trouble figuring out how you even came to such impression that Tivo brought up this new device issue so to urge the judge to put it outside of the initial contempt hearing.


You have trouble? I have trouble understanding why you do not read the relevant passages:


> To provide prompt resolution of these issues, TiVo requests:
> • A hearing at the earliest possible date to determine whether EchoStar should be held
> in contempt for its failure to disable the DVR functionality in the Infringing Products and for its placement of new infringing DVRs (and new EchoStar products that are only colorably different); and
> 
> • Permission to serve limited discovery to obtain additional information before determining the damages TiVo sustained during the stay of the injunction, and, if necessary, bringing a motion for an order to show cause why EchoStar is not in contempt for the continuing use of the Infringing Products, changed only by downloading modified, but still infringing, software (and new EchoStar products that are only colorably different).


Read both. TiVo requests one hearing to address the fact that DISH/SATS is still selling and still has active listed infringing DVR's. TiVo requests a separate discovery to find fact on the new software, which is not included on the first hearing.

What the heck are you people reading?


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## James Long

Greg Bimson said:


> ***THE GLOVES ARE NOW OFF***


Really, a threat?

We're reading court documents ... unedited, unsummarized, untwisted to fit the agenda of people who have been claiming Tivo would actually get DISH to turn off their DVRs (or settle for apparently billions of dollars) for the past two years. (OK, perhaps not billions ... but there seems to be no ceiling to the penalty the Tivo lover's side of this argument expects DISH to pay.)

We're reading true reports from the courts.

How about you?


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## Greg Bimson

Look two posts up.


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## Curtis52

Don't make me stop the car.


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## jacmyoung

Greg Bimson said:


> ***THE GLOVES ARE NOW OFF***It is insulting that you believe Judge Folsom's refusal to stay his injunction is a mistake, yet the Court of Appeals simply agreed with Judge Folsom by lifting the injunction and *letting it take effect simply by removing the stay*. So simply put, the entire judicial system has made a mistake, because they haven't ruled for DISH/SATS.
> 
> The people that are arguing DISH/SATS has a chance are the ones that believe an injunction can be rewritten by an infringer in minutes.You have trouble? I have trouble understanding why you do not read the relevant passages:Read both. TiVo requests one hearing to address the fact that DISH/SATS is still selling and still has active listed infringing DVR's. TiVo requests a separate discovery to find fact on the new software, which is not included on the first hearing.
> 
> What the heck are you people reading?


We are witnessing the perfect example of picking only the information that serves one's view.

1) Judge Folsom argued passionately why the inunction should not be stayed while DISH's appeal was heard, and James listed judge's justifications that CLEARLY demonstrated his unfair characterization of how one party might not survive the stay yet not the other. And the appeals court disagreed, immediately stayed the injunction agaist judge's will, and in the end overturned 50% of the verdict.

What does that have anything to do with whether the system failed or not? It happens all the time.

2) Continue to totally ignore Tivo's own contempt argument in which Tivo again CLEARLY made the new device part 3 of its three-part contempt argument, and did not mention a single word of the new software in its damages section.

And continue to not consider that logic, which is the new software issue only complicates the damage assessment, not helping it, only bringing the potential to redcuce the damages, not increase them. Because if the new device issue had never existed, Tivo obviously would be entitled to the maximum damages.

The introduction of the new device evidence, if turns out not in Tivo's favor, will only serve to reduce the damages, not increase them.

So why even introduce such concept? Because Tivo saw the initial codes and must have determined it is a serious enough issue to be addressed, and they of course want to be proactive in addressing it.

What I found truely amazing is some of you adamantly argued that a summary judgment was a piece of cake, and the reversal of the hardware claim could be easily resolved by Tivo merely making a simple request, and ridiculed me for not understanding what the appeals court meant when they said the jury did not make that verdict.

But when Tivo totally abandoned the hardware claim issue, the same folks simply went on to the next issue as if their ill conceived argument on the summary judgment never happened.

Oh yeah of course Tivo simply wanted to save the hardware issue for later, you know let's not take all gloves off, only some of them.

Yeah right! Just make up excuses as we move along.


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## James Long

Greg Bimson said:


> ... yet the Court of Appeals simply agreed with Judge Folsom by lifting the injunction ...


Oh, the Court of Appeals lifted the injunction? Who knew? 

Judge Folsom ERRORED in 2006 by not immediately staying the injunction pending appeal. The appeals court corrected that error ... preventing harm to DISH Network during the appeals process. No harm has come to Tivo that can't be fixed with more cash for the additional months of alleged infringement. They are still in business and doing well, despite Judge Folsom's OPINION on the matter. Apparently the appeals court's OPINION was more accurate than Judge Folsom's.

Now it is a matter of interpreting what that injunction means. Tivo has legal counsel, DISH has legal counsel - if any of Tivo's or DISH's legal counsel is represented in this thread I'd be really surprised ... so that leaves this entire thread and the several before it as rampant speculation by unqualified individuals. Just guesswork. All for the sake of entertainment? Or is this a pissing contest where everyone in the middle loses?

Oh well, we have a couple posts of truth in the thread ... and then the garbage begins. Why you guys can't just stick to the facts is beyond me. The FACTS are in what Tivo filed. The FACTS are in what DISH will file next week. The FACTS will be decided, by a judge who has made mistakes before. That decision will not come for a couple of weeks.

It is a shame ... there are many people on this forum who are interested in the FACTS ... they want to know what IS happening. Yet every thread on this subject is polluted by the same old speculation over and over and over again. The facts keep getting lost in the rhetoric.


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## Curtis52

It's Journalism 101.

It's the classic difference between reporting the news and editorializing. Newspapers are an analogy.

There is usually a clear distinction. The news is (theoretically) presented in newspapers on all the pages except the editorial pages. Opinion is presented on the editorial page and the Op-Ed (opposite editorial) page. There isn't supposed to be any intermingling of opinion and fact in the various areas.

As far as I know, this is a discussion group. A hybrid of both opinion and fact. 

If I have missed something in a FAQ or whatever please point me to it.


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## James Long

Since we don't have a editorial page it would be hard to say we have an opposite editorial page. True, this is a discussion forum ... but the goal is to present facts ... not to be a battle zone. DBSTalk is NOT a Usenet newsgroup - it remains a moderated forum.

The goal is to be as lightly moderated as we can ... but we do want to stay on a level where if people want to know what is going on all they need to do is look ... they shouldn't need to wade through pages of "what it really means" that are mostly biased speculation about the future.

Can you say what Tivo's filing means WITHOUT bias? Anyone?


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## Herdfan

jacmyoung said:


> 1) Judge Folsom argued passionately why the inunction should not be stayed while DISH's appeal was heard, and James listed judge's justifications that CLEARLY demonstrated his unfair characterization of how one party might not survive the stay yet not the other. And the appeals court disagreed, immediately stayed the injunction agaist judge's will, and in the end overturned 50% of the verdict.





James Long said:


> Judge Folsom ERRORED in 2006 by not immediately staying the injunction pending appeal. The appeals court corrected that error


I think too much is being made of the COA staying the injunction. I would have bet my house that it would be stayed. It is what the COA does regularly when they agree to accept a case. I would have been stunned if they didn't.

What is telling though is that they let it stand as written without modification. More thought and analysis needs to be put into that little tidbit of fact.


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## jacmyoung

James Long said:


> ...Can you say what Tivo's filing means WITHOUT bias? Anyone?


Of course not, my ultimate bias is I wish DISH settles with Tivo and be close partners, because Tivo needs a platform to attach its name on very badly, DISH and Tivo, despite the legal battle, in my view are two of the most like-minded companies there are, in that they both cater to the end users more rigorously and less caving in to the studios and networks alike, unlike most cablecos and DirecTV.

Additionally, DISH has proven its ability (after some initial bumpy roads) to produce more stable, more innovative and user friendly DVRs than other providers, which is exactly Tivo can use to effectively broadcast its own innovative ideas. The synergy between DISH and Tivo will no doubt make a DISHTivo or TivoDISH device superior to anyone else's, and will benefit both.

But I am not going to second guess Charlie or his demise, nor fantasizing Tivo's bright future. What is happening is what is happening, we only speculate along the way.

I don't claim I know better, but what I can say is two of my central arguments, one that a summary judgment on the hardware issue is not an easy thing to do, the other that the relevance of the new device evidence in a contempt hearing, have so far both been proven correct, despite the opposing group's rigorous denial.

Does that mean I will more than likely prevail in the end? No. The only thing one can do is trying to be objective, while admitting one's own subjectivity and imperfection. We are only human.


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## spear61

The Court of Appeals wrote, "The district court's injunction was stayed during the course of these proceedings. The stay that was issued pending appeal will dissolve when this appeal becomes final. *At that time, the district court can make a determination as to the additional damages, if any, that TiVo has sustained while the stay of the permanent injunction has been in effect*."

Speaking from experience, I spent 10 years of my life involved full time on one federal lawsuit , up and down the ladder to the supreme court numerous times with truckloads of files (we got beat up bad before it was over and it still pukes it's head up every few years). I learned that it's not a good idea to mess with the judge. He can craft really nasty penalties and unless he really goes over the deep end, his decision will be upheld. *This judge can either let Dish off the hook on the older boxes or he can slam them hard. All he has to say is that it's part of his remedy for the previous patent infringement.*


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## Greg Bimson

James Long said:


> Can you say what Tivo's filing means WITHOUT bias? Anyone?





> *TiVo's Filing:*
> To provide prompt resolution of these issues, TiVo requests:
> • A hearing at the earliest possible date to determine whether EchoStar should be held in contempt for its failure to disable the DVR functionality in the Infringing Products and for its placement of new infringing DVRs (and new EchoStar products that are only colorably different); and
> 
> • Permission to serve limited discovery to obtain additional information before determining the damages TiVo sustained during the stay of the injunction, and, if necessary, bringing a motion for an order to show cause why EchoStar is not in contempt for the continuing use of the Infringing Products, changed only by downloading modified, but still infringing, software (and new EchoStar products that are only colorably different).


One request is a hearing to address contempt of court, since DISH/SATS is continuing to allow sales and use of listed, infringing DVR's (and those only colorably different). No questions regarding software here.

The other request is a motion to obtain documents relating to the new software, in case TiVo wishes to pursue a show cause order regarding the new software.

TiVo is trying to divide the issues regarding the injunction into two groups. TiVo wants immediate relief in the form of a contempt order, regarding the continuing sales and usage of listed infringing DVR's. TiVo *separately* wants to examine the new software.


James Long said:


> The FACTS are in what Tivo filed.


Precisely. Too bad many are failing to see it.


----------



## peak_reception

Can we talk?

There's opinion, interpretation, and yes, speculation, all over this board, and all over any board of discussion anywhere on the web.

Moreover, it shouldn't be surprising that a long and hotly contested court case with so much at stake will stimulate long and hotly contested discussions. I actually think that the one here has been quite civil given the passions involved. You should see what gets posted elsewhere on this topic :eek2: 


> Can you say what Tivo's filing means WITHOUT bias? Anyone?


 What on earth do you think we're trying to figure out here James?! Should we just take turns posting TiVo's filed agenda one sentence at a time? The filing is only the tip of the iceberg so to speak. What is the harm in trying to figure out what is happening behind or under that tip?

Of course we all have our opinions and biases which are honestly held and openly expressed.*Mixing them in and seeing what holds up under opposition and scrutiny has value*, at least to those of us who've been posting here. Those who don't see the value don't need to read any of it!

Having said that, I'm probably done for the week because I don't think anything more wil happen until Friday when DISH replies to TiVo's agenda.


----------



## Greg Bimson

jacmyoung said:


> But when Tivo totally abandoned the hardware claim issue, the same folks simply went on to the next issue as if their ill conceived argument on the summary judgment never happened.


I didn't see anywhere that the hardware claims have been abandoned.


jacmyoung said:


> the other that the relevance of the new device evidence in a contempt hearing, have so far both been proven correct, despite the opposing group's rigorous denial.


Not being addressed in a contempt hearing. TiVo wants more time to examine the new software through a discovery request. And TiVo also wants a hearing, "to determine whether EchoStar should be held in contempt for its failure to disable the DVR functionality in the Infringing Products and for its placement of new infringing DVRs (and new EchoStar products that are only colorably different)" *immediately*. Don't see where TiVo wants the judge to issue a ruling on the new software *immediately*. TiVo wants a contempt ruling about DISH/SATS' sales and functions of offending DVR's *immediately*.


----------



## jacmyoung

Greg Bimson said:


> I didn't see anywhere that the hardware claims have been abandoned.


It was not mentioned at all by Tivo in its filing, if you understand how a summary judgment works, if it is not brought up in its appropriate stage it is not likely brought up ever.



> ...Not being addressed in a contempt hearing. TiVo wants more time to examine the new software through a discovery request. And TiVo also wants a hearing, "to determine whether EchoStar should be held in contempt for its failure to disable the DVR functionality in the Infringing Products and for its placement of new infringing DVRs (and new EchoStar products that are only colorably different)" *immediately*. Don't see where TiVo wants the judge to issue a ruling on the new software *immediately*. TiVo wants a contempt ruling about DISH/SATS' sales and functions of offending DVR's *immediately*.


Below is the 3rd part of the three-part Tivo argument right before Tivo sought contempt ruling by the judge:

"...Third, even if EchoStar's injunction language were adopted, EchoStar would still be violating it. All EchoStar has done to the infringing products is download a modified version of its software to its otherwise unmodified set top boxes. TiVo was given access to some of EchoStar's modified software this week and is in the process of reviewing it. The changes described in the opinion letters produced by EchoStar do not render the products noninfringing, and TiVo has seen nothing so far in its review of source code that changes this. However, to avoid any doubt, TiVo will complete its analysis of the allegedly new software and, with the Court's permission, will request written discovery on both the Infringing Products and those believed to be only colorably different (attached as Exhibit C) and possibly two depositions, depending on the content of EchoStar's discovery responses and documents."

Immediately after stating this part three, Tivo addressed the contempt issue. Nowhere in this section of the filing did Tivo mention the damage issue, only the contempt issue.

The potential problem I see is, while Tivo tried very hard to assure the judge they are certain the new software is still infringing, they also contradicted their statement by admitting that it is necessary to take steps to "avoid any doubt". What it means is the doubt cast by the new software claim will be real and a necessary evil that must be dealt with as part of the contempt determination Tivo is asking the judge to do, regardless how confident Tivo feels the new software is still infringing.

Now according to some of you, the new evidence wasn't even relevant and there was not even a need to look at it, much less after looking at it it was claimed to be still infringing. Yet afterwards Tivo was still concerned about any "doubt" that may arise from it after all these "unnecessary inquiries", so much so Tivo wants further such "unnecessary" discovery on the new software evidence, as part 3 of its three-part contempt discussion.

Is Tivo wrong? Or were you wrong?

Of course Tivo wants it "immediately", anything other than that will be stupid, but Tivo has no illusion they know they may not get it "immediately" due to the "doubt" the new device evidence may cast, so to back it up, Tivo asked for further discovery sooner rather than later, the goal of course is to make sure they will have solid response to such doubt in the event the contempt hearing does not go the "immediate" way they seek, then at least they will already have a good head start to make it as "immediate" as possible with their response to the "doubt" ready to go, because it is Tivo who most certainly does not want to further delay the whole thing.


----------



## Greg Bimson

Try reading only the first sentence of each paragraph:


> First, TiVo believes that EchoStar is in violation of the injunction by failing to "disable the DVR functionality," and by selling new DVRs, regardless of any changes to the software.
> 
> Second, EchoStar is misusing the Court's language that requires EchoStar to "disable the DVR functionality (i.e., disable all storage to and playback from a hard disk drive of television data) in all but 192,708 units of the Infringing Products that have been placed with an end user or subscriber."
> 
> Third, even if EchoStar's injunction language were adopted, EchoStar would still be violating it.
> 
> EchoStar's violations of the injunction constitute contempt of court.
> 
> Until EchoStar is held in contempt, it will continue to conduct its business as if the injunction were never issued.
> 
> With respect to EchoStar's modified software, TiVo requests permission to serve limited discovery to obtain additional technical information before bringing a motion on ground number three.


And the last sentence in the last paragraph attached above:


> To provide timely relief from EchoStar's continuing infringement and violation of the Court's injunction, TiVo requests a hearing on EchoStar's failure to disable the DVR functionality and its placement of new infringing DVRs at the earliest available time.


TiVo is trying to get a quick resolution to DISH/SATS' continued sales and customer's usage of infringing DVR's, while delaying the software to a later date.

TiVo is bringing up the new software to allow them time for examination (a delaying tactic), while asking the judge to immediately rule DISH/SATS' in contempt for ignoring the injunction.

Am I the only one that sees this? TiVo doesn't want to discuss software at the first contempt hearing.


----------



## James Long

peak_reception said:


> What on earth do you think we're trying to figure out here James?!


That's a good question, as it seems that everyone just talks past each other. Some days it seems that all this topic has become is a stamina contest. Who can outlast the others?

If we're looking for the TRUTH we keep going past it. Every once in a while the parties drop another bread crumb and we get truth for a post or two but then it's back to the rhetoric of what people WANT to happen - not the truth of the issue.

I guess it's OK as long as nobody takes the thread seriously beyond the actual court documents.


----------



## jacmyoung

James Long said:


> ...Some days it seems that all this topic has become is a stamina contest. Who can outlast the others?...


No body can, even when this whole thing is over, everyone will continue to argue he is correct I do agree it gets tiresome. For example I can't recount how many times some of us went back and forth on the hardware summary judgment issue repeating ourselves over and over, but in the end when Tivo simply decided not to make it an issue, folks could still insist it was just a brilliant "backup plan of attack" Tivo is trying to pull. And who can say for certain such argument can not be true?

No one will be convinced one way or the other, it is futile to attempt to moderate in that regard.


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## bobcamp1

I haven't seen anything surprising in Tivo's filing. The usual posturing from attorneys involving a few valid points, a few assumptions, a twisting of a fact or two, etc. I expect the same thing from E*'s response.

It is odd but not unreasonable that the hardware wasn't at least mentioned. But currently there are bigger things for Tivo to focus on.


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## jacmyoung

bobcamp1 said:


> I haven't seen anything surprising in Tivo's filing. The usual posturing from attorneys involving a few valid points, a few assumptions, a twisting of a fact or two, etc. I expect the same thing from E*'s response.
> 
> It is odd but not unreasonable that the hardware wasn't at least mentioned. But currently there are bigger things for Tivo to focus on.


I have no problem agreeing that we are all wanting to speculate the way we like to see happen, but at the same time should try to be reasonable in our attempt.

If you look at Tivo's filing, it is reasonable to agree that Tivo is leaving no stone unturned when it comes to getting everything they can possibly get, in the shortest time possible? They even wanted to include the names of any mom$pop stores that might have sold a piece of some of those discountinued DISH DVRs.

But this hardware issue just happened to be so far down the list that it did not even measure up to that mom&pop store which might have sold one DVR on the list?

Is that a reasonable explanation?

Or is it more reasonable to say Tivo, after reading the appeals court's opinion about the hardware verdict issue, had come to the conclusion they could not win on this one, so they'd rather not risk touching it?


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## dgordo

jacmyoung said:


> Or is it more reasonable to say Tivo, after reading the appeals court's opinion about the hardware verdict issue, had come to the conclusion they could not win on this one, so they'd rather not risk touching it?


Whats the downside? The motion is denied and the court tells tivo that they have to retry the hardware claim? Thats the situation they face if they fail to make the motion anyway.


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## Greg Bimson

jacmyoung said:


> If you look at Tivo's filing, it is reasonable to agree that Tivo is leaving no stone unturned when it comes to getting everything they can possibly get, in the shortest time possible? They even wanted to include the names of any mom$pop stores that might have sold a piece of some of those discountinued DISH DVRs.


Something we can agree upon.

TiVo wants a "hearing at the earliest possible date to determine whether EchoStar should be held in contempt for its failure to disable the DVR functionality in the Infringing Products and for its placement of new infringing DVRs (and new EchoStar products that are only colorably different)". TiVo wants the contempt hearing regarding DISH/SATS failure to cease both sales and usage of the DVR as quickly as possible.


jacmyoung said:


> But this hardware issue just happened to be so far down the list that it did not even measure up to that mom&pop store which might have sold one DVR on the list?
> 
> Is that a reasonable explanation?


We'll, I'll bring this up again:


> *Greg Bimson*
> If you were a DISH/SATS reseller, and received this piece of information, what would you do?
> 
> 
> 
> It is further ordered
> 
> Each Defendant, its officers, *agents*, servants, employees and attorneys, and those persons in active concert or participation with them who receive actual notice hereof, *are hereby restrained and enjoined* [...] from making, using, offering to sell, *selling*, or importing in the United States, *the Infringing Products*, either alone or in combination with any other product and all other products that are only colorably different therefrom in the context of the Infringed Claims, whether individually or in combination with other products or as part as another product, and from otherwise infringing or inducing others to infringe the Infringed Claims of the '389 patent.
> 
> 
> 
> *This section of the injunction tells you as a Dish Network reseller not to sell specific listed recievers.*
Click to expand...

It appears that TiVo, after receiving a hearing on the contempt charges, will later address the software issues, as well as _go after any Dish Network retailer that failed to comply with the injunction_. And that is not only on the listed receivers, but also all of the newer ones:


> *First set of interrogatories on remand to all defendants:*
> 1) Identify for each model of EchoStar product that has digital video recorder (DVR) functionality, including, but not limited to, DP-501, DP-508, DP-510, DP-721, DP-921, DP-522, DP-625, DP-942, ViP 322, ViP 611, ViP 612, ViP 622, ViP 722, ViP 211.


And I would certainly believe that action is more important than the hardware claims, now that I've read the brief.


Greg Bimson said:


> The reason I give a 50/50 chance [regarding addressing the hardware claims] is because TiVo may have a different plan of attack that what I see. I am no lawyer, and TiVo has some hotshot lawyers, so they can figure it out.


I can be wrong, but I never did _outright_ predict that they would visit the claims. But I'll be happy to state for the record that TiVo is fiercely going after DISH/SATS without the hardware claims.


----------



## jacmyoung

dgordo said:


> Whats the downside? The motion is denied and the court tells tivo that they have to retry the hardware claim? Thats the situation they face if they fail to make the motion anyway.


Well yeah, then why not make it an issue? What is the downside?

Greg, the issue I have with you is you take whatever Tivo is asking for as if that is exactly what Tivo is going to get.

Tivo asked for swift resolution on this patent issue they ended up waiting for these years;

Tivo asked for legal fees, the jury gave it to them but the judge took it away;

Tivo asked for infringement verdict on both software and hardware claims, the jury gave it to them, the judge approved it, but the appeals court took it away from them;

Tivo asked not to stay the injunction during DISH's appeal, the judge passionately argued on Tivo's behalf, the appeals court did not have any trouble denying such request.

I think it is fair to say let's not take whatever Tivo is asking for (and Tivo is asking for the sky) as if it is reality.

I have no problem Tivo is asking for the sky, that is what the lawyers do, but the lawyers do so because so they can receive somewhere between the hole in the ground and the sky and still come out making their client wanting to pay them again for the next job.


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## dgordo

jacmyoung said:


> Well yeah, then why not make it an issue? What is the downside?


You tell me, you said that tivo had come to the conclusion they could not win on this one, so they'd rather not risk touching it.

What is the risk of touching it that you are talking about?


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## jacmyoung

dgordo said:


> You tell me, you said that tivo had come to the conclusion they could not win on this one, so they'd rather not risk touching it.
> 
> What is the risk of touching it that you are talking about?


That if they are likely to lose such motion, it will undermind their entire effort because it is now Tivo who initiated such motion, and made the hardware a very important issue to rely on, much like when they initiated the new software discovery. BTW our disagreement has not been how important the motion denial will be, rather how likely the motion may be granted or denied, remember? So now you agree the motion is likely to be denied, because if not, what could be the reason Tivo not asking for it?

Only in the latter, Tivo must have determined the new software issue must be dealt with because it is so very important for the pie in the sky they are asking for, and they thought they have a good chance to tear the new software argument apart, only if they have all the information.


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## Greg Bimson

Where did I say that TiVo is going to get what they've asked for?

I've said that according to the brief, TiVo is asking for a contempt hearing regarding ongoing sales and continuing availability of the DVR functions as quickly as possible. TiVo is also asking for time to examine what you've been calling "the new evidence".

In other threads I've stated I'd think that Judge Folsom will find DISH/SATS in contempt while trying to iron out the software issue. What TiVo has done is requested that exact scenario. It will be up to the judge to allow it.

What is certain is because TiVo does not have all of the information they need, the question on the software and damages will be delayed much later than 30 May. What is uncertain is if TiVo gets their expedited request for a contempt proceeding regarding DISH/SATS refusal to adhere to or follow the letter of the injunction.


----------



## dgordo

jacmyoung said:


> That if they are likely to lose such motion, it will undermind their entire effort because it is now Tivo who initiated such motion, and made the hardware a very important issue to rely on, much like when they initiated the new software discovery. BTW our disagreement has not been how important the motion denial will be, rather how likely the motion may be granted or denied, remember? So now you agree the motion is likely to be denied, because if not, what could be the reason Tivo not asking for it?


If this is the risk, and I agree that it is, wouldn't it make more sense to wait until after the contempt hearing on the software issue to continue with any hardware issues?


----------



## jacmyoung

dgordo said:


> If this is the risk, and I agree that it is, wouldn't it make more sense to wait until after the contempt hearing on the software issue to continue with any hardware issues?


Now we are talking. So I guess no one is arguing now that the hardware issue is just a piece of cake asking judge for an easy reversal?


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## fatmikla22

I'm a novice to this issue and this is proabaly the wrong place for this post but what are the chances of my 722 ever being shut down because if this case.


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## jacmyoung

Greg Bimson said:


> ...What is certain is because TiVo does not have all of the information they need, the question on the software and damages will be delayed much later than 30 May. What is uncertain is if TiVo gets their expedited request for a contempt proceeding regarding DISH/SATS refusal to adhere to or follow the letter of the injunction.


Good now that you are no longer certain. We will see.

Just keep in mind that just because what Tivo asked for is the same you predicted does not prove your brilliance, no one seriously argued Tivo would not take that route, the only disagreement has been what will the judge's reaction to such request, and if necessary, what will the appeals court's reaction to such request.


----------



## dgordo

jacmyoung said:


> Now we are talking. So I guess no one is arguing now that the hardware issue is just a piece of cake asking judge for an easy reversal?


That's not what I am saying at all. What I am saying is that there is a correct time to address the hardware issue, this is not that time.

*My claim was never that Tivo requesting summary judgment was a given only that it could be upheld on appeal if granted.* I still believe that a summary judgment claim on the hardware could be upheld on appeal. If Tivo doesn't ask for it at any point it doesn't mean I am wrong and if they do ask for it, that doesn't mean I am correct. The bottom line is we'll never know unless they ask and it goes to appeal.


----------



## James Long

fatmikla22 said:


> I'm a novice to this issue and this is proabaly the wrong place for this post but what are the chances of my 722 ever being shut down because if this case.


There is always a chance, but DISH is highly unlikely to allow that to happen.


----------



## jacmyoung

dgordo said:


> That's not what I am saying at all. What I am saying is that there is a correct time to address the hardware issue, this is not that time.
> 
> *My claim was never that Tivo requesting summary judgment was a given only that it could be upheld on appeal if granted.* I still believe that a summary judgment claim on the hardware could be upheld on appeal. If Tivo doesn't ask for it at any point it doesn't mean I am wrong and if they do ask for it, that doesn't mean I am correct. The bottom line is we'll never know unless they ask and it goes to appeal.


Sorry I did not make it clear, I was not referring to you when I said some people had been adamant that a motion for summary judgment would be piece of cake no brainer in this case.

No where in the past have I ever said it is impossible for a summary judgment to be upheld on appeal. Only that the course of a summary judgment is a very risky one for the mover, because the court will give all consideration to the non-mover in arguing against such judgment.

I also further stated that based on my interpretation of the appeals court's explanation on this issue, more than likely a summary judgment on this issue will be overturned, not certainly overturned, just more than likely so. On that of course we will never know unless it gets there.

The fact Tivo decided not to take that risk is a movement in my favor on this issue. Now when might be a good time to re-introduce such issue? I personally can not see any time better or worse than in the last filing. The only reason I see that Tivo may bring back such issue would be if Tivo is in some kind of trouble with its current requests due to the new software issue. It is MHO that if it comes to that, the hardware issue will likely not save the day for Tivo. Which is why I said we will probably not hear from it again.


----------



## Herdfan

jacmyoung said:


> Or is it more reasonable to say Tivo, after reading the appeals court's opinion about the hardware verdict issue, had come to the conclusion they could not win on this one, so they'd rather not risk touching it?





dgordo said:


> Whats the downside? The motion is denied and the court tells tivo that they have to retry the hardware claim? Thats the situation they face if they fail to make the motion anyway.





jacmyoung said:


> Well yeah, then why not make it an issue? What is the downside?


As it stands, the hardware claim can be retried or TiVo can ask for summary judgment. If TiVo asks for SJ, and is denied, then DISH gets a little bolder in its defense of the software claim as it thinks it might be over if it wins the new software battle as they now know more about TiVo's new pursuit of the hardware claim.

But without TiVo bringing up the hardware claim for SJ, DISH has no idea how TiVo plans to go about getting judgment on the hardware claim. And that is how to play poker.


----------



## bobcamp1

jacmyoung said:


> But this hardware issue just happened to be so far down the list that it did not even measure up to that mom&pop store which might have sold one DVR on the list?
> 
> Is that a reasonable explanation?


Yes. Tivo needs to capture the extent of the "damage" being done NOW. A violation of an active injunction is more powerful than another potential victory. And there are only so many lawyers....


----------



## Greg Bimson

jacmyoung said:


> Sorry I did not make it clear, I was not referring to you when I said some people had been adamant that a motion for summary judgment would be piece of cake no brainer in this case.


dgordo, jacmyoung is talking about me, again. And I never put it in the likely category that the outcome would be to TiVo's advantage.


jacmyoung said:


> Good now that you are no longer certain (about an immediate request for contempt proceeding). We will see.


It is uncertain, but I will state the likely outcome is that TiVo will get their expedited request for a contempt hearing to occur outside of the software and damages issue, and that DISH/SATS will be found in contempt. I'll further state that the Court of Appeals will not look at the contempt order if DISH/SATS is found guilty of contempt.

It revolves around the fact that an injunction is not just a piece of paper that can be rewritten at anytime. And as TiVo points out, DISH/SATS could have argued to the Judge Folsom and again to the Court of Appeals how the injunction should have been worded.


jacmyoung said:


> Just keep in mind that just because what Tivo asked for is the same you predicted does not prove your brilliance, no one seriously argued Tivo would not take that route, the only disagreement has been what will the judge's reaction to such request, and if necessary, what will the appeals court's reaction to such request.


The argument has been that TiVo has brought the software issue up in their brief. TiVo brought up the software, attempting to delay any ruling on the new software, as a motion for discovery always takes some time.

If TiVo did not address the new software issue, and DISH/SATS did bring it up in their brief, where does that leave TiVo?

If DISH/SATS now brings up the software, they cannot receive an immediate ruling on contempt because of the software. And it will be very difficult for DISH/SATS to "wish away" the wording of the injunction, TiVo's first and second points for which they want an immediate hearing.


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## HobbyTalk

Geez, and all this time I thought it was explained that the new software had no bearing on the injunction?


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## Greg Bimson

HobbyTalk said:


> Geez, and all this time I thought it was explained that the new software had no bearing on the injunction?


It doesn't.

DISH/SATS will _try_ to present the new software. But that more than likely won't happen until after the hearing where the judge asks DISH/SATS why they haven't turned off the listed DVR's; the hearing which would put DISH/SATS in contempt of the injunction order. Or at least that is the prevailing thought.

That is, unless DISH/SATS decides they want to have their DVR subscribers go postal by shutting down DVR functions and stopping sales of DVR's until this mess is ironed out.


----------



## spear61

Curtis52 said:


> Re: TiVo Inc. v. EchoStar, et al.. Case No. 2-Q4CV-01
> 
> This Court denied EchoStar's request for a stay of injunction but, on October 3, 2006, the Federal Circuit granted a stay pending appeal. In persuading the Federal Circuit to enter a stay, EchoStar argued that if it were unable to offer DVRs, it faced "a high risk of losing a significant portion of its existing and potential subscribers" and *"if the injunction were to cause just half of EchoStar's current customers with DVRs to leave EchoStar for another provider, EchoStar's revenues would fall by nearly $90 million per month." *(EchoStar's Emergency Motion to Stay The District Court's Injunction, at 18 (citing Martin Decl. ¶ 8) (emphasis in original)).
> 
> To make it easy, assume a monthly income of $90/customer. That would inicate that there were about two (2) million infringing boxes when the judge made his ruling in 2006. Dish probably sold some more since then and has also replaced some with the newer "non infringing" boxes, but however you calculate it, it is a really big number. Apparantly, the appeals court felt that disabling some 2 million DVR's was ok since they sent it back to the judge. This is high stakes poker at it's best.


----------



## James Long

spear61 said:


> Dish probably sold some more since then and has also replaced some with the newer "non infringing" boxes,


All but a handful of receivers are non-infringing. The remaining infringing receivers are no longer being sold or distributed by DISH or it's agents, etc.

Or so says DISH.


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## HobbyTalk

Greg Bimson said:


> It doesn't.


If it's a non-issue then why did TiVo even bring it up in their filing?


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## Greg Bimson

To delay any issues regarding new software indefintely.

Instead, TiVo will most likely receive a contempt hearing regarding DISH/SATS violations of the injunction, but only the parts where DISH/SATS is selling and has features active on their DVR's. Most observers say this is an open and shut case.

In TiVo's mind, this will put DISH/SATS in contempt, and the software issue can be dragged out indefinitely.


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## spear61

It's going to be interesting to see Dish's response filings. When this all started TIVO was in a weak position only having the right to sue as a patent holder and then having the burden of proving infringement. Now, because of the injunction, the shoe is on the other foot and Dish must prove that they are in compliance with the injunction. I can see it now. Dish --" We are not infringing" and TIVO sitting back and saying -- "prove it, prove it prove it, and we don't agree".


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## HobbyTalk

Greg Bimson said:


> To delay any issues regarding new software indefintely.


So in other words, what you are saying is that the new software could be an issue that TiVo is trying to avoid.


----------



## dgordo

Herdfan said:


> As it stands, the hardware claim can be retried or TiVo can ask for summary judgment. If TiVo asks for SJ, and is denied, then DISH gets a little bolder in its defense of the software claim as it thinks it might be over if it wins the new software battle as they now know more about TiVo's new pursuit of the hardware claim.
> 
> But without TiVo bringing up the hardware claim for SJ, DISH has no idea how TiVo plans to go about getting judgment on the hardware claim. And that is how to play poker.


If tivo were to pursue the hardware issue further, I don't think their strategy for doing so is any secret.


----------



## Greg Bimson

HobbyTalk said:


> So in other words, what you are saying is that the new software could be an issue that TiVo is trying to avoid.


TiVo is trying to have DISH/SATS in placed in contempt. Delaying the discussion of the software and addressing DISH/SATS' non-compliance of the injunction should bring DISH/SATS to the bargaining table and settle the case. That is exactly what DISH/SATS has been delaying and trying to avoid.

After all, when one hears for a couple of years that "we don't infringe, we don't infringe", then being found guilty of patent infringement, it is like the boy crying "wolf". Now the boy has to prove the wolf actually exists. And as a reminder, it took two years from the filing of this case for it to be heard. One should not expect a decision regarding possible infringement of the new software from some time...

...and meanwhile, there is a document that says to stop selling and shutdown functions of a DVR. It is not dependent upon whether or not new software exists.


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## jacmyoung

Greg Bimson said:


> ...DISH/SATS will _try_ to present the new software. But that more than likely won't happen until after the hearing where the judge asks DISH/SATS why they haven't turned off the listed DVR's; the hearing which would put DISH/SATS in contempt of the injunction order. Or at least that is the prevailing thought...


What do you mean? That DISH will present the new software but the judge will not hear such new software until after he issues a contempt ruling?

If so the judge will not have a "after" chance to discover the new software, because the appeals court will have to hear DISH, and if the appeals court agrees with DISH, it will be the appeals court that will look at the new software.

A contempt ruling will be the ticket for DISH to get the appeals court to hear it, if the judge does not want to hear it. The judge can not "delay" the review of the new software. He either hears it during the contempt hearing, or not hear it and issue a contempt ruling therefore allow DISH to go to the appeals court.

DISH is not going to allow anyone to delay the new software review, the new software is all DISH has. The judge can refuse to hear it, even the appeals court can refuse to hear it, but if anyone is going to ever hear it, they will have to hear it at DISH's request, not at Tivo's request to delay hearing it.

As far as the hardware issue, I don't know what DISH will do with it, but since Tivo did not mention it, as it stands, DISH's hardware never infringed, unlike when the time the injunction was formulated that the hardware was viewed as infringing. This turn of event can certainly be made into an argument against a contempt ruling.


----------



## Greg Bimson

Greg Bimson said:


> ...DISH/SATS will try to present the new software. But that more than likely won't happen until after the hearing where the judge asks DISH/SATS why they haven't turned off the listed DVR's; the hearing which would put DISH/SATS in contempt of the injunction order. Or at least that is the prevailing thought...





jacmyoung said:


> What do you mean? That DISH will present the new software but the judge will not hear such new software until after he issues a contempt ruling?


This is what I mean:


> To provide prompt resolution of these issues, TiVo requests:
> • A hearing at the earliest possible date to determine whether EchoStar should be heldin contempt for its failure to disable the DVR functionality in the Infringing Products and for its placement of new infringing DVRs (and new EchoStar products that are only colorably different)


One hearing to find contempt because DISH/SATS is not following the injunction, and


> • Permission to serve limited discovery to obtain additional information before determining the damages TiVo sustained during the stay of the injunction, and, if necessary, bringing a motion for an order to show cause why EchoStar is not in contempt for the continuing use of the Infringing Products, changed only by downloading modified, but still infringing, software (and new EchoStar products that are only colorably different).


One very large discovery to determine if the new software still infringes, along with any analysis of what additional damages can be claimed. If after reviewing the information, TiVo feels the new software infringes, TiVo will ask for a contempt hearing on the new software.

And TiVo will more than likely get this request.

There can be more than one contempt hearing.


jacmyoung said:


> DISH is not going to allow anyone to delay the new software review, the new software is all DISH has. The judge can refuse to hear it, even the appeals court can refuse to hear it, but if anyone is going to ever hear it, they will have to hear it at DISH's request, not at Tivo's request to delay hearing it.


DISH/SATS cannot present new software if TiVo doesn't have all the answers they need. That is why the request for discovery is in the brief.


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## Greg Bimson

jacmyoung said:


> As far as the hardware issue, I don't know what DISH will do with it, but since Tivo did not mention it, as it stands, DISH's hardware never infringed, unlike when the time the injunction was formulated that the hardware was viewed as infringing. This turn of event can certainly be made into an argument against a contempt ruling.


Here. I'll use your words...


jacmyoung said:


> Remember Tivo already made a mistake by not bring up the equivalents issue before, probably due to over confidence, I am sure they would not have done it again.


TiVo just didn't think that the Court of Appeals would overturn the hardware verdict because the Court of Appeals made the claim interpretation more stringent. If TiVo even remotely thought about that outcome, they'd have briefed the Court of Appeals on what action should be taken if a verdict on literal infringement on the hardware claims was overturned.

Some have been stating that TiVo made a mistake at the Court of Appeals, by neglecting to address the doctrine of equivalents on the hardware claims. This would assume that TiVo would have known the Court would overturn the hardware verdict. Therefore, some believe that TiVo didn't cover all their bases at the Court of Appeals, and didn't discuss every possible scenario.

Meanwhile, let's use the same argument. DISH/SATS tried to argue how the injunction was worded in front of Judge Folsom, to no avail. *If DISH/SATS wanted relief from Judge Folsom's injunction, they should have brought it up at the Court of Appeals.*

The "TiVo Mistake" can be made into the exact same argument against DISH/SATS regarding the injunction. DISH/SATS did not address the injunction regarding a reversal of the hardware claims at the Court of Appeals, and now have to live with the wording of an injunction in full force and effect. Anyone that has a single doubt that I am wrong, simply needs to remember the Court of Appeals lifted the stay on the injunction, allowing it to go into full force and effect before the case ever ended up back on Judge Folsom's docket.

DISH/SATS' mistake was neglecting to address the wording of the injunction at the Court of Appeals.


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## Curtis52

Greg Bimson said:


> Some have been stating that TiVo made a mistake at the Court of Appeals, by neglecting to address the doctrine of equivalents on the hardware claims. This would assume that TiVo would have known the Court would overturn the hardware verdict.


TiVo did address the DOE at the appeal:

"At several points, TiVo argues that even if this court were to overturn the jury's 
verdict of literal infringement, there would still be ample evidence of infringement under 
the doctrine of equivalents. "

Briefs from both sides specific to the court's new construction would have been needed for the appeals court to decide on DOE. Not surprisingly, those briefs weren't there.


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## Greg Bimson

Curtis52 said:


> Briefs from both sides specific to the court's new construction would have been needed for the appeals court to decide on DOE. Not surprisingly, those briefs weren't there.


Point taken. And those briefs weren't there because neither party believed the hardware verdict would be overturned by making the interpretation of the claim construction more stringent.

And that is unlike the fact that DISH/SATS did not even address what should happen to the injunction if either the software or the hardware verdict was overturned. DISH/SATS did not address Judge Folsom's injunction AT ALL.


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## spear61

If the judge meant to stop the sale of "mechanically infringing boxes" in his injunction and if Dish's new software is non-infringing, Dish may prevail since the appeals course reversed on the hardware portion of the lower courts ruling. If that's the case, then it's only a matter of how much more they have to pay for past infringement.


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## Greg Bimson

spear61 said:


> If the judge meant to stop the sale of "mechanically infringing boxes" in his injunction and if Dish's new software is non-infringing, Dish may prevail since the appeals course reversed on the hardware portion of the lower courts ruling.





> If EchoStar believed that the "disable the DVR functionality" provision of the injunction was inappropriate, EchoStar could have challenged it, but - despite multiple opportunities before both this Court and the Federal Circuit - it chose not to do so. EchoStar cannot simply ignore the Court's unambiguous Order, even if EchoStar were to contend, which it has not previously done, that the injunction as written is inappropriate. W. Water Mgmt., Inc. v. Brown, 40 F.3d 105, 108 (5th Cir. 1994) (prohibiting defendants from arguing in a contempt proceeding that injunction was overbroad because "collateral attack on an injunction during contempt proceedings is prohibited if earlier review of the injunction was available" (citing United States v. Ryan, 402 U.S. 530, 532 n.4 (1971))).


DISH/SATS should have addressed issues with the injunction to the Court of Appeals. They did not. The Court of Appeals let the injunction stand as written, and even took the step of allowing the injunction to activate in full force and effect before the case ever was placed on Judge Folsom's docket.


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## jacmyoung

Greg Bimson said:


> Point taken...


Not much a point because it was too late. Tivo made a mistake during the trial they tried to convince the appeals court but the court did not buy it.



> ...And that is unlike the fact that DISH/SATS did not even address what should happen to the injunction if either the software or the hardware verdict was overturned. DISH/SATS did not address Judge Folsom's injunction AT ALL.


Of course you keep saying it because you believe whatever Tivo asks for is what Tivo will get, because whatever Tivo says Tivo is right.

Well DISH is not going to address what should happen to the injunction, the injunction needs not addressed, because they are in compliance with it. Because their hardware never infringed, and because their new software no longer infringes, the goal of the injunction is met. They are not in contempt.

Yes a different way to interpret the injunction. The judge, and/or the appeals court will have to consider whether they will buy that or not.

Do not assume the judges will not buy what DISH is saying, just because Tivo said the judge should not buy it. Don't rely on Tivo for your legal interpretation and how legal standards should be upheld, they have been rebuffed by the judges before, instead rely on the judges to interpret and uphold the legal standards. The judge(s) have yet to speak, so don't speak for them.

That is all I am saying.


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## Curtis0620

*permanent injunction*
n. a *final* order of a court that a person or entity refrain from certain activities permanently or take certain actions (usually to correct a nuisance) until completed. A permanent injunction is distinguished from a "preliminary" injunction which the court issues pending the outcome of a lawsuit or petition asking for the "permanent" injunction.

Where does it say a final (permanent) injunction can be changed? You're asking for something that can not be done.


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## spear61

jacmyoung said:


> Because their hardware never infringed, and because their new software no longer infringes, the goal of the injunction is met. They are not in contempt.
> 
> Not necessarily true. The injunction was a remedy for past sins. The judge can craft many novel "penelties or remedies" for abuse of the patent system (which he clearly stated had been abused by Dish). The past software infringement-pre fall 2006 still stands). He can drop his remedy, modify it in consideration of the appeals court's thoughts on hardware or enforce it at his discretion.


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## Greg Bimson

jacmyoung said:


> Do not assume the judges will not buy what DISH is saying, just because Tivo said the judge should not buy it. Don't rely on Tivo for your legal interpretation and how legal standards should be upheld, they have been rebuffed by the judges before, instead rely on the judges to interpret and uphold the legal standards. The judge(s) have yet to speak, so don't speak for them.
> 
> That is all I am saying.


I am not relying on TiVo. I am relying on the exact wording of the injunction. The wording of the injunction cannot be challenged now, and the injunction order states to shut down DVR functions. It does not say to shut down DVR functions of infringing DVR's, but non-infringing DVR's can remain active.


jacmyoung said:


> Well DISH is not going to address what should happen to the injunction, the injunction needs not addressed, because they are in compliance with it.


Wow. Now that is a bet I'll take. I bet DISH/SATS is not in compliance with the injunction.


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## jacmyoung

Curtis0620 said:


> ...Where does it say a final (permanent) injunction can be changed? You're asking for something that can not be done.


I am baffled, can anyone quote us where did DISH say anything about wanting to change the injunction? They once did before and was denied, and since then never mentioned it again.

Now Tivo of course is within its good logic to argue what DISH is doing now is in effect "changing the injunction", and they tried to use DISH's past attempt to strengthen their argument than DISH is trying to change the injunction.

That is fine, but don't automatically assume that the judges will buy such logic.

On the other hand, DISH has been saying in their view, they are in compliance with the current injunction because their interpretation of how the injunction works is different than yours.

So stop insisting that DISH will argue to change the injunction, they have not, and will likely not, because they tried it once and failed, they will be foolish to try the same argument again.

Now you can certainly laugh at the notion that, since DISH's hardware never infringed, and DISH's software no longer infringes, therefore the goal of the injunction is met and DISH is in compliance, you laugh at such logic because you care only about the lauguage of the law, not the intent of the law.

That is fine too, just don't insist others must think alike.


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## jacmyoung

Greg Bimson said:


> ...Wow. Now that is a bet I'll take. ...


That is not a bet, that is what DISH has been saying, and I am only reporting what DISH has been saying for the last month.

Of course you want to bet DISH is not in compliance with the injunction, for you it is a fore-gone conclusion. But let me remind you no matter how much you are sure with your bet, there is always a chance your bet may be wrong.

Otherwise it is not a bet, there is no need to bet on something that is 100% certain. Just sit back and relax after buying a whole bunch of Tivo stocks, and sell all your DISH/SATS stocks already.


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## jacmyoung

I will add that the possible logic behind the "change of injunction" may be for DISH to argue that since the injunction was issued, the verdict on which the injunction was based had also changed in DISH's favor, and when such is taken into consideration, the injunction may not be appropriate in the current state.

Not that DISH is changing the injunction, but to argue that the same injunction, while may be appropriate in reflecting the past reality, nevertheless no longer reflects the current reality.


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## Curtis0620

I am baffled. The injunction is in effect and DISH is not complying. It is a simple as that. There is no changing the rules after the trial. It is over, they lost. They lost the appeal. Now pay the penalty, which includes $$$ and the PERMANENT injuction.


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## nobody99

jacmyoung said:


> I will add that the possible logic behind the "change of injunction" may be for DISH to argue that since the injunction was issued, the verdict on which the injunction was based had also changed in DISH's favor, and when such is taken into consideration, the injunction may not be appropriate in the current state.
> 
> Not that DISH is changing the injunction, but to argue that the same injunction, while may be appropriate in reflecting the past reality, nevertheless no longer reflects the current reality.


Hi. I was just a lurker for awhile. But actually became frustrated enough to go ahead and register and post a comment, because you seem to so anti-TiVo or pro-Dish that it is clouding your judgement. Let me make this as simple as I can:

Here's a summary of what you are saying
1. There is an injunction as a matter of law to turn off certain DVRs. 
2. DISH says they changed software, so the injunction is no longer needed.

Here's the point I think you are missing:
3. TiVo says Dish's software is still infringing

The law, as it stands now, is to shut off the infringing DVRs. Once they are shut off, the boys can get in front of a judge and start deciding if the software still infringes. If it doesn't, the injunction can be lifted for the DVRs that no longer infringes.

But I think you are missing a big point: those DISH DVR's are -- right now -- illegal until a court says otherwise. What court? I don't know, and for the sake of argument, I don't care. That doesn't matter. What matters is that the appeals court lifted the stay on the injunction. Until DISH can *prove* its software doesn't infringe, it does.

Let me ask you a simple question: if the court should just take DISH at its word that the new software doesn't infringe, why should it not take TiVo at its word that it does?


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## scooper

No Curtis - the software version of the affected units was infringing - those units have either been stopped in the warehouse OR the software has been updated to be non-infringing (according to Dish). BIG difference...

Now I'll certainly agree that Echostar needs to back that assertion up in court. And if they DO prove it - the injunction has been met and what's left is to decide any further penalties. And this proof won't be a simple we say - they say either.


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## Curtis0620

scooper said:


> No Curtis - the version of the affected units was infringing - those units have either been stopped in the warehouse OR the software has been updated to be non-infringing (according to Dish). BIG difference...


Not until it is proven that they don't. Until then they must comply with the injunction, which they aren't.


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## jacmyoung

Curtis0620 said:


> I am baffled. The injunction is in effect and DISH is not complying. It is a simple as that. There is no changing the rules after the trial. It is over, they lost. They lost the appeal. Now pay the penalty, which includes $$$ and the PERMANENT injuction.


No it is not over as far as the injunction goes, because apparently it is not. The fat lady has not sung yet, it may happen tomorrow, or two weeks from now, or two months from now, or two years from now, or never.


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## nobody99

scooper said:


> No Curtis - the version of the affected units was infringing - those units have either been stopped in the warehouse OR the software has been updated to be non-infringing (according to Dish). BIG difference...


No, there's not. I think that's why there's so much frustration.

Thought experiment time: suppose that DISH hired a programmer that wrote software that 100% did not infringe.

IT DOESN'T MATTER! Until a judge or a jury says "this software no longer infringes," IT DOES!


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## Greg Bimson

jacmyoung said:


> Otherwise it is not a bet, there is no need to bet on something that is 100% certain. Just sit back and relax after buying a whole bunch of Tivo stocks, and sell all your DISH/SATS stocks already.


Once again, wrong.


jacmyoung said:


> Now you can certainly laugh at the notion that, since DISH's hardware never infringed, and DISH's software no longer infringes, therefore the goal of the injunction is met and DISH is in compliance, you laugh at such logic because you care only about the lauguage of the law, not the intent of the law.
> 
> That is fine too, just don't insist others must think alike.


Run this by me.

As you are driving down the road, if you see a STOP sign directed at you, do you just barrel right through it?

The injunction mentions nothing about the hardware nor the software. It says to stop selling DVR's and shut down DVR functions. DISH/SATS easily appears to have disregarded those sections of order.

Judge: So, DISH/SATS, TiVo has brought to my attention that you have not stopped selling DVR's listed on the injunction. Is this correct?
DISH:

Let them answer yes or no. Answer yes, and they are in contempt. Answer no, and they will be forced to admit they've turned off zero receivers as per the injunction order, and will then be in contempt, maybe even moreso.

After all, this is a court, and, the courts MUST follow the language of the law. Any "intent" opens up appeals.


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## Greg Bimson

jacmyoung said:


> I will add that the possible logic behind the "change of injunction" may be for DISH to argue that since the injunction was issued, the verdict on which the injunction was based had also changed in DISH's favor, and when such is taken into consideration, the injunction may not be appropriate in the current state.


And DISH/SATS should have addressed the injunction when appealing to the Court of Appeals. DISH/SATS asked the Court of Appeals to dismiss the guilty verdicts. DISH/SATS should have also asked to change the injunction if there was a change in the verdicts. They did not. Now the injunction is active and in full effect.

It is exactly as jacmyoung's and James Long's argument regarding TiVo and the judge making a mistake. TiVo's "mistake" was not briefing the Court of Appeals regarding using the doctrine of equivalents to judge a more stringent reading of the claim construct. DISH's MISTAKE was to not even question the injunction at the Court of Appeals, and having it become active once the appeals process was complete.


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## Curtis52

nobody99 said:


> Let me ask you a simple question: if the court should just take DISH at its word that the new software doesn't infringe, why should it not take TiVo at its word that it does?


Exactly, especially given the fact that Dish told a jury and four federal judges that they didn't infringe only to be proven wrong.

If anyone should be given the benefit of the doubt it's the winner.

If anyone should be harmed, it is the company that lost, especially since they will incur less harm shutting down the DVRs than TiVo would if they don't shut them down.

Judge Folsom had this to say when he previuosly turned down a stay:

"*Enjoining Defendants will likely cause some harm - but on balance, Defendants will endure less harm than Plaintiff.*"


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## jacmyoung

nobody99 said:


> ...Let me ask you a simple question: if the court should just take DISH at its word that the new software doesn't infringe, why should it not take TiVo at its word that it does?


Because the purpose of a contempt hearing is so all parties may show their causes, and almost in every prior case I have seen, the "colorabe difference" issue has been the central show of case issue during, not after, a contempt hearing.

The law clearly states the purpose of a contempt hearing, that is to determine whether a new device is mroe than colorably different or not. The law does not say a contempt hearing is to just issue a contempt ruling, because if this is true, a contempt hearing serves little purpose.

Again arguments about whether a new deivce is colorably different or not will always be the main issue during a contempt hearing, not after. That is precisely why, when Tivo argued for a contempt discussion, it included the discovery of the new software as part 3 of its 3-part contempt argument. If the new software issue does not need addressed in such contempt hearing, Tivo would not have included it in its contempt argument, only in its damages section.

And if you read Tivo's filing carefully, Tivo devoted most of its discussion of the new software in its contempt arugment section. Tivo itself has discussed the new software issue at length in its contmept discussion, more so than any other discussions in its filing, and why all the sudden some of you believe the judge will set such discussion aside and totally ignore it during his contempt hearing?


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## Curtis0620

jacmyoung said:


> Because the purpose of a contempt hearing is so all parties may show their causes, and almost in every prior case I have seen, the "colorabe difference" issue has been the central show of case issue during, not after, a contempt hearing.
> 
> The law clearly states the purpose of a contempt hearing, that is to determine whether a new device is mroe than colorably different or not. The law does not say a contempt hearing is to just issue a contempt ruling, because if this is true, a contempt hearing serves little purpose.
> 
> Again arguments about whether a new deivce is colorably different or not will always be the main issue during a contempt hearing, not after. That is precisely why, when Tivo argued for a contempt discussion, it included the discovery of the new software as part 3 of its 3-part contempt argument. If the new software issue does not need addressed in such contempt hearing, Tivo would not have included it in its contempt argument, only in its damages section.
> 
> And if you read Tivo's filing carefully, Tivo devoted most of its discussion of the new software in its contempt arugment section. Tivo itself has discussed the new software issue at length in its contmept discussion, more so than any other discussions in its filing, and why all the sudden some of you believe the judge will set such discussion aside and totally ignore it during his contempt hearing?


This only applies to the DVR's not specifically indicated in the injunction. All those listed must be shut off regardless of the software they are using. That is what we are saying, it is too late for those models.


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## jacmyoung

Greg Bimson said:


> Once again, wrong.Run this by me.
> 
> As you are driving down the road, if you see a STOP sign directed at you, do you just barrel right through it?...


Depends, if I had to do so to avoid someone from ramming from behind me, therefore causing more harm for me, than had I strictly followed the language of the law, I would.



> ...After all, this is a court, and, the courts MUST follow the language of the law. Any "intent" opens up appeals.


Precisely, which is why I have said over and over, it is likely DISH will be found in contempt, and DISH's plan is to let the contempt ruling offer them the opportunity to appeal and argue on the intent of the law.


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## Curtis0620

jacmyoung said:


> Depends, if I had to do so to avoid someone from ramming from behind me, therefore causing more harm for me, than had I strictly followed the language of the law, I would.
> 
> Precisely, which is why I have said over and over, it is likely DISH will be found in contempt, and DISH's plan is to let the contempt ruling offer them the opportunity to appeal and argue on the intent of the law.


They already lost the appeal. Shut the DVR's off, or they will start to incur fines.


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## jacmyoung

Curtis0620 said:


> This only applies to the DVR's not specifically indicated in the injunction. All those listed must be shut off regardless of the software they are using. That is what we are saying, it is too late for those models.


If so Tivo must have been mistaken, because it was Tivo who said even if the part 1 and part 2 is argued away by DISH, DISH is still in contempt because in their limited discovery, the new software is still infringing. Why bother to say so if the new software should not be considered?

Because even Tivo understands once they asked for a contempt hearing, the new device issue will be talked about.


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## Curtis0620

jacmyoung said:


> If so Tivo must have been mistaken, because it was Tivo who said even if the part 1 and part 2 is argued away by DISH, DISH is still in contempt because in their limited discovery, the new software is still infringing. Why bother to say so if the new software should not be considered?
> 
> Because even Tivo understands once they asked for a contempt hearing, the new device issue will be talked about.


New device, not those listed in the injunction.


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## Greg Bimson

jacmyoung said:


> Precisely, which is why I have said over and over, it is likely DISH will be found in contempt, and DISH's plan is to let the contempt ruling offer them the opportunity to appeal and argue on the intent of the law.


You and I are arguing over semantics. So let's play devil's advocate for a moment, because I think we're getting somewhere:

TiVo receives a hearing based upon their filed points 1 and 2, that DISH/SATS is continuing to sell DVR's that are listed, and continuing to allow DVR functions to work, even though the court has enjoined those actions through the injunction. Judge Folsom then states because DISH/SATS has not followed the injunction, he places them in contempt.

What is next for DISH? Appeal that ruling? On what grounds?


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## HobbyTalk

Greg Bimson said:


> After all, when one hears for a couple of years that "we don't infringe, we don't infringe", then being found guilty of patent infringement, it is like the boy crying "wolf".


Of course we all know that everyone that has been convicted of a crime has actually been guilty of that crime. :lol:


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## jacmyoung

Curtis0620 said:


> They already lost the appeal. Shut the DVR's off, or they will start to incur fines.


By law, DISH suffers no consequences as far as the injunction is concerned, as long as they can prevail on appeal of a contempt ruling. Now if DISH fails on all appeals, then yes they will face fines and even more severe consequences, that is if they still refuse to turn off the DVRs.


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## Curtis0620

jacmyoung said:


> By law, DISH suffers no consequences as far as the injunction is concerned, as long as they can prevail on appeal of a contempt ruling. Now if DISH fails on all appeals, then yes they will face fines and even more severe consequences, that is if they still refuse to turn off the DVRs.


Appeal what? The Appeals Court already blessed the injunction as is.


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## nobody99

jacmyoung said:


> Because the purpose of a contempt hearing is so all parties may show their causes, and almost in every prior case I have seen, the "colorabe difference" issue has been the central show of case issue during, not after, a contempt hearing.


I'm not a laywer, and I didn't sleep at a Holiday Inn Express last night, but I think you're pretty confused by what "colorably different" means.

If DISH took some spray paint into the warehouse and where it now says "Dishplayer 722" (suppose that's one of the DVRs that's ordered to be turned off) and just called it "Fishplayer 833" and shipped it out and said it wasn't a 722 - that's where the idea of "colorably different" comes into play. The can't simply rebadge existing hardware.



jacmyoung said:


> The law clearly states the purpose of a contempt hearing, that is to determine whether a new device is mroe than colorably different or not. The law does not say a contempt hearing is to just issue a contempt ruling, because if this is true, a contempt hearing serves little purpose.


What law? Are you kidding? There is law that is clear? And it's written expressly to explain what a contempt hearing is for? Please, fine sir, enlighten us. Produce this clear law that states the purpose of contempt hearings and quote it here!



jacmyoung said:


> Again arguments about whether a new deivce is colorably different or not will always be the main issue during a contempt hearing, not after.


Sure. But it will be because DISH is trying to sell an infringing device as if it weren't. Let me give you an analogy.

DISH is told by a judge that they must stop selling Apples and Bananas. There is no mention of Oranges, Pineapples, and Coconuts. In addition, they must turn off all Apples and Bananas.

After receiving this instruction, DISH goes to its warehouse and spray paints its apples a bright orange color and puts them in the Apple bin and continues to sell them as "Oranges." They furthermore send a small packet of orange paint to customers, and instruct them to cover the skin of the apple with the paint, and hereafter refer to the fruit as an "orange."

Herein lies our differences. DISH already has been ordered to stop selling apples and turn them off in the field. The "colorably different" argument in a contempt hearing would be brought up by TiVo - and they would say, "hey, Judge, what the hell! These are still Apples!" Again, not a lawyer, but here's where we differ: a contempt hearing would be where the WINNER would try to EXPAND the universe of infringing products. You seem to think it's where the DEFENSE can SHRINK the universe of existing products. Can you see the difference?



jacmyoung said:


> That is precisely why, when Tivo argued for a contempt discussion, it included the discovery of the new software as part 3 of its 3-part contempt argument. If the new software issue does not need addressed in such contempt hearing, Tivo would not have included it in its contempt argument, only in its damages section.
> 
> And if you read Tivo's filing carefully, Tivo devoted most of its discussion of the new software in its contempt arugment section. Tivo itself has discussed the new software issue at length in its contmept discussion, more so than any other discussions in its filing, and why all the sudden some of you believe the judge will set such discussion aside and totally ignore it during his contempt hearing?


Let me spin ya a little yarn, and see if this makes logical sense. Let's suppose that I'm right, and all of the named DVRS get shut off. Dish immediately goes to court to prove that their DVRS no longer infringe. Please, try to be honest with yourself - a longer trial would benefit ________? Yes, TiVo. TiVo would want to drag out any sort of determination of whether or not the new software infringes as long as possible - dare I say long enough to get DISH to cry "UNCLE!" or perhaps long enough so that a new trial for the hardware claims has been completed.


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## Curtis52

"EchoStar DBS to offer about $500 million in debt securities

05-20-2008

"SAN FRANCISCO (MarketWatch) -- EchoStar DBS Corp., a subsidiary of Dish Network Corp. (DISH) will offer about $500 million aggregate principal amount of debt securities, said the provider of digital television services. The proceeds of the offering will be used for general corporate purposes."

I wonder why they will need so much cash?


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## James Long

DISH spends a lot of money ... they just won a spectrum auction and apparently lost use of a satellite (AMC-14). Since this is EchoStar DBS asking for the money it could be for the "fire sale" purchase of AMC-14 from the insurance company ... now that it appears to be getting closer to a usable orbit.

Not everything is about Tivo ...


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## jacmyoung

Curtis0620 said:


> Appeal what? The Appeals Court already blessed the injunction as is.


Appeal the contempt ruling, if the judge issues one. If you don't even understand how the lawsuit works, why even bother?


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## Curtis0620

(reply removed, not worth it).


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## TBoneit

Please stop :beatdeadhorse: as far as I can see three of you are going in circles. 

Now from page one.
"The Permanent Injunction required EchoStar to do, among other things, the following:

(a) cease “making, using, offering to sell, selling, or importing into the United States,” the infringing models of EchoStar DVR receivers (DP-501, DP-508, DP-510, DP-522, DP-625, DP-721, DP-921 and DP-942, the “Infringing Products”) “and all other products that are only colorably different therefrom in the context of the Infringed Claims”

By the way if they are made in the USA and only leased is that even covered by the above? I see using listed above so no-one else can make a non infringing DVR?

Can someone using logic explain how non listed models such as the 612, 622 or 722 for example, can just be considered only colorably different without some type of expert examination? It isn't as if they were just resprayed a different color and rebadged.


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## phrelin

Well, my 2 508's are black and my 722 is black, so I guess I'm in trouble.:sure:


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## Curtis52

TBoneit said:


> Can someone using logic explain how non listed models such as the 612, 622 or 722 for example, can just be considered only colorably different without some type of expert examination? It isn't as if they were just resprayed a different color and rebadged.


I don't think they could be considered either infringing or non-infringing until there is expert testimony and a judge or jury decides. If that ever happened it would take a long time. I think it will never get to that point because the shutoff of the specifically listed infringing models will force Dish to settle. TiVo probably wouldn't sign a settlement agreement that didn't include all the Dish DVRs. If the shutoff doesn't force a settlement TiVo will probably ask for a preliminary injunction on the newer DVRs shutting them off too until the hearing on those DVRs given Dish's history of claiming noninfringement only to be proven mistaken and the fact that the new DVRs also use the Broadcom chipset.


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## spear61

The judge has broad authority to do what he wants or change his mind at a later date. And, when the order is "gray" , the defendent gets the benefit of the doubt.

An injunction clearly forbids a certain type of conduct. This is why Federal Rule of Civil Procedure 65(d) 'requires the language of injunctions to be reasonably clear so that ordinary persons will know precisely what action is proscribed ,' and why 'all ambiguities are resolved in favor of the person subject to the injunction.' United States v. Holtzman, 762 F.2d 720, 726 (9th Cir.'85) (emphasis added). Cf. Movie Systems, Inc. v. MAD Minneapolis Audio Distrib., 717 F.2d 427, 432 (8th Cir.'83) (injunction was specific enough to give 'explicit notice of precisely what conduct is forbidden').

A district court can enforce its injunction when: (1) it is based on an interpretation of federal law, (2) the federal law's purpose and language (in light of controlling federal decisions including the injunction) is clear, and (3) the effect of the state program being implemented hampers the exercise of that federal law. It is well settled that courts have wide discretion to order the relief necessary to effectuate their judgments. See 28 U.S.C. Sec. 1651 (authorizing courts to 'issue all writs necessary or appropriate in aid of their respective jurisdictions'); Swann v. Charlotte-Mecklenburg Board of Education, 402 U.S. 1, 15-16 (1971) ('Once a right and a violation have been shown, the scope of a district court's equitable powers to remedy past wrongs is broad, for breadth and flexibility are inherent in equitable remedies.'). It is also firmly established that a federal court which has imposed an injunction also retains the power to suspend or modify it. System Federation v. Wright, 364 U.S. 642, 646-47 (1932).


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## dgordo

In determining whether the changes made were merely colorably different and therefore a contempt, it is necessary to apply the well-established doctrine of equivalents. Simmons Co. v. A. Brandwein & Co., 250 F.2d 440, 450 (7th Cir. 1957). This doctrine has been described by the Supreme Court as follows:

If two devices do the same work in substantially the same way, and accomplish substantially the same result, they are the same, even though they differ in name, form, or shape.

Graver Tank & Mfg. Co. v. Linde Air Products Co., 339 U.S. 605, 608, 70 S.Ct. 854, 856, 94 L.Ed. 1097 (1950).

Reliance on the doctrine of equivalents to determine whether the new product is merely of "colorable difference" will protect the plaintiff's right to the benefit of the prior decree while at the same time reserving to the defendant the opportunity to take a new route to invent around the patent it has infringed. Even if the new product may infringe the patent, as long as it is more than "colorably different" the infringement should not amount to a contempt nor should it be tested in contempt proceedings. Siebring v. Hansen, 346 F.2d at 477.


I dont understand the technology well enough to say if the two devices do the same work in substantially the same way, and accomplish substantially the same result.


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## Herdfan

jacmyoung said:


> Because their hardware never infringed, and because their new software no longer infringes, the goal of the injunction is met. They are not in contempt.


Back the truck up here. How do we know their hardware never infringed? Who said so? Plus they said their original software didn't infringe and how did that work out for them?

Back to the hardware infringment and remand. Lets say a guy walks into a post office and shoots every one he sees. He goes to trial and is convicted. The guy appeals and the COA finds the judge made a small error and remands it for retrial.

At this point, the guy is STILL A MURDERER! All that has to happen is another trial. Just because the COA remanded the case does not make him any less a murderer.


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## Herdfan

Curtis52 said:


> Judge Folsom had this to say when he previuosly turned down a stay:
> 
> "*Enjoining Defendants will likely cause some harm - but on balance, Defendants will endure less harm than Plaintiff.*"


I tend to disagree with this. The only harm to TiVo at this point is lost revenue and DISH has the cash to make TiVo whole should TiVo win out.

DISH on the other hand could possibly lose hundreds of thousands of customers which they may never regain if the even if they are able to prove six months from now that the new software actually doesn't infringe.

It seeems the judge is wanting to use the injunction to punish DISH above and beyond any cash payment to TiVo.


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## spear61

Herdfan said:


> I tend to disagree with this. The only harm to TiVo at this point is lost revenue and DISH has the cash to make TiVo whole should TiVo win out.
> 
> DISH on the other hand could possibly lose hundreds of thousands of customers which they may never regain if the even if they are able to prove six months from now that the new software actually doesn't infringe.
> 
> It seeems the judge is wanting to use the injunction to punish DISH above and beyond any cash payment to TiVo.


The purpose of a patent is to reward innovation by providing what might be called a monopoly for a period of "time". As soon as an invention becomes public, others see it and start to work on workarounds or similar ideas. So, as "time" moves on, your idea has exponentially less value. The problem TIVO has is that Dish stole their "time" and it can't be replaced. The judge has to ask " What kind of company could TIVO have been, if they had not been cheated out of their "time". He has to to look at past damage and also compensate TIVO for future unrealized growth of the TIVO company.

Time indeed will tell what the judge thinks regarding the economic damage done to TIVO.


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## Herdfan

spear61 said:


> He has to to look at past damage and also compensate TIVO for future unrealized growth of the TIVO company.


Yes, but punishing DISH with the loss of subs does nothing to compensate TiVo. So unless the judge is using the injunction as a way to force DISH into a long-term license deal with TiVo, (ergo compensating TiVo for their patent and scaring the #$!! out of the cablecos enough for them to strike a deal with TiVo as well) the injunction only punishes DISH.


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## scooper

If tivo didn't have this lawsuit, they wouldn't be going anywhere as a company. Any / all attempts to license their stuff have been ignored, and just about every cable box maker out there has engineered their own workaround, much as Dish has said they have done also. So I think you can substantially discount that "time" , unless tivo plans on taking Scientific Atlanta, Motorola, and other cable box makers to court as well.


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## dgordo

scooper said:


> If tivo didn't have this lawsuit, they wouldn't be going anywhere as a company. Any / all attempts to license their stuff have been ignored, and just about every cable box maker out there has engineered their own workaround, much as Dish has said they have done also. So I think you can substantially discount that "time" , unless tivo plans on taking Scientific Atlanta, Motorola, and other cable box makers to court as well.


IMO this has always been tivos strategy. Try to make an example out of dish and then force everyone else to license or sue them.


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## spear61

Herdfan said:


> Yes, but punishing DISH with the loss of subs does nothing to compensate TiVo. So unless the judge is using the injunction as a way to force DISH into a long-term license deal with TiVo, (ergo compensating TiVo for their patent and scaring the #$!! out of the cablecos enough for them to strike a deal with TiVo as well) the injunction only punishes DISH.


Yes, you are correct and that is what the judge intended back in 2006. He said in his order that the public has an interest in protecting the patent system. His disabling order for Dish boxes at that time was intended to be punative in nature since it, by itself, did not provide ecomonic relief to TIVO. But, it surely was intended to get them talking to each other.


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## Curtis52

Herdfan said:


> I tend to disagree with this. The only harm to TiVo at this point is lost revenue and DISH has the cash to make TiVo whole should TiVo win out.
> 
> DISH on the other hand could possibly lose hundreds of thousands of customers which they may never regain if the even if they are able to prove six months from now that the new software actually doesn't infringe.
> 
> It seeems the judge is wanting to use the injunction to punish DISH above and beyondany cash payment to TiVo.


Judge Folsom said that money damages aren't an adequate remedy:

"Plaintiff has demonstrated both that it continues to suffer irreparable harm in the absence of an injunction and that there is no adequate remedy at law. Defendants compete directly with Plaintiff - Defendants market their infringing products to potential DVR customers as an alternative to purchasing Plaintiff's DVRs. The availability of the infringing products leads to loss of market share for Plaintiff's products. Loss of market share in this nascent market is a key consideration in finding that Plaintiff suffers irreparable harm - Plaintiff is losing market share at a critical time in the market's development, market share that it will not have the same opportunity to capture once the market matures.

One thing the parties agree on is that DVR customers are "sticky customers," that is they tend to remain customers of the company from which they obtain their first DVR. Thus, the impact of Defendants' continued infringement is shaping the market to Plaintiff's disadvantage and results in long-term customer loss. This is particularly key where, as is the case here, Plaintiff's primary focus is on growing a customer base specifically around the product with which Defendants' infringing product competes. And, as Plaintiff is a relatively new company with only one primary product, loss of market share and of customer base as a result of infringement cause severe injury. Thus, the Court concludes that the full impact of Defendants' infringement cannot be remedied by monetary damages. "


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## Greg Bimson

spear61 said:


> Yes, you are correct and that is what the judge intended back in 2006. He said in his order that the public has an interest in protecting the patent system. His disabling order for Dish boxes at that time was intended to be punative in nature since it, by itself, did not provide ecomonic relief to TIVO. But, it surely was intended to get them talking to each other.


And that was the reason Judge Folsom did not stay his injunction. Judge Folsom felt that DISH/SATS would not win a complete mistrial or reversal outright upon appeal, so he left the Court of Appeals to determine what needed to be done with the injunction. Turns out Judge Folsom was correct; his injunction came out of appeal unscathed and in full force and effect, as DISH/SATS did not address any issues with the injunction upon appeal.

Now Judge Folsom has the opportunity to rule on a request where an infringer is ignoring part of the injunction he issued.


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## spear61

Greg Bimson said:


> And that was the reason Judge Folsom did not stay his injunction. Judge Folsom felt that DISH/SATS would not win a complete mistrial or reversal outright upon appeal, so he left the Court of Appeals to determine what needed to be done with the injunction. Turns out Judge Folsom was correct; his injunction came out of appeal unscathed and in full force and effect, as DISH/SATS did not address any issues with the injunction upon appeal.
> 
> Now Judge Folsom has the opportunity to rule on a request where an infringer is ignoring part of the injunction he issued.


And, that is why I think it likely that the old Dish DVR's are likely to get whacked. Dish manipulated and worked the system until they probably got a non infringing DVR up and running. That does not change the fact that back in 2006, an injunction was issued to disable a series of specifically named boxes that were operating using infringing software. If the judge does not enforce his injunction, one must ask- why do we have a patent system?


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## scooper

spear61 said:


> why do we have a patent system?


With the way our's is performing now - I'd have to ask the same thing, with a different spin on the question. I wouldn't call what we have now a "working patent system" - not by any stretch of the imagination....


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## jacmyoung

spear61 said:


> ... If the judge does not enforce his injunction, one must ask- why do we have a patent system?


Very good point, which is why people speculate more than likely the judge will enforce his existing injunction by finding DISH in contempt, but if it comes to that, and when DISH decides to appeal such ruling, they also will have compelling argument to make to the appeals court:

1) It was the same appeals court which overturned the hardware verdict, which changed the circumstances in which the injunction was based on, and the appeals court did ask the parties to address the hardware issue but Tivo chose not to. Remember what you said: "The judge has broad authority to do what he wants or change his mind at a later date. And, when the order is "gray" , the defendent gets the benefit of the doubt."

The law insists that the injunction be very clear and concise, which is what the judge did, to be very concise on what specific items to be on the injunction list, at the same time, it must be concise to the verdict it uses as basis. But now the basis is no longer concise, because half of the verdict was reversed.

2) The other basis the injunction was based on was the old infringing software. Now that DISH claims the old software had been replaced with the new and non-infringing software. The question is not whether the judge believes DISH or not, rather that the mere fact DISH did replace the infringing software had again changed the basis in which the injunction was based on, and therefore the issue has become less black and white, rather a little grayer. In such event the judge must consider in the benefit of the defendent.

Not that the judge should let DISH go free, not at all, rather give DISH the opportunity to present its evidence, and after DISH presents its evidence, the judge should give such evidence the attention it deserves.

Again during a contempt proceeding, the judge only needs to determine if the new device is merely colorably different or not, such discovery is not complicated and not lengthy, but experts will be allowed to testify in such proceeding.

If the judge after carefully listening to all sides, finds the new device mere colorably different, he can easily add all DISH DVRs that still use such new software in his injunction and find DISH in contempt of such injunction. DISH can appeal but DISH's prospect will not be good at all.

But if the judge finds DISH's new device is more than coloarbly different, he must not issue a contempt ruling. And he must then move the proceeding out of a contempt hearing and into a new proceeding during which the issue of the new software infringement will be determined, and such new proceeding will likely take more time.


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## spear61

Right you are. My only comment is that some infringing is kinda like getting a little bit pregnant.


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## Curtis52

jacmyoung said:


> the appeals court did ask the parties to address the hardware issue


No they didn't.


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## dgordo

jacmyoung said:


> It was the same appeals court which overturned the hardware verdict


No they didn't.


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## Curtis52

jacmyoung said:


> 1) It was the same appeals court which overturned the hardware verdict, *which changed the circumstances in which the injunction was based on*


Nope. Judge Folsom knew that some claims might be overturned but not all the claims. He said so. He was right.


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## James Long

There were many mistakes made along the way by both parties and the judge ... I would not expect the mistakes and errors to end now.


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## jacmyoung

dgordo said:


> No they didn't.


All I can say is, as a lawyer, you sure know how to make fun at a lay person on the semantics. I for one have always had reservation about any lawyer who not only think he is smarter than the next guy, but also like to let others know about it. I am sure many take the opposite view.

I am no lawyer, I am free to be argumentative


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## jacmyoung

James Long said:


> There were many mistakes made along the way by both parties and the judge ... I would not expect the mistakes and errors to end now.


And even if people refuse to consider such as mistakes, at least admit things may not turn out the way you wish.


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## Kheldar

nobody99 said:


> Sure. But it will be because DISH is trying to sell an infringing device as if it weren't. Let me give you an analogy.
> 
> DISH is told by a judge that they must stop selling Apples and Bananas. There is no mention of Oranges, Pineapples, and Coconuts. In addition, they must turn off all Apples and Bananas.


Just how does one go about turning off a banana?  :grin:
That one might get overturned on appeal based on the impossibility of the request.


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## Greg Bimson

jacmyoung said:


> Very good point, which is why people speculate more than likely the judge will enforce his existing injunction by finding DISH in contempt, but if it comes to that, and when DISH decides to appeal such ruling, they also will have compelling argument to make to the appeals court:
> 
> 1) It was the same appeals court which overturned the hardware verdict, which changed the circumstances in which the injunction was based on,


If the ruling by the Court of Appeals "changed the circumstances in which the injunction was based", why did the Court of Appeals "rubber stamp" the injunction and let it take full force and effect by removing the stay? The logic right here escapes me...

Are you saying that if DISH/SATS is found in contempt, they should argue to the Court of Appeals that the injunction was worded incorrectly or just plain wrong? The time has passed for that argument.


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## jacmyoung

Greg Bimson said:


> If the ruling by the Court of Appeals "changed the circumstances in which the injunction was based", why did the Court of Appeals "rubber stamp" the injunction and let it take full force and effect by removing the stay? The logic right here escapes me...


Let me try again, it is not appeals court's job to help the judge modify his injunction, the appeals court either uphold the injunction or overturn it. The court decided to uphold it, because even if the hardware never infringed, had the same old infringing software been in use all this time, the injunction would still be appropriate. Of course the old software is gone now. They did suggest parties brief on the hardware issue but the parties did not.



> ...Are you saying that if DISH/SATS is found in contempt, they should argue to the Court of Appeals that the injunction was worded incorrectly or just plain wrong? The time has passed for that argument.


No, I can not say what DISH may argue at that time. Only what DISH is saying now, that they are in compliance with the injunction, because their hardware never infringed, and their new software no longer infringes, therefore the goal of the injunction is reached. Why do you keep asking me the same question as if I may give you a different answer?

Now of course if the appeals court does not buy DISH's argument, they will uphold the judge's contempt order, and DISH will be in real trouble if they still do not turn off the DVR's.

If the appeals court buys DISH's argument, they should have a few options, the easiest is simply overturn the contempt order and do nothing else, and let the parties continue with their fight. Or it can stay the injunction and ask the judge to hear on the new software infringement issue then make a decision. Or lift the injunction and ask the judge to come up with something new.

No one has to declare the injunction is wrong, the injunction has been determined appropriate based on the circumstances at the time.


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## Greg Bimson

jacmyoung said:


> Let me try again, it is not appeals court's job to help the judge modify his injunction, the appeals court either uphold the injunction or overturn it. The court decided to uphold it, because even if the hardware never infringed, had the same old infringing software been in use all this time, the injunction would still be appropriate.


But you are then suggesting the wording of the injunction is not appropriate if the software has been changed, something DISH/SATS argued once before.

DISH/SATS had a second chance to argue the wording of the injunction when appealing the case. DISH/SATS didn't file a brief regarding the injunction. Are you now stating that if Judge Folsom issues a contempt order, DISH/SATS should appeal and then brief the Court of Appeals that the injunction the Court of Appeals let stand is incorrect?


jacmyoung said:


> Why do you keep asking me the same question as if I may give you a different answer?


Because the interpretation that "the goal of the injunction is reached" doesn't make sense. There isn't any item on the injunction, nor anywhere in the proceedings, that the goal of the injunction is to have DISH/SATS stop infringement.

I guess the real question here, is that TiVo is requesting a contempt proceeding because they feel DISH/SATS has not complied with two points in the injunction: shut down the DVR's and stop selling them. If these are TiVo's only two points, how does DISH/SATS counter those two points?


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## Greg Bimson

jacmyoung said:


> Let me try again, it is not appeals court's job to help the judge modify his injunction


I respectfully differ. Want one example?

Dish Network's distant network case.


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## dgordo

jacmyoung said:


> All I can say is, as a lawyer, you sure know how to make fun at a lay person on the semantics. I for one have always had reservation about any lawyer who not only think he is smarter than the next guy, but also like to let others know about it. I am sure many take the opposite view.
> 
> I am no lawyer, I am free to be argumentative


You have me completely wrong. I assure you that I don't think I am smarter than anyone. We all have different areas which we understand better than others. What I do think is that, after law school, the bar exam and several years practicing law, I see misuse of legal terms and it makes me cringe. Hell, If I was that smart I never would have gone to law school.

Its obvious that you have done a fair amount of research as your posts are far more legally accurate on this topic then they were 4 months ago. You made a very informative point but ruined it by using the wrong word. You may call that semantics but to me that is like saying that a knockout is the same as a split decision.


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## James Long

Greg Bimson said:


> DISH/SATS had a second chance to argue the wording of the injunction when appealing the case.


At that point in time the software had not been changed. What do you want DISH to do, brief on the possibility that a year later they would have non-infringing software? We knew from later public comments that DISH was considering removing the offending code. But at the time they made their appeal argument there was no new code to speak of.

Perhaps they should have asked for the injunction to be focused on the specific code ruled to be infringing ... it would have made it easier now. But at that point in time there was no new "non infringing code".

Besides, an appeal is not the time to introduce new evidence. (Remember the distants case when DISH tried to introduce the settlement as new evidence?) It is a time to point out errors made by the court. The only error in the injunction was that it named products and not code or components. It is too broad.



Greg Bimson said:


> I respectfully differ. Want one example?
> 
> Dish Network's distant network case.


How so? The appeals court in that case ordered the district judge to place the injunction he wrote.

In that case it seemed that the district court judge errored on the side of DISH ... initially putting out an injunction that was NOT compliant with the law (an injunction that required DISH to follow the law in qualifying customers for distants and cease delivery to customers who did not qualify - instead of the required "death penalty"). Later on after it was proven that DISH ignored that injunction the "death penalty" was imposed ... but only after more delay by the judge.

In that case there was a specific permanent penalty required by law ... if one infringed to the level DISH infringed they would no longer be able to offer distants. There is no death penalty connected to this case. DISH remains free to create and sell or use any DVR that they want to create and sell or use. They just can't use infringing code (and if the court ever deals with the remanded hardware claims, perhaps they won't be able to use a component - unless the infringing portion of the component is bypassed in software).

There is no "death penalty" here.


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## jacmyoung

Greg Bimson said:


> But you are then suggesting the wording of the injunction is not appropriate if the software has been changed, something DISH/SATS argued once before.


Yes, when taken into consideration that the hardware verdict was reversed, it is reasonable to argue that the standard of the injunction should now be based on what kind of software is used. Now I am not saying the judges must buy such logic, but it is a reasonable argument to me if DISH uses it.



> ... There isn't any item on the injunction, nor anywhere in the proceedings, that the goal of the injunction is to have DISH/SATS stop infringement...


There need not be one, because the purpose of an injunction is to prevent past wrong doing from happening again, not to punish the offender for past act, the damages and fines serve such purpose.



> ...I guess the real question here, is that TiVo is requesting a contempt proceeding because they feel DISH/SATS has not complied with two points in the injunction: shut down the DVR's and stop selling them. If these are TiVo's only two points, how does DISH/SATS counter those two points?


Still the same, its hardware never infringed, and its new software no longer infringes. But because Tivo understood the logic behind such argument, they decided to be proactive and added the new software issue as the 3rd part. And also because Tivo understood it is too risky to bring back the hardware issue, they decided not to, and as a result the software issue became even more important an issue that Tivo felt compelled to bring up.


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## jacmyoung

dgordo said:


> ... You made a very informative point but ruined it by using the wrong word. You may call that semantics but to me that is like saying that a knockout is the same as a split decision.


Admitting that someone made a good point but dismiss its value anyway by pointing out someone used a wrong word, that is my definition of trying to be smart.


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## dgordo

jacmyoung said:


> Admitting that someone made a good point but dismiss its value anyway by pointing out someone used a wrong word, that is my definition of trying to be smart.


To me, you might as well have posted that 1+1=3

I no longer expect you to understand.


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## Curtis52

Greg Bimson said:


> I guess the real question here, is that TiVo is requesting a contempt proceeding because they feel DISH/SATS has not complied with two points in the injunction: shut down the DVR's and stop selling them. If these are TiVo's only two points, how does DISH/SATS counter those two points?





jacmyoung said:


> Still the same, its hardware never infringed, and its new software no longer infringes.


I guess if a suspect jumps bail he can try a defense of "you made a mistake requiring bail judge because I've reformed". I don't think it would work. I think the judge would get pretty upset.


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## Curtis0620

You guys are assuming that changing the software makes a difference. I believe the injunction is part of the penalty for the past infringement and the judge will force DISH to shut off those DVR's listed.

This is my opinion and if jacmyoung wants to insult me again, go ahead.


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## Greg Bimson

James Long said:


> What do you want DISH to do, brief on the possibility that a year later they would have non-infringing software?





jacmyoung said:


> Yes, when taken into consideration that the hardware verdict was reversed, it is reasonable to argue that the standard of the injunction should now be based on what kind of software is used.


Well, some here argue that TiVo's "mistake" was not briefing the Court of Appeals regarding the use of the doctrine of equivalents on a more stringent interpretation of the hardware claim. After all, the Court of Appeals said they could have ruled if they were briefed on the issue. How is TiVo supposed to brief the Court of Appeals on an interpretation of a hardware claim that didn't exist until the ruling was handed down from that court?

Once the case went into appeals mode, DISH/SATS needed to argue to the Court of Appeals that the injunction was not written correctly. They did not. One cannot wait until after an injunction is in full force and effect to argue that the injunction is invalid. The time to argue that the District Court has erred in its application of law is upon appeal.


James Long said:


> How so? The appeals court in that case ordered the district judge to place the injunction he wrote.


As I recall, not exactly. The broadcasters felt the injunction written by Judge Dimitrouleas, stayed by him upon appeal, was not correct as a question of law. The broadcasters appealed to the Court of Appeals that Judge Dimitrouleas did not give the proper remedy as defined by the law. So the broadcasters did question Judge Dimitrouleas' injunction and did ask the Court of Appeals for the mandatory relief in the form of a permanent injunction. The Court of Appeals agreed with the broadcasters and ORDERED Judge Dimitrouleas to issue the permanent injunction, not the injunction which Judge Dimitrouleas wrote, which was stayed during the appeal proceeding.

The proper forum for questioning rulings at the District Court level is upon appeal. The case was given its due attention by the Court of Appeals and then remanded back to the District Court for further proceedings. One does not get to question rulings from the original case now; just question any issues with the further proceedings.


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## jacmyoung

Greg Bimson said:


> Well, some here argue that TiVo's "mistake" was not briefing the Court of Appeals regarding the use of the doctrine of equivalents on a more stringent interpretation of the hardware claim. After all, the Court of Appeals said they could have ruled if they were briefed on the issue. How is TiVo supposed to brief the Court of Appeals on an interpretation of a hardware claim that didn't exist until the ruling was handed down from that court?...


Of course it existed, the doctrine of equivalents existed but Tivo failed to use it, in fact Tivo did use the equivalents in the software claim argument, just not in the hardware argument.



> ...Once the case went into appeals mode, DISH/SATS needed to argue to the Court of Appeals that the injunction was not written correctly. ...


Again they could not because at the time there was no non-infringing software idea for DISH to argue about, and both hardware and software were infringing.

But even if it was DISH's fault that they did not argue such during the appeal, there is no reason to insist DISH has no RIGHT to introduce it now, just because Tivo said so. Parties should be free to bring in any argument they wish, as long as a forum exist for them to do so, now whether the court should buy such argument or not or consider such argument appropriate or not is another story.

Just like the hardware issue, though the appeals court overturned it, they never denied Tivo's opportunity to bring the issue back, in fact they encouraged Tivo to bring the issue back, Tivo failed to do so so far.


----------



## Curtis52

jacmyoung said:


> the appeals court did ask the parties to address the hardware issue


No they didn't.



jacmyoung said:


> Just like the hardware issue, though the appeals court overturned it, they never denied Tivo's opportunity to bring the issue back, in fact they encouraged Tivo to bring the issue back, Tivo failed to do so so far.


No they didn't. The appeals court was silent on whether TiVo should pursue the hardware infringement.


----------



## Curtis52

Dish borrowed $750 million yesterday. They bumped it up from the $500 million previously announced.

http://www.reuters.com/article/marketsNews/idINN2065350520080520?rpc=44


----------



## TBoneit

spear61 said:


> The purpose of a patent is to reward innovation by providing what might be called a monopoly for a period of "time". As soon as an invention becomes public, others see it and start to work on workarounds or similar ideas. So, as "time" moves on, your idea has exponentially less value. The problem TIVO has is that Dish stole their "time" and it can't be replaced. The judge has to ask " What kind of company could TIVO have been, if they had not been cheated out of their "time". He has to to look at past damage and also compensate TIVO for future unrealized growth of the TIVO company.
> 
> Time indeed will tell what the judge thinks regarding the economic damage done to TIVO.


And who would want to use a Tivo for their HD that would reduce the quality?

Or to put it another way if Dish had to shut off all their DVRs who would run out and buy a Tivo and pay that high monthyly fee per unit? And for HD the quality hit would be high as the only reason the D* & E* DVRs don't reduce the quality is that they record the data stream directly. So that watching it later is the same as watching it live in terms of quality.

Shutting off the DVRs would have no benefit to Tivo sales as I see it. It would possibly force some other DVR makers to settle, Maybe.Or it could be the thing needed to get Microsoft nack into the DVR market. The two DVRs they were involved with were IMHO better than the Tivo. And I'd like to see Tivo sue them.

One other possibility is that despite the so called "Poison pill" the people running Tivo are hoping that Dish will buy them. That would give them a chunk of money and the freedom of trying to make themselves relevant as a company in a changing market. Hmmm... No more worries about what do I do to stay in business, just take the money and run.


----------



## Greg Bimson

Greg Bimson said:


> Well, some here argue that TiVo's "mistake" was not briefing the Court of Appeals regarding the use of the doctrine of equivalents on a more stringent interpretation of the hardware claim. After all, the Court of Appeals said they could have ruled if they were briefed on the issue. How is TiVo supposed to brief the Court of Appeals on an interpretation of a hardware claim that didn't exist until the ruling was handed down from that court?...





jacmyoung said:


> Of course it existed, the doctrine of equivalents existed but Tivo failed to use it, in fact Tivo did use the equivalents in the software claim argument, just not in the hardware argument.


You're going to have to make an argument on this that makes sense. Nowhere did I state that the doctrine of equivalents didn't exist.

The Court of Appeals made the claim construct on the hardware more stringent, but only when they issued their decision.  TiVo would have had to argue like a fortune teller that they'd have known the Court of Appeals was changing the hardware claim definition.

And that is how the Court of Appeals operates.


jacmyoung said:


> But even if it was DISH's fault that they did not argue such during the appeal, there is no reason to insist DISH has no RIGHT to introduce it now, just because Tivo said so. Parties should be free to bring in any argument they wish, as long as a forum exist for them to do so, now whether the court should buy such argument or not or consider such argument appropriate or not is another story.


I am talking about straight procedure. If there are issues with a judge's rulings, you can appeal them. But once you start the appeals process, it is based upon the aggregate proceeding.

For example, DISH/SATS appealed the case to the Court of Appeals back in September, 2006. Any issues they had with the case must be brought up in that brief, as all one is questioning is the rule of law as applied by that judge. If you do not question something, it is assumed there is no problem with it.

So DISH/SATS had an issue with the guilty verdict, but had no issue with the injunction. Now that all parties briefed what Judge Folsom had done and a decision was rendered, the rest of that case is off-limits.

No one gets to argue any of the facts from the case anymore, including the injunction. There was a time and place for that: the original appeal to the Court of Appeals.


----------



## TBoneit

Curtis52 said:


> I don't think they could be considered either infringing or non-infringing until there is expert testimony and a judge or jury decides. If that ever happened it would take a long time. I think it will never get to that point because the shutoff of the specifically listed infringing models will force Dish to settle. TiVo probably wouldn't sign a settlement agreement that didn't include all the Dish DVRs. If the shutoff doesn't force a settlement TiVo will probably ask for a preliminary injunction on the newer DVRs shutting them off too until the hearing on those DVRs given Dish's history of claiming noninfringement only to be proven mistaken and the fact that the new DVRs also use the Broadcom chipset.


Different broadcom chip in VIP series, Different chip between the 622 and the 722 even.

If Tivo feels that the broadcom chip causes the infringement why aren't they sueing Broadcom to stop selling their infringing chip?


----------



## Curtis52

TBoneit said:


> If Tivo feels that the broadcom chip causes the infringement why aren't they sueing Broadcom to stop selling their infringing chip?


TiVo will make more money suing or licensing the users. Besides, TiVo gets their Broadcom chips from them. As far as I know, there isn't a second source.


----------



## TBoneit

Curtis52 said:


> TiVo will make more money suing or licensing the users. Besides, TiVo gets their Broadcom chips from them. As far as I know, there isn't a second source.


I hadn't thought about that. Thanks


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## spear61

Civil actions in the courts are similar to contract negotiations. They teach you in negotiators school that you better know " your best alternative" if the negotiations fall apart and be willing to accept it. You do it before you start. For example, if you just got out of school and want a job in San Francisco because of the great weather but you hear the pay is lousy there, you better go to Chicago and get an offer there first. Then, when you compare the 150,000 per year in Chicago to to 75000 they pay in San Francisco the decision becomes clear " Do you want to freeze in Chicago or be poor and warm in San Francisco.

Dish knows their best alternative if they don't prevail. The question is what is it- buy out TIVO, pay TIVO to drop the suit and get a license or shut down the boxes?


----------



## Herdfan

spear61 said:


> Dish knows their best alternative if they don't prevail. The question is what is it- buy out TIVO, pay TIVO to drop the suit and get a license or shut down the boxes?


From a reasonable standpoint, yes they should. But Charlie is an arrogant SOB and he has shown the willingness to keep fighting long after he should have cut his losses. By the time this is over, if DISH loses, they will probably end up paying more than they would have to license some of the tech from TiVo.

But who is willing to tell Charlie its time to stop? Other execs? Maybe. The lawyers? No way as they can keep getting paid as long as he is willing to fight.

Regardless of what you think the outcome of this will be, you must acknowledge that the damage to DISH would be huge if TiVo succeeds in getting the DVR's shut off. Why is Charlie willing to take that risk?


----------



## spear61

Herdfan said:


> Regardless of what you think the outcome of this will be, you must acknowledge that the damage to DISH would be huge if TiVo succeeds in getting the DVR's shut off. Why is Charlie willing to take that risk?


That's exactly what I don't understand.


----------



## jacmyoung

Greg Bimson said:


> ... TiVo would have had to argue like a fortune teller that they'd have known the Court of Appeals was changing the hardware claim definition...


No the appeals court did not change the hardware claim definition at all. They ruled against Tivo based on the definition Tivo brought up themselves. They did say that if Tivo wished to change the definition they could brief on that and get back to us.



> ...And that is how the Court of Appeals operates...


You got that right!



> ...I am talking about straight procedure. If there are issues with a judge's rulings, you can appeal them. But once you start the appeals process, it is based upon the aggregate proceeding...


But if issues did not exsit at the time, it is unfair to insist issues may not be brought back up later once the issues arise.



> ...So DISH/SATS had an issue with the guilty verdict, but had no issue with the injunction...


The issues only arised after the appeal, two issues really, one that 50% of the verdict was reversed, two DISH somehow believed they were successful in working around the patent, not before nor during the appeal, but after, so to insist DISH be the fortune teller and argue on things they could not foresee is unreasonable. See how your own argument gets around?

On the other hand, you can not say Tivo could not foresee the equivalent issue ever be used in the hardware claim debate, because such tool did exsit, Tivo knew such tool existed, because Tivo used such tool in the softwware claims and won, just that Tivo failed to use it in the hardware claim. Again the court did not prohibit Tivo to try to use it later, the court actually said Tivo could when Tivo in the appeal brought up the use of such tool and while the appeals court said it was too late for that appeal proceeding, Tivo may go ahead brief on the use of that tool and get back to us.

And that leads to my response to Curtis as far as he did not agree that the appeals court suggested Tivo brief on the use of the equivalent tool, yes the court suggested such, becasue Tivo asked the court to use that tool, while the court said it was too late to use that tool for that appeal, go ahead brief on it and get back to us.

When my kid asked for an ice cream, sometimes I said no not now, but later if you behaved. Did I suggest my kid to continue to seek ice cream in a later time even though I disallowed it at the time? Yes I did.


----------



## Greg Bimson

jacmyoung said:


> No the appeals court did not change the hardware claim definition at all. They ruled against Tivo based on the definition Tivo brought up themselves. They did say that if Tivo wished to change the definition they could brief on that and get back to us.


This is incorrect.

TiVo cannot now go back and brief the Court of Appeals on the change of definition. The Court of Appeals simply told TiVo they can address the hardware upon remand at the District Court. The Court of Appeals job was done, once they changed the definition of the hardware claims and reversed the verdict:


> First, the jury was told that if it found literal infringement it should not make a determination as to whether there was infringement under the doctrine of equivalents, so there was no verdict on the issue of equivalents with regard to the hardware claims. Second, *we have construed two of the claim limitations more restrictively than the trial court's instructions permitted.* For that reason, even if the jury had reached a verdict with respect to the doctrine of equivalents we could not sustain that verdict merely upon finding that substantial evidence supported it.


The Court of Appeals made two of the claim limitations more stringent.


> At this juncture, we could uphold the judgment on the basis of the doctrine of equivalents only if we were to conclude that no reasonable jury, given proper instructions, could reach any verdict other than to find infringement by equivalents. The parties, however, have not briefed that issue in any detail, and we therefore do not address it. More generally, we do not decide what further proceedings, if any, are appropriate in the district court regarding the equivalents issue. Instead, we leave that issue for the district court to resolve in the event that, on remand, TiVo decides to continue to pursue the hardware claims in light of this decision.


But because neither party gazed into their crystal ball and briefed the court on this possible outcome, the court didn't address it and left it to TiVo to figure out what to do with the hardware claims, back at Judge Folsom's court.


----------



## Curtis52

jacmyoung said:


> And that leads to my response to Curtis as far as he did not agree that the appeals court suggested Tivo brief on the use of the equivalent tool, yes the court suggested such, becasue Tivo asked the court to use that tool, while the court said it was too late to use that tool for that appeal, go ahead brief on it and get back to us.


Quote where the appeals court told TiVo to brief on it. This ought to be good.


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## Greg Bimson

jacmyoung said:


> The issues only arised after the appeal, two issues really, one that 50% of the verdict was reversed, two DISH somehow believed they were successful in working around the patent, not before nor during the appeal, but after, so to insist DISH be the fortune teller and argue on things they could not foresee is unreasonable. See how your own argument gets around?


The Court of Appeals made a decision to construe two claim limitations more restrictively. Neither TiVo nor DISH/SATS knew that the CoA was going to change the definiton, so they didn't brief the Court of Appeals on that scenario. It would have required a crystal ball and an oracle to go down that path.

So, the issue that the claim limitations where only known after the decision was rendered is an important point. If TiVo wishes to pursue the hardware claims, they do it back at District Court.

But DISH/SATS didn't mention the injunction to the Court of Appeals at all. DISH/SATS let the injunction stand as is, during appeal. Now that the injunction is in full force and effect, it doesn't get rewritten.

If DISH/SATS wants to argue their new software is no longer infringing, that's fine. They will still be subject to the exact wording of the injunction until the outcome of the hearing regarding the software is rendered. And that hearing, if in DISH/SATS favor, will not remove the injunction; it will simply state that receivers running the new software are not considered infringing.


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## Curtis52

Greg Bimson said:


> But DISH/SATS didn't mention the injunction to the Court of Appeals at all.


The patent for the supposedly noninfringing software was filed 08-29-06. They must have been working on it long before then. No mention at trial or during injunction formulation or when asking Judge Folsom for a stay or at any time during the appeal. Wow. That's either incompetence that strains credulity or evidence that noninfringing software doesn't really exist. It sure isn't reason for a stay now that they've lost.


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## jims

+1 WOW


----------



## spear61

Since my mind can wander, I thought I better go back and look at Curtis52's initial post on 1/31/08 which had the exact wording of the appeals court.

"In sum, because of a failure of proof of literal infringement, we reverse the 
judgment of infringement of the hardware claims with respect to all of the accused 
devices. We remand for any further proceedings that may be necessary with respect to 
those claims. We affirm the judgment of infringement of the software claims with 
respect to all of the accused devices. *Because the damages calculation at trial was not 
predicated on the infringement of particular claims, and because we have upheld the 
jury's verdict that all of the accused devices infringe the software claims, we affirm the 
damages award entered by the district court*. 
The district court's injunction was stayed during the course of these proceedings. 
The stay that was issued pending appeal will dissolve when this appeal becomes final. 
At that time, the district court can make a determination as to the additional damages, if 
any, that TiVo has sustained while the stay of the permanent injunction has been in 
effect. 
Each party shall bear its own costs for this appeal. 
AFFIRMED IN PART, REVERSED IN PART, and REMANDED. "

Seems to me that there is no "gray" in this ruling.


----------



## jacmyoung

Greg Bimson said:


> This is incorrect.
> 
> TiVo cannot now go back and brief the Court of Appeals on the change of definition. The Court of Appeals simply told TiVo they can address the hardware upon remand at the District Court. The Court of Appeals job was done, once they changed the definition of the hardware claims and reversed the verdict:The Court of Appeals made two of the claim limitations more stringent.But because neither party gazed into their crystal ball and briefed the court on this possible outcome, the court didn't address it and left it to TiVo to figure out what to do with the hardware claims, back at Judge Folsom's court.


I did not say Tivo can brief the appeals court. No the appeals court told Tivo they might request parties be briefed on the equivalents issue, basically what that meant was Tivo is free to motion for a summary judgment, and if the motion is granted and the judge renders a decision in favor of Tivo, and if DISH appeals such decision, the appeals court will then have the chance to revisit it.

But Tivo did not make such request, at least not yet.


----------



## Greg Bimson

Regarding DISH/SATS new software:


Curtis52 said:


> No mention at trial or during injunction formulation or when asking Judge Folsom for a stay or at any time during the appeal.


The first mention of new software in a proceeding was brought up in a brief to the Court by TiVo five days ago. That brief started this thread.

As far as the Court is concerned, DISH/SATS is still infringing, until they prove otherwise. And any ruling on that must include complete discovery by TiVo to understand what has been done.

Think this software issue may take a while? Meanwhile, a separate ruling that DISH/SATS hasn't followed the injunction order for continuing to sell and to keep DVR service active should take about half a day, including bathroom breaks.


----------



## Curtis52

jacmyoung said:


> the appeals court told Tivo they might request parties be briefed on the equivalents issue


They didn't tell TiVo anything. They didn't tell TiVo to file motions. They didn't give permission to do anything. They didn't tell the judge to do anything. All they said was that they weren't going to decide it.


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## jacmyoung

spear61 said:


> Since my mind can wander, I thought I better go back and look at Curtis52's initial post on 1/31/08 which had the exact wording of the appeals court.
> 
> "In sum, because of a failure of proof of literal infringement, we reverse the
> judgment of infringement of the hardware claims with respect to all of the accused
> devices. We remand for any further proceedings that may be necessary with respect to
> those claims. We affirm the judgment of infringement of the software claims with
> respect to all of the accused devices. *Because the damages calculation at trial was not
> predicated on the infringement of particular claims, and because we have upheld the
> jury's verdict that all of the accused devices infringe the software claims, we affirm the
> damages award entered by the district court*.
> The district court's injunction was stayed during the course of these proceedings.
> The stay that was issued pending appeal will dissolve when this appeal becomes final.
> At that time, the district court can make a determination as to the additional damages, if
> any, that TiVo has sustained while the stay of the permanent injunction has been in
> effect.
> Each party shall bear its own costs for this appeal.
> AFFIRMED IN PART, REVERSED IN PART, and REMANDED. "
> 
> Seems to me that there is no "gray" in this ruling.


What you have highlighted was damages, not injunction. As far as the injunction, as I said the appeals court either overturns it, or affirms it, they are not in the business to tell the judge how he should change his injunction to fit the new circumstances.

But DISH sure has the right to dispute the way the judge handles his injunction, by ignoring the fact the hardware claim was reversed, and by refusing to hear DISH's new software claim, that is if the judge shall find DISH in contempt as Tivo asked for, then DISH may appeal the contempt ruling on the above ground.


----------



## jacmyoung

Curtis52 said:


> They didn't tell TiVo anything. They didn't tell TiVo to file motions. They didn't give permission to do anything. They didn't tell the judge to do anything. All they said was that they weren't going to decide it.


As an analogy I used earlier about ice cream, when Tivo asked the appeals court to consider the equivalents issue, and when the court said no we could not help you on that because you did not bring it up during the trial, but you may brief on that issue back in the district court.

That is basically telling Tivo yes go ahead do so (because Tivo asked for it!), and if you do, and if necessary we can take up that issue in a later appeal by DISH, during the summary judgment proceeding.

One must read between the lines sometimes. I understand some of you refuse to do so, and that is also why you refuse to consider anything outside of the precise language written, but if this is the case, you are basically assuming the judges must treat all parties as if they are 2-year-olds, spell out each and every baby steps for them, and if the judges fail at any one of those baby steps, we will get totally lost.

It would be a real sad day if it ever would come to this.

I am not saying the language of an injunction should not be concise, to the contrary, it must be very concise in order to stand its ground. But what I am also saying is the purpose of an injunction is to prevent future occurence of a past wrong doing. And if such purpose can be assured being achieved, the goal of the injunction will be met. Now if the goal of the injunction is indeed met, then it will be unreasonable for a judge to find the offender in contempt of such injunction order.

You are free to disagree, even the judge can disagree, and then DISH can appeal.


----------



## Curtis52

jacmyoung said:


> But DISH sure has the right to dispute the way the judge handles his injunction, by ignoring the fact the hardware claim was reversed, and by refusing to hear DISH's new software claim, that is if the judge shall find DISH in contempt as Tivo asked for, then DISH may appeal the contempt ruling on the above ground.


Finding Dish in contempt for not complying with the injunction is *not a refusal* to start a new software hearing process. There can be an infinite number of contempt hearings in a trial. They don't have to all happen at the same time.


----------



## Curtis52

jacmyoung said:


> As an analgy I used earlier about ice cream, when Tivo asked the appeals court to consider the equivalents issue, and when the court said no we could not help you on that because you did not bring it up during the trial, but *you may brief on that issue back in the district court*.


Once again, the appeals court never said this. Also, I've noticed how you've morphed what you started out saying:



jacmyoung said:


> the appeals court did ask the parties to address the hardware issue but Tivo chose not to.


... into just a suggestion that they do it and now it's been morphed into just permission to do it.

None of that is true. The appeals court only said that they wouldn't decide it.


----------



## Greg Bimson

jacmyoung said:


> No the appeals court told Tivo they might request parties be briefed on the equivalents issue,


No, the Court of Appeals told the parties that the hardware verdict was being reversed and remanded because no one briefed the Court of Appeals' decision to change two claims, a decision which was only known once it was given. TiVo would have had to _predict_ the Court of Appeals was going to make two claims more restrictve, and file a brief for this possible outcome. I guess TiVo should have hired a seer.


jacmyoung said:


> As far as the injunction, as I said the appeals court either overturns it, or affirms it, they are not in the business to tell the judge how he should change his injunction to fit the new circumstances.


No. Look at the Court of Appeals' decision on Dish Network's Distants case.


----------



## jacmyoung

Curtis52 said:


> Finding Dish in contempt for not complying with the injunction is *not a refusal* to start a new software hearing process. There can be an infinite number of contempt hearings in a trial. They don't have to all happen at the same time.


I never said it is. The judge is free to find DISH in contempt while agree to look at the new device claim in a separate proceding.

What I am saying is it will be unusual, because the purpose of a contempt hearing is usually to determine the colorable difference of a new device claim. If the judge refuses to hear such claim, the proceeding should not be a contempt "hearing", rather a "contempt sentencing proceeding."

The definition of a "hearing" to me seems that evidence, no matter how good or bad, will be in fact heard.


----------



## jacmyoung

Greg Bimson said:


> No, the Court of Appeals told the parties that the hardware verdict was being reversed and remanded because no one briefed the Court of Appeals' decision to change two claims, a decision which was only known once it was given. TiVo would have had to _predict_ the Court of Appeals was going to make two claims more restrictve, and file a brief for this possible outcome. I guess TiVo should have hired a seer.No. Look at the Court of Appeals' decision on Dish Network's Distants case.


We just have to agree to disagree.


----------



## Greg Bimson

jacmyoung said:


> What I am saying is it will be unusual,


It isn't unusual at all. If I violate five points of an injunction, the party which has the injunction placed upon me can argue any or all of the five points, at any given or different time.


jacmyoung said:


> because the purpose of a contempt hearing is usually to determine the colorable difference of a new device claim


The purpose of a contempt hearing is to deterime if a party is following the court's orders. The court said to stop selling certain DVR's. It didn't (and will not) happen, according to DISH/SATS own communications. The court said to disable DVR functions on certain receivers. It didn't (and will not) happen, according to DISH/SATS own communications.


----------



## Greg Bimson

jacmyoung said:


> We just have to agree to disagree.


That just isn't possible. At least not how the Court of Appeals works.


----------



## Curtis52

jacmyoung said:


> What I am saying is it will be unusual, because the purpose of a contempt hearing is usually to determine the colorable difference of a new device claim. If the judge refuses to hear such claim, the proceeding should not be a contempt "hearing", rather a "contempt sentencing proceeding."


The contempt hearing will give Dish a chance to say whether or not they've disabled the DVRs. Judges usually like to hear both sides before assessing a fine.


----------



## Curtis0620

Curtis52 said:


> The contempt hearing will give Dish a chance to say whether or not they've disabled the DVRs. Judges usually like to hear both sides before assessing a fine.


Exactly. :joy: :joy: :joy: :joy:


----------



## jacmyoung

Greg Bimson said:


> It isn't unusual at all. If I violate five points of an injunction, the party which has the injunction placed upon me can argue any or all of the five points, at any given or different time.The purpose of a contempt hearing is to deterime if a party is following the court's orders. The court said to stop selling certain DVR's. It didn't (and will not) happen, according to DISH/SATS own communications. The court said to disable DVR functions on certain receivers. It didn't (and will not) happen, according to DISH/SATS own communications.


Unusual in that the judge will refuse to hear the evidence provided by the other side.


----------



## jacmyoung

Curtis52 said:


> The contempt hearing will give Dish a chance to say whether or not they've disabled the DVRs. Judges usually like to hear both sides before assessing a fine.


It will also give them a chance to argue the goal of the injunction has been met.


----------



## jacmyoung

Curtis0620 said:


> Exactly. :joy: :joy: :joy: :joy:


According to Curtis DISH has borrowed up to $900 million for such purpose, can you add more of the jumping joys please?

So good DISH is ready to settle and pay Tivo "through the nose", and my 625 will continue to work. Is everybody happy now?


----------



## Curtis0620

jacmyoung said:


> According to Curtis DISH has borrowed up to $900 million for such purpose, can you add more of the jumping joys please?
> 
> So good DISH is ready to settle and pay Tivo "through the nose", and my 625 will continue to work. Is everybody happy now?


As you wish. :joy: :joy: :joy: :joy: :joy: :joy:


----------



## Greg Bimson

jacmyoung said:


> Unusual in that the judge will refuse to hear the evidence provided by the other side.


TiVo: Your Honor, you signed an order forcing Dish Network and Echostar to disable DVR functions on certain DVR's. According to this letter Dish Network and Echostar sent to their agents, Dish Network and Echostar has not and will not shut down those DVR functions. We'd like them to be placed in contempt.
Judge Folsom: Dish Network and Echostar, why haven't you complied with the order of this court?
DISH/SATS: Well, the injunction no longer applies since we have this new software...
Judge Folsom: The injunction said to shut down DVR functions on specific models. Have you done so?
DISH/SATS: No, but...
Judge Folsom: I find you in contempt for defying the injunction order.

If Dish Network and Echostar want to have the new software deemed no longer infringing the injunction, all provisions of the injunction must be followed before it can be ruled that Dish Network and Echostar are no longer infringing. That is, stop selling and disable DVR functions on listed models and those not colorably different, then file an order to prove those receivers have new software that no longer infringes.


----------



## bobukcat

Greg Bimson said:


> TiVo: Your Honor, you signed an order forcing Dish Network and Echostar to disable DVR functions on certain DVR's. According to this letter Dish Network and Echostar sent to their agents, Dish Network and Echostar has not and will not shut down those DVR functions. We'd like them to be placed in contempt.
> Judge Folsom: Dish Network and Echostar, why haven't you complied with the order of this court?
> DISH/SATS: Well, the injunction no longer applies since we have this new software...
> Judge Folsom: The injunction said to shut down DVR functions on specific models. Have you done so?
> DISH/SATS: No, but...
> Judge Folsom: I find you in contempt for defying the injunction order.
> 
> If Dish Network and Echostar want to have the new software deemed no longer infringing the injunction, all provisions of the injunction must be followed before it can be ruled that Dish Network and Echostar are no longer infringing. That is, stop selling and disable DVR functions on listed models and those not colorably different, then file an order to prove those receivers have new software that no longer infringes.


I agree that that would be the most literal interpretation (but I doubt it would ever be that quick in that lawyers get paid to talk a lot  ), however I believe the judge still has a duty to see that justice is done and that undue harm does not befall either party because of his ruling. With that in mind I doubt he would be as close minded as you portray it, I could be wrong, but any judge that wants to be "promoted" to a higher bench isn't going to knee-jerk a decision only to have it found that he was wrong and millions of people suddenly lost something they really, really like - thereby causing significant financial harm to one party. Again, I'm not claiming that the new software definitely doesn't infringe, I'm just suggesting the judge has more than one reason to consider if it does or not before ordering the boxes shut down. If he allows the boxes to remain in use while it's decided the risk is all on E*'s side, if it's still found to infringe they're just paying more and more penalties to Tivo. If it's not, then the penalties would all be calculated up to the point they installed the new software. Then again, this is the same judge who thought the injuction should not have been stayed during the appeal process, so what do I know?!?

There does seem to be a question about why they haven't shut down the one model (was it the 942???) that they said can no longer be sold because it didn't receive new (supposedly) non-infringing software.


----------



## bobukcat

Curtis52 said:


> The patent for the supposedly noninfringing software was filed 08-29-06. They must have been working on it long before then. No mention at trial or during injunction formulation or when asking Judge Folsom for a stay or at any time during the appeal. Wow. That's either incompetence that strains credulity or evidence that noninfringing software doesn't really exist. It sure isn't reason for a stay now that they've lost.


Or perhaps they felt that mentioning new "non-infringing" software was being built damaged their position that they were not infringing before - that's the way I view it.


----------



## Greg Bimson

bobukcat said:


> I agree that that would be the most literal interpretation (but I doubt it would ever be that quick in that lawyers get paid to talk a lot ), however I believe the judge still has a duty to see that justice is done and that undue harm does not befall either party because of his ruling.


But then we get back to what an injunction is. An injunction is issued because the guilty party is found to have placed undue, possibly willful harm on another. An injunction does not live to be modified at a whim. And once it is in full force and effect, it simply exists as the elephant in the room. Agitate the elephant, and the sitting judge will gore you.


----------



## Curtis52

bobukcat said:


> If he allows the boxes to remain in use while it's decided the risk is all on E*'s side, if it's still found to infringe they're just paying more and more penalties to Tivo. If it's not, then the penalties would all be calculated up to the point they installed the new software.


This same rationale could be used ad infinitum so that the injunction would never be enforced as long as Dish claims to have yet another "noninfringing software".

Money for damages doesn't solve the problem.

Here is what Judge Folsom said when he denied the stay during the appeal:

"Plaintiff has demonstrated both that it continues to suffer irreparable harm in the absence of an injunction and that *there is no adequate remedy at law*."

"The availability of the infringing products leads to loss of market share for Plaintiff's products. Loss of market share in this nascent market is a key consideration in finding that Plaintiff suffers irreparable harm"

"The balance of hardships weighs in favor of granting a permanent injunction. As 
discussed, Plaintiff faces ongoing irreparable injury as Defendants' infringement continues. As a relatively new and small company, every day of Defendants' infringement affects Plaintiff's business. And, as discussed above, Plaintiff's primary product, its DVRs, are those with which Defendants' infringing products directly compete. The harm caused by such infringement weighs heavily in favor of an injunction.

Enjoining Defendants will likely cause some harm - but *on balance, Defendants will 
endure less harm than Plaintiff*. The infringing products do not form the core of Defendants' satellite transmission business. And the injunction will not interfere with Defendants' satellite transmission."


----------



## jacmyoung

Greg Bimson said:


> ...If Dish Network and Echostar want to have the new software deemed no longer infringing the injunction, all provisions of the injunction must be followed before it can be ruled that Dish Network and Echostar are no longer infringing. That is, stop selling and disable DVR functions on listed models and those not colorably different, then file an order to prove those receivers have new software that no longer infringes.


You sure talk like a judge.

There is no need to "file an order to prove" new device non-infringing, during a contempt hearing, a big part of it is to determine if the new device is more than colorably different or not. That is what a part of a contempt hearing usually about. No, during a contempt hearing there is no need to go through the trouble to determine if the new device is non-infringing or not, in fact the law disallows the judge to determine infringement issue during a contempt hearing, only the "colorable difference" issue.

No, Tivo only needs to file a request (which they did) to trigger a contempt hearing, and DISH only needs to present the new device evidence to trigger a determination process of colorable difference issue during that contempt hearing.


----------



## jacmyoung

Curtis52 said:


> ...Money for damages doesn't solve the problem...


Of course it is true if the devices sold are still infringing and continued to be allowed sold, but if the devices sold are no longer infringing, then yes damages (money) could be the only way to solve the past problem.


----------



## scooper

Greg - did you even CONSIDER that the judge has the authority to modify the injunction?


----------



## spear61

Could the dealer alert regarding the changeout of MPEG 2 HD boxes to MPEG 4 be related to the TIVO problem? My 942 is MPEG2. Or are they just saving bandwidth?


----------



## scooper

just saving bandwidth. Not related (at least directly) to this case at all.


----------



## jacmyoung

Let me try a hypothetical here again. Let’s say a device has been used to feed some animals, and such device has been found to have infringed and the judge ordered the devices no longer be operated nor sold. Let’s say the offender found a perfect way to get around that patent and produced a new device that can take the infringing product’s place and they can prove it to the judge what they did was true. And the offender also paid all damages assessed for its wrong doing in the past.

Except one problem, they can’t remove the shells of such device from the environment it was placed, only the inside content may be replaced, because the animals would refuse to be fed from a different looking, smelling and not familiar device. So they went ahead replaced all the inside components of all offending units, but had to leave the outside boxes as is, with the same look, feel and smell. Other than that, the “new device” is proven non-infringing.

Is it reasonable to ask the judge to allow the continued use of such new devices given the special circumstances involved? Or will the judge insist all new devices be removed and replaced with different looking new devices even if it means the animals will all have to suffer from starvation?

My guess is you will all want the judge to replace all the units with the ones the plaintiff produced, and only doing so may literally satisfy the language of the injunction, but wait if the animals may suffer from starvation because the new devices will not look, smell and feel the same. What is a judge to do?

Can Tivo animals have in their hearts to give the DISH animals a break?


----------



## Greg Bimson

jacmyoung said:


> No, Tivo only needs to file a request (which they did) to trigger a contempt hearing, and DISH only needs to present the new device evidence to trigger a determination process of colorable difference issue during that contempt hearing.


Yes and no.

TiVo filed a request to trigger a contempt hearing. It is a guarantee that will occur. But the contempt hearing, which will more than likely only address that DISH/SATS have not stopped selling nor shut down DVR functions on receivers, will not be the place to bring up new evidence. TiVo has not had a chance to evaluate many different issues with the software.

Another contempt hearing regarding the software may take place at a later date.


scooper said:


> Greg - did you even CONSIDER that the judge has the authority to modify the injunction?


Sure. Modifying the injunction would require hearings. It would also be a hearing that generally takes place before the injunction becomes active, in effect and in full force.


----------



## James Long

Curtis52 said:
 

> jacmyoung said:
> 
> 
> 
> And that leads to my response to Curtis as far as he did not agree that the appeals court suggested Tivo brief on the use of the equivalent tool, yes the court suggested such, becasue Tivo asked the court to use that tool, while the court said it was too late to use that tool for that appeal, go ahead brief on it and get back to us.
> 
> 
> 
> Quote where the appeals court told TiVo to brief on it. This ought to be good.
Click to expand...

The appeals court reversed and remanded that part of case back to the lower court ... the lower court set a _STATUS HEARING_ and asked Tivo to set the agenda as to what issues they wanted to be addressed. Tivo set the agenda ignoring the hardware claims ... apparently the hardware claims are unimportant now?

I don't see where the appeals court directed Tivo specifically ... but they did remand the issue and Tivo SHOULD have raised it as one of the issues that needs to be dealt with in this case.

As for raising it later ... with this pro-Tivo judge it will probably be possible - but it shouldn't be. Tivo had the opportunity to set the agenda. Coming back later with an "oh, we forgot the hardware claims" should not be allowed.


----------



## phrelin

TiVo states: "EchoStar cannot simply ignore the Court's unambiguous Order". Yeah, right.

This is an order that states: "and all other products _that are only colorably different therefrom_ in the context of the Infringed Claims"

IMHO that phrase is a barn door of ambiguity. "Colorably" implies at some level intent to deceive. If Dish says they have complied with the order in regard to "all other products", a detailed evidentiary process is essential to the determination whether these products are "only colorably different"? With that ambiguity, the Judge leaves himself wide open were he to just assume that the software in a 722 is "only colorably different".

Unambiguous would read something like "and all other recording products until such time it has been demonstrated to the satisfaction of the court that a particular product does not infringe." No ambiguity - an order to shut all your DVR's down Dish Network until such time as I, the Judge, determine a product doesn't infringe.

Clever legal terms like "colorably different" may seem useful, but they create ambiguity.


----------



## Curtis52

phrelin said:


> IMHO that phrase is a barn door of ambiguity. "Colorably" implies at some level intent to deceive. If Dish says they have complied with the order in regard to "all other products", a detailed evidentiary process is essential to the determination whether these products are "only colorably different"? With that ambiguity, the Judge leaves himself wide open were he to just assume that the software in a 722 is "only colorably different".


I haven't come across anyone that thinks the judge will apply the injunction to the unnamed models without a hearing. He may impose a preliminary injunction on those models until there is a hearing though. The wording is to put Dish on notice concerning prohibited behavior lest they get the idea that they can pull off some sleight of hand. They can't come back and say "oh, we didn't know".


----------



## jacmyoung

Greg Bimson said:


> Yes and no.
> 
> TiVo filed a request to trigger a contempt hearing. It is a guarantee that will occur. But the contempt hearing, which will more than likely only address that DISH/SATS have not stopped selling nor shut down DVR functions on receivers, will not be the place to bring up new evidence. TiVo has not had a chance to evaluate many different issues with the software.
> 
> ...


Actually it is not totally up to Tivo to insist what the judge should consider and what not to in the contempt proceeding, not to mention Tivo indeed made the new software issue part 3 of its 3-part contempt argument. When DISH presents its new software evidence in that contempt hearing the judge should look at it even if Tivo never mentioned it, much less when Tivo did mention it.

The fact Tivo did not have a chance to evaluate the new evidence is irrelavent, the contempt hearing will be the venue in which all parties will have the opportunity to evaluate the new evidence.


----------



## Greg Bimson

jacmyoung said:


> Actually it is not totally up to Tivo to insist what the judge should consider and what not to in the contempt proceeding, not to mention Tivo indeed made the new software issue part 3 of its 3-part contempt argument. When DISH presents its new software evidence in that contempt hearing the judge should look at it even if Tivo never mentioned it, much less when Tivo did mention it.
> 
> The fact Tivo did not have a chance to evaluate the new evidence is irrelavent,


How can DISH/SATS, which has software, completely understands what it does, and has not presented full disclosure to its opponent, get a chance present only their version of the story?

And people claim that I am biased? TiVo doesn't even get a proper chance to evaluate DISH/SATS in their defense. Wow.


----------



## phrelin

Curtis52 said:


> I haven't come across anyone that thinks the judge will apply the injunction to the unnamed models without a hearing. He may impose a preliminary injunction on those models until there is a hearing though. The wording is to put Dish on notice concerning prohibited behavior lest they get the idea that they can pull off some sleight of hand. They can't come back and say "oh, we didn't know".


So what portion of the injunction is likely not subject to a hearing if Dish says it is complying? Hasn't TiVo at least cracked the barn door regarding the alleged new software with its 1st Set of Interrogatories, creating an opening letting enough light inside the barn to make a wise judge uncomfortable with turn-off orders and contempt judgements? IMHO the Judge has been advised by TiVo that in the end the issue for them is solely how much money he needs to extract from Echostar's full bank accounts and put into TiVo's bleeding bank accounts.

Of course, maybe he wants to put Charlie in jail. Who knows?


----------



## dgordo

James Long said:


> The appeals court reversed and remanded that part of case back to the lower court ... the lower court set a _STATUS HEARING_ and asked Tivo to set the agenda as to what issues they wanted to be addressed. Tivo set the agenda ignoring the hardware claims ... apparently the hardware claims are unimportant now?
> 
> I don't see where the appeals court directed Tivo specifically ... but they did remand the issue and Tivo SHOULD have raised it as one of the issues that needs to be dealt with in this case.
> 
> As for raising it later ... with this pro-Tivo judge it will probably be possible - but it shouldn't be. Tivo had the opportunity to set the agenda. Coming back later with an "oh, we forgot the hardware claims" should not be allowed.


You don't see where the appeals court directed tivo to address the hardware claim because they didn't do so. Why do you say that Tivo SHOULD have raised the hardware issue? They can raise the issue here, or after the contempt hearing at any point up until a final order is issued by the circuit court or they can ignore the issue. The judge may be pro-tivo but this is unimportant, these are the rules of civil procedure.


----------



## Curtis52

phrelin said:


> So what portion of the injunction is likely not subject to a hearing if Dish says it is complying? Hasn't TiVo at least cracked the barn door regarding the alleged new software with its 1st Set of Interrogatories, creating an opening letting enough light inside the barn to make a wise judge uncomfortable with turn-off orders and contempt judgements?


I'm not sure I understand the question but TiVo is requesting a contempt hearing on the *named infringing DVRs* that have not been disabled and/or are still being sold. TiVo says that is strictly a legal issue. No evidence should be needed. This is where the judge asks Dish whether they have shut down the DVRs.

"TiVo is prepared to make a motion now for an Order To Show Cause Regarding Contempt with respect to EchoStar's failure to disable the DVR functionality and its placement of new infringing DVRs (grounds one and two above)."

"While TiVo believes that EchoStar is in contempt on all three grounds, the first two grounds appear to be *primarily legal issues*. TiVo can present these right away."

The third grounds concerns the alleged new software and TiVo is only asking for Dish to produce documents and TiVo will provide an analysis at some future date. The new software is off the table for the contempt hearing in TiVo's contempt motion request.

As far as the comfort level, I think the judge is on even firmer ground than when he denied the stay since the appeals court has backed him up.

He wrote this prior to TiVo's win:

"Plaintiff has demonstrated both that it continues to suffer *irreparable harm in the absence of an injunction* and that there is no adequate remedy at law. "

"Although the injunction will likely result in some degree of customer loss and will impact Defendants' ability to compete in the market, *Defendants will not be irreparably harmed*. Again, Defendants' core business is not the supply of DVRs. Defendants have not demonstrated that an injunction on the infringing products would have a severe financial impact on their core business or will lead to loss of employees. Defendants' authorized retailers will still be able to sell and service Defendants' non-infringing products. Conversely, absent an injunction, Plaintiff faces ongoing irreparable injury"


----------



## jacmyoung

Greg Bimson said:


> How can DISH/SATS, which has software, completely understands what it does, and has not presented full disclosure to its opponent, get a chance present only their version of the story?
> 
> And people claim that I am biased? TiVo doesn't even get a proper chance to evaluate DISH/SATS in their defense. Wow.


You again put words in my mouth. No one said Tivo does not get a proper chance to evaluate DISH's defense, they will get it in the same contempt proceeding that DISH is allowed to provide its new evidence. The judge will allow time for parties to do so. The reason a contempt hearing can be short is because during such proceeding, only the issue of "colorable difference" may be evaluated, not the new device infringement issue. As such parties do not have to go through a lengthy discovery process, rather a relatively brief one.


----------



## dgordo

jacmyoung said:


> The reason a contempt hearing can be short is because during such proceeding, only the issue of "colorable difference" may be evaluated, not the new device infringement issue. As such parties do not have to go through a lengthy discovery process, rather a relatively brief one.


What is your source for this?


----------



## jacmyoung

James Long said:


> ...I don't see where the appeals court directed Tivo specifically ... but they did remand the issue and Tivo SHOULD have raised it as one of the issues that needs to be dealt with in this case....


I never said the appeals court "directed" Tivo to brief the hardware issue, they only said Tivo may do so, the reason I said appeals court hinted Tivo should do so was because it was Tivo who asked the appeals court to consider the equivalents issue but the court refused to do so, but then said Tivo, you may revisit such issue when the case is back in the district court. And had Tivo did so to seek a summary judgment, DISH will certainly appeal, and here is where the appeals court will be able to consider such issue by Tivo which was previously denied by the court.

The train of thought above led to my statement that the appeals court "encouraged" Tivo to go that route to achieve the goal Tivo sought in the first place, that is how to have the same court consider the equivalents issue. Tivo was not successful in seeking it the first time, the appeals court showed Tivo how to be successful next time.


----------



## Greg Bimson

jacmyoung said:


> No one said Tivo does not get a proper chance to evaluate DISH's defense, they will get it in the same contempt proceeding that DISH is allowed to provide its new evidence.


What contempt proceeding? There is a request for a contempt hearing, on the two points that DISH/SATS is not following the injunction. Those are primarily legal issues. There hasn't been a request for a contempt hearing on software. Are you expecting DISH to ask for a "contempt hearing" to bring up the software? TiVo hasn't requested one.


----------



## Curtis52

Greg Bimson said:


> Are you expecting DISH to ask for a "contempt hearing" to bring up the software? TiVo hasn't requested one.


Maybe Dish will ask for a contempt hearing against themselves.


----------



## dgordo

Greg Bimson said:


> What contempt proceeding? There is a request for a contempt hearing, on the two points that DISH/SATS is not following the injunction. Those are primarily legal issues. There hasn't been a request for a contempt hearing on software. Are you expecting DISH to ask for a "contempt hearing" to bring up the software? TiVo hasn't requested one.


You're just trying to show how smart you are by using semantics.


----------



## spear61

If you were talking about a herd of cows you might say "look at those cows" but if it was a mixed herd you might say "look at those brown cows."

Seems to me that Dish can argue that the injunction was "gray" in that it can be interpreted to disable not all DVRs but only "infringing" DVRs and a reasonable person would assume that if they became "non-infinging" before the Appeals Court sent down its decison, Dish would get the benefit of the doubt on the injunction. 

Now, if they are really continuing to be infringing, it could get really ugly.


----------



## James Long

dgordo said:


> Why do you say that Tivo SHOULD have raised the hardware issue?


Tivo was specifically asked by the court to set an agenda for this May 30th meeting including their concerns. Are they not concerned about the hardware claims? They should raise ALL of their concerns ... get them ALL on the table ... so they don't have to pull the "oops, we forgot to mention" trick later.


----------



## jacmyoung

Greg Bimson said:


> What contempt proceeding? There is a request for a contempt hearing, on the two points that DISH/SATS is not following the injunction. Those are primarily legal issues. There hasn't been a request for a contempt hearing on software. Are you expecting DISH to ask for a "contempt hearing" to bring up the software? TiVo hasn't requested one.


Why do you keep forgeting there was a 3rd point in Tivo's contempt filing? That was the new software point.

When DISH responds to Tivo's contempt filing with their new device evidence, the judge must consider it during that contempt hearing, because that is what the filings are about, to provide arguments for judge to consider.

The judge does not have to buy any of the points, and still find DISH in contempt, and if so DISH will likely use the same points in appeal, in addition to maybe any other points that may arise.

The judge of course can also buy into DISH's points, if so he has the power to do a few things with regard to his injunction. He can do nothing while continue with his discovery on the new software infringement issue, in such case DISH suffers no consequences while such discovery takes place. He can modify his injunction to reflect the changing verdict after the appeals court rendered its opinion and after Tivo failed to respond in its filing. He can also lift the current injunction all together if he sees compelling reason to do so, and work on a different injunction to possibly include all DISH DVR's as requested by Tivo, while the discovery of the new software infringement issue gets on its own course.

Meanwhile he can work in parrallel to resolve the damages request by Tivo.

Not that he will do any of the above, just that the judge has the power to do any of the above if he chooses to.

What will be interesting to see is the anticipated DISH's filing on Friday. I will be looking for case laws that DISH may use to support their response to Tivo's filing, and maybe even some of their own counter points. Because that is where you may try to speculate if DISH has a solid ground to stand on, or lack of it.


----------



## phrelin

Curtis52 said:


> "Although the injunction will likely result in some degree of customer loss and will impact Defendants' ability to compete in the market, *Defendants will not be irreparably harmed*. Again, Defendants' core business is not the supply of DVRs. Defendants have not demonstrated that an injunction on the infringing products would have a severe financial impact on their core business or will lead to loss of employees. Defendants' authorized retailers will still be able to sell and service Defendants' non-infringing products. Conversely, absent an injunction, Plaintiff faces ongoing irreparable injury"


This is curious.

In 2006 Echostar probably could not demonstrate that an injuction would have a severe financial impact on their core business. It would take a 20 minute presentation by Dish Network in 2008 to demonstrate that it would.

Curiously, TiVo's situation at this point could be best handled with an infusion of money - lots of it - which Echostar has.

Does the Judge in a federal case like this lack the ability to do the logical - give Echostar the choice of turning it all off permanently beginning tomorrow or paying...say...an additional $300 million now (and growing daily) to TiVo?

All other options seem to me to harm TiVo and Dish Network customers more than Echostar. But what do I know?


----------



## dgordo

James Long said:


> Tivo was specifically asked by the court to set an agenda for this May 30th meeting including their concerns. Are they not concerned about the hardware claims? They should raise ALL of their concerns ... get them ALL on the table ... so they don't have to pull the "oops, we forgot to mention" trick later.


Of course they are concerned about the hard ware claims but the court did not say that they need to address every issue. It would certainly be more convenient to get the issue resolved quickly but tivo has no obligation to do so. IMO they see the hardware claim as something they can hold over dish so it is in their interest to wait on that claim. They don't even need to pretend like they forgot, the have the rules on their side here.


----------



## Greg Bimson

jacmyoung said:


> Why do you keep forgeting there was a 3rd point in Tivo's contempt filing? That was the new software point.


There wasn't a third point in the "contempt" filing. There was a third point, wihch describes in detail that TiVo needs discovery to understand what the new software is. TiVo has not filed contempt charges over the new software, nor do they have to.


jacmyoung said:


> What will be interesting to see is the anticipated DISH's filing on Friday. I will be looking for case laws that DISH may use to support their response to Tivo's filing, and maybe even some of their own counter points. Because that is where you may try to speculate if DISH has a solid ground to stand on, or lack of it.


True. In the distants, I thought DISH may have had a leg to stand on, because when the broadcasters asked the Court of Appeals to modify Judge Dimitrouleas' injunction, Fox was not in on that appeal. I thought it was possible that Fox could not "ask" for the permanent injunction to be issued. I was incorrect on that point, but I was still correct that the injunction must be issued.


phrelin said:


> All other options seem to me to harm TiVo and Dish Network customers more than Echostar. But what do I know?


Well, Dish Network was kind enough to issue a press release stating that customers should not worry; DVR functionality will always be fine. So if DISH/SATS is more than likely willing to incur huge fines for contempt for refusing to shut down certain DVR's, possibly more than what a settlement would cost, then the actual pain will be directed at DISH/SATS.


----------



## peak_reception

Let's look at what TiVo specifically asks for in their agenda:

1. *A Contempt of Court hearing* at the earliest possible date. And "if necessary" permission to request [motion] that the judge make EchoStar prove it is not in contempt for continuing to use infringing, now modified, software.

2. *Further Discovery* for both the "modified" software and in order to determine additional damages during the stay of the injunction.

Yes? No?


----------



## peak_reception

TiVo's agenda is structured as follows: 

Introduction (main points) 

A. Background 

B. Topics of Discussion 

1. Enforcement of the Permanent Injunction 

2. Determination of Damages (during stay of said injunction)

Interrogatories etc.


----------



## Herdfan

James Long said:


> Are they not concerned about the hardware claims? They should raise ALL of their concerns ... get them ALL on the table ... so they don't have to pull the "oops, we forgot to mention" trick later.


Maybe, but why should they try and force the hardware claim under the tougher summary judgment standards instead of waiting to see how things play out. If for some reason they lose the software issue, they can get a retrial from a jury with a lesser standard. Makes perfect sense.

And like dgordo and others including myself have brought up, why should TiVo not keep the hardware claim in its back pocket? I understand the pro-DISH folks wanting it out and over with, but TiVo may just like to keep it as a bargaining chip. It is their call.


----------



## peak_reception

Unfortunately for them, TiVo's agenda is not nearly as effective as it could have / should have been.

The most important part is the opening. TiVo does ask for the Contempt of Court hearing + additional Discovery, but it's clumsy. Look for example at this ramble of a sentence:

• Permission to serve limited discovery to obtain additional information before
determining the damages TiVo sustained during the stay of the injunction, and, if
necessary, bringing a motion for an order to show cause why EchoStar is not in
contempt for the continuing use of the Infringing Products, changed only by
downloading modified, but still infringing, software (and new EchoStar products that
are only colorably different).

It starts out on discovery and damages (as it should) but then rambles back to Contempt even though that was the topic in the first all-important bullet point as follows:

• A hearing at the earliest possible date to determine whether EchoStar should be held
in contempt for its failure to disable the DVR functionality in the Infringing Products
and for its placement of new infringing DVRs (and new EchoStar products that are
only colorably different); and [then bullet point two]


----------



## James Long

Greg Bimson said:


> In the distants, I thought DISH may have had a leg to stand on, because when the broadcasters asked the Court of Appeals to modify Judge Dimitrouleas' injunction, Fox was not in on that appeal. I thought it was possible that Fox could not "ask" for the permanent injunction to be issued. I was incorrect on that point, but I was still correct that the injunction must be issued.


Don't let your incorrectness with the distants case lead to incorrectness here. Fox's request for the injunction was irrelevant not wrong, but understandable since the judge seemed to be extremely slow in issuing the injunction. They didn't need to ask for that injunction ... it was a remedy specified by law.

In this case there is no specific injunction required by law ... it could have been written in many different ways. And can be rewritten in many different ways as well.


----------



## Curtis52

peak_reception said:


> Let's look at what TiVo specifically asks for in their agenda:
> 
> 1. *A Contempt of Court hearing* at the earliest possible date. And "if necessary" permission to request [motion] that the judge make EchoStar prove it is not in contempt for continuing to use infringing, now modified, software.
> 
> 2. *Further Discovery* for both the "modified" software and in order to determine additional damages during the stay of the injunction.
> 
> Yes or no?


That looks about right.

"_With respect to EchoStar's modified software, TiVo requests permission to serve limited 
discovery to obtain additional technical information before bringing a motion on ground 
number three._"

They need this information before filing a contempt motion to add the unnamed models to the injunction. I'm not sure they need the information for initial determination of post-trial damages. Any additional damages due to the unnamed models can be added if and when Dish is found in contempt on them.


----------



## jacmyoung

dgordo said:


> ... IMO they see the hardware claim as something they can hold over dish so it is in their interest to wait on that claim. They don't even need to pretend like they forgot, the have the rules on their side here.


IMO of course it is hoping for what you want it to be, nothing wrong with that. More than likely it was because Tivo understood also what the appeals court said why they could not consider the equivalents issue, and Tivo realized to have the courts reconsider such issue in absence of a jury would be very risky, they decided not to seek it so to have the potential to make things worse.

If they tought the hardware issue could be easily used against DISH they would have used it, because from their filing it was obvious they did not intent to leave any stone unturned.


----------



## jacmyoung

Greg Bimson said:


> ... then the actual pain will be directed at DISH/SATS.


And if such pain DISH is willing to take is actually what Curtis was hoping by mentioning that $900 million DISH just borrowed, then may I have the courage also to speculate a big chunk of that $900 million will be used to replace 625's with 722s, in the event they must turn off the DVRs? Did I mention I have a 625?

Now is it strange if I say I can't wait for my 625 to be turned off? Of course I am only messing around.


----------



## peak_reception

My point isn't to nitpick semantics. My point is that TiVo's agenda (as submitted) lacks clarity and thrust. I think it's the main reason why people on this board are having so much trouble figuring out exactly what the agenda is beyond requesting Contempt of Court and asking for further Discovery. Greg actually makes more sense of TiVo's filing than TiVo's counsel does  Just managing to get in a request for contempt plus a request for further discovery does not equal brilliance though.

The biggest flaw, throughout the document, is the constant mixing together of Contempt, "new" Software, Discovery, and Damages. They are separate issues. Yes they touch on each other but the all-into-the-blender treatment TiVo gives them only dilutes and confuses the points they are trying to make.

TiVo could have more effectively presented their case as follows:

I. Introduction (focused main points, forcefully crafted)

II. Contempt of Court

III. The "new" Modified Software

IV. Discovery

V. Damages

Interrogatories etc.

And was the "Background" section even necessary? Judge Folsom knows the background. EchoStar knows the background. Maybe they just wanted to put their own spin on what's come before. Ok, but make it pithy.

As I said before, Judge Folsom isn't going to rule in this case based on who makes the more elegant arguments. My point is simply that when the stakes are this high there is no excuse for making less than your best case. TiVo has made less than their best case in my opinion.

I'm looking forward to seeing how well DISH presents.


----------



## Curtis52

jacmyoung said:


> And if such pain DISH is willing to take is actually what Curtis was hoping by mentioning that $*900* million DISH just borrowed,


Please stop making errors. Dish borrowed $750 million not $900 million.


----------



## jacmyoung

Greg Bimson said:


> There wasn't a third point in the "contempt" filing. There was a third point, wihch describes in detail that TiVo needs discovery to understand what the new software is. TiVo has not filed contempt charges over the new software, nor do they have to....


If this is true, then Tivo should not have asked for discovery in a contempt argument, they can ask for it in a separate topic, in the damages topic, or wait for the next round, like wait for the next round to introduce the hardware issue.

Read very carefully the words used in the point #3, "even if..." DISH is still in contempt, why? Because according to Tivo they saw the code and they believed it was still infringing. By doing so Tivo was pre-emptively setting itself ready to argue that #3 point, in the event #1 and #2 are not enough.

You see Tivo does recognize the likelihood of the new device discussed in the contempt proceeding, even if they hoped the #1 and #2 should be enough. If #1/#2 were certain, there was no reason to introduce #3 to cover all bases, at least not in their contempt topic.


----------



## jacmyoung

Curtis52 said:


> Please stop making errors.


Then please stop implying it or at least clarify yourself, so I will have no chance to make that error.


----------



## Curtis52

jacmyoung said:


> If #1/#2 were certain, there was no reason to introduce #3 to cover all bases, at least not in their contempt topic.


#1 and #2 will shut down the named infringing models. Later on #3 will shut down the rest.


----------



## jacmyoung

peak_reception said:


> My point isn't to nitpick semantics. My point is that TiVo's agenda (as submitted) lacks clarity and thrust. I think it's the main reason why people on this board are having so much trouble figuring out exactly what the agenda is beyond requesting Contempt of Court and asking for further Discovery. Greg actually makes more sense of TiVo's filing than TiVo's counsel does  Just managing to get in a request for contempt plus a request for further discovery does not equal brilliance though.
> 
> The biggest flaw, throughout the document, is the constant mixing together of Contempt, Discovery, and Damages. They are three separate issues. Yes they touch on each other but the all-into-the-blender treatment TiVo gives them only dilutes and confuses the points they are trying to make.
> 
> TiVo could have more effectively presented their case as follows:
> 
> I. Introduction (focused main points, forcefully crafted)
> 
> II. Contempt of Court
> 
> III. The "new" Modified Software
> 
> IV. Discovery
> 
> V. Damages
> 
> Interrogatories etc.
> 
> And was the "Background" section even necessary? Judge Folsom knows the background. EchoStar knows the background. Maybe they just wanted to put their own spin on what's come before. Ok, but make it pithy.
> 
> As I said before, Judge Folsom isn't going to rule in this case based on who makes the more elegant arguments. My point is simply that when the stakes are this high there is no excuse for making less than your best case. TiVo has made less than their best case in my opinion.
> 
> I'm looking forward to seeing how well DISH presents.


And because of my understanding and belief, I do not think Tivo was clumsy in their filing. At this stage, in fact at any stages of a trial, while there may be limitations of discussions what each phase of the trial may allow, often times other discussions that any one party does not wish to be discussed, nevertheless may be allowed in the discussions.

For that reason Tivo can not afford not to consider other topic of discussion in any of its request, that is why they themselves included 3 discussions in the second topic, not 2.


----------



## jacmyoung

Curtis52 said:


> #1 and #2 will shut down the named infringing models. Later on #3 will shut down the rest.


There is no "later on" for #3, it is introduced along side of #1 and #2, so it will be discussed along side of #1 and #2. Tivo did not even ask for #3 to be discussed "later on."


----------



## peak_reception

Curtis52 said:


> That looks about right.
> 
> "_With respect to EchoStar's modified software, TiVo requests permission to serve limited
> discovery to obtain additional technical information before bringing a motion on ground
> number three._"
> 
> They need this information before filing a contempt motion to add the unnamed models to the injunction. I'm not sure they need the information for initial determination of post-trial damages. Any additional damages due to the unnamed models can be added if and when Dish is found in contempt on them.


So they don't have to bundle their contempt motions? They can first ask for contempt on the "old" software (already in the injunction), at the earliest possible date. And then after discovery and further proceedings, file a motion down the road for contempt on the "new" software as constituting mere colorable difference?

If Judge Folsom agrees then TiVo is in a very strong position. But EchoStar will likely argue (tomorrow) that the software issue is not separable like that. If Judge Folsom agrees then he can modify his own injunction to allow for settlement of the "new" software issue before enforcing the injunction. I don't think he will but he could.


----------



## peak_reception

jacmyoung said:


> And because of my understanding and belief, I do not think Tivo was clumsy in their filing. At this stage, in fact at any stages of a trial, while there may be limitations of discussions what each phase of the trial may allow, often times other discussions that any one party does not wish to be discussed, nevertheless may be allowed in the discussions.
> 
> For that reason Tivo can not afford not to consider other topic of discussion in any of its request, that is why they themselves included 3 discussions in the second topic, not 2.


Huh? I'm not sure what you're trying to say here.


----------



## Curtis52

peak_reception said:


> So they don't have to bundle their contempt motions? They can first ask for contempt on the "old" software (already in the injunction), at the earliest possible date. And then after discovery and further proceedings, file a motion down the road for contempt on the "new" software as constituting mere colorable difference?


TiVo can file a motion for contempt any time they want to. They can put whatever they want to in the motion. They have included rationale as to why they want to file only the #1/#2 motion immediately.



peak_reception said:


> If Judge Folsom agrees then TiVo is in a very strong position. But EchoStar will likely argue (tomorrow) that the software issue is not separable like that. If Judge Folsom agrees then he can modify his own injunction to allow for settlement of the "new" software issue before enforcing the injunction. I don't think he will but he could.


I agree.


----------



## peak_reception

jacmyoung said:


> There is no "later on" for #3, it is introduced along side of #1 and #2, so it will be discussed along side of #1 and #2. *Tivo did not even ask for #3 to be discussed "later on.*"


 I thought that was true too but later in the "Discussion" section of the agenda they do separate the two, though inelegantly. It could've / should've been much more explictely laid out. Check out my first post on the next page for the passages which show they do ask for the two softwares to be dealt with separately.


----------



## Curtis52

jacmyoung said:


> There is no "later on" for #3, it is introduced along side of #1 and #2, so it will be discussed along side of #1 and #2. Tivo did not even ask for #3 to be discussed "later on."


You seem to be confusing the May 30 meeting with the contempt hearings later on. The May 30 meeting will discuss everything in TiVo's agenda. The contempt hearings at some future dates will focus on what is in the contempt motions that TiVo will file. The immediate contempt motion will cover #1 and #2 and will seek to shut down the named infringing models. A later contempt motion will seek to shut down the newer models.


----------



## jacmyoung

Curtis52 said:


> You seem to be confusing the May 30 meeting with the contempt hearings later on. The May 30 meeting will discuss everything in TiVo's agenda. The contempt hearings at some future dates will focus on what is in the contempt motions that TiVo will file. The immediate contempt motion will cover #1 and #2 and will seek to shut down the named infringing models. A later contempt motion will seek to shut down the newer models.


You seem to insist the new software may not be discussed in that later contempt proceeding, even though Tivo made it #3 of its 3-part DISH in contempt discussion topic itself in its initial filing.


----------



## jacmyoung

peak_reception said:


> Huh? I'm not sure what you're trying to say here.


Tivo was not clumsy, it was necessary to touch on all possible issues that WILL arise in a particular proceeding. And since Tivo expected the #3 issue will likely be discussed in the contempt proceeding, it decided to include #3 in its contempt topic.

Had Tivo been absolutely sure that judge WILL not discuss #3 in the contempt proceeding Tivo was asking for, Tivo would not have included #3 in it. Tivo would have as you suggested included the #3 issue in a separate topic or request so it may be discussed in a separate proceeding.


----------



## Curtis52

jacmyoung said:


> You seem to insist the new software may not be discussed in that later contempt proceeding, even though Tivo made it #3 of its 3-part DISH in contempt discussion topic itself in its initial filing.


All topics in the agenda will be touched on at the May 30 meeting. The judge wants to get the "big picture" before motions start coming in piecemeal.

TiVo made it clear that the motion they submit for the first contempt hearing will only be for grounds 1 and 2. They aren't ready to proceed for a motion for a contempt hearing on the newer models.


----------



## jacmyoung

Curtis52 said:


> All topics in the agenda will be touched on at the May 30 meeting. The judge wants to get the "big picture" before motions start coming in piecemeal.
> 
> TiVo made it clear that the motion they submitted for the first contempt hearing will only be for grounds 1 and 2. They aren't ready to proceed for a motion for a contempt hearing on the newer models.


Yes, but as I said earlier, not all discussions must be under the contempt topic heading. If you were correct, Tivo would have no reason to introduce #3 in the contempt topic it raised. Tivo could easily move the #3 discussion to a separate topic heading and ask for a separate proceeding to deal with it.

The reason Tivo did not do so, is not because like you and many wish to speculate Tivo being clumsy, no, it was because Tivo anticiapted DISH will bring the #3 issue up in the contempt proceeding, and the judge is likely to hear it, for that reason Tivo chose to include the #3 issue under its own contempt topic heading, not a separate heading.

What Tivo was trying to avoid to mention in #3 was the "colorable difference" point, rather insisted the new device is still infringing. That is trying to nudge the process to a later proceeding while trying to avoid discussing the new software in the contempt proceeding, in that sense yes Tivo was trying to do what you wished.

The problem is as long as the new device is part of the contempt hearing discussion, its "colorable difference" issue must first be resolved, before it may be moved to a later proceeding where its infringement issue may be resolved. One can not skip the "colorable difference" discussion, it has to happen first, before what Tivo asked for (new device infringement examination) may happen.

And that "colorable difference" issue is precisely what a contempt proceeding is set up to determine.

So the truely correct way to do what you want to do is, ask for two separate contempt proceedings, the first one on #1 and #2 only, and add all new DVRs on the injunction list. In a separate heading ask for a separate contempt proceeding, in which the "colorable difference" of the new software may be evaluated. And if the result is in favor of DISH in that 2nd contempt proceeding, then Tivo asks the judge to immediately move the proceeding into examining the new software infringement issue.

But doing so is not likely to be accepted by the judge because DISH will object to such. So Tivo is forced to discuss #3 in the same contempt topic.


----------



## Curtis52

It really isn't complicated. TiVo will file a motion for contempt on grounds 1 and 2. The hearing will be on some TBD date. The topic of the contempt hearing will be grounds 1 and 2.

TiVo may or may not file a motion for a contempt hearing for grounds 3 at a later date for a separate contempt hearing.


----------



## Greg Bimson

jacmyoung said:


> If this is true, then Tivo should not have asked for discovery in a contempt argument,





jacmyoung said:


> Had Tivo been absolutely sure that judge WILL not discuss #3 in the contempt proceeding Tivo was asking for, Tivo would not have included #3 in it. Tivo would have as you suggested included the #3 issue in a separate topic or request so it may be discussed in a separate proceeding.


TiVo does not know whether or not the new DVR software is still infringing on the same claims as the old one. So TiVo is asking for discovery because they believe the software is still infringing, and therefore subject to contempt.

Under what pretense is TiVo entitled to discovery on new software? Only one: contempt. That is exactly why it is listed as point 3.


----------



## Greg Bimson

peak_reception said:


> TiVo could have more effectively presented their case as follows:
> 
> I. Introduction (focused main points, forcefully crafted)
> 
> II. Contempt of Court
> 
> III. The "new" Modified Software
> 
> IV. Discovery
> 
> V. Damages
> 
> Interrogatories etc.


Without trying to completely upset the apple cart, let's take a look at this.

TiVo only has two main points addressed in their introduction: (1) Enforcement of the Court's Permanent Injunction, and (2) Determination of the damages TiVo sustained during the stay of the injunction.

TiVo doesn't give a load about the fact there is new software, since they feel it still infringes, most likely no differently than the old one. And because there is an injunction in full force and effect, TiVo simply needs the judge to rule that DISH/SATS is in contempt of that injunction.

However, if you are TiVo, under what pretense do you bring up the new software, if you feel DISH/SATS may try to subvert the contempt case? One cannot ask for discovery on new software without linking it to a legal issue. That would be like me asking a judge to look over Dish Network's books, without suing them.

Because the trial is over, TiVo only has one avenue to comb through the new software: requesting the discovery in case a contempt proceeding is warranted. That is why the new software is listed in TiVo's brief under the contempt section; it is the only way to get a discovery process quickly started on the new software. That is, unless, TiVo wants to start a separate court case for the receivers that aren't listed, and take another four years to get a ruling.


----------



## Greg Bimson

jacmyoung said:


> So the truely correct way to do what you want to do is, ask for two separate contempt proceedings, the first one on #1 and #2 only, and add all new DVRs on the injunction list. In a separate heading ask for a separate contempt proceeding, in which the "colorable difference" of the new software may be evaluated. And if the result is in favor of DISH in that 2nd contempt proceeding, then Tivo asks the judge to immediately move the proceeding into examining the new software infringement issue.
> 
> But doing so is not likely to be accepted by the judge because DISH will object to such. So Tivo is forced to discuss #3 in the same contempt topic.


Because DISH/SATS will object? Guilty parties object all the time! It doesn't mean the judge grants their request.

As a reminder, in your version here, TiVo _might_ request a hearing on contempt of the new software. If it doesn't happen, how does this change your scenario?


----------



## jims

Tivo didn't bring up the hardware at this time because it would delay the injunction. The appeals court already approved the injuction based on the software, so if the court enforces the injuction then the next higher court is already in line with it.

As has been stated the limitted discovery is a reminder that Dish is not allowed to enter it as evidence until the other side as had a fair ability to examine and be able to talk to it. 

The agenda is to have the contempt acted upon in such a way that Dish would have to go to the supreme court in order to have an additional stay issued.


----------



## jacmyoung

Greg Bimson said:


> ...Under what pretense is TiVo entitled to discovery on new software? Only one: contempt. That is exactly why it is listed as point 3.


That is exactly why #3 will be discussed in such contempt proceeding.


----------



## peak_reception

Curtis52 said:


> It really isn't complicated. TiVo will file a motion for contempt on grounds 1 and 2. The hearing will be on some TBD date. The topic of the contempt hearing will be grounds 1 and 2.
> 
> TiVo may or may not file a motion for a contempt hearing for grounds 3 at a later date for a separate contempt hearing.


I've gone back and read the "Discussion" in TiVo's agenda and you are correct. Here's what TiVo says:



> *TiVo is prepared to make a motion now for* an Order To
> Show Cause Regarding *Contempt* with respect to EchoStar's failure to disable the DVR
> functionality and its placement of new infringing DVRs (grounds one and two above).
> With respect to EchoStar's modified software, TiVo requests permission to serve limited
> discovery to obtain additional technical information *before bringing a motion on ground
> number three. *


[another separate contempt motion on the latter issue -- i.e. "new" software]



> 2 While TiVo believes that EchoStar is in contempt on all three grounds, *the first two grounds appear to be primarily legal issues.* TiVo can present these right away.


 [those issues already in the permanent injunction]


----------



## Greg Bimson

jacmyoung said:


> That is exactly why #3 will be discussed in such contempt proceeding.


Nope. Won't be done. TiVo has not requested a contempt proceeding on the new software, *and might not ever do so*.

You expect the court to delay a contempt request because DISH/SATS doesn't have all of their marbles lined up?


----------



## jacmyoung

jims said:


> ...As has been stated the limitted discovery is a reminder that Dish is not allowed to enter it as evidence until the other side as had a fair ability to examine and be able to talk to it. ...


There is no limitation during a contempt proceeding what evidence can or can not be presented, because the determination is not about whether the new software is infringing or not, rather if it is merely colorably different or not.

I agree Tivo might have insisted only #1 and #2 be the contempt hearing's agenda, then don't bring the #3 in. The #3 can be brought up in the damages section, which they also did, and later be introduced into a new contempt hearing if it is found still infringning. It is not necessary to bring the #3 into the contempt topic in order for the judge to arrange a discovery of the new software infringement issue.

I will give another comparison on this:

During the appeal, Tivo anticipated they could lose on the hardware issue, so they said to the appeals court that "even if..." the court should still find in our favor on the equivalents.

Now, while Tivo believes #1 and #2 are enough to find DISH in contempt, they likewise anticipated things may not go in their favor, so they said again that "even if..." the judge should still find DISH in contempt because Tivo "knows" the new software still infringes.

The problem in the earlier case was the appeals court said no it was too late to consider the equivalents issue because the jury did not consider it, and the court could not decide for the jury on that.

The problem in the latter case MAYBE that if Tivo's fear comes true, like what happened in the earlier case, then the #3 will be discussed in the contempt proceeding, meaning the colorable difference of the new evidence must be evaluated first, before, not after, the infringement discovery may occur.

You see by introducing #3 into the contempt topic, Tivo is exposing itself to greater danger, then why would Tivo do such thing? Because Tivo anticipated there is a good chance the judge will allow the discussion of the new device in a contempt proceeding, just like when Tivo thought there was a chance the appeals court would not uphold the hardware verdict on doctrine of literal infringement.


----------



## jacmyoung

Greg Bimson said:


> Nope. Won't be done. TiVo has not requested a contempt proceeding on the new software, *and might not ever do so*.
> 
> You expect the court to delay a contempt request because DISH/SATS doesn't have all of their marbles lined up?


There will be no delay if the new device is discussed in the contempt hearing because determining colorable difference is not complicated. The reason why the law requires the judge to first evaluate the colorable difference issue, not the infringement issue, in a contmept proceeding, is precisely so there is no delay.

If the new softwware is found only colorably different, there is no need to even evaluate the new software's infringement issue, DISH is done, period, even if they appeal, their chances will not be good at all.

Only if the new software is determined to be more than colorably different, will there be a need to further the discovery of the new software on the infringement issue.


----------



## Curtis52

jacmyoung said:


> You see by introducing #3 into the contempt topic, Tivo is exposing itself to greater danger, then why would Tivo do such thing? Because Tivo anticipated there is a good chance the judge will allow the discussion of the new device in a contempt proceeding


Not only will #3 discussion be *allowed* in a contempt hearing, it will be the *required topic *if TiVo files a contempt motion on ground #3. Similarly, grounds #1 and #2 will be the required topic on the contempt motion that TiVo files on those grounds. Perfect symmetry.


----------



## Curtis52

jacmyoung said:


> There will be no delay if the new device is discussed in the contempt hearing because determining colorable difference is not complicated.


There will be no delay in discussing the new software because TiVo will not file a contempt motion on #3 until they have studied the software that Dish provides during discovery. Of course it may take a while for Dish to finally submit the required data and for TiVo to study it.


----------



## Greg Bimson

jacmyoung said:


> There is no limitation during a contempt proceeding what evidence can or can not be presented, because the determination is not about whether the new software is infringing or not, rather if it is merely colorably different or not.


So you say.

If I represent TiVo in this case, and I say, "Judge, I'd like to have DISH/SATS placed in contempt." The judge will not respond with a yes or no answer. The judge will ask, "On what grounds?"

If I say because DISH/SATS has not shut down listed receivers identified in the injunction order, then that is the only discussion that will take place.

Of course, someone that would understand how the lawsuit works, also would understand what the scope of the contempt is. Otherwise, "If you don't even understand how the lawsuit works, why even bother?"


----------



## jims

My mistake in not going back in reading the limitted discovery. It is not only in regard to the newer software that Dish claims is non-infringing but is in reponse to the appeals court direction that there should be examination of additional costs that should be awarded to Tivo based on the appeals courts own stay of the injunction.


----------



## dgordo

jacmyoung said:


> There is no limitation during a contempt proceeding what evidence can or can not be presented, because the determination is not about whether the new software is infringing or not, rather if it is merely colorably different or not.


You have said this a few times, what is your source for this?


----------



## peak_reception

Greg Bimson said:


> Without trying to completely upset the apple cart, let's take a look at this.
> 
> TiVo only has two main points addressed in their introduction: (1) Enforcement of the Court's Permanent Injunction, and (2) Determination of the damages TiVo sustained during the stay of the injunction.


 Yes and No. This is THE main reason I say TiVo's introduction, in particular, is unfocused and unforceful. On your second point (2) above, here is what TiVo counsel actually writes: 


> • Permission to serve limited discovery to obtain additional information before
> determining the damages TiVo sustained during the stay of the injunction, and, if
> necessary, bringing a motion for an order to show cause why EchoStar is not in
> contempt for the continuing use of the Infringing Products, changed only by
> downloading modified, but still infringing, software *(and new EchoStar products that
> are only colorably different)*.


 So yes, it starts out with determination of damages but then (all in one sentence mind you) drifts into mention of a motion for an order to show cause why E* should not be held in contempt for their use of modified ("new") software, including new products which are only colorably different. So TiVo does introduce this topic (new software) right away in their agenda, but in diluted fashion. Shouldn't this critical issue be more forcefully met?? Note especially the parenthetical mention of "new EchoStar products which are only colorably different." An afterthought?!

You continue:



> TiVo doesn't give a load about the fact there is new software, since they feel it still infringes, most likely no differently than the old one. And because there is an injunction in full force and effect, TiVo simply needs the judge to rule that DISH/SATS is in contempt of that injunction.


 Yes, I know that's their position. The problem is that you are usually better at arguing for it than they do in their agenda. If TiVo wants to focus the judge on the Final and Permanent Injunction (and they undoubtedly do) then don't dink around so much in the agenda. Concentrate and drive home the critical points! I don't think they do that very effectively. I'm not saying don't mention other issues at all, don't ask for further discovery, etc. Just make those peripheral to the main thrust of your agenda.



> However, if you are TiVo, under what pretense do you bring up the new software, if you feel DISH/SATS may try to subvert the contempt case? One cannot ask for discovery on new software without linking it to a legal issue. That would be like me asking a judge to look over Dish Network's books, without suing them.


Can't they simply link to it (the new software) by noting that "new" or modified software is the reason E* is publicly giving for their claim that they no longer infringe and thus are in compliance with the injunction?



> Because the trial is over, TiVo only has one avenue to comb through the new software: requesting the discovery in case a contempt proceeding is warranted. That is why the new software is listed in TiVo's brief under the contempt section; it is the only way to get a discovery process quickly started on the new software. That is, unless, TiVo wants to start a separate court case for the receivers that aren't listed, and take another four years to get a ruling.


 I'm not criticizing the request for discovery per-se, I just think they [TiVo] need to focus in more effectively on the main thrust of what they want to happen. That's why it's called an agenda.


----------



## jims

A problem in having uninfringing software is that there needs to be proof that it was designed and developed by a team that had no exposer to the team that developed or examined the infringing software. Back in the 1980's that was a difficulting in developing a noninfringing BIOS that IBM would not sue against.


----------



## jacmyoung

Curtis52 said:


> There will be no delay in discussing the new software because TiVo will not file a contempt motion on #3 until they have studied the software that Dish provides during discovery. Of course it may take a while for Dish to finally submit the required data and for TiVo to study it.


But Tivo already included #3 in its contempt discussion, and then asked for a contempt proceeding, in this filing already.


----------



## Greg Bimson

peak, I understand, with just one clarification:


> Can't they simply link to it (the new software) by noting that "new" or modified software is the reason E* is publicly giving for their claim that they no longer infringe and thus are in compliance with the injunction?


Why bother? That is DISH/SATS' position. TiVo shouldn't argue the opponents position on this matter.

To drive the point home for others, if TiVo did not submit a brief on 16 May, then it must mean they have no outstanding issues with respect to the case at this time. So if there weren't any outstanding issues, DISH/SATS therefore wouldn't have to argue anything, because no one is trying to find them in contempt. They could continue on, business as usual, with an injunction in full force and effect and NO ONE having a problem that it is being violated.

In order for TiVo to address the new software, they most definitely need discovery. The discovery has to be linked to something. TiVo linked it to possibly requesting a contempt proceeding on the new software.

The reality is that DISH/SATS can only defend their new software if TiVo makes an issue of it. TiVo will only make an issue of it if it still infringes. If TiVo brings it up, it gets judged on their terms.

DISH/SATS could ask the court to review the new software and to implement a declatory ruling that the new software no longer infringes, but then DISH/SATS can no longer do that now that TiVo is requesting discovery.


----------



## jacmyoung

Greg Bimson said:


> So you say.
> 
> If I represent TiVo in this case, and I say, "Judge, I'd like to have DISH/SATS placed in contempt." The judge will not respond with a yes or no answer. The judge will ask, "On what grounds?"
> 
> If I say because DISH/SATS has not shut down listed receivers identified in the injunction order, then that is the only discussion that will take place...


Maybe maybe not, because the judge must also answer to DISH's response and DISH's demand. He may not in the end buy DISH's requests, but he should consider them, just like he does not have to buy all Tivo's requests, but he should consider them.


----------



## jacmyoung

Greg Bimson said:


> peak, I understand, with just one clarification:Why bother? That is DISH/SATS' position. TiVo shouldn't argue the opponents position on this matter....


The only thing we are saying is it is not necessary to use the contempt proceeding as the only venue to seek discovery of the new device, there are other venues available.

In fact I have further stated that it is actually inappropriate to seek the resolution of the new device's infringement issue, in a contempt proceeding, a contempt proceeding should first determine the "colorable difference" issue of the new device, not whether it is still infringing or not.


----------



## Greg Bimson

jacmyoung said:


> The only thing we are saying is it is not necessary to use the contempt proceeding as the only venue to seek discovery of the new device, there are other venues available.


TiVo cannot get discovery of the new software any other way than by saying it possibly violates the injunction and would be subject to contempt of the injunction order, unless TiVo wants to start an entirely new trial only on the new software.

I'll play devil's advocate, again. Under what pretense would TiVo ask Judge Folsom for discovery on the new software?

And by the way, I fully expect DISH/SATS to use the new software in their brief, with the exact same argument you provide. I just don't believe there will be a ruling of any kind until TiVo requests a contempt hearing on it.


----------



## Curtis52

jacmyoung said:


> But Tivo already included #3 in its contempt discussion, and then asked for a contempt proceeding, in this filing already.


No. TiVo as yet has filed no motions for contempt hearings. They have only stated that they are ready to file a motion for a contempt hearing on grounds 1 and 2.


----------



## peak_reception

jacmyoung said:


> The only thing we are saying is it is not necessary to use the contempt proceeding as the only venue to seek discovery of the new device, there are other venues available.


For my part I was simply asking since I don't know the answer.



> TiVo shouldn't argue the opponents position on this matter.-- Greg


 Not to argue for it, just to cite it as E*'s publicly stated reason for saying they are now in compliance. And then you launch pre-emptive strikes against that claim and forcefully argue why it has no business in the near hearing on why E* is in contempt of the standing injunction.

Can TiVo file their contempt motion at the status meeting on May 30?


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## Curtis52

peak_reception said:


> And then you launch pre-emptive strikes against that claim and forcefully argue why it has no business in the near hearing on why E* is in contempt of the standing injunction.


I think TiVo would be better off to act surprised that Dish would even suggest such a thing.


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## Greg Bimson

Yes, but look at what it does on the other foot...

DISH/SATS can't bring up new software at all while TiVo is trying to gain documentation as to exactly what it does. It is, for all intents and purposes, blocked from being a defense.


----------



## jacmyoung

dgordo said:


> You have said this a few times, what is your source for this?


I admit I am not very good in organizing my records, I have a lot to learn from Curtis. I could not find a case law that I used to support my above statement, but in doing some research actually found a new one not only supported my above statement, but it is also somewhat similar to this case. The link to it is below:

http://bulk.resource.org/courts.gov/c/F2/719/719.F2d.1114.82-5889.html

And I quote:

"In proceedings for contempt for violation of an injunction against further infringement of a patent a court should first determine whether there is more than a colorable difference between the modified device and the enjoined device. In McCullough Tool Co. v. Well Surveys, Inc., 395 F.2d 230, 233 (10th Cir.) (citations omitted), cert. denied, 393 U.S. 925, 89 S.Ct. 257, 21 L.Ed.2d 261 (1968), the court explained why this analysis is necessary:"

"The question is presented as to how a patentee should be allowed to proceed when following a successful infringement suit the infringer modifies the infringing structure and continues as before. Allowing the patentee to proceed by a summary contempt proceeding in all cases would unnecessarily deter parties from marketing new devices that are legitimately outside the scope of the patent in question. On the other hand, to require in each instance the patentee to institute a new infringement suit diminishes the significance of the patent and the order of the court holding the patent to be valid and infringed. Obviously there must be a dividing point between those cases which should be handled by a summary contempt proceeding and those cases which should be more fully viewed in an infringement proceeding. Courts have uniformly held that the standard to be applied in determining the dividing point is whether the alleged offending device is "merely 'colorably' different from the enjoined device or from the patent."

The appeals court then further explained why and how to determine mere or more than colorable difference:

"A difference more than colorable is one that gives rise to some fair ground for doubt that the modified product is within the scope of the injunction. American Foundry & Mfg. Co. v. Josam Mfg. Co., 79 F.2d 116, 118-19 (8th Cir.1935); 8 A. Deller, supra, at Sec. 736. In determining whether the changes made by Kobrin were merely colorable, and therefore a contempt, it is necessary to apply the doctrine of equivalents. Interdynamics, Inc. v. Firma Wolf, 653 F.2d at 98-99; Schlegel Mfg. Co. v. USM Corp., 525 F.2d 775, 781-82 (6th Cir.1975), cert. denied, 425 U.S. 912, 96 S.Ct. 1509, 47 L.Ed.2d 762 (1976). This doctrine has been described by the Supreme Court as follows: " '_f two devices do the same work in substantially the same way, and accomplish substantially the same result, they are the same, even though they differ in name, form, or shape.' " Graver Tank & Mfg. Co. v. Linde Air Prods. Co., 339 U.S. 605, 608, 70 S.Ct. 854, 856, 94 L.Ed. 1097 (1950) (quoting Machine Co. v. Murphy, 97 U.S. (7 Otto) 120, 125, 24 L.Ed. 935 (1877) )."

I think one member had brought up the equivalents issue before. Now at this point one might think wait a minute, it should be easy to prove mere colorable difference if the equivalents standdard is used. It appears so so far.

But if one keeps on reading, and realizes why the appeals court overturned the contempt ruling by the lower court, it begins to explain why DISH is doing what it is doing now:

"Reliance on the doctrine of equivalents will protect Sure Plus's right to the benefit of its prior judgment while reserving to Kobrin the opportunity to invent around the Sure Plus patent. Even if Kobrin's modified mirror assembly infringes the Sure Plus patent, as long as it is more than colorably different the infringement should not amount to a contempt nor should it be tested in contempt proceedings. Interdynamics, Inc. v. Firma Wolf, 653 F.2d at 99; Siebring v. Hansen, 346 F.2d at 477. When applying the doctrine of equivalents in the present case, it was necessary for the district court to compare the modified mirror assembly to the infringing assembly, while bearing in mind its previous construction (during the infringement litigation) of the claims in the Sure Plus patent and the scope of their protection. Schlegel Mfg. Co. v. USM Corp., 525 F.2d at 782; American Foundry & Mfg. Co. v. Josam Mfg. Co., 79 F.2d at 120."

So in the above the court also explained what the judge must do during a contempt proceeding, to compare the old and the new devices. Since in that case the district court did not compare some of the differences between the two products, the appeals court overturned the contempt ruling, and said: "If any of the differences are found to be more than colorable, summary contempt proceedings would be inappropriate and Sure Plus would be relegated to an independent action for infringement."

If you read the kind of "differences" the appeals court discovered that the district court did not try to evaluate, it gives the impression that the standard in agreeing to more than colorable difference may not be very high, because it seemed the old and new products in that case were made to do similar things and to achieve similar results, only that the constructions of each had some differences. And that was enough to overturn the contempt ruling and be remanded for correct examination.

Now one should be able to understand why DISH decided to go as far as this point, because they do have a chance to prove to the court that the new software is a workaround new innovation, that while it does similar things with similar results, since it does it in many different ways, DISH may, yet they also may not be found in contempt of the injunction, depending on if the judge thinks the differences are more than colorably different or not. If the judge finds in DISH's favor, Tivo can of course seek an "independent action for infringement" after the contempt proceeding to further its effort.

Since this further effort will likely take some time, DISH buys itself more time, not to mention the possibility to actually prove their new software no longer infringes._


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## Curtis52

jacmyoung said:


> "In proceedings for contempt for violation of an injunction against further infringement of a patent a court should first determine whether there is more than a colorable difference *between the modified device and the enjoined device*.


This will only come into play if TiVo files a contempt motion on new devices, not the enjoined devices. The contempt motion TiVo will file will only be for enfoecement of the injunction on the enjoined devices.


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## Greg Bimson

jacmyoung said:


> Since this further effort will likely take some time, DISH buys itself more time, not to mention the possibility to actually prove their new software no longer infringes.


That's all well and good, but let's hit home the very first quote:

"In proceedings for contempt for violation of an injunction against further infringement of a patent..."



> Until EchoStar is held in contempt, it will continue to conduct its business as if the injunction were never issued. TiVo is prepared to make a motion now for an Order To Show Cause Regarding Contempt with respect to EchoStar's failure to disable the DVR functionality and its placement of new infringing DVRs (grounds one and two above).


Nowhere is TiVo requesting a contempt hearing on the new software. TiVo is requesting that DISH/SATS follow the injunction order, and stop selling and shut down DVR service to the listed devices.


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## Greg Bimson

"In proceedings for contempt for violation of an injunction against further infringement of a patent..."

TiVo is not filing a request for a contempt order for further infringement of a patent. TiVo is filing a request to have sales and functions ceased on the listed DVR's.


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## spear61

Greg Bimson said:


> Nowhere is TiVo requesting a contempt hearing on the new software. TiVo is requesting that DISH/SATS follow the injunction order, and stop selling and shut down DVR service to the listed devices.


Yes, and that is what happened. If the judge had wanted to shut down 100% of the boxes listed in the injunction, he would not have included the adjective "infringing" in his description. When the injuntion came into effect(this year, not 2006), most boxes were no longer infringing ( according to Charlie).


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## Curtis52

spear61 said:


> Yes, and that is what happened. If the judge had wanted to shut down 100% of the boxes listed in the injunction, he would not have included the adjective "infringing" in his description. When the injuntion came into effect(this year, not 2006), most boxes were no longer infringing ( according to Charlie).


The infringing products are defined in the injuncion.

"*Infringing products*: DP-501, DP-508, DP-510, DP-522, DP-625, DP-721, DP-921, and DP-942."


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## spear61

Curtis52 said:


> The infringing products are defined in the injuncion.
> 
> "*Infringing products*: DP-501, DP-508, DP-510, DP-522, DP-625, DP-721, DP-921, and DP-942."


Now it becomes a matter of English grammer: If he wanted all of the above listed boxes shut down he would have written " Products: DP-501,......


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## Kheldar

spear61 said:


> Now it becomes a matter of English grammer: If he wanted all of the above listed boxes shut down he would have written " Products: DP-501,......


No, he is simply stating that those models are the infringing models. It couldn't get much more simple than that.

Without putting the word "infringing" there, according to English gramm*a*r, he would be stating that those models are "products", not "infringing products". Not much of a statement of importance without "infringing" listed there.


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## peak_reception

That's a lot of good information jac but, as others have said, (_probably_) only germane to the new software in a second contempt proceeding down the road a ways.

For now, TiVo will only motion for contempt on the already infringing software and products listed and enjoined in the standing injunction. Hewing to the letter of the law in that way gives EchoStar virtually no room to force in the new software unless Judge Folsom expands the scope of the injunction and temporarily stays its enforcement.

EchoStar's response to TiVo's agenda should make for some very interesting reading late tomorrow or Sat.


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## Greg Bimson

peak_reception said:


> EchoStar's response to TiVo's agenda should make for some very interesting reading late tomorrow or Sat.


And I should believe that DISH/SATS brief will try to do the following:

Argue, like jacmyoung states, that the devices in the injunction order are no longer infringing, and therefore, no need to stop sales nor shut down those receivers. (but I disagree with that path)

Point out in some form that the new software should have its own hearing, to determine if that software is or isn't infringing. (and I think that path is covered by TiVo's request)

Demand that the injunction be rewritten, because, as jacmyoung states, it was based upon part of the verdict being reversed (to me, should have been brought up at the Court of Appeals)

And the point that hardly anyone has mentioned:
Demand that the injunction be rewritten, because the injunction still has the hardware claims attached to it.

Of course, my feeling is that if the DISH/SATS does open up Pandora's Box that the injunction needs to be rewritten because it does contain references to infringing hardware claims, that opens the door for TiVo to ask for a summary judgment.


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## spear61

Kheldar said:


> Not much of a statement of importance without "infringing" listed there.


That's the exact point. Some argue that the injunction says shut down those DVRs with no qualification as to their type (infringing or not) . That is not what the judge wrote. He wrote "infringing (boxes). The words speak for themselves. And, when the injuction came into force, they were not infringing.


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## jacmyoung

Curtis52 said:


> This will only come into play if TiVo files a contempt motion on new devices, not the enjoined devices. The contempt motion TiVo will file will only be for enfoecement of the injunction on the enjoined devices.


But Tivo had already requested the judge to include ALL DISH devices (622, 722 and others that are only colorably different) in such contempt consideration.


----------



## jacmyoung

Greg Bimson said:


> "In proceedings for contempt for violation of an injunction against further infringement of a patent..."
> 
> TiVo is not filing a request for a contempt order for further infringement of a patent. TiVo is filing a request to have sales and functions ceased on the listed DVR's.


And in addtion, 622s, 722s and any other only colorably different DISH receivers.


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## Curtis52

spear61 said:


> That's the exact point. Some argue that the injunction says shut down those DVRs with no qualification as to their type (infringing or not) . That is not what the judge wrote. He wrote "infringing (boxes). The words speak for themselves. And, when the injuction came into force, they were not infringing.


Note the *capital letters* in "*I*nfringing *P*roducts".

from the injunction:

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

Rather than repeat the model numbers throughout the injunction the infringing products are referred to as *I*nfringing *P*roducts (with capital letters) rather than repeat the list over and over. The capital letters make it clear that he is referring to the model numbers listed as "Infringing Products" since those words would not normally be capitalized in the middle of a sentence.

Here's an example:

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

Notice the capital letters?

The injunction went into effect 08-17-2006 and was stayed the next day.


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## jacmyoung

And if folks read the link carefully, you should come with such impression at least:

In a contempt proceeding, the judge is REQUIRED to look at the differences between the old, infringing devices, and the new devices, not much to care about the similarity of them, but the differences among them, and to determine if such differences are mere or more than colorable differences.

Remember in that linked case, the district court issued the contempt ruling because it looked at only the similarity of both mirror devices, not the differences. And as a result the appeals court said no, no, couldn't do that, you judge had to look at the differences and determine if the differences are mere colorably different or not, we don't care about the similarites between the two, we knew there were many similarities between the two mirror devices, we only care about the differences, in a contempt proceeding that is.

And since the lower court only looked at the similarities, not the differences, the contempt ruling was overturned.


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## Greg Bimson

jacmyoung said:


> In a contempt proceeding, the judge is REQUIRED to look at the differences between the old, infringing devices, and the new devices, not much to care about the similarity of them, but the differences among them, and to determine if such differences are mere or more than colorable differences.


Wrong.

In a contempt proceeding, one determines if a party subject to an injunction is violating it in any way, shape or form.

When a reporter is thrown in jail for contempt for not giving the court information about a source, the court is not "REQUIRED to look at the differences between the old, infringing devices, and the new devices, not much to care about the similarity of them, but the differences among them, and to determine if such differences are mere or more than colorable differences." In this case, contempt means not following the court's order.

Contempt means many different things. And in an injunction, it simply means part of an injunction is not being followed. There is no requirement to validate or rejct infringing and non-infringing products, unless someone asks for it.

So unless TiVo asks for other products to be subject to the injunction, the "colorably different" theory is off the table.


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## jacmyoung

Greg Bimson said:


> Wrong.
> 
> In a contempt proceeding, one determines if a party subject to an injunction is violating it in any way, shape or form....


First off, please please don't use that reporter's age as an example, just kidding, no you can't use that reporter's case at all.

I only ask you to read that link because it was about how a contempt proceeding should be in a "patent infringing case with an injunction involved."

In such case, the way to determine if the offender should be found in contempt of an injunction, is, according to that appeals court, whether the DIFFERENCES between a new device, and the old infringing devcie, are mere colorable differences or not.

As I said, Tivo already asked the judge to find DISH in contempt for not only continue to use the listed DVR's, but the 622s, the 722s and also any other receivers that are only colorably different, which for example could include the Slingboxes too if possible.

But let's for argument sake Tivo only asked for the DVRs on the list, nothing else, which is not true, but say it is so.

Again if you read the appeals court opinion, how the DVRs appear, the look, the labels, the outside boxes, and so on, or the similarity (or the sameness for that matter) are irrelavent as far as a contempt proceeding is concerned, becaues all the contemp proceeding should resolve is to look at the differences between the old INFRINGING devices, and the NEW devices, and to determine if the differences between them are only colorable differences or not.

Let's first agree on one thing, the old DVRs on the injunction list are not the same DVRs now, because the old DVRs now have the new software. The key here is regardless how small such difference is or regardless if you even care about the difference, the contempt proceeding only look at such difference, not their similarity (or sameness for that matter).

Meaning you can still have the exactly the same look and model, as long as something new happened to them, the judge in a contempt proceeding MUST look at such difference, before rendering a contempt ruling.

In the above linked case, the ONLY reason the contempt ruling was overturned, was because the judge was looking at the wrong thing, he should have looked at the difference, instead he looked at the similarity, no more, no less.


----------



## spear61

Curtis52 said:


> Note the *capital letters* in "*I*nfringing *P*roducts".
> 
> from the injunction:
> 
> "(collectively the "Infringing Products"): DP-501; DP- 508; DP-510; DP-522; DP-625; DP-721; DP-921; and the DP-942."
> 
> Rather than repeat the model numbers throughout the injunction the infringing products are referred to as *I*nfringing *P*roducts (with capital letters) rather than repeat the list over and over. The capital letters make it clear that he is referring to the model numbers listed as "Infringing Products" since those words would not normally be capitalized in the middle of a sentence.
> 
> Here's an example:
> 
> "Defendants are hereby FURTHER ORDERED to, within thirty (30) days of the issuance
> of this order, disable the DVR functionality (i.e., disable all storage to and playback from a hard
> disk drive of television data) in all but 192,708 units of the Infringing Products that have been
> placed with an end user or subscriber. The DVR functionality, i.e., disable all storage to and
> playback from a hard disk drive of television data) shall not be enabled in any new placements of
> the Infringing Products. "
> 
> Notice the capital letters?
> 
> The injunction went into effect 08-17-2006 and was stayed the next day.


And the judge could have chosen to capitilize the word "Products" and let it stand by itself


----------



## Curtis52

Apparently if a company refuses to stop making an infringing device there is no way to stop them. LOL

Use a little logic.


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## jacmyoung

Curtis52 said:


> Apparently if a company refuses to stop making an infringing device there is no way to stop them. LOL
> 
> Use a little logic.


Apparently according to DISH they did stop making an infringing device by using a non-infringing device in its place, and therefore the court must hear their evidence.

Not that the judge must agree with DISH, rather the judge MUST look at the differences, not the similarity, not the sameness, rather the differences, and make a decision if such differences are only colorable differences or not.

If he sees the differences only colorably true, he can find DISH in contempt, and DISH will be in big trouble, even if they appeal their chances will be slim, unless the judge makes some big mistake.

But if he sees the differences more than colorable, he MUST move the proceeding out of the contempt setting (meaning not to find DISH in contempt), and into an independent finding of infringement.


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## jacmyoung

The reason as the above appeals court pointed out, why it is designed in such way, is because while the plaintiff must be protected of his innovations and patent rights, such protection should not hinder the others from their own legitimate innovations and workarounds.


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## jacmyoung

And BTW, please don't be too alarmed by such colorable difference determination, because even if DISH may demonstrate more than colorable difference, they must still prove the new software non-infringing, which is much more difficult.

At the same time, the damages, and any additional damages, should still be assessed without delay, because DISH WAS found to have infringed.


----------



## dgordo

jacmyoung said:


> ...the judge MUST look at the differences, not the similarity, not the sameness, rather the differences, and make a decision if such differences are only colorable differences or not.
> 
> If he sees the differences only colorably true, he can find DISH in contempt, and DISH will be in big trouble, even if they appeal their chances will be slim, unless the judge makes some big mistake.
> 
> But if he sees the differences more than colorable, he MUST move the proceeding out of the contempt setting (meaning not to find DISH in contempt), and into an independent finding of infringement.


100% correct, I would only add that the judge would still need to determine the amount owed for infringement up until the point where dish no longer used infringing software.


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## jacmyoung

dgordo said:


> 100% correct, I would only add that the judge would still need to determine the amount owed for infringement up until the point where dish no longer used infringing software.


Agreed.

And strangely, if I am correct, I will actually be a little depressed from a selfish standpoint, because at a minimum, I will have to wait a little longer to have my 625 replaced to a 722 by DISH, for free


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## Greg Bimson

jacmyoung said:


> I only ask you to read that link because it was about how a contempt proceeding should be in a "patent infringing case with an injunction involved."


Wrong. From the case you linked:


> In proceedings for contempt for violation of an injunction against further infringement...


These are not the same.

TiVo is not asking for a contempt hearing against further infringement. TiVo is asking for a contempt hearing to address sales and functional availability of listed DVR's. TiVo wants a discovery motion to examine DISH/SATS new software, and then make a separate proceeding "for contempt for violation of an injunction against further infringement" if TiVo believes that the new software also only colorably infringes.


----------



## jacmyoung

Greg Bimson said:


> ...TiVo is not asking for a contempt hearing against further infringement. TiVo is asking for a contempt hearing to address sales and functional availability of listed DVR's. ...


And all new DVRs and any receivers that are only colorably different.

I do agree there is a difference, in the above link, the defendent likely stopped selling the old infringing device, then began to sell the new device. In this case DISH appeared not stopped using the old devices specified on the injunction list.

Here is where the hardware verdict reversal may be used to explain DISH's action, while I don't know if DISH will use this argument, it may.

The point however is, regardless what the injunction says, the only thing a contempt proceding is designed to do is to look at the differences between the old, infringing devcies, and the new devices, nothing more, nothing less, according to the case law.

A contempt proceeding is not the correct venue to address the sales and functional availibility of the listed devices, rather after looking at the differences, if the judge should find the defendent in contempt or not, and after the decision is made, then what you have described will then be addressed in some other independent proceedings. Of course if the judge finds DISH in contempt, he needs to waste no time to put the hammer down, but the hammer can still be stopped if the appeals court overturns the judge's decision.

And as dgordo and I seemed to have agreed, some of those independent proceedings may be concurrent to the contempt proceeding, depending on how relevant (or in fact irrelevant) they are to the contempt issue.

Now let me offer another argument in describing how the listed DVRs had been stopped and the new devices took their places.

When a new software is downloaded to a receiver, all functionalities of the receiver cease to work, for at least a few minutes, in some cases longer, in the case for DISH, could be for days while the user tried to figure out what the heck was wrong with his toy

In any event, the argument can be made that DISH did stop all the DVRs on the list, and installed the new software, and then began to use the new devices. I know it sounded like a silly arugment, but if Tivo wants to be literal about the language of the injunction, then DISH can do the same.

Just remember one thing, what the devices may look, read and feel, the similarities of them, are irrelevant in a contempt proceeding, only their differences. Unless I read the above case law wrong.


----------



## Greg Bimson

Greg Bimson said:


> ...TiVo is not asking for a contempt hearing against further infringement. TiVo is asking for a contempt hearing to address sales and functional availability of listed DVR's. ...





jacmyoung said:


> And all new DVRs and any receivers that are only colorably different.


Show us where TiVo is asking for a contempt hearing on "all new DVRs and any receivers that are only colorably different." I'll be happy to shut my argument down if you can find it. But I bet I don't have to shut my argument down. You've managed to wedge the new software into "all new DVRs and any receivers that are only colorably different." Yes, there is a request for the shut down of the listed receivers, with the "only colorably different" caveat. But there doesn't seem to be a request specifically on unlisted receivers. TiVo needs more time for that. That is why the interrogatories have been requested.

What has become rather obvious is what you claim others have done on this thread. You so want your 625 replaced that you are ignoring simple court procedure and using that error as the basis of your argument.


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## Curtis52

TiVo is not asking that any new devices be added to the injunction at this time. The cited contempt hearing asked for allegedly new devices to be added to an existing injunction. TiVo is not doing that. TiVo just wants the old devices shut down. The ones that are already listed in the injunction. Completely different situation. It's apples and oranges.


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## Greg Bimson

Hint:


> However, to avoid any doubt, TiVo will complete its analysis of the allegedly new software and, with the Court's permission, will request written discovery on both the Infringing Products and those believed to be only colorably different (attached as Exhibit C) and possibly two depositions, depending on the content of EchoStar's discovery responses and documents.


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## jacmyoung

Greg Bimson said:


> Show us where TiVo is asking for a contempt hearing on "all new DVRs and any receivers that are only colorably different." I'll be happy to shut my argument down if you can find it. ...


In Tivo's opening:

"• A hearing at the earliest possible date to determine whether EchoStar should be held in contempt for its failure to disable the DVR functionality in the Infringing Products and for its placement of new infringing DVRs *(and new EchoStar products that are only colorably different)*;"

But again, even if Tivo only asked for the "infringing products" on the list, the judge must still look at the differences between those products, and the new products (for example, the 510 with the new software), to determine if DISH is in contempt or not. Not to look at their similarities or sameness, but the differences. The appeals court in that linked case said so, not me.

Which was precisely why, unlike you, Tivo asked for all products that may be only colorably different, in that contempt consideration, because Tivo knew simply asking for just the ones on the list will not prevent the judge from looking at the new software issue.

Another thing I want to point out is, you guys are wishing that Tivo does what you like them to do, and assume that Tivo WILL do what you wish them to do, and assume the judge WILL do what Tivo asked them to do.

All I am asking is be a little patient, don't speak for Tivo nor the judge, let them speak, we can then speculate based on what they speak.

While I have always stated what DISH may do, I never said those were what DISH will do, because I can only speculate, I can not speak for DISH.


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## Curtis52

jacmyoung said:


> even if Tivo only asked for the "infringing products" on the list, the judge must still look at the differences between those products, and the new products (for example, the 510 with the new software), to determine if DISH is in contempt or not.


Not at all. The injunction requires that the hard drives be disabled. Putting on new software is not what the injunction requires. It is irrelevent. The judge only needs to ask them whether they have disabled the hard drives. That is what the injunction requires and that is the only thing the judge will ask. That's why TiVo said the first hearing is just a legal matter.


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## jacmyoung

Curtis52 said:


> Not at all. The injunction requires that the hard drives be disabled. Putting on new software is not what the injunction requires. It is irrelevent. The judge only needs to ask them whether they have disabled the hard drives. That is what the injunction requires and that is the only thing the judge will ask. That's why TiVo said the first hearing is just a legal matter.


So you now do not dispute the first bullet, only the second part which was my comment?

You don't have to agree with my comment, we can agree to disagree.


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## Greg Bimson

jacmyoung said:


> But again, even if Tivo only asked for the "infringing products" on the list, the judge must still look at the differences between those products, and the new products (for example, the 510 with the new software), to determine if DISH is in contempt or not.


Whatever.

And if during the contempt proceeding it is determined that the unlisted receivers had the exact same infringing software as the ones on the list, then what?


----------



## Curtis52

jacmyoung said:


> So you now do not dispute the first bullet, only the second part which was my comment?


I have never disagreed with anything on the agenda. What you quoted is the brief version. TiVo expands it later on saying that they are only prepared to file for a contempt hearing on Dish's refusal to shut down the Infringing Products (capital letters) as required by the injunction.


----------



## Curtis52

Greg Bimson said:


> And if during the contempt proceeding it is determined that the unlisted receivers had the exact same infringing software as the ones on the list, then what?


Dish would appeal. Then when they lose they will say they've got new software etc etc. Judge Folsom won't let them game the system this way.


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## Greg Bimson

Curtis52 said:


> Dish would appeal. Then when they lose they will say they've got new software etc etc. Judge Folsom won't let them game the system this way.


Careful. Someone may accuse Judge Folsom of being pro-TiVo.


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## dgordo

jacmyoung said:


> And as dgordo and I seemed to have agreed....


Just so we are clear, I was referring to the future hearing on the software that Tivo has requested. I have no doubt that Dish will try to make it an issue in the contempt hearing but Tivo doesn't want to talk about yet.


----------



## jacmyoung

Curtis52 said:


> I have never disagreed with anything on the agenda. What you quoted is the brief version. TiVo expands it later on saying that they are only prepared to file for a contempt hearing on Dish's refusal to shut down the Infringing Products (capital letters) as required by the injunction.


The only place I saw in Tivo's filing which the captial letters are used was the first bullet I quoted above, which did include ALL DISH products that are only colorably different.

The only two other places Tivo mentioned the contempt request was in the expanded discussions when it made the three-part argument, in one occasion it said:

"TiVo is prepared to make a motion now for an Order To Show Cause Regarding Contempt with respect to EchoStar's failure to disable the DVR functionality and its placement of new infringing DVRs (grounds one and two above)."

Notice "new infringing DVRs" without capital letters.

Later Tivo said again:

"... To provide timely relief from EchoStar's continuing infringement and violation of the Court's injunction, TiVo requests a hearing on EchoStar's failure to disable the DVR functionality and its placement of new infringing DVRs at the earliest available time."

Still notice "new infringing DVRs" without capital letters.


----------



## jacmyoung

dgordo said:


> Just so we are clear, I was referring to the future hearing on the software that Tivo has requested. I have no doubt that Dish will try to make it an issue in the contempt hearing but Tivo doesn't want to talk about yet.


No dgordo let me quote your own words:

"100% correct, I would only add that the judge would still need to determine the amount owed for infringement up until the point where dish no longer used infringing software."

Which was what I meant by "some other proceedings" such as the damage assessment, may be concurrent to the contempt proceeding, if the topic was about things not so relevant to the contempt issue, such as the damages incurred during the stay of the injunction.

I know you don't quite like it when I said you might have agreed with me, but unfortunately you did, I did not ask you to agree with me.

You can still take yours back though


----------



## peak_reception

jacmyoung said:


> In Tivo's opening:
> "• A hearing at the earliest possible date to determine whether EchoStar should be held in contempt for its failure to disable the DVR functionality in the Infringing Products and for its placement of new infringing DVRs *(and new EchoStar products that are only colorably different)*;"


Just another example of what I call TiVo's disjointed, and yes, *clumsy* agenda setting.

Curtis52 is right, they expand on it later in the "Discussion" section where they do finally manage to state that their request for contempt will be on grounds 1 and 2, not 3.

So yes, buried in the middle of their agenda is the key to the legal door they intend to try opening first. That's the best guess anyway 

Setting the agenda was an advantage TiVo squandered by submitting such an unfocused document. The most decisive thing in there is what's missing; Anything about hardware.


----------



## Greg Bimson

jacmyoung said:


> "TiVo is prepared to make a motion now for an Order To Show Cause Regarding Contempt with respect to EchoStar's failure to disable the DVR functionality and its placement of new infringing DVRs (grounds one and two above)."
> 
> Notice "new infringing DVRs" without capital letters.
> 
> Later Tivo said again:
> 
> "... To provide timely relief from EchoStar's continuing infringement and violation of the Court's injunction, TiVo requests a hearing on EchoStar's failure to disable the DVR functionality and its placement of new infringing DVRs at the earliest available time."
> 
> Still notice "new infringing DVRs" without capital letters.


That describes sales of 5XX and 625 DVR's. DISH/SATS voluntarily shut down sales of the 722, 921 and 942 (along with the Homezone 1022), as they still infringe.


----------



## scooper

peak_reception said:


> Just another example of what I call TiVo's disjointed, and yes, *clumsy* agenda setting.
> 
> Curtis52 is right, they expand on it later in the "Discussion" section where they do finally manage to state that their request for contempt will be on grounds 1 and 2, not 3.
> 
> So yes, buried in the middle of their agenda is the key to the legal door they intend to try opening first. That's the best guess anyway
> 
> Setting the agenda was an advantage TiVo squandered by submitting such an unfocused document. The most decisive thing in there is what's missing; Anything about hardware.


Yeah - they should have given the writing job to an engineer, then give his work to a lawyer to put it into legalese  I've never seen anybody write as tight as an engineer - an engineer/lawyer would almost be an oxymoron   - not impossible.


----------



## James Long

Greg Bimson said:


> Careful. Someone may accuse Judge Folsom of being pro-TiVo.


Hasn't that already been proven?


----------



## dgordo

jacmyoung said:


> No dgordo let me quote your own words:
> 
> "100% correct, I would only add that the judge would still need to determine the amount owed for infringement up until the point where dish no longer used infringing software."
> 
> Which was what I meant by "some other proceedings" such as the damage assessment, may be concurrent to the contempt proceeding, if the topic was about things not so relevant to the contempt issue, such as the damages incurred during the stay of the injunction.
> 
> I know you don't quite like it when I said you might have agreed with me, but unfortunately you did, I did not ask you to agree with me.
> 
> You can still take yours back though


I have no problem admitting that I absolutely agree with you, that would be how the judge would determine if the new software infringes. And if he does not think that it does what procedure would follow and how damages would be determined.

We just don't know when the judge will rule on this issue. My westlaw searches have returned very inconsistent results and to be honest with you nothing would surprise me. Certainly Tivo would want this resolved after the mentioned devices are shut off and Dish would want this issue used to show lack of infringement.


----------



## dgordo

James Long said:


> Hasn't that already been proven?


I am not sure, but what would be the reason(s) you think that he is pro-tivo?


----------



## Herdfan

dgordo said:


> I am not sure, but what would be the reason(s) you think that he is pro-tivo?


I would say he is more anti-DISH attorneys than pro-TiVo. DISH attorneys have tended to push the boundries and he has slapped them down.


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## spear61

A historical question. How did a company from California (TVIO) and a company from Colorado (Dish/Echostar) end up in a federal court in Texas?


----------



## jacmyoung

dgordo said:


> ... Certainly Tivo would want this resolved after the mentioned devices are shut off and Dish would want this issue used to show lack of infringement.


Well I was talking about the damages up to the point the new software was installed, I'd think Tivo will want that ASAP, regardless if any DISH DVRs will be turned off or not.

Are you saying even that may have to wait?


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## Greg Bimson

Won't edit that. It is my mistake; I meant 721. Sue me.


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## jacmyoung

spear61 said:


> A historical question. How did a company from California (TVIO) and a company from Colorado (Dish/Echostar) end up in a federal court in Texas?


Is that a historical question or are you working on a wild wild west movie script? If we give you any hints remember copyright issue. If you don't pay you only need to check back at this thread as a good reminder


----------



## jacmyoung

Greg Bimson said:


> That describes sales of 5XX and 625 DVR's. DISH/SATS voluntarily shut down sales of the 722, 921 and 942 (along with the Homezone 1022), as they still infringe.


If so it should have been "Infringing Products" as Curtis said, with capital letters.


----------



## spear61

jacmyoung said:


> Is that a historical question or are you working on a wild wild west movie script? If we give you any hints remember copyright issue. If you don't pay you only need to check back at this thread as a good reminder


I'm trying to figure out how many angels can dance on a head of a pin.

But, actually I am curious. Was it judge shopping or is is the judge that has dealt with similar cases ( the federal courts sometimes do that) or is it some continuing string from older litigaton cases.


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## Greg Bimson

Judge shopping. The Eastern Texas district had become known as the "Rocket Docket", because of the speed in which cases went through those courts.


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## Jim5506

Jury Shopping, actually. This East Texas county is known for giving big settlements in such cases, and favoring the plaintif.


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## dgordo

Thats the why, the how is based on civil procedure rules. 28 USC 1400(b) is the primary patent venue statute. Under the statute, a patent infringement lawsuit may be filed in a jurisdiction (a) where the defendant resides; or (b) where the infringement occurred -- so long as the defendant has a "regular and established place of business" in that jurisdiction. Basically, in a patent case, if you are a national company you can be sued anywhere.


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## dgordo

jacmyoung said:


> Well I was talking about the damages up to the point the new software was installed, I'd think Tivo will want that ASAP, regardless if any DISH DVRs will be turned off or not.
> 
> Are you saying even that may have to wait?


Not sure. I have never been involved in a contempt hearing like this, the cases I have read really seem to give the impression that the judge can do whatever he wants.


----------



## Greg Bimson

jacmyoung said:


> Well I was talking about the damages up to the point the new software was installed, I'd think Tivo will want that ASAP, regardless if any DISH DVRs will be turned off or not.


I could swear in one of these court documents, maybe even this one, that TiVo says DISH/SATS is planning to file a writ of certiorari to SCOTUS.

Found it, first post:


> As security for payment of the judgment, the parties agreed to the deposit of monies in an escrow account. The amount in escrow totals $104,241,309 through April 30, 2008. EchoStar has announced that it intends to file a petition for writ of certiorari to the U.S. Supreme Court, thereby delaying payment of the escrowed funds to TiVo.


----------



## jacmyoung

Greg Bimson said:


> I could swear in one of these court documents, maybe even this one, that TiVo says DISH/SATS is planning to file a writ of certiorari to SCOTUS.
> 
> Found it, first post:


When was the escrow agreement made? I recall the first time DISH ever mentioned new software was at the end of 07. Maybe DISH wants to argue it should not cover through 4/30/08?


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## Greg Bimson

This is the money DISH set aside after the final judgment and verdict, which was held in escrow, back at the end of 2006.

The writ of cert is to appeal to SCOTUS, to attempt to have the entire infringement verdict overturned, or reduce the amount of the damages.

The monies in escrow are the damages for infringement up to September, 2006. There has been some interest accruing on that money, so the amount has went up by about $7 million since. I believe the escrow initially held around $97 million.


----------



## jacmyoung

My mistake, I counted one less zero and thought it was to cover part (deposit) of the damages from 06 to 08.

DISH does have one last right to appeal on that though.


----------



## Bidderman9

Echo Reply - Main Document
May 23, 2008

By Hand Delivery

The Honorable David Folsom

United States District Court for the Eastern District of Texas

Federal Building

500 North Stateline, 3rd Floor

Texarkana, TX 75501

Re: TiVo, Inc. v. EchoStar, et al. Case No. 2-04CV-Ol

Your Honor:

This letter is submitted pursuant to this Court's April 23, 2008 Order

(Docket No. 822), and in response to TiVo's letter of May 16,2008 (Docket No. 825).

Post-Verdict Events

According to the Amended Final Judgment and Permanent Injunction against

EchoStar issued on September 8, 2006, which followed the Final Judgment and Permanent

Injunction of August 17, 2006, the injunction was to take effect thirty days after it was

entered: October 9, 2006. Before it took effect, however, the injunction was provisionally

stayed by the Court of Appeals on August 18, 2006, and then stayed through the pendency of

the appeal on October 3, 2006. Despite the stay, TiVo never requested a bond, either from

the Court of Appeals or from this Court.

Page Two

On January 31, 2008, the Federal Circuit reversed the judgment against EchoStar on

TiVo's "hardware" claims (Claims 1,5,21,23,32,36, and 52 of the '389 patent), affirmed

infringement of the "software" claims (Claims 31 and 61 of the '389 patent), affirmed the

damages award, remanded the case to this Court "for any further proceeding that may be

necessary with respect to [the hardware] claims" and so that this Court "can make a

determination as to the additional damages, if any, that TiVo has sustained while the stay of

the permanent injunction has been in effect." The Court also noted that the stay of the

injunction would dissolve when the Court's opinion became final, which occurred when its

mandate issued on April 18, 2008.

On April 23, this Court issued an Order setting a status conference for May 30, 2008,

requesting letters from the parties concerning "topics of discussion for the status conference

and the relief sought." On May 16, 2008, TiVo responded that it had two agenda items: 1)

Enforcement ofthe permanent injunction, and 2) Determination of damages during the stay

of the injunction.

I. Enforcement of the Permanent Injunction

To be clear at the outset, EchoStar has gone to great lengths to comply fully with both

the letter and the spirit of the Court's injunction, and it is confident that it is in full

compliance.

Page Three

Within days ofthe original verdict on April 13, 2006, EchoStar convened a team of

engineers to investigate alternatives to the accused devices that had been found to infringe.

Fifteen engineers supported by a multitude oftest technicians and program management

personnel worked on the project, putting in approximately four man-years of effort. This

program was successful and, while the appeal was pending, EchoStar was able to replace its

existing infringing software with redesigned software based on a novel approach - an

approach that Mr. Barton and TiVo's experts had dismissed at trial as unworkable. The new

EchoStar DVRs do not rely on intelligent processing or indexing of incoming MPEG data

streams before the television programming is stored on the hard disk of a DVR, eliminating

the very feature TiVo said was "essential" to the '389 patent. EchoStar has removed the prestorage

processing by its DVRs so that incoming television program data is no longer

"parsed," as every claim of the '389 patent requires. After the data is written in full to

memory, the new EchoStar DVRs rely on statistics and probabilistic algorithms invented by

EchoStar to search for broadcast data on the fly during trick-play - a concept and technique

that cannot be found in the '389 patent. In addition, EchoStar completely eliminated flowcontrol

in the Broadcom DVRs, another element that TiVo asserted was vital to the Barton

Patent's software claims.

Page Four

After testing the new software, EchoStar submitted its new design to experienced

patent counsel at Fish & Richardson, who issued a series of opinions, signed by the

Chairman of that firm for many years, confirming that EchoStar's redesign does not infringe

the '389 patent. [See Exhibits 1 through 3 attached hereto.]

When EchoStar announced its redesign, TiVo responded by announcing publicly that

it would bring a contempt proceeding against EchoStar before it had even examined the new

software. [See Exhibit 4 attached hereto.]

In an attempt to forestall a purely tactical response by TiVo, on April 18, the day the

remand issued, EchoStar unilaterally provided TiVo with EchoStar's pending patent

application regarding its novel approach to the DVR, along with copies ofthe Fish &

Richardson opinions. When TiVo asked to examine the new software under the same

Protective Order and procedures to which the parties had agreed during the lawsuit, EchoStar

(again voluntarily) made the software available to TiVo's lawyers and its consultant. [See R.

Krevans letter of April 18,2008, attached hereto as Exhibit 5 (without opinion letters already

attached hereto as Exhibits 1-3)].

Once again, however, the result has been predictable. TiVo now seeks a finding of

"summary contempt" and, inconsistently, far-reaching, burdensome discovery to attempt to

develop a case against EchoStar's redesigned software.

Page Five

The legal standard concerning contempt motions could not be clearer. "[C]ontempt is

a shield protecting the patentee against an infringer's flagrant disregard for court orders," not

"a sword for wounding a former infringer who has made a good-faith effort to modify a

previously adjudged or admitted infringing device to remain in the marketplace." Arbek

Mfg., Inc. v. Moazzam, 55 F.3d 1567, 1570 (Fed. Cir. 1995); see also KSM Fastening Sys.,

Inc. v. HA. Jones Co., 776 Fold 1522, 1526 (Fed. Cir. 1985) (accused infringer is "entitled to

design around the claims of a patent without the threat of contempt proceedings with respect

to every modified device").

Against this background, TiVo's three claims of contempt are bound to fail:

1) TiVo's first claim, that EchoStar has failed to "disable the DVR functionality"

of its DVRs is frivolous on its face. The injunction ordered EchoStar to "disable the DVR

functionality (i.e., disable all storage to and playback from a hard disk drive of television

data) in all but 192,708 units of the Infringing Products that have been placed with an end

user or subscriber." In the context of this case, and this Court's injunction, the term

"Infringing Products" means the DVRs the jury found to infringe the claims. The software

used in those DVRs was a critical part of TiVo's infringement case, the jury's verdict, and

this Court's final judgment. In determining what constitutes an "Infringing Product,"

therefore, this Court must consider not just the DVR hardware, but also the software that is

used to control the DVR. If the software used in an EchoStar product has been changed so

Page Six

that the software claims are no longer infringed, the product is no longer an Infringing

Product.

TiVo ignores this, however, clearly taking the position that an EchoStar product that

was found to infringe only the software claims needed to have all of its DVR functionality

disabled, even if the software was subsequently changed so that the product no longer

infringes. This is nonsensical, and a totally unreasonable reading of the injunction.

Moreover, it is clear in this case that because ofthe changes EchoStar has made to the

software, the DVRs in question do not infringe any of the software claims. EchoStar DVRs

no longer index or "parse" incoming data, and thus cannot infringe. Similarly, the complete

elimination of flow-control in the Broadcom DVRs prevents those DVRs from infringing

Once again, KSM Fastening Systems is directly on point:

Nevertheless, devices which could not be enjoined as

infringements on a separate complaint cannot possibly be

deemed enjoined as infringements under an existing

injunction in contempt proceedings.

776 F.2d at 1528 (emphasis added).

2) TiVo's second claim, that "EchoStar is taking the position that it can place

new infringing DVRs on an ongoing basis, as long as the total number of infringing DVRs

does not exceed 192,708" is simply mysterious. I To be absolutely clear, EchoStar has not

I This assertion occurs out ofthe blue. Although the parties have exchanged numerous communications over

EchoStar's redesign, TiVo never mentioned this issue to EchoStar before it filed its letter with the Court.

Page Seven

placed any infringing DVR since this Court's injunction took effect, and it has absolutely no

intention of doing so.

3) Finally, TiVo challenges EchoStar's new DVR software. Again, EchoStar

has done nothing that can result in a finding of contempt. Substantial open issues concerning

whether a modified product infringes a patent cannot be tried in summary contempt

proceedings. Arbek Mfg., 55 F.3d at 1570. In fact, should TiVo pursue this complaint, once

the Court concludes that there is more than a colorable difference between the redesign and

the device originally found to infringe, the Court must terminate the contempt proceeding

immediately. [d. Only last week, the Federal Circuit made it clear that there will always be

more than a "colorable difference" unless the two products are "essentially the same."

Acumed LLC v. Stryker Corp., No. 2007-1115, __F.3d__, Slip Op. at pp. 6-7 (Fed. Cir.

May 13,2008) (copy attached hereto as Exhibit 6). Given the extensive engineering effort,

the novelty of EchoStar's new approach, and the opinions of Fish & Richardson, there is

simply no way that TiVo can allege in good faith that EchoStar's new software is

"essentially the same" as the software it accused at trial?

TiVo is well aware of how its charges of contempt must necessarily play out. Thus,

while claiming that it already can prove that the new software is no more than "colorably

different," TiVo also claims a need to reopen discovery to confirm its view. This invitation

2 If, after a proper investigation, TiVo fonns a good faith view, consistent with Rule II, that EchoStar's new

software infringes the '389 patent, TiVo's remedy is to file a new infringement action. Arbek Mfg., 55 F.3d at

1570.

Page Eight

to endless litigation should be rejected. EchoStar has already voluntarily given TiVo ample

information about its new software, including access to the code itself. There is no

justification for reopening discovery in this matter. Should the Court disagree, EchoStar

would ask, of course, that the discovery be limited and reciprocal. If TiVo intends to pursue

its contempt strategy, EchoStar needs the opportunity to defend itself.

II. Damages during the Stay

There are two approaches the Court can take on this issue:

A) Because ofthe record developed at trial, the Court already has a factual basis

that would allow it to apply the jury's royalty rate to EchoStar's post-verdict sales while the

software adjudged to infringe was in use. If the Court takes this approach, the post-verdict

damages award can probably be determined quickly by the parties and the case concluded.

B) The second approach, which TiVo urges, is again to reopen discovery, and to

schedule a mini-trial before the Court to set a post-verdict royalty rate. There are several

problems with TiVo's approach. First, it is inconsistent with the controlling case law. This

is not a proceeding such as Paice v. Toyota or Amado v. Microsoft where the district court

expressly permitted post-verdict sales of infringing devices to continue subject to a

continuing royalty. This is, instead, a routine determination of damages while an injunction

has been stayed. Increasing the royalty rate chosen by the jury would be an impermissible

additur. See Taylor v. Green, 868 F.2d 162, 165 (5th Cir. 1989) ("neither the district court

Page Nine

nor this court has the power to add to the jury's verdict"); Beck v. Koppers, Inc., No.

3:03CV60-P-D, 2006 U.S. Dist. LEXIS 51628, *11 (N.D. Miss. July 26,2006) ("a federal

court may not increase damages above those awarded by a jury either directly or by

additur"); Gourgues v. Leblanc, No. 98-1459 Section C, 1999 U.S. Dist. LEXIS 4886, at *I

(E.D. La. April 8, 1999) (it is "now well-settled in federal jurisprudence" that "increase of a

jury damages verdict by a federal court violates the Seventh Amendment right to jury trial in

civil cases") (citing Gasperini v. Center for Humanities, Inc., 518 U.S. 415 (1996».

Second, the Federal Circuit mandate does not authorize this Court to retry the jury's

royalty rate; it simply gives the Court discretion to "determine damages, if any" that occurred

while the injunction was stayed.

Finally, TiVo's belief that a new royalty rate would necessarily be higher is clearly

mistaken. In the Amado case cited by TiVo, the Court of Appeals concluded that the rate

would likely be higher because "uncertainties as to infringement and validity had been

eliminated" post trial. 517 F.3d at 1362. In this case, however, unlike Amado, there were no

such uncertainties. TiVo's expert testified that his royalty rate, which was adopted by the

jury, was based on the assumption that the patent was both valid and infringed. [See

testimony ofTiVo's damages expert, Dr. Keith Ugone, on April 4, 2006, attached here as

Exhibit 7.] Thus there was no royalty rate "uncertainty" as to validity or infringement

resolved by the verdict. Compare Amado, 517 F.3d at 1362 (noting that the calculus is

markedly different when infringement and patent validity prior to judgment "is uncertain,

Page Ten

and damages are determined in the context of that uncertainty"). Indeed, the only "changed

circumstances" of any note are the reversal of the hardware infringement verdict, EchoStar's

prompt deployment of non-infringing DVR software, and TiVo's post verdict history of

licensing the '389 patent, all of which should lower, rather than enhance, the royalty rate.

If the Court nevertheless prefers to proceed as TiVo suggests, and try the post-verdict

royalty issue, a schedule affording discovery to both sides should be discussed. See Paice,

504 F.3d at 1315 (inviting development of additional evidence regarding post-judgment

royalty); id. at 1316 (parties should be given "meaningful chance to present evidence"

regarding appropriate post-judgment royalty) (Rader, J., concurring).

In its letter, TiVo also refers to its Bill of Costs. This issue is fully briefed (see

Docket Nos. 797, 807, 810, 811, 813 and 814) and is, as far as EchoStar is aware, pending

before the Clerk. TiVo has asked that costs be taxed in the amount of$333,600.03.

EchoStar has objected to $116,628.23 of that amount.

III. Additional Agenda Item

EchoStar has one item of its own to add to the Court's agenda. The injunction

exempts 192,708 units of the Infringing Products from its scope given the Court's finding of

full compensation to TiVo as to that number of set-top boxes. As such, the law implies a

license for the exempted DVRs "and frees them from the monopoly of the patent." Union

Tool Co. v. Wilson, 259 U.S. 107, 113 (1922); Amstar Corp. v. Envirotech Corp., 823 F.2d

Page Eleven

1538, 1549 (Fed. Cir. 1987) (similar). EchoStar has applied this exception, in part, to model

numbers of very low volume or which it no longer sells or manufactures for deployment.

EchoStar has not deployed its new DVR software to these models.

If a customer has a problem with one of these exempted boxes in the future, and it

needs repair, EchoStar would in the normal course of business employ its "Advance

Exchange" program: the customer contacts EchoStar to say there is a problem, EchoStar

sends a replacement box to the customer, the customer plugs in that box and sends back the

broken box to EchoStar in the packing materials from the replacement box. Under

applicable law, EchoStar is clearly entitled to repair an exempted DVR and return the

repaired DVR to its customer. See, e.g., Kendall Co. v. Progressive Med. Tech., Inc., 85

F.3d 1570, 1573 (Fed. Cir. 1996) ("The right to repair is implied as a matter oflaw"); see

also Bottom Line Mgmt., Inc. v. Pan Man, Inc., 228 F.3d 1352, 1355-56 (Fed. Cir. 2000)

("refurbishing" the patented product by cleaning it, reapplying certain coatings, and repairing

or replacing bent or broken components constitutes permissible repair); accord Stanford

Havens Prods., Inc. v. Gencor Indus., Inc., 953 F.2d 1360, 1376 (Fed. Cir. 1991) (rejecting

contention that permissible repair doctrine applies only to those who purchase from the

patentee or from one authorized to sell by the patentee, and acknowledging the doctrine also

applies to infringers who have become implied licensees by virtue of fully compensating the

patentee through damages). The question is whether EchoStar customers must go without

Page Twelve

satellite television service while the specific DVR is being repaired, or whether alternatively,

EchoStar can swap it out immediately without violating the Court's injunction.

EchoStar has temporarily halted its Advance Exchange program with respect to settop

boxes that have not received the non-infringing DVR software code in order to avoid any

risk of violating the Court's order. EchoStar sought a stipulation from TiVo that a swap

procedure would be permitted. [See Exhibit 8 hereto.] TiVo has, however, recently rejected

this resolution. [See Exhibit 9 hereto.] EchoStar therefore seeks clarification from the Court

of this issue.

Yours truly,

Harold J. McElhinny

cc: Counsel of Record

(Via E-Filing)


----------



## Greg Bimson

Although this thing is fairly well written:


> The injunction ordered EchoStar to "disable the DVR functionality (i.e., disable all storage to and playback from a hard disk drive of television data) in all but 192,708 units of the Infringing Products that have been placed with an end user or subscriber." In the context of this case, and this Court's injunction, the term "Infringing Products" means the DVRs the jury found to infringe the claims.


If this is their defense against a shut down, this is absolutely ridiculous.


> The software used in those DVRs was a critical part of TiVo's infringement case, the jury's verdict, and this Court's final judgment. In determining what constitutes an "Infringing Product," therefore, this Court must consider not just the DVR hardware, but also the software that is used to control the DVR. If the software used in an EchoStar product has been changed so that the software claims are no longer infringed, the product is no longer an Infringing Product.


This is the "new software". However, just because the software was changed does not mean it no longer infringes.

DISH/SATS is trying to assert their new software doesn't infringe and therefore isn't subject to the injunction.

Bye bye, 501, 508, 510, 625, 721, 921 and 942.


----------



## dgordo

Basically the response I expected, we are following the injunction because we have new software. We'll see what the judge thinks.


----------



## scooper

Wow - that's a piece of writing I'd like to put my name on...
Clear, concise, timelined. Detailed as to remedies applied and when. 
What more could you ask ?


----------



## spear61

"the injunction was to take effect thirty days after it was entered: October 9, 2006. Before it took effect, however, the injunction was provisionallystayed by the Court of Appeals on August 18, 2006, and then stayed through the pendency of
the appeal on October 3, 2006."

When the injunction finally took effect in 2008, the (infringing) product no longer existed. Home Free


----------



## scooper

Greg Bimson said:


> Although this thing is fairly well written:If this is their defense against a shut down, this is absolutely ridiculous.This is the "new software". However, just because the software was changed does not mean it no longer infringes.
> 
> DISH/SATS is trying to assert their new software doesn't infringe and therefore isn't subject to the injunction.
> 
> Bye bye, 501, 508, 510, 625, 721, 921 and 942.


Not at all, Greg, not at all...

It needs to be examined in greater detail, I'll agree.


----------



## HobbyTalk

jacmyoung hit the Infringing Product point dead on. That reply makes TiVo's statement look like it was written by a 5th grader.


----------



## dgordo

HobbyTalk said:


> That reply makes TiVo's statement look like it was written by a 5th grader.


I agree.


----------



## Greg Bimson

DISH/SATS said:


> In the context of this case, and this Court's injunction, the term "Infringing Products" means the DVRs the jury found to infringe the claims.





Judge Folsom said:


> "Infringing products: DP-501, DP-508, DP-510, DP-522, DP-625, DP-721, DP-921, and DP-942."


The hardware verdict was overturned on a technicality, a *strict definition of the written claims*. "Infringing Products" is not open to interpretation as it was defined by Judge Folsom in his injunction order.


----------



## jacmyoung

DISH did raise the hardware non-infringing issue as I expected:

"TiVo ignores this, however, clearly taking the position that an EchoStar product that was found to *infringe only the software claims* needed to have all of its DVR functionality disabled, even if the software was subsequently changed so that the product no longer infringes. This is nonsensical, and a totally unreasonable reading of the injunction."

Here DISH raised the issue of its DVRs only infringed in software, not hardware, therefore it is unreasonable to insist all DVRs be disabled even if the software was changed so to no longer infringe.

"Once again, KSM Fastening Systems is directly on point: Nevertheless, devices which could not be enjoined as infringements on a separate complaint (hardware claim) cannot possibly be deemed enjoined as infringements under an existing injunction in contempt proceedings."

Again, the hardware claim ("complaint") issue was raised, that since the hardware is not infringing, according to case law, the hardware can not possibly be considered infringing under the current injunction in the contempt proceeding requested by Tivo.


----------



## dgordo

jacmyoung said:


> DISH did raise the hardware non-infringing issue as I expected:


Makes perfect sense for them to address the hardware issue. If they are going to claim that they are in compliance with the injunction based upon new software, the hardware claim being reversed goes hand in hand.


----------



## James Long

scooper said:


> Wow - that's a piece of writing I'd like to put my name on...
> Clear, concise, timelined. Detailed as to remedies applied and when.
> What more could you ask ?


How about 150 pages of attached exhibits? 

Here's the response document ... most of the exhibits are too big to post here. Several of the files, even though they are part of the public court filing system, are marked "Attorney-Client Communication Privileged and Confidential". I have attached "Exhibit 3" that describes the new DISH technology.

Other exhibits simply show where DISH has already provided information to Tivo and other supporting data.

Enjoy!


----------



## spear61

James Long said:


> How about 150 pages of attached exhibits?
> 
> Here's the response document ... most of the exhibits are too big to post here. Several of the files, even though they are part of the public court filing system, are marked "Attorney-Client Communication Privileged and Confidential". I have attached "Exhibit 3" that describes the new DISH technology.
> 
> Other exhibits simply show where DISH has already provided information to Tivo and other supporting data.
> 
> Enjoy!


Thanks James. I expect you paid Pacer and we all owe you for the info.

It's clear in Exhibit 3; TIVO says their technology avoids the need for "brute force processing" and Dish's new patent application explains " we use brute force processing to accomplish our objective". Clearly a different approach. A good example of the fragile "time" value of a patent


----------



## spear61

dgordo said:


> Thats the why, the how is based on civil procedure rules. 28 USC 1400(b) is the primary patent venue statute. Under the statute, a patent infringement lawsuit may be filed in a jurisdiction (a) where the defendant resides; or (b) where the infringement occurred -- so long as the defendant has a "regular and established place of business" in that jurisdiction. Basically, in a patent case, if you are a national company you can be sued anywhere.


Today Bloomberg has interesting article about Texas Judges and Patents and pending legistation regarding jurisdiction.

http://www.bloomberg.com/apps/news?pid=20601109&sid=aigxeYacQ3ls&refer=home


----------



## scooper

Bad choice of words there "we use brute force processing to accomplish our objective" - rather, I'd describe Echostar's new method as "real-time analysis based on operational parameters of MPEG streams". In practice, given otherwise equivalent processors, Tivo's "Barton Media Switch" holds a decided advantage, especially with lower powered processors. However, with more powerful processors (especially those in the HD MPEG4 DVRs), the real world difference in the 2 methods approaches zero in effect.

How to put it words that everyone will understand - hmm

Tivo figures out the frame length for each event, then puts some information into a table. Trickplay is accomplished substantially by table lookup of precalculated events.

Echostar takes the raw MPEG data and puts it on the Hard drive "as is" - no pre-processing except for counting of frame types. Trickplay is accomplished by calculating the offset in the file directly based on frame types in real-time.

Since Echostar "knows" how they encode data (or how they receive it from ATSC broadcasts), they can make certain assumptions on byte offsets in their raw MPEG files. This would speed up these calculations enough to make the Barton switch irrelevant.


----------



## HiDefGator

Echostar may still want to license the Tivo method for a reasonable fee. The Tivo method provides a decidedly better way to handle trick play. E*'s method is unpredictable, where as Tivo's is right-on every time.


----------



## Curtis52

Greg Bimson said:


> This is the money DISH set aside after the final judgment and verdict, which was held in escrow, back at the end of 2006.
> 
> The writ of cert is to appeal to SCOTUS, to attempt to have the entire infringement verdict overturned, or reduce the amount of the damages.
> 
> The monies in escrow are the damages for infringement up to September, 2006. There has been some interest accruing on that money, so the amount has went up by about $7 million since. I believe the escrow initially held around $97 million.


My understanding is that the money will be released when Dish fails to file a Supreme Court appeal or loses the Supreme Court appeal.


----------



## scooper

HiDefGator said:


> Echostar may still want to license the Tivo method for a reasonable fee. The Tivo method provides a decidedly better way to handle trick play. E*'s method is unpredictable, where as Tivo's is right-on every time.


Isn't that what I substantially said ?


----------



## spear61

HiDefGator said:


> Echostar may still want to license the Tivo method for a reasonable fee. The Tivo method provides a decidedly better way to handle trick play. E*'s method is unpredictable, where as Tivo's is right-on every time.


Yes , I think TIVO's technology is superior and was just quoting from Exhibit 3 where both TIVO and DISH both use the term "brute force", with TIVO saying that is what would have to be used without their technology and DISH acknowledging that they indeed had to use "brute force" (with some other ideas).


----------



## HobbyTalk

scooper said:


> Bad choice of words there "we use brute force processing to accomplish our objective"


I would suspect that the choice of words was very calculated to further differentiate E* software from TiVo's. It shows it is the opposite of TiVo's method. If the software does not infringe I doubt that E* would ever consider licensing TiVo's method as they themselves would like to license their method to others.


----------



## jacmyoung

HobbyTalk said:


> ...If the software does not infringe I doubt that E* would ever consider licensing TiVo's method as they themselves would like to license their method to others.


Or make its patent free to the others that may be under the threat of Tivo's litigation just to get back at Tivo.


----------



## scooper

Reading that document detailing the differences between the two makes me go "Hmm, wonder how my Hauppauge MPEG TV cards are doing the job ?"


----------



## Curtis52

From another board:

"How do you respond to their argument about "parsing" (required in TiVo's patent) and the fact that they on longer "parse"?"

Easy.

I'm not surprised at all. It's pretty much what I expected. Echostar is trying to read additional claim limitations into the adjudicated scope of the claims. But their only problem is that the claim doesn't require that the index be created prior to storage of the A/V components. The claim only requires that the index be created prior to play back, e.g., selection of the frames for a fast forwarding process.

That much is clear from the opinion letter, which states that "Barton testified that if the index was not created before playback the transport stream would need to be analyzed on the fly."

However, playback is just assembly of the stream for display. Echostar does this by using their statistical algorithm to select the frames (i.e., indexing) prior to playback.

They want the court to interpret prior to play back as being synonymous with prior to storage as indicated in their letter, by arguing that they have removed the pre-storage processing of the incoming stream.

They also want the court to construe parse to mean index (which is incorrect). Even still, although parse is recited before storage in the claims, in patent parlance, that doesn't require that parsing be performed before storage.

The case law is clear on this point.

Excerpt: also, although a method claim necessarily recites the steps of the method in a particular order, *as a general rule the claim is not limited to performance of the steps in the order recited, unless the claim explicitly or implicitly requires a specific order*. See Interactive Gift Express, Inc. v.

Thank Echostar. Because these arguments are directed at the claim construction, which is a matter of law; and therefore addressable by Folsom (i.e., without a jury).


----------



## HiDefGator

jacmyoung said:


> Or make its patent free to the others that may be under the threat of Tivo's litigation just to get back at Tivo.


Wouldn't it be better to let SATS sell them millions of new court tested proven non-infringing DVR's?


----------



## jacmyoung

After having some time to re-read the whole DISH filing, one reference got my attention:

"...[d. Only last week, the Federal Circuit made it clear that there will always be more than a "colorable difference" unless the two products are "essentially the same." Acumed LLC v. Stryker Corp., No. 2007-1115, __F.3d__, Slip Op. at pp. 6-7 (Fed. Cir. May 13,2008) (copy attached hereto as Exhibit 6). "

This appears a new standard for "more than coloably different" determination. If true, yes any modified devices may not be subject to contempt charge.

What DISH is saying now, Tivo has no justifications to even request a contempt hearing. And since Tivo was actually requesting discovery of the new software infringement issue under the heading of the contempt proceeding, it is obvious Tivo was mistaken. They could not do that, the only thing they should ask for in a contempt hearing would be to determine colorable difference of the old and new devices.

But according to the most recent case law, to demonstrate "more than colorably different" is not difficult at all.


----------



## scooper

I think tivo just got handed their _ _ _es on a platter on this one...


----------



## Greg Bimson

DISH is in serious trouble. Judge Folsom will find DISH/SATS in contempt, for not shutting down and stopping sales of the listed DVR's.


> Once again, KSM Fastening Systems is directly on point:
> Nevertheless, devices which could not be enjoined as infringements on a separate complaint cannot possibly be deemed enjoined as infringements under an existing injunction in contempt proceedings. 776 F.2d at 1528 (emphasis added).


Too bad there hasn't been a determination regarding the new software. And there won't be until TiVo has a chance to go over it.


----------



## HiDefGator

Greg Bimson said:


> Too bad there hasn't been a determination regarding the new software. And there won't be until TiVo has a chance to go over it.


Silly me I always thought a jury got to decide patent infringement. I guess now it's Tivo's job? Couldn't they have saved like 3 years if they just let Tivo decide in the first place?


----------



## James Long

jacmyoung said:


> After having some time to re-read the whole DISH filing, one reference got my attention:
> 
> "...[d. Only last week, the Federal Circuit made it clear that there will always be more than a "colorable difference" unless the two products are "essentially the same." Acumed LLC v. Stryker Corp., No. 2007-1115, __F.3d__, Slip Op. at pp. 6-7 (Fed. Cir. May 13,2008) (copy attached hereto as Exhibit 6). "
> 
> This appears a new standard for "more than coloably different" determination. If true, yes any modified devices may not be subject to contempt charge.
> 
> What DISH is saying now, Tivo has no justifications to even request a contempt hearing. And since Tivo was actually requesting discovery of the new software infringement issue under the heading of the contempt proceeding, it is obvious Tivo was mistaken. They could not do that, the only thing they should ask for in a contempt hearing would be to determine colorable difference of the old and new devices.
> 
> But according to the most recent case law, to demonstrate "more than colorably different" is not difficult at all.


For reference "Exhibit 6".


----------



## Curtis52

HiDefGator said:


> Silly me I always thought a jury got to decide patent infringement. I guess now it's Tivo's job? Couldn't they have saved like 3 years if they just let Tivo decide in the first place?


No, if TiVo ever gets around to asking for a contempt hearing on the software it will be up to Judge Folsom to decide whether there is more than a colorable difference in the software in the area of the infringed claims.


----------



## dgordo

spear61 said:


> Today Bloomberg has interesting article about Texas Judges and Patents and pending legistation regarding jurisdiction.
> 
> http://www.bloomberg.com/apps/news?pid=20601109&sid=aigxeYacQ3ls&refer=home


Interesting, Thanks.


----------



## dgordo

jacmyoung said:


> After having some time to re-read the whole DISH filing, one reference got my attention:
> 
> "...[d. Only last week, the Federal Circuit made it clear that there will always be more than a "colorable difference" unless the two products are "essentially the same." Acumed LLC v. Stryker Corp., No. 2007-1115, __F.3d__, Slip Op. at pp. 6-7 (Fed. Cir. May 13,2008) (copy attached hereto as Exhibit 6). "
> 
> This appears a new standard for "more than coloably different" determination. If true, yes any modified devices may not be subject to contempt charge.
> 
> What DISH is saying now, Tivo has no justifications to even request a contempt hearing. And since Tivo was actually requesting discovery of the new software infringement issue under the heading of the contempt proceeding, it is obvious Tivo was mistaken. They could not do that, the only thing they should ask for in a contempt hearing would be to determine colorable difference of the old and new devices.
> 
> But according to the most recent case law, to demonstrate "more than colorably different" is not difficult at all.


"essentially the same," doesn't sound difficult to prove.


----------



## jacmyoung

Curtis52 said:


> From another board:
> 
> "How do you respond to their argument about "parsing" (required in TiVo's patent) and the fact that they on longer "parse"?"
> 
> Easy.
> 
> I'm not surprised at all. It's pretty much what I expected. Echostar is trying to read additional claim limitations into the adjudicated scope of the claims. But their only problem is that the claim doesn't require that the index be created prior to storage of the A/V components. The claim only requires that the index be created prior to play back, e.g., selection of the frames for a fast forwarding process.
> 
> That much is clear from the opinion letter, which states that "Barton testified that if the index was not created before playback the transport stream would need to be analyzed on the fly."
> 
> However, playback is just assembly of the stream for display. Echostar does this by using their statistical algorithm to select the frames (i.e., indexing) prior to playback.
> 
> They want the court to interpret prior to play back as being synonymous with prior to storage as indicated in their letter, by arguing that they have removed the pre-storage processing of the incoming stream.
> 
> They also want the court to construe parse to mean index (which is incorrect). Even still, although parse is recited before storage in the claims, in patent parlance, that doesn't require that parsing be performed before storage.
> 
> The case law is clear on this point.
> 
> Excerpt: also, although a method claim necessarily recites the steps of the method in a particular order, *as a general rule the claim is not limited to performance of the steps in the order recited, unless the claim explicitly or implicitly requires a specific order*. See Interactive Gift Express, Inc. v.
> 
> Thank Echostar. Because these arguments are directed at the claim construction, which is a matter of law; and therefore addressable by Folsom (i.e., without a jury).


Understand he is splitting hair now. Tivo's software indeed stores an index file prior to the storage of the A/V files, the reason to do so is to save the CPU power, because back then CPU power was limited. So in that sense due to the lack of CPU power, it was impossible not to store the index file and only do the indexing immediately before trick play, not to mention in Tivo's patent indexing means to store the index information in a physical file and be used later during trick play. In the case of DISH's claim, even if one can force the idea that a real-time statistical algorithem can somehow be interpreted to be indexing, there is no indexing file to speak of because the DISH new software does not store any secondary file in addition to the A/V files.

What this so called expert wanted people to believe is while a patent was specifically designed to work with the old, less powerful hardware, can some how be applied to the use of any later more advanced hardware where the patented method would no longer be necessary due to the higher capability of the new hardware. It is like saying an old method in which it is designed to have 200 live horses to pull a certain trailer in order to reach 30 mph, somehow after someone invented a steam engine that by itself can produce 200 hp to pull the same trailer at 30 mph, that the new device is infringing the old horse carriage simply because just like the horses, the engine must be placed in front of the trailer in order for it to work.

But even that is beyond the point. From the case law DISH cited, it is almost certain that the new DISH software is more than colorably different compared to its old infringing software, so they can not be in contempt of the injunction. An independent proceeding must be ordered to examine the infringement issue of the new software.

Just because the judge, not a jury, may this time determine the new software infringement issue, does not make the issue easier for Tivo or more difficult for DISH, because the whole infringement trial rights will be the same as the previous jury trial. Remember while the jury found in favor of Tivo on both the software and hardware claims, the appeals court overturned the hardware claim.

Replacing a jury with a judge, will not make the appeals court any more or less in favor of any party. In fact judging by the location at which Tivo picked for the trial, that jury was exactly what Tivo wanted to do the work for them, not a judge. Therefore having a judge bench trial is less ideal for Tivo.


----------



## dgordo

scooper said:


> I think tivo just got handed their _ _ _es on a platter on this one...


That is yet to be determined.



 Greg Bimson said:


> DISH is in serious trouble.


As is this.

Like I said, the case law goes both ways, either party prevailing would not surprise me.


----------



## Curtis52

jacmyoung said:


> Understand he is splitting hair now. Tivo's software indeed stores an index file prior to the storage of the A/V files, the reason to do so is to save the CPU power, because back then CPU power was limited.


There is no mention of indexing in claim 31 of the patent. None whatsoever.


----------



## jacmyoung

Greg Bimson said:


> DISH is in serious trouble. ...Too bad there hasn't been a determination regarding the new software. And there won't be until TiVo has a chance to go over it.


Except you interpreted the use of that case law incorrectly, it was referring to the hardware claim not the new software claim. If you have read my previous post, DISH was saying, according to that case law, once the hardware was found to be not infringing, *it can not possibly be* brought into the current injunction contempt proceeding.


----------



## jacmyoung

Curtis52 said:


> There is no mention of indexing in claim 31 of the patent. None whatsoever.


Replace it with the word parsing, so what?

Look let's admit one thing, in almost each and every DISH's argument, they used case law to support their opinion, in a concise way, unless the judge wishes to re-write all those laws, it is hard to imagine he can simply ignore them.


----------



## Curtis52

jacmyoung said:


> Replace it with the word parsing, so what?


Per the claim construction, "parse" means "analyze".


----------



## jacmyoung

Curtis52 said:


> Per the claim construction, "parse" means "analyze".


But for the Tivo software to analyze the frame info, it only stores it in a file prior to the storage of the A/V files, it could not possibly not do so and somehow wait till right before the trick play and analyze something at that time, because the CPUs at the time of the invention had no such power to do such thing.

Again, an inverntion is an invention because it makes things possible when at the time of this invention without it the same things can not be done in the way the invention intends them to do. The order of which the parsing is to take place was crucial for the invention to work, the parsing could not be after the A/V file storage, but before. The order in which the parsing phrase was placed in the patent claim language was clearly to imply the order it actually must be used.

DISH's new software needs not rely on such invention to do its work because of the more powerful CPUs.


----------



## scooper

Look, the long and short is that Tivo's method requires the "Barton Media switch", and Dish has found a way around that. There is not a "Barton Media Switch" in either H/W OR S/W from the description we were able to read.


----------



## James Long

In the simplest terms, DISH is saying "we don't need your patented process to operate our DVRs" ... and they have their experts lined up. Tivo has their "we don't know" arguments.

The biggest thing in Tivo's favor (other than a plaintiff friendly court/judge) is the named receivers in the injunction. DISH has to somehow convince the judge that a named receiver with new software is different enough than the same named receiver before the new software that it isn't the named receiver.

Plus, as good as the technical description and expert opinion is - DISH had technical descriptions and experts before and lost. When in doubt rule for the plaintiff? Welcome to East Texas.


----------



## scooper

dgordo said:


> That is yet to be determined.
> 
> As is this.
> 
> Like I said, the case law goes both ways, either party prevailing would not surprise me.


 Ok - so in the preparation of these briefs - Dish kicked butt. Is that better ?


----------



## dgordo

scooper said:


> Ok - so in the preparation of these briefs - Dish kicked butt. Is that better ?


 Yes, Dish has a much better written brief.


----------



## jacmyoung

James Long said:


> In the simplest terms, DISH is saying "we don't need your patented process to operate our DVRs" ... and they have their experts lined up. Tivo has their "we don't know" arguments.
> 
> The biggest thing in Tivo's favor (other than a plaintiff friendly court/judge) is the named receivers in the injunction. DISH has to somehow convince the judge that a named receiver with new software is different enough than the same named receiver before the new software that it isn't the named receiver.
> 
> Plus, as good as the technical description and expert opinion is - DISH had technical descriptions and experts before and lost. When in doubt rule for the plaintiff? Welcome to East Texas.


At this point after reading enough case laws, I can say even if the judge insists he literally interpret his injunction and renders a contempt verdict, the appeals court will likely overturn it. There are too many case laws to support such outcome.

I also don't think the judge is pro Tivo, if so he would have instructed DISH to pay Tivo's legal fees as the jury suggested.


----------



## Greg Bimson

jacmyoung said:


> Look let's admit one thing, in almost each and every DISH's argument, they used case law to support their opinion, in a concise way, unless the judge wishes to re-write all those laws, it is hard to imagine he can simply ignore them.


Fine. Let's admit that the injunction is written in a clear and concise language, and that forces DISH/SATS to turn off listed DVR's. After all, TiVo has supported that position with case law.


----------



## jacmyoung

dgordo said:


> Yes, Dish has a much better written brief.


As far as who did a better job in the briefs, while I agree DISH wins this contest, unlike many of you I don't necessarily think Tivo's lawyers are bad writers, rather that they had no choice but to write it that way.

They knew they had to use the language of the injunction foremost to seek results, but also understood it would likely be not good enough, the new software issue would be a factor, and additionally they knew after reviewing the new software documents, it was almost certainly more than colorably different than DISH's old infringing software. So they tried to avoid mentioning "colorable difference" rather emphsized the new software's infringement aspect.

That made their filing looked amature since as DISH and many case laws pointed out, the infringement issue of a new device should not be introduced in a contempt discussion. But if they don't mention the new software, they knew DISH will take that idea and run with it.

Another problem of course is they lost the hardware verdict, and did not try to bring it back, that may make them look incompetent, but in reality they must thought the hardware issue was very difficult and risky to revisit at this time, so they had no choice but allow DISH to take the advantage of the hardware issue and run with it.


----------



## Buyerchoice

jacmyoung said:


> DISH's new software needs not rely on such invention to do its work because of the more powerful CPUs.


But lets remember that the units that had new software downloaded used the TIVO method and that therefore they are not likely to have more powerful CPU's installed. Also, the amount of RAM may be inadequate for DISH's new method so this brings into question whether they really are using a new method or just continuing the lies.


----------



## jacmyoung

Greg Bimson said:


> ... After all, TiVo has supported that position with case law.


First of, Tivo's use of case law in its filing was scarce. Secondly Tivo simply did not even acknowledge the reversal of the hardware verdict. I find it hard to imagine how the judge can agree with Tivo that a non-infringing device can be forced to be part of the reasons for contempt of the injunction that explicitely said "Infringing Products...", when even before the injunction was in full force, the hardware in that "Infringing Products..." list no longer was considered infringing.

The injunction was written when the hardware was still infringing, but before it took effect, the hardware was no longer infringing, in fact never infringed, and since Tivo did not contest such issue, they can not possibly explain away how the non-infringing hardware can end up in the contempt discussion. One can not be in contempt of the court by using a non-infringing product, it simply defies logic if the judge agrees with Tivo.

It was up to Tivo to contest the hardware verdict reversal in order to make the injunction whole again, they dropped the ball, not willingly, but no difference in the result.


----------



## Buyerchoice

scooper said:


> Look, the long and short is that Tivo's method requires the "Barton Media switch", and Dish has found a way around that. There is not a "Barton Media Switch" in either H/W OR S/W from the description we were able to read.


However, the units that had used TIVO's method must have had something similar to the Barton media switch (reverse engineered from a TIVO unit) which still brings into question whether the new software could have been made able to bypass it without updating the hardware. So I say DISH might still be lying as they have in the past. Liars are not trustworthy.


----------



## jacmyoung

Buyerchoice said:


> But lets remember that the units that had new software downloaded used the TIVO method and that therefore they are not likely to have more powerful CPU's installed. Also, the amount of RAM may be inadequate for DISH's new method so this brings into question whether they really are using a new method or just continuing the lies.


They used Tivo method simply because it was convenient to do so, not because the receivers lacked power and had to use the Tivo method.

Now it is certainly alright to speculate that DISH was simply lying, they are actually not doing what they have claimed they have been doing, but notice even Tivo was not accusing DISH of such falsehood, after having the chance to look at the new code. They are not saying it is impossible for DISH to use the new code, only that the new code is still infringing.


----------



## Buyerchoice

jacmyoung said:


> The injunction was written when the hardware was still infringing, but before it took effect, the hardware was no longer infringing, in fact never infringed, and since Tivo did not contest such issue


One court said the hardware infringes one said it does not. I believe at anytime in the future TIVO could ask for an appeal. Maybe they just could not have that paperwork ready by last week and it will be presented on May 30 or even at a later date.


----------



## Buyerchoice

jacmyoung said:


> They used Tivo method simply because it was convenient to do so, not because the receivers lacked power and had to use the Tivo method.


You say that but offer no proof that the DISH units have more powerful processors than the TIVO method required. Manufactures always go the cheaper route. I say their processors may not be more powerful, certainly you provided no proof that they are more powerful.


----------



## dgordo

Buyerchoice said:


> One court said the hardware infringes one said it does not.


But the one that said that it does not has more power. All that matters today is that the hardware does not infringe.


----------



## Buyerchoice

jacmyoung said:


> but notice even Tivo was not accusing DISH of such falsehood, after having the chance to look at the new code. They are not saying it is impossible for DISH to use the new code, only that the new code is still infringing.


But you fail to mention that TIVO has only had a very very short period of time to look at the code. I am sure any looking over they have been doing is to ascertain whether the new code infringes, not if it actually works.

Also, TIVO has asked for further discover pertaining to the code. An article I read stated that DISH has apparently held back and not given TIVO all of the code. One has to ask, what is DISH trying to hide? Perhaps that the method cannot work and that they know that the smart people at TIVO would soon figure that out before the final verdict is made final. I simply cannot not find the faith to trust proven thieves.


----------



## James Long

Buyerchoice said:


> You say that but offer no proof that the DISH units have more powerful processors than the TIVO method required. Manufactures always go the cheaper route. I say their processors may not be more powerful, certainly you provided no proof that they are more powerful.


And you offer absolutely no proof that the processors cannot handle "Tivo free" DVR software. So it's what you say vs what someone else says ... except you've got a shorter history of saying anything. 

One thing to note on even the 50x series, there have been software changes ... with noticeable problems that could be attributed to the index free DVR method. The Tivo code in question as a discrete index where 10 or 30 seconds for a skip is pretty much precise. The replacement DISH code "guesses" where in the file that point is ... and with VBR encoding cannot get it right. The performance hit on DISH's DVRs was noticed. "Skip not working correctly." DISH has improved the guessing with successive software updates, but it still isn't as precise as an indexed file. But at least it IS "Tivo free".

Do a little reading ... the user complaints are there. Something changed. Now we know what. 

BTW: :welcome_s


----------



## Buyerchoice

dgordo said:


> But the one that said that it does not has more power. All that matters today is that the hardware does not infringe.


Wrong. That does not necessarily mean anything. Just as DISH is seeking the Supreme Court to overturn the appeal court so can TIVO seek such an appeal to the Supreme Court. They just have not done it yet. Maybe they will. Time will tell.


----------



## dgordo

Buyerchoice said:


> Wrong. That does not necessarily mean anything. Just as DISH is seeking the Supreme Court to overturn the appeal court so can TIVO seek such an appeal to the Supreme Court. They just have not done it yet. Maybe they will. Time will tell.


Wrong? About what? That the appellate court has more power than the district court or that as of today the hardware doesn't infringe?

Of course they can appeal to SCOTUS or they can have the district court address the issue but they have not yet done so. As of today the hardware does not infringe.


----------



## James Long

Buyerchoice said:


> Wrong. That does not necessarily mean anything. Just as DISH is seeking the Supreme Court to overturn the appeal court so can TIVO seek such an appeal to the Supreme Court. They just have not done it yet. Maybe they will. Time will tell.


Tivo doesn't need to go to the Supreme Court. The part of the case they "lost" was reversed and remanded to the District Court that will be holding the status hearing next week. Tivo was given a May 16th deadline to set an agenda for that hearing and they passed on reraising the hardware issue ... but they are already at a court level where it can be handled.


----------



## Buyerchoice

James Long said:


> And you offer absolutely no proof that the processors cannot handle "Tivo free" DVR software. So it's what you say vs what someone else says


I know, but I thought it was important to point out what I pointed out.



> But at least it IS "Tivo free".


Only if it is "more than colorably different". Something we here can not decide. That will be up to patent witness testimony in the new trial that I see no way of avoiding.



> Do a little reading ... the user complaints are there. Something changed.


I am aware of that. I have been following this issue closely for at least seven months on many message boards.


----------



## Buyerchoice

dgordo said:


> Wrong? About what? That the appellate court has more power than the district court or that as of today the hardware doesn't infringe?
> 
> Of course they can appeal to SCOTUS or they can have the district court address the issue but they have not yet done so. As of today the hardware does not infringe.


You answered your own question.


----------



## Buyerchoice

James Long said:


> Tivo doesn't need to go to the Supreme Court. The part of the case they "lost" was reversed and remanded to the District Court that will be holding the status hearing next week. Tivo was given a May 16th deadline to set an agenda for that hearing and they passed on reraising the hardware issue ... but they are already at a court level where it can be handled.


Incorrect. An appeal to the Supreme Court cannot be handled in the District Court. Let me make it clearer. TIVO lost the hardware claim in the Appellate Court, a court more powerful than the District Court. TIVO would *not *inform the lower court that they intend to appeal the hardware claim to the Supreme Court because there would be no point. The lower court can not help TIVO get the Appellate Court ruling overturned, only the Supreme Court can do that, therefore there was no point in TIVO informing the lower court by May 16 that they intend to appeal the Appellate Court ruling to the Supreme Court.

This May 30 court hearing is going to be mostly a non event. The only thing likely to come out of it is that they Judge will say that the injunction is now in effect. The following day DISH will get another Judge to stay the injunction to such time that it can be determined whether the new software infringes. The District Court Judge is not capable of deciphering whether the new software infringes because that will require expert witness testimony from both TIVO and DISH and is the reason the new software issue will go to another trial that will probably begin in about 5 -15 months.

On May 30 the Judge will also likely update the money award amounts to include from the beginning of the first stay to at least such time that DISH downloaded the new software. DISH will not even have to pay that until they hear whether the Supreme Court will hear their appeal case.

The Supreme Court is only nine individuals who are asked to hear more than 7,400 cases per year. They actually agree to hear less than 1 percent of them simply due to time constraints. The likelihood that DISH will get a Supreme Court hearing to overturn the money award is extremely small. The only question is will the Supreme Court turn down dishes request for a hearing next week or next year. Nobody seems to have any idea.

If TIVO is going to appeal to the Supreme Court then that paper work has to be submitted to the Supreme Court and therefore the stated paperwork deadline is not an issue. That paperwork can be filed with the Supreme Court at anytime TIVO decides to pursue the matter. My guess is they are choosing to fight one battle at a time. At least thus far. For all any of us know, we may read on Monday that TIVO has filed for an appeal on the Hardware with the Supreme Court.


----------



## inkahauts

Buyerchoice said:


> Incorrect. An appeal to the Supreme Court cannot be handled in the District Court. Let me make it clearer. TIVO lost the hardware claim in the Appellate Court, a court more powerful than the District Court. TIVO would *not *inform the lower court that they intend to appeal the hardware claim to the Supreme Court because there would be no point. The lower court can not help TIVO get the Appellate Court ruling overturned, only the Supreme Court can do that, therefore there was no point in TIVO informing the lower court by May 16 that they intend to appeal the Appellate Court ruling to the Supreme Court.


Could you point out where it states that Tivo LOST the hardware claim? Last I read, the judgment of the jury was reversed, and sent BACK to the district court for handling. The appeals court never said if the product was or was not infringing... ( I also believe it was because of technical reasons or instructions ot the jury, or something like that, Yes?)So in essence, I'd say that we still don't have a real verdict on if its infringing or not.... And that Tivo has decided at the moment not to find out yet.


----------



## Curtis52

scooper said:


> Look, the long and short is that Tivo's method requires the "Barton Media switch", and Dish has found a way around that. There is not a "Barton Media Switch" in either H/W OR S/W from the description we were able to read.


There is no Barton media switch mentioned in claim 31 of TiVo's patent.


----------



## jacmyoung

Buyerchoice said:


> You say that but offer no proof that the DISH units have more powerful processors than the TIVO method required. Manufactures always go the cheaper route. I say their processors may not be more powerful, certainly you provided no proof that they are more powerful.


It is not even a requirement that the DISH DVRs must be more powerful than the Tivo DVRs. A DISH DVR can even be less powerful than a modern Tivo to use the new software to make the basic DVR functions to work, and the trade off may be they can no longer do some other more demanding trick plays because the new software taxes too much of the CPU power, whereas a Tivo can do a lot more because its method only uses little CPU power by the use of the patented art.


----------



## jacmyoung

Buyerchoice said:


> One court said the hardware infringes one said it does not. I believe at anytime in the future TIVO could ask for an appeal. Maybe they just could not have that paperwork ready by last week and it will be presented on May 30 or even at a later date.


And since Tivo did not bring it up, they had no justification to seek a contempt review. They must first address the hardware issue before they may even bring up the contempt issue.


----------



## jacmyoung

Buyerchoice said:


> But you fail to mention that TIVO has only had a very very short period of time to look at the code. I am sure any looking over they have been doing is to ascertain whether the new code infringes, not if it actually works.
> 
> Also, TIVO has asked for further discover pertaining to the code. An article I read stated that DISH has apparently held back and not given TIVO all of the code. One has to ask, what is DISH trying to hide? Perhaps that the method cannot work and that they know that the smart people at TIVO would soon figure that out before the final verdict is made final. I simply cannot not find the faith to trust proven thieves.


Keep in mind DISH voluntarily provided Tivo the new software code, they did not even have to do so, until the judge orders them to. Again you are trying to rely on some possible but unlikely scenario to argue for Tivo, even Tivo knows it is not a smart thing to do.


----------



## jacmyoung

Buyerchoice said:


> Incorrect. An appeal to the Supreme Court cannot be handled in the District Court. Let me make it clearer. TIVO lost the hardware claim in the Appellate Court, a court more powerful than the District Court. TIVO would *not *inform the lower court that they intend to appeal the hardware claim to the Supreme Court because there would be no point. The lower court can not help TIVO get the Appellate Court ruling overturned, only the Supreme Court can do that, therefore there was no point in TIVO informing the lower court by May 16 that they intend to appeal the Appellate Court ruling to the Supreme Court.
> 
> This May 30 court hearing is going to be mostly a non event. The only thing likely to come out of it is that they Judge will say that the injunction is now in effect. The following day DISH will get another Judge to stay the injunction to such time that it can be determined whether the new software infringes. The District Court Judge is not capable of deciphering whether the new software infringes because that will require expert witness testimony from both TIVO and DISH and is the reason the new software issue will go to another trial that will probably begin in about 5 -15 months.
> 
> On May 30 the Judge will also likely update the money award amounts to include from the beginning of the first stay to at least such time that DISH downloaded the new software. DISH will not even have to pay that until they hear whether the Supreme Court will hear their appeal case.
> 
> The Supreme Court is only nine individuals who are asked to hear more than 7,400 cases per year. They actually agree to hear less than 1 percent of them simply due to time constraints. The likelihood that DISH will get a Supreme Court hearing to overturn the money award is extremely small. The only question is will the Supreme Court turn down dishes request for a hearing next week or next year. Nobody seems to have any idea.
> 
> If TIVO is going to appeal to the Supreme Court then that paper work has to be submitted to the Supreme Court and therefore the stated paperwork deadline is not an issue. That paperwork can be filed with the Supreme Court at anytime TIVO decides to pursue the matter. My guess is they are choosing to fight one battle at a time. At least thus far. For all any of us know, we may read on Monday that TIVO has filed for an appeal on the Hardware with the Supreme Court.


Total misunderstanding of the issue at hand. The way to resolve the hardware issue is to seek a motion for a summary judgment on the issue of equivalents, and do it on 5/16. Tivo can not "appeal" to any other court on such issue.


----------



## Curtis52

jacmyoung said:


> Total misunderstanding of the issue at hand.


If you are saying that TiVo can't take the literal infringement reversal to the Supreme Court I would agree. Total misunderstanding. TiVo can most certainly appeal it.


----------



## jacmyoung

Curtis52 said:


> There is no Barton media switch mentioned in claim 31 of TiVo's patent.


If I understand you correctly, you insist that because Tivo used the word "parse", or "analyze", in its patent claims, therefore no one can have a workaround its patent, because we can all agree for any DVR trick plays to work, some analyzing must occur.

What you are saying is totally in contrast to what the court is saying consistently, that workarounds must be allowed.

One of the most important aspects of examining a patent, is to determine if the "art" in question is obvious to a person of ordinary skills. It would be obvious to an ordinary skilled person to see that some analyzing will be needed in order for a DVR to work.

The question is then how the analyzing is done that may be considered beyond the scope of an ordinary person. That may be how the analyzing is designed, in which order, and utilizing what components and so on that may be considered an innovation, not just an obvious method.

That is why if you read the court documents carefully, in determining claim infringement issue, parties go to great details to try to evaluate the precise meaning of each word, and the precise relation of such word to the next word and the next and the next.

Becasue DISH will certainly be allowed to "analyze", or "parse" the information necessary to make their DVRs work. They only need to ensure the way their new software analyzes the data is different than that of Tivo's, hence called a workaround, which is totally legitimate.


----------



## jacmyoung

Curtis52 said:


> If you are saying that TiVo can't take the literal infringement reversal to the Supreme Court I would agree. Total misunderstanding.


I agree you said it much better


----------



## Curtis52

jacmyoung said:


> Becasue DISH will certainly be allowed to "analyze", or "parse" the information necessary to make their DVRs work. They only need to ensure the way their new software analyzes the data is different than that of Tivo's, hence called a workaround, which is totally legitimate.


The way TiVo does it today isn't important. They may change the order of when the analysis is done tomorrow and still be wihin the patent. As a matter of fact, if TiVo had never built a DVR the patent would be as valid as it is today. The only important thing is what claim 31 says.


----------



## jacmyoung

Curtis52 said:


> The way TiVo does it today isn't important. They may change the order of when the analysis is done tomorrow and still be wihin the patent. As a matter of fact, if TiVo had never built a DVR the patent would be as valid as it is today. The only important thing is what claim 31 says.


Tivo can never infringe its own patent, but the way it does it has everything to do with its patent. And if DISH's new patent application is approved later, and if Tivo is not careful Tivo can infringe on DISH's patent.

Of course it is not in our expertise to argue whether DISH's new software is still infringes or not, we are only wishing what might happen. The new software infringement suit/proceeding will have to happen later and will take time.

As for what kind of proceeding it should be, I think DISH will argue for something as thorough and lengthy as possible. Since it will be a new "independent" infringement suit, it could take quite awhile because DISH will likely have all the appeals rights.


----------



## HiDefGator

jacmyoung said:


> The new software infringement suit/proceeding will have to happen later and will take time.


It might happen later. Personally I think Tivo will take their money, declare they won, and move on to Time Warner.


----------



## Greg Bimson

Buyerchoice said:


> An appeal to the Supreme Court cannot be handled in the District Court. Let me make it clearer. TIVO lost the hardware claim in the Appellate Court, a court more powerful than the District Court. TIVO would not inform the lower court that they intend to appeal the hardware claim to the Supreme Court because there would be no point.


I'll pile on a little bit.

The Court fo Appeals reversed and remanded the hardware claims. They said TiVo can address those claims back at the District Court.

Technically, I think that if TiVo would like, they can appeal the decision handed down by the Court of Appeals to the Supreme Court. However, that is just a useless endeavor. It is a discussion on the application of law. There is no clear-cut issue with the reversal, since the Court of Appeals simply narrowed the scope of the claim. TiVo would have much better luck arguing back at the District Court level.

The only reason for DISH/SATS to file a writ of certoriari is to buy more time. DISH/SATS does not have to pay TiVo until the Supreme Court denies (or loses) the petition.


----------



## Greg Bimson

jacmyoung said:


> What you are saying is totally in contrast to what the court is saying consistently, that workarounds must be allowed.


That is a generic workaround that does not infringe upon a claim. A workaround is the ability to achieve the same result with a substantially different design.

Remember about building a better mouse trap? Mouse traps have been around for years. But design a good one, and patent it, and you'll be rich. Because no one else will be able to copy your design or process.


----------



## Curtis52

Greg Bimson said:


> That is a generic workaround that does not infringe upon a claim. A workaround is the ability to achieve the same result with a substantially different design.


In other words, a workaround that still infringes is not a workaround.


----------



## Greg Bimson

Curtis52 said:


> In other words, a workaround that still infringes is not a workaround.


Although I'll agree with most of the pro-Dish crowd, and state that if the new, workaround design infringes on different claims of the same patent, that requires a new trial. But that does nothing regarding the existing injunction, which contains a list of receivers which must have sales and functionality ceased.

The case law DISH/SATS used to support their contention that the injunction no longer applies to the listed receivers is completely off the mark. So in a contempt proceeding, either the judge will force DISH/SATS to shut down the listed receivers, or DISH/SATS may simply decide to keep the receivers on, taking the daily fines and incurring the wrath of the judge for not following his orders.


----------



## James Long

Buyerchoice said:


> James Long said:
> 
> 
> 
> Tivo doesn't need to go to the Supreme Court. The part of the case they "lost" was reversed and remanded to the District Court that will be holding the status hearing next week. Tivo was given a May 16th deadline to set an agenda for that hearing and they passed on reraising the hardware issue ... but they are already at a court level where it can be handled.
> 
> 
> 
> Incorrect. An appeal to the Supreme Court cannot be handled in the District Court.
Click to expand...

It is you that is incorrect ... perhaps even dead wrong, as we will discover later in your post. Slow down and read what you quoted. Then read the rulings in the case. Then tell us what Tivo needs to appeal to the Supreme Court.

The answer isn't the hardware claims.


> Let me make it clearer. TIVO lost the hardware claim in the Appellate Court, a court more powerful than the District Court. TIVO would *not *inform the lower court that they intend to appeal the hardware claim to the Supreme Court because there would be no point. The lower court can not help TIVO get the Appellate Court ruling overturned, only the Supreme Court can do that, therefore there was no point in TIVO informing the lower court by May 16 that they intend to appeal the Appellate Court ruling to the Supreme Court.


And there is the dead wrong part. Tivo didn't lose the hardware claims ... the appeals court reversed the decision on the hardware claims and remanded the case BACK down to the district court. The appeals court PLACED the next step in the hardware claims at the district court level. There is no reason for Tivo to go over the appeals court heads to the Supreme Court. They have a venue.

The district court ASKED Tivo to set an agenda for a status hearing ... a simple get together of the parties to discuss the status of the case and what further court action may be needed. It is a status hearing where the plaintiff could say "we're happy with the current situation ... the court needs to do nothing more" or "the defendant refuses to follow your order" or "we would like a judgement on the hardware claims" ... Tivo could put anything on the agenda that related to the case. Even additional damages.

Tivo chose not to bring up the hardware claims. Why they ignored those claims is a mystery we can only guess at. It would have been one of my major topics.



> The Supreme Court is only nine individuals who are asked to hear more than 7,400 cases per year. They actually agree to hear less than 1 percent of them simply due to time constraints. The likelihood that DISH will get a Supreme Court hearing to overturn the money award is extremely small. The only question is will the Supreme Court turn down dishes request for a hearing next week or next year. Nobody seems to have any idea.


SCOTUS does seem to work on their own schedule. But DISH was ruled against at the appeals court level and they have a legal right to attempt a SCOTUS appeal ... no matter how unlikely that the case will be accepted.



> For all any of us know, we may read on Monday that TIVO has filed for an appeal on the Hardware with the Supreme Court.


There is no reason why any such appeal would be filed. They have a venue for the hardware claims. All they had to do was tell the district court that they are interested in getting a ruling on those claims. Simple.


----------



## James Long

Curtis52 said:


> If you are saying that TiVo can't take the literal infringement reversal to the Supreme Court I would agree. Total misunderstanding. TiVo can most certainly appeal it.


A SCOTUS appeal would be premature. The appeals court sent the issue back down to the district court. It should be handled there. If Tivo loses on the "doctrine of equivalents" when the hardware claims are reheard then they could appeal to the appeals court, and if needed to the Supreme Court. But TODAY they are at a level where their claims will be heard ... they should take advantage of that instead of wasting time waiting for SCOTUS to decide if the literal infringement decision was wrong at the appeals court ... or to decide if SCOTUS will hear the case at all. They have a venue. They should use it.


----------



## dgordo

Greg Bimson said:


> I'll pile on a little bit.
> 
> The Court fo Appeals reversed and remanded the hardware claims. They said TiVo can address those claims back at the District Court.
> 
> Technically, I think that if TiVo would like, they can appeal the decision handed down by the Court of Appeals to the Supreme Court. However, that is just a useless endeavor. It is a discussion on the application of law. There is no clear-cut issue with the reversal, since the Court of Appeals simply narrowed the scope of the claim. TiVo would have much better luck arguing back at the District Court level.


Exactly.


----------



## Greg Bimson

James Long said:


> Tivo chose not to bring up the hardware claims. Why they ignored those claims is a mystery we can only guess at. It would have been one of my major topics.


I'm not as versed at the newer software as others here...

If the new software DISH/SATS is running no longer uses the Barton Media Switch, would TiVo actually getting a guilty verdict help their case? From what I am reading of others' opinions here, it appears DISH/SATS may have totally worked around the hardware claims by using "brute force" software processing.

The other point I am wondering is if TiVo has acutally done some kind of separate discovery on the 622 and 722 when they were released. If TiVo found that at that time the 622 and 722 also infringed exactly as the listed Infringing Products, is TiVo going to go after those in contempt proceedings just on the basis alone they worked exactly as the Infringing Products?

All I know is that 30 May is going to be interesting.


----------



## Curtis52

Don't miss TiVo's webcast on Wednesday. There is always a Q&A session at the end. The lawsuit will come up a lot.

http://biz.yahoo.com/prnews/080512/aqm090.html?.v=41


----------



## Greg Bimson

OOOH. I missed this one:


jacmyoung said:


> And since Tivo did not bring it up, they had no justification to seek a contempt review. They must first address the hardware issue before they may even bring up the contempt issue.


Link, please.


----------



## James Long

Greg Bimson said:


> The other point I am wondering is if TiVo has acutally done some kind of separate discovery on the 622 and 722 when they were released. If TiVo found that at that time the 622 and 722 also infringed exactly as the listed Infringing Products, is TiVo going to go after those in contempt proceedings just on the basis alone they worked exactly as the Infringing Products?


At the moment Tivo is stuck in "we don't know" mode ... they can blame DISH for not fully informing them (whether or not that is true). Asking questions is probably the best approach. I just wish (for their sake) that they were better at asking the questions. They are doing nearly OK, but not quite 100% OK.



> All I know is that 30 May is going to be interesting.


Primarily because it will be actual court activity ... and not just speculation.


----------



## Greg Bimson

jacmyoung said:


> First of, Tivo's use of case law in its filing was scarce. Secondly Tivo simply did not even acknowledge the reversal of the hardware verdict.


I hate to do this...


> *TiVo's filing, regarding shutdown of the DVR functions:*
> If EchoStar believed that the "disable the DVR functionality" provision of the injunction was inappropriate, EchoStar could have challenged it, but - despite multiple opportunities before both this Court and the Federal Circuit - it chose not to do so. EchoStar cannot simply ignore the Court's unambiguous Order, even if EchoStar were to contend, which it has not previously done, that the injunction as written is inappropriate. *W. Water Mgmt., Inc. v. Brown, 40 F.3d 105, 108 (5th Cir. 1994)* (prohibiting defendants from arguing in a contempt proceeding that injunction was overbroad because "collateral attack on an injunction during contempt proceedings is prohibited if earlier review of the injunction was available" *(citing United States v. Ryan, 402 U.S. 530, 532 n.4 (1971))).*


Two references in case law to the currrent injunction, that a strict, literal, plain language interpretation of the injunction language requires shutting down DVR functions. DISH's response:


> EchoStar DVRs no longer index or "parse" incoming data, and thus cannot infringe. Similarly, the complete elimination of flow-control in the Broadcom DVRs prevents those DVRs from infringing. Once again, KSM Fastening Systems is directly on point:
> 
> *Nevertheless, devices which could not be enjoined as infringements on a separate complaint cannot possibly be deemed enjoined as infringements under an existing injunction in contempt proceedings 776 F.2d at 1528 (emphasis added).*


DISH/SATS is arguing that a formerly infringing DVR with new software is no longer an infringing device, with one reference to case law, and that one is completely dependant that the Judge side with DISH/SATS that the injunction is invalid. The problem is that the injunction is plain language, and tells DISH/SATS to shut down DVR's, supported by case law. There isn't any discussion of old/new software.

Realize this is the Blackberry case, except the injunction is in full force and effect and there is a software workaround already implemented. In the Blackberry case, the injunction to shut down Blackberries was a few days from being issued, and even briefs filed by the Federal Government and the Department of Defense weren't going to stop the injunction order. Rather than having to shut down the devices (as per the injunction) while discussing whether or not the software was no longer infringing, Blackberry's maker, RIMM Ltd, settled the case with NTP.

It is my belief DISH/SATS doesn't get out of this one, because as TiVo filed, DISH/SATS should have appealed the wording of the injunction, but failed to do so.


----------



## Curtis52

Greg Bimson said:


> The other point I am wondering is if TiVo has acutally done some kind of separate discovery on the 622 and 722 when they were released. If TiVo found that at that time the 622 and 722 also infringed exactly as the listed Infringing Products, is TiVo going to go after those in contempt proceedings just on the basis alone they worked exactly as the Infringing Products?


"II. INTERROGATORIES 
1. Identify for each model of EchoStar product that has digital video recorder (DVR) 
functionality, including, but not limited to, DP-501, DP-508, DP-510, DP-721, DP-921, DP-522, DP-625, DP-942, ViP 322, ViP 611, ViP 612, ViP 622, ViP 722, ViP 211 (new version that can be converted into a DVR with addition of an external hard disk drive): (1) whether all units at end-users' sites have software that EchoStar contends does not infringe the Barton patent and, if applicable, what date EchoStar first changed the software to a version that it currently contends is not infringing in those units and how the software was changed from the version adjudged to be infringing; "


----------



## spear61

Looks like Dish "Trick Played and "Time Warped" themselves right out the injunciton.


----------



## peak_reception

James Long said:


> ITivo chose not to bring up the hardware claims. Why they ignored those claims is a mystery we can only guess at. It would have been one of my major topics.


 It is mysterious. What's the worst that happens?

1) The judge says no to summary judgment on the DOE. They still have the software, perhaps making it even easier for Judge Folsom to rule in their favor there (a balanced judgment for both parties). Or...

2) It could've gone to another jury trial. More hassle, time, and money, but seems like a good chance they could win again with the narrower scope, thus scoring not only a knockout blow to E* but also putting them [TiVo] in a powerful position vis-a-vis other infringers too. Or...

3) They might've run the table, winning both on hardware (through summary judgment) and software (via a literal ruling on the injunction). Hardware could be appealed but it would look very bad for E*. Attacking on all fronts would (have) put EchoStar squarely on defense.

Instead, TiVo completely drops hardware and E* happily takes it up to support their position on non-infringement of the new software. Hardware is now difficult if not gone as an issue for TiVo in the Status Meeting on May 30 (and near-term ensuing actions).

Also squandered is the legal momentum that TiVo clearly had in their favor going into this month. E* has taken back the initiative and successfully placed its new software front and center, very difficult to ignore or marginalize even if Judge Folsom was inclined to try.

TiVo's audience in their agenda was Judge Folsom. E*'s audience in their reply was a future appeals court panel. Even if Judge Folsom rules in TiVo's favor I can't help but think E* has strengthened their position considerably down the line. Then again, I'm not a lawyer. I would think this case is hard to predict even for the best lawyers though. Fodder for future patent litigation textbooks perhaps.


----------



## peak_reception

James Long said:


> At the moment Tivo is stuck in "we don't know" mode ... they can blame DISH for not fully informing them (whether or not that is true). Asking questions is probably the best approach. I just wish (for their sake) that they were better at asking the questions. They are doing nearly OK, but not quite 100% OK.
> 
> Primarily because it will be actual court activity ... and not just speculation.


 Actual court activity is pretty dull for the most part  Ask dgordo.


----------



## peak_reception

Greg Bimson said:


> All I know is that 30 May is going to be interesting.


 Not necessarily. The judge might think things over before laying out a road map.


----------



## HiDefGator

James Long said:


> Tivo chose not to bring up the hardware claims. Why they ignored those claims is a mystery we can only guess at. It would have been one of my major topics.


My guess is that Tivo's attorneys told them this would be a non-starter because the only thing the judge could do is order a new trial. If he declared they infringed based on DOE then Dish would have asked based on what did you come to this decision? When he said the jury verdict, Dish would reply that in legal terms that never happened. Now what did you base your decision on again?


----------



## dgordo

peak_reception said:


> Actual court activity is pretty dull for the most part  Ask dgordo.


Very true.


----------



## jacmyoung

Greg Bimson said:


> That is a generic workaround that does not infringe upon a claim. A workaround is the ability to achieve the same result with a substantially different design.
> 
> Remember about building a better mouse trap? Mouse traps have been around for years. But design a good one, and patent it, and you'll be rich. Because no one else will be able to copy your design or process.


But do we see only one brand of mouse trap today or are all other mouse trap producers paying license fees to just one producer?


----------



## jacmyoung

Curtis52 said:


> In other words, a workaround that still infringes is not a workaround.


Correct. Just don't try to define a patent in a way to eliminate all possibilities of any workaround, then we are game.


----------



## Greg Bimson

jacmyoung said:


> But do we see only one brand of mouse trap today or are all other mouse trap producers paying license fees to just one producer?


But now you are making an incorrect assumption.

This doesn't mean no one can build a DVR. It only means no one can build a DVR that infringes upon the Time Warp patent.


----------



## Greg Bimson

peak_reception said:


> Instead, TiVo completely drops hardware and E* happily takes it up to support their position on non-infringement of the new software. Hardware is now difficult if not gone as an issue for TiVo in the Status Meeting on May 30 (and near-term ensuing actions).


Correct me if I am wrong, but doesn't TiVo get to defend or state positions upon DISH/SATS brief on the 30 May hearing?


peak_reception said:


> Also squandered is the legal momentum that TiVo clearly had in their favor going into this month. E* has taken back the initiative and successfully placed its new software front and center, very difficult to ignore or marginalize even if Judge Folsom was inclined to try.


TiVo did that as well, stating they need discovery in order to understand what this new software does. Until then, those receivers infringe.


----------



## jacmyoung

Greg Bimson said:


> Although I'll agree with most of the pro-Dish crowd, and state that if the new, workaround design infringes on different claims of the same patent, that requires a new trial. But that does nothing regarding the existing injunction, which contains a list of receivers which must have sales and functionality ceased.
> 
> The case law DISH/SATS used to support their contention that the injunction no longer applies to the listed receivers is completely off the mark. So in a contempt proceeding, either the judge will force DISH/SATS to shut down the listed receivers, or DISH/SATS may simply decide to keep the receivers on, taking the daily fines and incurring the wrath of the judge for not following his orders.


This shows you continue to ignore what so many case laws say about the purpose of a contempt proceeding. The purpose of a contempt proceeding is to determine the *differences* of the new and old devices. The judge of course may also look at the similarity, or the sameness of the new and old devices, but if he fails to look at the differences, his contmept ruling *will* be overturned.

The law specifies what a judge needs to do when looking at the *differences*, becsically he needs to determine if the *differences* are more than merely colorable or not. If the *differences* are merely colorable, he will find DISH in contempt, if the *differences* are more than colorable, he can not find DISH in contempt, rather order an "independent" infringement proceeding to continue to resolve the new infringement charge.


----------



## dgordo

If an inventor takes an existing, patented mouse trap design, adds a new feature to make an improved mouse trap, and obtains a patent on the improvement, he or she can only legally build his or her improved mouse trap with permission from the patent holder of the original mouse trap, assuming the original patent is still in force. On the other hand, the owner of the improved mouse trap can exclude the original patent owner from using the improvement.
Herman v. Youngstown Car Mfg. Co., 191 F. 579, 584-85, 112 CCA 185 (6th Cir. 1911)


----------



## jacmyoung

Greg Bimson said:


> But now you are making an incorrect assumption.
> 
> This doesn't mean no one can build a DVR. It only means no one can build a DVR that infringes upon the Time Warp patent.


The only assumption I made after reading your mouse trap analogy was there may not be a workaround of that new mouse trap, if you did not mean that then yes I misunderstood you.


----------



## jacmyoung

Greg Bimson said:


> OOOH. I missed this one:Link, please.


Read DISH's filing.


----------



## jacmyoung

Greg Bimson said:


> I hate to do this...


But

"TiVo's filing, regarding shutdown of the DVR functions:
If EchoStar believed that the "disable the DVR functionality" provision of the injunction was inappropriate, EchoStar could have challenged it, but - despite multiple opportunities before both this Court and the Federal Circuit - it chose not to do so. EchoStar cannot simply ignore the Court's unambiguous Order, even if EchoStar were to contend, which it has not previously done, that the injunction as written is inappropriate. W. Water Mgmt., Inc. v. Brown, 40 F.3d 105, 108 (5th Cir. 1994) (prohibiting defendants from arguing in a contempt proceeding that injunction was overbroad because "collateral attack on an injunction during contempt proceedings is prohibited if earlier review of the injunction was available" (citing United States v. Ryan, 402 U.S. 530, 532 n.4 (1971))). "

is Tivo's attack on the supposed DISH attack on the injunction itself, DISH did not attack the injunction, it was Tivo's strawman tactic, it simply does not apply.

When you quoted:

"Nevertheless, devices which could not be enjoined as infringements on a separate complaint cannot possibly be deemed enjoined as infringements under an existing injunction in contempt proceedings 776 F.2d at 1528 (emphasis added). "

You again misunderstood what DISH said, as I tried to point it out to you once already, what the case law basically said was, the devices (hardware) which could not be enjoined as infringements (the infringements no longer exist) on a separate complaint (on the hardware complaint as supposed to the software complaints) cannot possibly be deemed enjoined as infringements under (brought into the discussion of) an existing injunction in contempt proceedings (the contempt proceeding Tivo is seeking).

Why, simple, DISH can not be found in contempt of the court for using their hardware that never infringed, it has nothing to do with what the injunction said and it is not an attack on the injunction.

The injunction was written at the time when the hardware was considered infringing, the hardware now never infringed so they can not be brought into the discussion of the contempt proceeding, only the software, because the old software still was infringing.

The judges job is to determine if the differences of the old and new software are more than colorable or not. According to that case law, the judge should not even touch the hardware, because they never infringed.


----------



## Greg Bimson

jacmyoung said:


> This shows you continue to ignore what so many case laws say about the purpose of a contempt proceeding. The purpose of a contempt proceeding is to determine the differences of the new and old devices.


Link, please.


jacmyoung said:


> And since Tivo did not bring it up, they had no justification to seek a contempt review. They must first address the hardware issue before they may even bring up the contempt issue.





Greg Bimson said:


> Link, please.





jacmyoung said:


> Read DISH's filing.


Point us to it, please.

Nowhere is it ever stated that there is only one purpose for a contempt hearing.

Nowhere is it ever statnd that hardware must be brought up for a contempt issue.


----------



## jacmyoung

spear61 said:


> Looks like Dish "Trick Played and "Time Warped" themselves right out the injunciton.


That is what I believe will likely to happen too. DISH is not out of the woods, Tivo has requested the new software infringement review, while it used a wrong topic (the contempt proceeding) to prepare such request, the request will still be granted as that is usually what to come next.

But for now the DISH DVRs should be safe.


----------



## jacmyoung

Greg Bimson said:


> Link, please.Point us to it, please.
> 
> Nowhere is it ever stated that there is only one purpose for a contempt hearing.
> 
> Nowhere is it ever statnd that hardware must be brought up for a contempt issue.


Obviously you refuse to read, I am not going to go circular with you on this again, you have your prediction I have mine, we will just have to wait and see.


----------



## spear61

jacmyoung said:


> That is what I believe will likely to happen too. DISH is not out of the woods, Tivo has requested the new software infringement review, while it used a wrong topic (the contempt proceeding) to prepare such request, the request will still be granted as that is usually what to come next.
> 
> But for now the DISH DVRs should be safe.


I agree. And, it is depressing that the legal system was (maybe) used to rob TIVO out of a bigger reward for their great invention (they could have held Dish's toes to the coals if they still were infringing).


----------



## jacmyoung

HiDefGator said:


> My guess is that Tivo's attorneys told them this would be a non-starter because the only thing the judge could do is order a new trial. If he declared they infringed based on DOE then Dish would have asked based on what did you come to this decision? When he said the jury verdict, Dish would reply that in legal terms that never happened. Now what did you base your decision on again?


Pretty much what I had said all along based on my reading of summary judgment issue, and what the appeals court said.

Look even though I said Tivo dropped the ball on this, what really happened was when the Tivo legal team looked at the hardware issue, they realized they did not even have a ball to play, so they decided not to mention it.

Of course they can bring it back during the meeting on or after 5/30. It is unlikely but not impossible.


----------



## James Long

HiDefGator said:


> My guess is that Tivo's attorneys told them this would be a non-starter because the only thing the judge could do is order a new trial. If he declared they infringed based on DOE then Dish would have asked based on what did you come to this decision? When he said the jury verdict, Dish would reply that in legal terms that never happened. Now what did you base your decision on again?


Or the judge could put off any further action on the issue and concentrate on the more pressing matters of making sure the injunction is followed and that DISH ceases infringing on the issues they actually lost on. Tivo raising the hardware issue, even in a minor way, would at least have kept it on the table and allowed the judge to deal with it. As it stands, if the judge follows Tivo's agenda the hardware issue will remain a passed over part of the case.

Minimum: Tivo should have made one of their points in the agenda state that the hardware issues were reversed and remanded and remain unresolved. Follow that with a request to deal with those issues at a later date after core issues of compliance with the active injunction are resolved. Tivo should have kept _all_ of the unresolved issues on the table.

That would lead to DISH mentioning it in their reply to the agenda (even if it was "we agree that this should be delt with later") and would have made the hardware issues part of the agenda for future activity by this court. As it stands, the judge has to add the hardware issues to the agenda or not discuss them at all.


----------



## dgordo

jacmyoung said:


> Pretty much what I had said all along based on my reading of summary judgment issue, and what the appeals court said.
> 
> Look even though I said Tivo dropped the ball on this, what really happened was when the Tivo legal team looked at the hardware issue, they realized they did not even have a ball to play, so they decided not to mention it.
> 
> Of course they can bring it back during the meeting on or after 5/30. It is unlikely but not impossible.


Even if they know with 100% certainty that summary judgment would be denied they need to bring it up. Let the judge rule against it and then request a new trial. The appellate court remanded the issue back to the district court, with a grant or denial of summary judgment tivo cannot do anything.


----------



## dgordo

HiDefGator said:


> My guess is that Tivo's attorneys told them this would be a non-starter because the only thing the judge could do is order a new trial. If he declared they infringed based on DOE then Dish would have asked based on what did you come to this decision? When he said the jury verdict, Dish would reply that in legal terms that never happened. Now what did you base your decision on again?


The evidence presented during the trial.


----------



## jacmyoung

spear61 said:


> I agree. And, it is depressing that the legal system was (maybe) used to rob TIVO out of a bigger reward for their great invention (they could have held Dish's toes to the coals if they still were infringing).


While I understand the sentiment, I disagree. One can not always point fingers at the others for one's own misfortune. Tivo did many things wrong to get it here.

Remember the PC OS battle over a decade ago? The MS DOS OS, while an inferior OS, but unlike the Apple OS, was allowed to be installed on all after market PCs at very low cost. The MS OS flooded the market and became the dominant one, even though everyone hated it.

Luckily, after Apple lost its own similar legal battle with MS, it decided to go the innovation route it was so good at, and look what happens to Apple now.

Did Apple blame the legal system? Maybe it did, but Apple's later success probably started after it stopped blaming the others.


----------



## jacmyoung

dgordo said:


> Even if they know with 100% certainty that summary judgment would be denied they need to bring it up. Let the judge rule against it and then request a new trial. The appellate court remanded the issue back to the district court, with a grant or denial of summary judgment tivo cannot do anything.


Let me play devil's advocate here.

Say the judge grant Tivo's wish and issue a summary judgment in Tivo's favor, and DISH now has all the appeals rights, while the whole process is likely to be stalled until the hardware issue is resolve, who knows how long will that take? And at the meantime nothing else is done. Another year can pass by while we languish in endless speculations and is this what Tivo wants? Is this what James wants?

Another scenario can be that when they looked at the new DISH software code, and just as DISH said, the new software has a workaround of all the hardware components in question so that it is likely the hardware will no longer infringe after all, so why bother? Let's focus on the software because this is where Tivo can still fight a good fight. Tivo may not be successful in shutting off the DISH DVRs for now, but at least they can seek damages without delay, and continue to seek eventual success by working on the new software infringement suit.

In that regard, DISH is also mindful of Tivo's strategy, because if you read DISH's response carefully, in more than one occasions, DISH emphasized their new software's ability to completely not rely on some of the hardware components that was the sticking point of the hardware claims.

What DISH was also doing is to signal the judge and Tivo, drop the hardware effort, we know Tivo you realized that because you did not bring it up this time, we just want to say it a few more times so you do not think about bringing this issue back again.


----------



## Greg Bimson

jacmyoung said:


> The purpose of a contempt proceeding is to determine the differences of the new and old devices.


The purpose of a contempt proceeding is to determine if a party is following the court's order. Nothing more, nothing less.


jacmyoung said:


> Nevertheless, devices which could not be enjoined as infringements on a separate complaint cannot possibly be deemed enjoined as infringements under an existing injunction in contempt proceedings 776 F.2d at 1528 (emphasis added). "
> 
> You again misunderstood what DISH said, as I tried to point it out to you once already, what the case law basically said was, the devices (hardware) which could not be enjoined as infringements (the infringements no longer exist) on a separate complaint (on the hardware complaint as supposed to the software complaints) cannot possibly be deemed enjoined as infringements under (brought into the discussion of) an existing injunction in contempt proceedings (the contempt proceeding Tivo is seeking).


That is a complete misinterpretation.

However, it is exactly one of your other predictions: DISH/SATS is arguing that a 501 and the rest of the listed receivers with new software are NEW products and cannot be covered under the injunction.

DISH/SATS made the jump that the new software does not infringe. So based upon their belief that new software is now "more than colorably different", it cannot be addressed in a contempt proceeding.

That has nothing to do with the hardware at all.


----------



## Greg Bimson

jacmyoung said:


> Another scenario can be that when they looked at the new DISH software code, and just as DISH said, the new software has a workaround of all the hardware components in question so that it is likely the hardware will no longer infringe after all, so why bother?


See? Something I am questioning, and agree with that line of questioning.

If DISH/SATS managed to work the software so it no longer uses the media switch, then there is no reason to bother with the hardware question at all.


----------



## BNUMM

What happens if the Dish "Patent Application" for the new software is denied?


----------



## HiDefGator

BNUMM said:


> What happens if the Dish "Patent Application" for the new software is denied?


doesn't matter if they actually patent it or not. Only matters if it isn't what Tivo patented.


----------



## HiDefGator

dgordo said:


> The evidence presented during the trial.


And why didn't your honor find that same evidence so compelling the first time and issue a directed verdict then? Either way, immediate appeal and stay of the injunction again.


----------



## Curtis52

BNUMM said:


> What happens if the Dish "Patent Application" for the new software is denied?


Dish could appeal it all the way to the Supreme Court and that could take years. It's pretty much irrelevent for that reason but also because there is no requirement that a workaround be patented.


----------



## dgordo

HiDefGator said:


> And why didn't your honor find that same evidence so compelling the first time and issue a directed verdict then?


No one asked. I don't issue orders unless asked to do so.



HiDefGator said:


> Either way, immediate appeal and stay of the injunction again.


Most likely.


----------



## dgordo

jacmyoung said:


> Let me play devil's advocate here.
> 
> Say the judge grant Tivo's wish and issue a summary judgment in Tivo's favor, and DISH now has all the appeals rights, while the whole process is likely to be stalled until the hardware issue is resolve, who knows how long will that take? And at the meantime nothing else is done. Another year can pass by while we languish in endless speculations and is this what Tivo wants? Is this what James wants?
> 
> Another scenario can be that when they looked at the new DISH software code, and just as DISH said, the new software has a workaround of all the hardware components in question so that it is likely the hardware will no longer infringe after all, so why bother? Let's focus on the software because this is where Tivo can still fight a good fight. Tivo may not be successful in shutting off the DISH DVRs for now, but at least they can seek damages without delay, and continue to seek eventual success by working on the new software infringement suit.
> 
> In that regard, DISH is also mindful of Tivo's strategy, because if you read DISH's response carefully, in more than one occasions, DISH emphasized their new software's ability to completely not rely on some of the hardware components that was the sticking point of the hardware claims.
> 
> What DISH was also doing is to signal the judge and Tivo, drop the hardware effort, we know Tivo you realized that because you did not bring it up this time, we just want to say it a few more times so you do not think about bringing this issue back again.


This is all certainly possible but after the contempt hearing they have nothing to lose by asking for summary judgment on the hardware.

Admittedly, I don't understand all the inner workings of a DVR but it is not likely that DISH altered the hardware in these devices.


----------



## jacmyoung

BNUMM said:


> What happens if the Dish "Patent Application" for the new software is denied?


If you read the case law I linked a few pages ago about the infringement of a mirror device, the appeals court actually spent the first half of the article explaining this issue.

One of the arguments the deffendent used to appeal the contempt ruling was that the new device in question was made after their own patent was issued and the new device was made based on their own patent.

But that did not matter, because the court is only interested in the differences between the new device and the old device. The only time the new patent is useful will be if someone else infringed on it in the future.

In this case even if DISH's patent is approved NOW, they can not use this fact to defend their case. But if in the future Tivo decides to expand their DVR development and somehow not careful and infringes on this DISH patent, DISH can go after Tivo.

Of course the reveres is also true, even if DISH never applied for a patent for this new software this fact is irrelevant as far as this case is concerned.


----------



## jacmyoung

dgordo said:


> This is all certainly possible but after the contempt hearing they have nothing to lose by asking for summary judgment on the hardware...


I agree, but it is not likely to matter because the new device is already in play, the old software is already gone.



> ...Admittedly, I don't understand all the inner workings of a DVR but it is not likely that DISH altered the hardware in these devices.


I see where your concern comes from. In this case Tivo never had any patent on the hardware, the only reason the hardware claims came to play was because the Broadcom chip design used in most DVR's, including those of the DISH DVRs, was designed to accommodate the Tivo's method. And the reason the jury found the DISH hardware infringed, was because the DISH old software used the Broadcom chip arrangement almost the same way as how the Tivo software did.

I said "almost" because in the end the appeals court did find one of the many claims not standing, therefore the reversal of the entire hardware claims, again because Tivo requested only to consider literal infringement, and in such condition, even if just one out of many claims is rejected, the entire claim is rejected.

But since Tivo holds no patent on the hardware, DISH does not need to alter the hardware, they only need to design the new software to workaround the hardware chip arrangement, leaving the components in question idle and lay in waste, if they succeed in doing so, they no longer infringe on hardware.

Of course if DISH decided not to waste that Broadcom chip, and design its software to utilize it for some purpose different than what Tivo's method utilizes that chip, DISH should be fine too.

One of the things DISH can design for the Broadcom chips to do maybe to send a text message to the boxes, and the boxes will blink, and if the end users press on a switch, it will desplay a text msg saying: "take that Tivo!", just kidding.


----------



## James Long

HiDefGator said:


> BNUMM said:
> 
> 
> 
> What happens if the Dish "Patent Application" for the new software is denied?
> 
> 
> 
> doesn't matter if they actually patent it or not. Only matters if it isn't what Tivo patented.
Click to expand...

It matters to the extent that DISH is claiming that their new patent pending process is unique enough to Tivo's patented process that it deserves it's own patent ... but I don't believe the patent process will be finished in time to affect this case. The decision of whether or not the new process is not Tivo's process warmed over that affects this case will be made by this judge. (And appealed by whichever party loses.)


----------



## jacmyoung

Greg Bimson said:


> See? Something I am questioning, and agree with that line of questioning.
> 
> If DISH/SATS managed to work the software so it no longer uses the media switch, then there is no reason to bother with the hardware question at all.


That makes two of us then


----------



## inkahauts

jacmyoung said:


> That makes two of us then


If they bring it up and win, wouldn't Tivo get damages? Maybe not future payments, and it may not give them bargaining power for a licensing deal, but they would get some money out of it, yes? I think that if they have figured out that they could only get past damages, that they should simply wait and see if they can get a licensing deal going, and then it won't matter. However, at some point if they never get the a licensing deal and just damages on the software, then I wouldn't be surprised if they go after Dish for the hardware damages.


----------



## Buyerchoice

inkahauts said:


> Could you point out where it states that Tivo LOST the hardware claim? Last I read, the judgment of the jury was reversed, and sent BACK to the district court for handling. The appeals court never said if the product was or was not infringing... ( I also believe it was because of technical reasons or instructions ot the jury, or something like that, Yes?)So in essence, I'd say that we still don't have a real verdict on if its infringing or not.... And that Tivo has decided at the moment not to find out yet.


It seems many people believe that reversing the judgment of the jury is the same as losing. Why would it not be?


----------



## Buyerchoice

jacmyoung said:


> It is not even a requirement that the DISH DVRs must be more powerful than the Tivo DVRs. A DISH DVR can even be less powerful than a modern Tivo to use the new software to make the basic DVR functions to work


Links for proof please.


----------



## Buyerchoice

jacmyoung said:


> And since Tivo did not bring it up, they had no justification to seek a contempt review. They must first address the hardware issue before they may even bring up the contempt issue.


Wrong. The new software has not been proven to not infringe.


----------



## Buyerchoice

jacmyoung said:


> Keep in mind DISH voluntarily provided Tivo the new software code, they did not even have to do so, until the judge orders them to. Again you are trying to rely on some possible but unlikely scenario to argue for Tivo, even Tivo knows it is not a smart thing to do.


I have no idea what you are trying to say.


----------



## Buyerchoice

jacmyoung said:


> Total misunderstanding of the issue at hand. The way to resolve the hardware issue is to seek a motion for a summary judgment on the issue of equivalents, and do it on 5/16. Tivo can not "appeal" to any other court on such issue.


I think this assumes that Judge Folsom would be capable of ruling on the equivalents issue without having expert witnesses testify on the new software. I seriously doubt the Judge is a software engineer. To me, that means a new lawsuit and TIVO knows it. I do not see why TIVO would have to file paperwork for a new lawsuit by May 16. Makes no sense to me. It is a free country and they can institute a new lawsuit at the time of their own choosing.


----------



## Buyerchoice

James Long said:


> Tivo didn't lose the hardware claims ... the appeals court reversed the decision on the hardware claims and remanded the case BACK down to the district court. The appeals court PLACED the next step in the hardware claims at the district court level. There is no reason for Tivo to go over the appeals court heads to the Supreme Court. They have a venue.


I do not agree. I believe reversal means change of verdict which equals loss. The remanding back is just to tie up loose ends in my opinion. Court procedures only.



> Tivo chose not to bring up the hardware claims.


An appeals court already reversed the decision. I do not believe the District Court can overturn the Appellate Court so what point would there be in TIVO putting it into their May 16 paperwork?



> SCOTUS does seem to work on their own schedule. But DISH was ruled against at the appeals court level and they have a legal right to attempt a SCOTUS appeal ... no matter how unlikely that the case will be accepted.


TIVO was also ruled against by the Appellate Court and they too have the right to appeal the decision to the Supreme Court. Why would there be a double standard? I say there is not a double standard.



> They have a venue for the hardware claims. All they had to do was tell the district court that they are interested in getting a ruling on those claims. Simple.


Seems to me that is only true if TIVO wishes to go with the doctrine of equivelents issue and not an appeal to the Supreme Court.


----------



## Buyerchoice

James Long said:


> A SCOTUS appeal would be premature. The appeals court sent the issue back down to the district court. It should be handled there. If Tivo loses on the "doctrine of equivalents" when the hardware claims are reheard then they could appeal to the appeals court, and if needed to the Supreme Court. But TODAY they are at a level where their claims will be heard ... they should take advantage of that instead of wasting time waiting for SCOTUS to decide if the literal infringement decision was wrong at the appeals court ... or to decide if SCOTUS will hear the case at all. They have a venue. They should use it.


They only have a venue if they get a new trial for the hardware issue. All this does not mean the new trial trial begins on May 30. It would have to be scheduled many months down the road. That equals no venue for May 30.

Besides, I still say they could ask for that trial on May 30 even though their current paperwork does not mention it.


----------



## Buyerchoice

spear61 said:


> Looks like Dish "Trick Played and "Time Warped" themselves right out the injunciton.


Looks can be very deceiving. If I looked at DISH in 2004 when the lawsuit first started, I would have believed them when they said they do not infringe. But now they have been caught by two courts that say they are infringing. I choose not to believe liars.


----------



## Buyerchoice

peak_reception said:


> Not necessarily. The judge might think things over before laying out a road map.


I seriously believe My 30 will be mostly a non earth shaking day. This is far from over.


----------



## Buyerchoice

Greg Bimson said:


> But now you are making an incorrect assumption.
> 
> This doesn't mean no one can build a DVR. It only means no one can build a DVR that infringes upon the Time Warp patent.


Right on


----------



## Buyerchoice

jacmyoung said:


> This shows you continue to ignore what so many case laws say about the purpose of a contempt proceeding. The purpose of a contempt proceeding is to determine the *differences* of the new and old devices. The judge of course may also look at the similarity, or the sameness of the new and old devices, but if he fails to look at the differences, his contempt ruling *will* be overturned.
> 
> The law specifies what a judge needs to do when looking at the *differences*, becsically he needs to determine if the *differences* are more than merely colorable or not. If the *differences* are merely colorable, he will find DISH in contempt, if the *differences* are more than colorable, he can not find DISH in contempt, rather order an "independent" infringement proceeding to continue to resolve the new infringement charge.


I believe that most of your post in not relevant because there is no way, in my opinion, that the Judge is qualified to decide if the new software is more or less than colorably different.

The only thing I do agree with is that a new trial will be absolutely necessary to decide the infringement issue.


----------



## Buyerchoice

jacmyoung said:


> Read DISH's filing.


You assume DISH's filing = THE LAW. I have news for you. Lawyers try to get away with things all of the time. Then the Judge tells them how the law works and slaps them silly.


----------



## Buyerchoice

jacmyoung said:


> DISH did not attack the injunction


Yes they did. They have not shut down their DVR's and are currently not in compliance with the injunction.



> the infringements no longer exist


That has not been established. Only DISH says so.



> The injunction was written at the time when the hardware was considered infringing, the hardware now never infringed so they can not be brought into the discussion of the contempt proceeding, only the software, because the old software still was infringing.


This is only stating what is obvious to everyone and it serves no purpose.



> The judges job is to determine if the differences of the old and new software are more than colorable or not. According to that case law, the judge should not even touch the hardware, because they never infringed.


I still say the judge is unqualified to make that Judgment. Also, there is no need to "touch the hardware" if the software is still infringing. Except to zero out the hard drives. :eek2: :eek2: :eek2: :eek2:


----------



## dgordo

Buyerchoice said:


> An appeals court already reversed the decision. I do not believe the District Court can overturn the Appellate Court so what point would there be in TIVO putting it into their May 16 paperwork?


This is what the appellate court said:
"we do not decide what further proceedings, if any, are appropriate in the district court regarding the equivalents issue. Instead, we leave that issue for the district court to resolve in the event that, on remand, TiVo decides to continue to pursue the hardware claims in light of this decision."

Sounds like they are telling the parties that the district court can address the issue.



Buyerchoice said:


> TIVO was also ruled against by the Appellate Court and they too have the right to appeal the decision to the Supreme Court. Why would there be a double standard? I say there is not a double standard.


No one is saying that Tivo cant appeal to SCOTUS, only that they have other options such as having the trial court address the hardware issue.


----------



## dgordo

Buyerchoice said:


> They only have a venue if they get a new trial for the hardware issue. All this does not mean the new trial trial begins on May 30. It would have to be scheduled many months down the road. That equals no venue for May 30.
> 
> Besides, I still say they could ask for that trial on May 30 even though their current paperwork does not mention it.


They have every right to ask for summary judgment on the hardware claims. Maybe they will, maybe they wont. But they need to make some motion with the trial court if they want a new trial because right now the issue has been remanded for Judge Folsom to deal with.


----------



## jacmyoung

Buyerchoice said:


> Yes they did. They have not shut down their DVR's and are currently not in compliance with the injunction.
> 
> That has not been established. Only DISH says so.
> 
> This is only stating what is obvious to everyone and it serves no purpose.
> 
> *I still say the judge is unqualified to make that Judgment. *Also, there is no need to "touch the hardware" if the software is still infringing. Except to zero out the hard drives. :eek2: :eek2: :eek2: :eek2:


You actually made some good ponits, not all but some good ones, until you said the above highlighted. If so the judge should have never precided over this case, or any patent case.

BTW, I never quite understand why people like to bring the attention of their facial expression so eagerly. I know the smileys are there to be used, but I hope no one has the illusion they can be used to demonstrate ones credibility.


----------



## jacmyoung

dgordo said:


> This is what the appellate court said:
> "we do not decide what further proceedings, if any, are appropriate in the district court regarding the equivalents issue. Instead, we leave that issue for the district court to resolve in the event that, on remand, TiVo decides to continue to pursue the hardware claims in light of this decision."
> 
> Sounds like they are telling the parties that the district court can address the issue.
> 
> No one is saying that Tivo cant appeal to SCOTUS, only that they have other options such as having the trial court address the hardware issue.


I did say that, which was why I said he actually made some good points.


----------



## jacmyoung

Now let me try to address what Greg has always argued about the importance of the language of the injunction. I in fact agree with Greg that the specific language in an injunction is very important. It is commonly agreed that for an injunction to be defensible and effective, the language it uses must be concise, specific, inclusive yet not over-reaching.

There was a case law I came across some time ago, I again lost it due to my poor record keeping skill. Basically A brought a suit against B for infringement of A's drug patent because B was making and selling the same drug without A's consent, the judge agreed and placed an injunction against B, preventing B from manufacturing, distributing, selling... B's such drug.

After the trial A again complained to the judge that B violated the injunction by applying a patent on the exact same drug B was making. The judge issued a contempt ruling against B and threatened severe panelties if B did not stop.

On appeal the court overturned the contempt ruling citing no lauguage in the injunction prevented B from filing a patent application, any patent application for that matter. Even though B was trying to apply a patent for the same drug B was found infringed on A's patent, and there was no chance B would even win a patent on the same exact drug patented by A earlier, still B could not be prevented from filing a patent application, any patent application.


----------



## jacmyoung

Now about the language of this injunction. Someone mentioned before (sorry could not verify who because of too many posts) the term "Infringing Products:" right before a list of DISH DVR models.

The language of the injunction placed two limitations on the DISH products to be subject to the injunction. First, the "Infringing Products", second the list of the specific DISH DVR models.

Use the above example, nowhere in the injunction was DISH prevented from replacing the software used in the listed DVRs, or applying a patent on anything.

Tivo did not make the same mistake company A did above, arguing that DISH may not replace the software or may not apply its new software patent.

But what Tivo failed to address was the first limitation: the "Infinging Products." Well it did, in part 3 of its 3-part contempt topic Tivo did say they believe the products are still infringing. But again whether the products are still infringing or not is not the contempt proceeding's concern. DISH's products must satisfy both limitations for DISH to be in contempt of the injunction because as we all agree the language of the injunction must be followed exactly.

DISH has rightfully argued that the products that satisfy the second limitation (DVR501, 625...), no longer satisfy the first limitation, because they are no longer "Infringing Products."

The judge must listen to DISH's such argument and look at the evidence DISH will present, in a contempt hearing, and his job in such proceeding again is to determine the difference between the old "Infringing Products" and the new products with the new software, and if he sees the new products with the new software more than colorably different, he must not find DISH in contempt, and must stop the contempt hearing. He should not have to even touch on the second limitation, the model #s.

Because for DISH to be in contempt, its products must meet both limitations, not just one of them.

And at the same time, we should be able to understand why Tivo did what it must do, even though by doing so made Tivo's lawyers look less organized.


----------



## Greg Bimson

jacmyoung said:


> But what Tivo failed to address was the first limitation: the "Infinging Products."


TiVo did address it...


> Although the injunction required EchoStar to "disable the DVR functionality," with respect to the Infringing Products, EchoStar has refused to do so. Despite the plain language of the injunction, EchoStar argues that it need not disable the DVR functionality because it has modified its software so that it supposedly no longer infringes TiVo's patent.


DISH/SATS entire problem is that "Infringing Products" only has one meaning...


> DP-501, DP-508, DP-510, DP-522, DP-625, DP-721, DP-921 and DP-942





jacmyoung said:


> DISH has rightfully argued that the products that satisfy the second limitation (DVR501, 625...), no longer satisfy the first limitation, because they are no longer "Infringing Products."


The listed receivers _might no longer_ be infringing products, because we don't know for sure if they still infringe, but according to the plain language of the injunction, they most certainly are "Infringing Products", and are to be shut down.


jacmyoung said:


> The judge must listen to DISH's such argument and look at the evidence DISH will present, in a contempt hearing, and his job in such proceeding again is to determine the difference between the old "Infringing Products" and the new products with the new software, and if he sees the new products with the new software more than colorably different, he must not find DISH in contempt, and must stop the contempt hearing. He should not have to even touch on the second limitation, the model #s.
> 
> Because for DISH to be in contempt, its products must meet both limitations, not just one of them.


And this is where most of the people on this topic have an issue with jacmyoung's opinion. This is flat out wrong; the new software discussion does not even have to come into play.

TiVo can ask for a contempt proceeding because DISH/SATS has not stopped sales nor functionality of "Infringing Products". New software has no bearing on a contempt proceeding for a lack of failure to adhere to the injunction. In other words, TiVo can ask for (and receive) a contempt hearing because DISH/SATS isn't following the injunction, and an evaluation of the new software does not have to take place.


----------



## nobody99

jacmyoung said:


> But what Tivo failed to address was the first limitation: the "Infinging Products." Well it did, in part 3 of its 3-part contempt topic Tivo did say they believe the products are still infringing. But again whether the products are still infringing or not is not the contempt proceeding's concern.


I'd like to make a quick point here - I think you have a very basic misunderstanding of the May 30th court date. It is *not* a contempt hearing like you seem to believe. It's a status meeting. At the status meeting, TiVo might say, "we want a contempt hearing for these four products, a second contempt hearing for these eight products, a hearing regarding the hardware. We also want $330,000,000 in damages and legal fees."

What may be confusing you is the fact that Dish is *currently* in contempt. As many have pointed out, it's a simple question: are any of the listed devices still running? if yes, then they are in contempt. At the status meeting he may simply state this - there's no need for discussion.


----------



## Curtis52

I would have thought that a limitation would at least have to be a complete sentence.


----------



## jacmyoung

Curtis52 said:


> I would have thought that a limitation would at least have to be a complete sentence.


Of course Tivo argued on just that, and DISH argued on two limitations.

But DISH has also said, BEFORE the injunction had gone into full force, DISH already made the "Infringing Products" non-infringing. DISH was saying, correct, back when the injunction was written, those products were the Infringing Products, but before the injunction took effect, those products were no longer Infringing Products.

But according to you people, judge needs not to be interested in DISH's evidence, only to have his clock stopped at 2006, or 3/08, whatever the date the DVRs were still using the old software, because the goal of the injunction was just that, about to punish someone for his wrong doing in the past, not what happened since, not what is going on now, and not what may happen in the future.

Unfortunately, if you read any case law about contempt issues in patent infringement, when it comes to the contempt issue, people only look at the present time, not what happened in the past, and by looking at the present time, so the judge may predict or try to discover what may happen in the future.

What had happened in the past will be handled in the damage assessment.

In all the cases I have read so far related to a contempt issue, the arguments have always been what were the differences between the products under injunctions, and the products used NOW. The arguments never touched on what were the products under the language of the injunctions and just stopped there, they always ended up comparing those products, to those that are currently in use.

Again if people want to insist that DISH NEVER stopped those DVRs, you are wrong, because they did, when they were downloading the new software, the DVR did stop working, even if for a few minutes, but still the DVRs did stop working, and after the new software completed the downloading, the new DVRs rebooted and started working as the new DVRs with the new software.

Yes they are still called DVR 501, 625..., but they are nevertheless NEW devices. During the contempt proceeding, the judge is REQUIRED to look at the differences between the old and the new, and to determine if the differences are more than colorable or not.


----------



## scooper

Buyerchoice said:


> Wrong. The new software has not been proven to not infringe.


It hasn't been proven TO infringe either...

However, from reading some of the exhibits that James provided, MY judgement is that it doesn't infringe. Which means diddly squat...


----------



## jacmyoung

scooper said:


> It hasn't been proven TO infringe either...
> 
> However, from reading some of the exhibits that James provided, MY judgement is that it doesn't infringe. Which means diddly squat...


And it should not matter in a contempt proceeding anyway, because the only concern in a contempt hearing is if the new device is more than colorably different to the old one, if the answer is yes, even if it still infringes, the user can not be found in contempt. A new "independent" proceeding must be ordered to then determine the new device infringement issue.


----------



## HobbyTalk

Greg Bimson said:


> TiVo did address it...DISH/SATS entire problem is that "Infringing Products" only has one meaning...


And so you say. Of course your opinion holds no more importance then any other here. The only one that matters is the Judge's and we will have to wait for that opinion


----------



## jacmyoung

HobbyTalk said:


> And so you say. Of course your opinion holds no more importance then any other here. The only one that matters is the Judge's and we will have to wait for that opinion


Even if we accept his literal interpretation, and totally disregard anything a contempt proceeding is designed to address, one can not refuse to see the difference of the two:

"Infringing Products: DVR 501, 625..."

and

"Non-Infringing Products: DVR 501, 625..."

DISH is saying what we have is the latter, no longer the earlier, the judge, in his contempt process, his job is to decide the differences between the above two, and to see if the differences are more than colorable.


----------



## Greg Bimson

jacmyoung said:


> And it should not matter in a contempt proceeding anyway, because the only concern in a contempt hearing is if the new device is more than colorably different to the old one, if the answer is yes, even if it still infringes, the user can not be found in contempt.


In the words of Inigo Montoya, "You keep using that word. I do not think it means, what you think it means."


----------



## jacmyoung

Greg Bimson said:


> In the words of Inigo Montoya, "You keep using that word. I do not think it means, what you think it means."


I never insisted that you did

I only ask you to be willing to read:

http://bulk.resource.org/courts.gov/c/F2/719/719.F2d.1114.82-5889.html

"*The question is presented as to how a patentee should be allowed to proceed when following a successful infringement suit the infringer modifies the infringing structure and continues as before.* Allowing the patentee to proceed by a summary contempt proceeding in all cases would unnecessarily deter parties from marketing new devices that are legitimately outside the scope of the patent in question. On the other hand, to require in each instance the patentee to institute a new infringement suit diminishes the significance of the patent and the order of the court holding the patent to be valid and infringed. *Obviously there must be a dividing point between those cases which should be handled by a summary contempt proceeding and those cases which should be more fully viewed in an infringement proceeding. Courts have uniformly held that the standard to be applied in determining the dividing point is whether the alleged offending device is "merely 'colorably' different from the enjoined device or from the patent.*"

and

"...*Even if Kobrin's modified mirror assembly infringes the Sure Plus patent, as long as it is more than colorably different the infringement should not amount to a contempt nor should it be tested in contempt proceedings*..."


----------



## Greg Bimson

jacmyoung said:


> Even if we accept his literal interpretation, and totally disregard anything a contempt proceeding is designed to address, one can not refuse to see the difference of the two:
> 
> "Infringing Products: DVR 501, 625..."
> 
> and
> 
> "Non-Infringing Products: DVR 501, 625..."


That last sentence is impossible. No one has ruled that there are any non-infringing products.

QED


----------



## jacmyoung

Read the link above, no one had ruled if the modified mirrors were non-infringing products, but still...


----------



## Greg Bimson

jacmyoung said:


> Yes they are still called DVR 501, 625..., but they are nevertheless NEW devices.


Someone owns a device since before the lawsuit began four years ago, but somehow, these are "new"? Simply because they've received modified software?

This isn't a fifteen yard penalty and loss of down if it is a mistake. We are talking contempt of the court.

Less than two years ago, the Infringing Products were found to infringe upon some claims of the Time Warp patent. The only thing that has changed since then is that those units received modified software, which may or may not infringe or be colorably different. Meanwhile, the injunction plainly states to shut those receivers down. Not shut those receivers down unless the software was modified, as was originally proposed by DISH/SATS.


----------



## jacmyoung

Greg Bimson said:


> Someone owns a device since before the lawsuit began four years ago, but somehow, these are "new"? Simply because they've received modified software?
> 
> This isn't a fifteen yard penalty and loss of down if it is a mistake. We are talking contempt of the court.
> 
> Less than two years ago, the Infringing Products were found to infringe upon some claims of the Time Warp patent. The only thing that has changed since then is that those units received modified software, which may or may not infringe or be colorably different. Meanwhile, the injunction plainly states to shut those receivers down. Not shut those receivers down unless the software was modified, as was originally proposed by DISH/SATS.


Don't disagree with me Greg, read the above and tell me what part of the highlighted court's opinions you disagree with.

As far as what DISH had proposed in the past, they did so trying to avoid the injunction. They failed but the attempt was reasonable, anyone would have tried. Once the injunction was issued, did you hear DISH making the same proposal?

Now we are in a different phase called contempt review. It is a whole new ball game. So again I ask you to read the above and tell us which part of the court's opinions you disagree with, not what I said you disagree, but what the court said above you disagree with.


----------



## phrelin

Greg Bimson said:


> Meanwhile, the injunction plainly states to shut those receivers down. Not shut those receivers down unless the software was modified, as was originally proposed by DISH/SATS.


It's a curious dilemma for the Judge. The infringement was software, not hardware. So, what exactly are we shutting down?

If they don't change anything on my 508's except to replace the software with generic Linux operating system with browser and give me a keyboard/mouse/network plug to hook into the back, in your opinion is the Judge going to shut it down because its got a 508 model number on its sticker?

If a 50X box is returned, a different brand new larger hard drive is inserted preloaded with new non-infringing software, and the various stickers are replaced with new model and serial numbers, is still a 50X that has to be shut down?

In other words, saying anything about model and serial numbers of the box is idiotic. I and many posters on this board rebuild computers inside the same box all the time. We replace the operating system with a new or different one. We know these aren't the same computers. But if we stuck some identifying number on the outside of the case, as this ruling is being interpreted here it is the same computer - absolutely, without a doubt until an attorney sitting on the bench is willing to understand that it is different and if he isn't it is the same computer. There are alot of 12-year-olds out there that know better. Of course, they haven't been screwed by attorneys yet.


----------



## James Long

Buyerchoice said:


> James Long said:
> 
> 
> 
> Tivo didn't lose the hardware claims ... the appeals court reversed the decision on the hardware claims and remanded the case BACK down to the district court. The appeals court PLACED the next step in the hardware claims at the district court level. There is no reason for Tivo to go over the appeals court heads to the Supreme Court. They have a venue.
> 
> 
> 
> I do not agree. I believe reversal means change of verdict which equals loss. The remanding back is just to tie up loose ends in my opinion. Court procedures only.
Click to expand...

It isn't a change in verdict, it is a removal of verdict ... sending it back to the lower court is basically saying "please decide this".



> Tivo chose not to bring up the hardware claims.
> 
> 
> 
> An appeals court already reversed the decision. I do not believe the District Court can overturn the Appellate Court so what point would there be in TIVO putting it into their May 16 paperwork?
Click to expand...

The district court would NOT be overturning the decision of an appellate court ... they would be following the explicit instructions of the appellate court.



> SCOTUS does seem to work on their own schedule. But DISH was ruled against at the appeals court level and they have a legal right to attempt a SCOTUS appeal ... no matter how unlikely that the case will be accepted.
> 
> 
> 
> TIVO was also ruled against by the Appellate Court and they too have the right to appeal the decision to the Supreme Court. Why would there be a double standard? I say there is not a double standard.
Click to expand...

Who said there was a double standard? Is this a strawman argument?



> They have a venue for the hardware claims. All they had to do was tell the district court that they are interested in getting a ruling on those claims. Simple.
> 
> 
> 
> Seems to me that is only true if TIVO wishes to go with the doctrine of equivelents issue and not an appeal to the Supreme Court.
Click to expand...

It is true whether you like it or not. They are at a level (district court) where a decision can be made on the issue. There is no guarantee that SCOTUS will ever hear an appeal of whatever Tivo might think was wrong with the appeals court verdict. Why waste time hoping for an unlikely appearance in another forum in the future when they are in the correct forum NOW? IF they want a ruling on hardware claims they are in the place where one can be provided.



Buyerchoice said:


> Besides, I still say they could ask for that trial on May 30 even though their current paperwork does not mention it.


The hardware claims are not on the agenda for May 30th. The agenda was due May 16th. To change the agenda for the May 30th meeting after the court imposed deadline would be unfair to the defendant.


----------



## James Long

jacmyoung said:


> Now we are in a different phase called contempt review.


No, we're not. We're at a stage called "status meeting". Tivo has REQUESTED that the contempt issue be looked at, but next week's meeting is NOT a contempt hearing.


----------



## spear61

Now, I don't have a dog in this fight "except my 942", but if I were TIVO and if Federal Law was similar to California Law, I would argue that the DVR's should be shut down because of and I quote *"an inadequate remedy at law, meaning that compensation would be insufficient;" *which is provided as something an injunction can do in California law. Remember the judge talking about the "people" having an interest in protecting a strong patent system. If allowed in the Federal Court, I would argue that money was not enough.


----------



## jacmyoung

James Long said:


> No, we're not. We're at a stage called "status meeting". Tivo has REQUESTED that the contempt issue be looked at, but next week's meeting is NOT a contempt hearing.


You are correct, we are not in a contempt proceeding, in fact when I read the above court opinions, my impression was there will be a good chance the judge wouldn't even grant Tivo's request for a contempt hearing if Tivo asks for one in that meeting, because DISH has clearly laid out the differences between the new software and the old, infringing one, and it should be clear to a reasonable person that the two are more than colorably different.

But the judge should most certainly grant Tivo's request on the new software infringement issue, and the request on the damage issues.


----------



## Greg Bimson

phrelin said:


> It's a curious dilemma for the Judge. The infringement was software, not hardware. So, what exactly are we shutting down?


Wrong dilemma. The product was found to infringe, and the remedy is a permanent injunction.

Just because the product has been modified so that it might not infringe doesn't mean the order to shut down is ignored.

Everyone is trying to interpret the injunction, including DISH/SATS. The paragraph which states to shut those receivers down does not give any wiggle room whatsoever. Whatever strawman argument one wishes to provide, read that argument against this:


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


Let me put this as bluntly as possible. If this new software still infringes on the '389 patent, and there appears to be some question whether or not it does, DISH/SATS when all is said and done is screwed (but use something beginning with an "f" here).


----------



## jacmyoung

Greg Bimson said:


> ...Let me put this as bluntly as possible. If this new software still infringes on the '389 patent, and there appears to be some question whether or not it does, DISH/SATS when all is said and done is screwed (but use something beginning with an "f" here).


Now that I can agree for the most part. But that will have to wait for a formal independent proceeding on the new software infringement suit, and wait for the appeals to be exhausted, before we may have an answer.

I can see DISH being screwed if the new software eventually is found still infringing, but not so as to have an "F" in front of them, because during the entire new software infringement proceeding, DISH will have done nothing improper, they simply followed the rule of law. They will have to pay the damages druing such time, but should not incur penalites.

And if I put it "bluntly" as well, may I say if the new software is eventually found not infringing, Tivo will not be screwed?


----------



## jacmyoung

spear61 said:


> Now, I don't have a dog in this fight "except my 942", but if I were TIVO and if Federal Law was similar to California Law, I would argue that the DVR's should be shut down because of and I quote *"an inadequate remedy at law, meaning that compensation would be insufficient;" *which is provided as something an injunction can do in California law. Remember the judge talking about the "people" having an interest in protecting a strong patent system. If allowed in the Federal Court, I would argue that money was not enough.


But the appeals court had already rebuffed that idea.


----------



## Curtis52

spear61 said:


> Now, I don't have a dog in this fight "except my 942", but if I were TIVO and if Federal Law was similar to California Law, I would argue that the DVR's should be shut down because of and I quote *"an inadequate remedy at law, meaning that compensation would be insufficient;" *which is provided as something an injunction can do in California law. Remember the judge talking about the "people" having an interest in protecting a strong patent system. If allowed in the Federal Court, I would argue that money was not enough.


Judge Folsom wrote:



> Plaintiff has demonstrated both that it continues to suffer irreparable harm in the absence of an injunction and that there is no adequate remedy at law.


The issue of whether there should be an injunction was settled long ago. The appeals court removed their stay on the injunction.


----------



## jacmyoung

Curtis52 said:


> Judge Folsom wrote:


"Plaintiff has demonstrated both that it continues to suffer irreparable harm in the absence of an injunction and that there is no adequate remedy at law. "

Other than the fact the appeals court ditched that idea in a heart beat, the above pro-Tivo quote, as well as some others, could in fact be used by DISH to argue the removal of the judge from any further court proceedings, if DISH has to appeal another unfavorable decision by the judge.

Look the appeals court judges, Judge Folsom said a few things (Exibits A, B, C and D) that clearly demosntrated his bias against DISH, and the appeals court even agreed with DISH by over-ruling Judge Folsom's unfair characterization of the injuries in the past. Now we are asking you not only to overturn his contempt ruling (or fill in the blank if something else), but appoint a new judge for further handling of the future independent new software infringement suit.


----------



## jacmyoung

Curtis52 said:


> ...The issue of whether there should be an injunction was settled long ago. The appeals court removed their stay on the injunction.


On the Infringing Products, not on the modified products.

There are differences between the two, and if you guys refuse to admit that, and also refuse to read the case law, then of course no one can argue with you.


----------



## phrelin

Greg Bimson said:


> Wrong dilemma. The product was found to infringe, and the remedy is a permanent injunction.
> 
> Just because the product has been modified so that it might not infringe doesn't mean the order to shut down is ignored.


Interesting concept.

I own the 508's. As I read the attachment to E*'s response, I feel reasonably comfortable the software doesn't infringe on TiVo's design (and I think now know why it doesn't work as well as before). I get programming from AllAmericanDirect.

I also think I can figure out how to keep the recording function from being shut down. (There are whole web sites that for years have been devoted to hacking these boxes, in case TiVo doesn't know that.)

No abstract ideological thinking involved. It's my 508, I paid for it, and I'll use it if I want to. I too am not giving anyone any wiggle room. It's this kind of approach that makes dealing with the legal system so absurd!

Of course, in my record keeping, my 508's have been completely depreciated anyway and I really am not going to use them much longer. So for me, its all meaningless anyway.

By the way, E* has taken an approach comparable to Microsoft. Why have an operating system with finesse when you can just add a more powerful processor, ram, and disk space. And when something doesn't work, bloat the code. I'd rather have seen TiVo offer a reasonable license fee for the code with finesse and that E* agreed instead of trying to figure out how to muscle the hardware system.

But why have everyone win rather than all the attorneys win.


----------



## James Long

jacmyoung said:


> You are correct, we are not in a contempt proceeding, in fact when I read the above court opinions, my impression was there will be a good chance the judge wouldn't even grant Tivo's request for a contempt hearing if Tivo asks for one in that meeting, because DISH has clearly laid out the differences between the new software and the old, infringing one, and it should be clear to a reasonable person that the two are more than colorably different.


The trouble is that the injunction was against the product not the software ... DISH is relying on logic to say that the product is no longer the product if the software no longer infringes, and that is the battle.



jacmyoung said:


> Now that I can agree for the most part. But that will have to wait for a formal independent proceeding on the new software infringement suit, and wait for the appeals to be exhausted, before we may have an answer.


No - we just have to wait for the judge, who seems to like plaintiffs and Tivo, to rule that regardless of the software change the product is the product. And then for the appeal when DISH challenges that ruling. No independent suit is needed.

If the judge rules that the current product (old hardware plus new software) is not the same old product (old hardware and ruled infringing software) and the injunction does not apply we MAY see an independent case filed by Tivo against the new product. We will also see the hardware claims in this case woken up. But we're not there yet.



Curtis52 said:


> The issue of whether there should be an injunction was settled long ago. The appeals court removed their stay on the injunction.


The appeals court also stayed the injunction ... which runs contrary to Tivo's claim of "irreparable harm". Did Tivo actually suffer irreparable harm because DISH was able to continue using and selling infringing DVRs? They are still in business ... and any harm can be repaired with money. That doesn't sound like "irreparable harm" to me.



phrelin said:


> I also think I can figure out how to keep the recording function from being shut down.


#1 method: Rely on DISH to continue their fight. The DVRs will only be shut down if DISH sends the command. All of Tivo and Judge Folsom's words are useless when DISH owns the "off" switch.

What is the court going to do? Fine them? That's just another cost of doing business.


----------



## phrelin

James Long said:


> #1 method: Rely on DISH to continue their fight. The DVRs will only be shut down if DISH sends the command. All of Tivo and Judge Folsom's words are useless when DISH owns the "off" switch.


I'd rather Dish give me a really good deal on a second 722.


----------



## HobbyTalk

Since E* will soon start replacing all MPG2 HD boxes with MPG4 capable boxes, that would do away with some of these models anyways.


----------



## Greg Bimson

jacmyoung said:


> Now that I can agree for the most part. But that will have to wait for a formal independent proceeding on the new software infringement suit, and wait for the appeals to be exhausted, before we may have an answer.


No, all that needs to be done is finding out if the new software infringes claims 31 and 61 of the Time Warp patent.

Understand what is written here. The injunction states, amongst other issues, for DISH/SATS to cease "from otherwise infringing or inducing others to infringe the Infringed Claims of the '389 patent." If during a contempt hearing it is found that the software still infringes upon the same claims as the old software, DISH/SATS will be in contempt. Colorably different has no play in this.

Now I understand TiVo's point. Colorably different or not, DISH/SATS is no longer allowed to infringe. Doesn't matter if there is new software, as simply infringing upon the software claims triggers contempt.


----------



## dgordo

jacmyoung said:


> "Plaintiff has demonstrated both that it continues to suffer irreparable harm in the absence of an injunction and that there is no adequate remedy at law. "
> 
> Other than the fact the appeals court ditched that idea in a heart beat, the above pro-Tivo quote, as well as some others, could in fact be used by DISH to argue the removal of the judge from any further court proceedings, if DISH has to appeal another unfavorable decision by the judge.
> 
> Look the appeals court judges, Judge Folsom said a few things (Exibits A, B, C and D) that clearly demosntrated his bias against DISH, and the appeals court even agreed with DISH by over-ruling Judge Folsom's unfair characterization of the injuries in the past. Now we are asking you not only to overturn his contempt ruling (or fill in the blank if something else), but appoint a new judge for further handling of the future independent new software infringement suit.


In order for a court to issue an injunction they must determine that there is no adequate remedy at law. When the appeals court allowed the injunction to be reinstated they were agreeing that there was no adequate remedy at law. If they believed that Tivo had an adeqaute remedy at law they could not have allowed the injunction to stand.

Regardless, it is virtually impossible to get a judge removed. The appeals court didn't agree with judge folsom on certain issues, it happens all the time. This is why have appellate level review.

Prejudice or bias must be personal, or extrajudicial, in order to justify recusal or removal. Browning v. Foltz, 837 F.2d 276, 279 (6th Cir. 1988)


----------



## spear61

Regardless said:


> And, even if it happens, it is not necessarily good news for the one that asks for the removal.
> 
> http://www.time.com/time/magazine/article/0,9171,952466,00.html


----------



## Richard King

James Long said:


> No - we just have to wait for the judge, who seems to like plaintiffs


That is part of the big problem with all the cases being shoveled into this district. There is now a HUGE (not HUGH) financial incentive, not only for the judge to favor plaintiffs in such cases, but for the WHOLE community to favor plaintiffs. This is the community that the jury is drawn from. I have no idea if that had any bearing on this case, but the potential is certainly there.


----------



## jacmyoung

Richard King said:


> That is part of the big problem with all the cases being shoveled into this district. There is now a HUGE (not HUGH) financial incentive, not only for the judge to favor plaintiffs in such cases, but for the WHOLE community to favor plaintiffs. This is the community that the jury is drawn from. I have no idea if that had any bearing on this case, but the potential is certainly there.


But despite all the such suggestions, at least when I looked at this case, I have seen no evidence at all that the jury, or the judge for that matter, showed favorism. They were obviously doing what the law asked them to do, with unavoidable but reasonable errors committed.


----------



## Greg Bimson

jacmyoung said:


> But despite all the such suggestions, at least when I looked at this case, I have seen no evidence at all that the jury, or the judge for that matter, showed favorism. They were obviously doing what the law asked them to do, with unavoidable but reasonable errors committed.


Even to the point of the Court of Appeals. They did overturn the hardware verdict, but did not vacate the verdict. The Court of Appeals said that there was plenty of evidence of infringement using the doctrine of equivalents, and that the only reason a verdict could not be given was because neither TiVo nor DISH/SATS file a brief.

I had read an article on the Eastern Texas circuit. Very good article. If I can find it again, I'll post a link.


----------



## Greg Bimson

found it...


> Ask the people working at the bars, restaurants, and hotels of Marshall, Texas, about April 13, 2006-the day TiVo Inc. won a $73.9 million patent infringement verdict against EchoStar Communications Corporation-and they'll reminisce about a river of money the way managers at Macy's talk about Christmas. To them, it didn't matter which side TiVo was on, only that Marshall was sharing in the good fortune of the patent litigants who came to their courthouse and lavished money on their town. The first thing one TiVo lawyer from Irell & Manella asked after the jury came back was the location of the nearest bar, so the celebration could begin.


----------



## jacmyoung

Greg Bimson said:


> found it...


Well people of that community must be very carerful, because not only do they must promote the impression that their town is the best for the plaintiffs to celebrate their victories, they must also convince the potential defendents there is a reason to come here, because they will also have good opportunities to celebrate in their bars. Tivo's money at the bar is just as good as DISH's money at the bar.

Because at some point if the scale is tilted too much to one side, companies will start to refuse to have operations in the State of Texas, and imagine what that town will look like when gun toting jobless Texans gather at the town square


----------



## jacmyoung

BTW, let me say it again, if people want to be literal about it, and insist the DVRs on the list must be shut off first, then one can not deny the other side of argument, that the DVRs were shut off, during that time when the new software was downloaded, for a few minutes, in some cases a few days while the subscribers tried to figure out what was wrong with their POS boxes.

So yes, if it comes down to this kind of silly argument, no one can deny that the DVRs did get shut off, and the new DVRs took their places after the new software started working again.

I don't think it has to get to that point, but if this is the kind of silly argument the judge wants to see, I am sure DISH will be eager to play along.

In fact DISH can even agree to actually shut all the DVRs off for a few hours during primetime, and play a pre-downloaded 5-minute video of the judge and a few words of his explaining why, and calmly instruct everyone to place a pre-mailed sticker with his name right in front of that model label on the DVR, and then asks everyone to go out and get some fresh air, and by the time they wake up next morning, their DVRs will be with a new kind of software and will work again. The judge can even warn everyone the thing is not over, and he might reappear at some point in the future, and if that happens, he would not be so calm like the last time because you folks will only wake up and see his second angry 5-minute video over and over, nothing else, for eternity.


----------



## Buyerchoice

jacmyoung said:


> You actually made some good ponits, not all but some good ones, until you said the above highlighted. If so the judge should have never precided over this case, or any patent case.


What I meant is that he is not qualified to make the judgment on hid own, without expert testimony from experts in a new trial. Hopefully that makes my meaning clear.


----------



## Buyerchoice

In post 506, jacmyoung seems to be saying that a new injunction needs to be written. 

I am pretty sure that he has a good point.


----------



## Buyerchoice

nobody99 said:


> I'd like to make a quick point here - I think you have a very basic misunderstanding of the May 30th court date. It is *not* a contempt hearing like you seem to believe. It's a status meeting. At the status meeting, TiVo might say, "we want a contempt hearing for these four products, a second contempt hearing for these eight products, a hearing regarding the hardware. We also want $330,000,000 in damages and legal fees."
> 
> What may be confusing you is the fact that Dish is *currently* in contempt. As many have pointed out, it's a simple question: are any of the listed devices still running? if yes, then they are in contempt. At the status meeting he may simply state this - there's no need for discussion.


I agree with all of this, except I am pretty sure the $330,000,000 figure is not correct. Correct me if I am wrong. I thought we are up to about 162 million and possibly a little extra added on for legal fees. (Maybe on the legal fees)


----------



## Buyerchoice

jacmyoung said:


> And it should not matter in a contempt proceeding anyway, because the only concern in a contempt hearing is if the new device is more than colorably different to the old one, if the answer is yes, even if it still infringes, the user can not be found in contempt. A new "independent" proceeding must be ordered to then determine the new device infringement issue.


I can mostly agree with this statement. I would just say one thing. The issues here with the new software download complicated this case. I think the reason there is such heated debate on this is because we all need to be a little more patient and collect future data on the precedings to have a better chance of fully unraveling this complicated case.


----------



## Buyerchoice

jacmyoung said:


> I never insisted that you did
> 
> I only ask you to be willing to read:
> 
> http://bulk.resource.org/courts.gov/c/F2/719/719.F2d.1114.82-5889.html
> 
> "*The question is presented as to how a patentee should be allowed to proceed when following a successful infringement suit the infringer modifies the infringing structure and continues as before.* Allowing the patentee to proceed by a summary contempt proceeding in all cases would unnecessarily deter parties from marketing new devices that are legitimately outside the scope of the patent in question. On the other hand, to require in each instance the patentee to institute a new infringement suit diminishes the significance of the patent and the order of the court holding the patent to be valid and infringed. *Obviously there must be a dividing point between those cases which should be handled by a summary contempt proceeding and those cases which should be more fully viewed in an infringement proceeding. Courts have uniformly held that the standard to be applied in determining the dividing point is whether the alleged offending device is "merely 'colorably' different from the enjoined device or from the patent.*"
> 
> and
> 
> "...*Even if Kobrin's modified mirror assembly infringes the Sure Plus patent, as long as it is more than colorably different the infringement should not amount to a contempt nor should it be tested in contempt proceedings*..."


You appear to be making some well reasoned arguments. This case is starting to fry my brain, but little by little it seems to be coming into better focus..


----------



## Buyerchoice

Greg Bimson said:


> That last sentence is impossible. No one has ruled that there are any non-infringing products.


The key word here might be mine. That would be No one has *YET *ruled that there are any non-infringing products. I do think this will take another trial to sort this out. Therefore a stay of injunction is coming from Folsom or another judge.


----------



## Buyerchoice

Greg Bimson said:


> Someone owns a device since before the lawsuit began four years ago, but somehow, these are "new"? Simply because they've received modified software?
> 
> This isn't a fifteen yard penalty and loss of down if it is a mistake. We are talking contempt of the court.
> 
> Less than two years ago, the Infringing Products were found to infringe upon some claims of the Time Warp patent. The only thing that has changed since then is that those units received modified software, which may or may not infringe or be colorably different. Meanwhile, the injunction plainly states to shut those receivers down. Not shut those receivers down unless the software was modified, as was originally proposed by DISH/SATS.


It seems to me that you are being a bit close minded. I do not believe another judge will let Folsom get away with enforcing the injunction because shutting down the DVR's could cause huge harm to DISH and may punish DISH unfairly if later the DVR's are found to be non-infringing. I think that DISH has played this in such a way that they have saved their own asses, at least temporarily, until the end of a new trial.


----------



## Buyerchoice

spear61 said:


> Now, I don't have a dog in this fight "except my 942", but if I were TIVO and if Federal Law was similar to California Law, I would argue that the DVR's should be shut down because of and I quote *"an inadequate remedy at law, meaning that compensation would be insufficient;" *which is provided as something an injunction can do in California law. Remember the judge talking about the "people" having an interest in protecting a strong patent system. If allowed in the Federal Court, I would argue that money was not enough.


I see where you are coming from and I tend to agree with your statement. But man, this case is a mind fryer. I think I need to step back from this for a week or so. Brain overload.


----------



## Buyerchoice

Greg Bimson said:


> Just because the product has been modified so that it might not infringe doesn't mean the order to shut down is ignored.


Look, I used to believe most of what you believe, but now I find that my opinion is changing. I think you are ignoring the fact that DISH could be wrongfully harmed by enforcing the injunction *at this time, before* another trial can determine whether the new software infringes or not..


----------



## jims

I still believe that by the Appellate Court lifting the stay and being aware that the order was to shut down and not to modify then that if contempt is ruled that they did not shut down then Dish will be automatically in a worse position by disobeying both the District and Appellate courts.

That being said I think Dish will be responsible for swapping out the infringing boxes at a minimum inconvenience to their customer base.


----------



## Buyerchoice

jacmyoung said:


> Now that I can agree for the most part. But that will have to wait for a formal independent proceeding on the new software infringement suit, and wait for the appeals to be exhausted, before we may have an answer.
> 
> I can see DISH being screwed if the new software eventually is found still infringing, but not so as to have an "F" in front of them, because during the entire new software infringement proceeding, DISH will have done nothing improper, they simply followed the rule of law. They will have to pay the damages druing such time, but should not incur penalites.
> 
> And if I put it "bluntly" as well, may I say if the new software is eventually found not infringing, Tivo will not be screwed?


I agree 100 percent with this statement, especially the first paragraph. It makes perfect sense.


----------



## Buyerchoice

jacmyoung said:


> But the appeals court had already rebuffed that idea.


I have read the appeal court decision and I believe this statement is incorrect. Correct me if you can.


----------



## Buyerchoice

Curtis52 said:


> The appeals court removed their stay on the injunction.


However, that was one day before DISH announced the new software. I think that move changes some things. Agreed?


----------



## James Long

phrelin said:


> I'd rather Dish give me a really good deal on a second 722.


While the 622/722 were not named in the injunction they have "suffered" the software upgrade that was noted on the older (named) models and are listed in Tivo's current listing. In other words, I would not be surprised if they were included in the injunction.


Greg Bimson said:


> found it...
> 
> 
> 
> The first thing one TiVo lawyer from Irell & Manella asked after the jury came back was the location of the nearest bar, so the celebration could begin.
Click to expand...

Perhaps after a loss Tivo would revisit that bar to cry in their beer? 


> EchoStar's lawyers from Morrison & Foerster straggled out of the town's small federal courthouse and returned to the Comfort Suites hotel, where the lawyers drank and watched cartoons. The looming question wasn't just how they could have suffered such a devastating loss-Marshall was, after all, part of a plaintiffs-friendly district once described by U.S. Supreme Court justice Antonin Scalia as "a renegade jurisdiction"-but how they could prevent it from happening again





Buyerchoice said:


> However, that was one day before DISH announced the new software. I think that move changes some things. Agreed?


The timing was not related ... besides, DISH announced their new software months before the stay on the injunction was lifted.


----------



## Buyerchoice

jacmyoung said:


> Other than the fact the appeals court ditched that idea in a heart beat





> Judge Folsom said a few things (Exibits A, B, C and D) that clearly demonstrated his bias against DISH, and the appeals court even agreed with DISH by over-ruling Judge Folsom's unfair characterization of the injuries in the past.


Not sure where you are getting the above stuff, but I think it is your misinterpretation or confusion guiding those statements. If you can prove me wrong, more power to you.


----------



## Buyerchoice

jacmyoung said:


> On the Infringing Products, not on the modified products.
> 
> There are differences between the two, and if you guys refuse to admit that, and also refuse to read the case law, then of course no one can argue with you.


I have made an effort to take your past points into consideration and I do agree that it certainly seems possible that some are closing their minds to new ways of looking at the situation.


----------



## Buyerchoice

phrelin said:


> I also think I can figure out how to keep the recording function from being shut down. (There are whole web sites that for years have been devoted to hacking these boxes, in case TiVo doesn't know that.)


On other boards people have implied that if DISH is forced to shut down their DVR's then DISH could no longer provide program guide data, which would mean that all recordings would need to be set up manually by time and day. Manual recordings on a TIVO do not give any information on recordings. They just say "manual recording" Therefore the only way to know what a recorded program is, would be to begin playing it.

Also, some argue that if DISH downloads new software by the satillite and not a phone line or broadband, then DISH could disable the operating system even if someone disconected the DVR from the phone or broadband.

Since I do not own a DISH unit, I leave you to comment.


----------



## Buyerchoice

James Long said:


> The appeals court also stayed the injunction


I believe that to be an incorrect statement. The injunction went into effect on April 18 2008.



> The DVRs will only be shut down if DISH sends the command. All of Tivo and Judge Folsom's words are useless when DISH owns the "off" switch.
> 
> What is the court going to do? Fine them? That's just another cost of doing business.


If past cases are any indication, contempt of court fines are designed to be so stiff on a per day of contempt basis, that nobody in their right mind would pay them for very long. The very stiff fines are designed to force compliance with an injunction and are very effective at doing so.


----------



## Buyerchoice

HobbyTalk said:


> Since E* will soon start replacing all MPG2 HD boxes with MPG4 capable boxes, that would do away with some of these models anyways.


But that only helps DISH if the new software is "more than colorably different" from the infringing software.


----------



## James Long

Buyerchoice said:


> James Long said:
> 
> 
> 
> The appeals court also stayed the injunction
> 
> 
> 
> I believe that to be an incorrect statement. The injunction went into effect on April 18 2008.
Click to expand...

It doesn't matter what you believe when you get the facts wrong ... tell us why an injunction written in 2006 went into effect in 2008 ... you will find the truth. The appeals court stayed the injunction.


----------



## Richard King

Greg Bimson said:


> found it...


Interesting article, Greg. Thanks for posting it.


----------



## Buyerchoice

Greg Bimson said:


> No, all that needs to be done is finding out if the new software infringes claims 31 and 61 of the Time Warp patent.


Is it your opinion that to determine the above that it can be done in less than the four years and five months that the original verdict and appeal took? If so, please state why.



> Now I understand TiVo's point. Colorably different or not, DISH/SATS is no longer allowed to infringe. Doesn't matter if there is new software, as simply infringing upon the software claims triggers contempt.


I have to admit, I am baffled by this statement. It seems to make no sense at all to me. Maybe I am too tired to think clearly or you need to write better, or maybe you are just plain wrong, I do not know which it is.


----------



## Buyerchoice

dgordo said:


> In order for a court to issue an injunction they must determine that there is no adequate remedy at law. When the appeals court allowed the injunction to be reinstated they were agreeing that there was no adequate remedy at law. If they believed that Tivo had an adequate remedy at law they could not have allowed the injunction to stand.


Once again, that was the case one day before DISH announced new software, but now the issue has to be decided before any Judge would agree to possibly wrongfully harm DISH with an injunction. New ballgame.

Folsom may proceed with the injunction but I believe it would be stayed by another court, the following day, just like back in 2006.


----------



## jacmyoung

Buyerchoice said:


> But that only helps DISH if the new software is "more than colorably different" from the infringing software.


I don't think anyone is saying this is not so at this point, because based on the latest case law DISH cited, it is very easy to say one is more than colorably different than the other, but to respond to this issue, the new software must be infringement free, not just more than colorably different.

The points of contention left are basically two:

1) Are the Infringing Products on the list the same as the current products, given that they bear the same names and labels?

2) Have those Infringing Products actually being turned off or not?

One can argue that the answer for both is yes, as I explained earlier.

My point was DISH only needs a yes answer on 1) to avoid a contempt ruling, but if some of the people insist to be literal that 2) must be answered first, then I have also given a literal response to that question.


----------



## jacmyoung

Quote:
"Now I understand TiVo's point. Colorably different or not, DISH/SATS is no longer allowed to infringe. Doesn't matter if there is new software, as simply infringing upon the software claims triggers contempt. "

That was completely in contrast to the court's opinion, the case law I linked before was abandantly clear, that if the NEW device is more than colorably different, even if it still infringes, it CAN NOT trigger a contempt ruling.


----------



## Buyerchoice

James Long said:


> DISH announced their new software months before the stay on the injunction was lifted.


I believe that is an incorrect statement. I have been following this case closely and the first time I ever heard DISH announce new software was one day after the appeals court stated that the software infringes. That dissolved the stay immediately, as the language shows. Feel free to try to prove me wrong.


----------



## Buyerchoice

James Long said:


> It doesn't matter what you believe when you get the facts wrong ... tell us why an injunction written in 2006 went into effect in 2008 ... you will find the truth. The appeals court stayed the injunction.


What facts are wrong? In 2008, when the appeals court upheld the 2006 software infringement verdict, the stay immediately dissolved on April 18, 2008.


----------



## jacmyoung

Buyerchoice said:


> I believe that is an incorrect statement. I have been following this case closely and the first time I ever heard DISH announce new software was one day after the appeals court stated that the software infringes. That dissolved the stay immediately, as the language shows. Feel free to try to prove me wrong.


You are incorrect, first off, DISH did publicly say a few months before that they have downloaded a new non-infringing software, secondly, when the appeals court reaffirmed the software verdict and upheld the injunction (removed the stay), the injuction actually went in full force a few weeks later because there was a total of 30-day "grace period", and only a few days had passed back in 06 when the appeals court stayed the injunction, so there were a few weeks left of such period.


----------



## Buyerchoice

jacmyoung said:


> if the NEW device is more than colorably different, even if it still infringes


It is my understanding that if more than colorably different, it does not infringe.


----------



## jacmyoung

Buyerchoice said:


> It is my understanding that if more than colorably different, it does not infringe.


No. A device can be more than colorably different but in the end found to be still infringing. Need more aspirin? They are patent free


----------



## phrelin

James Long said:


> While the 622/722 were not named in the injunction they have "suffered" the software upgrade that was noted on the older (named) models and are listed in Tivo's current listing. In other words, I would not be surprised if they were included in the injunction.


Maybe, but not without another trial if you accept the arguments of the literalists here who are going by the numbers on the boxes instead of what's in them. If what's in them turns out to be the issue, it will require hearings with expert testimony at a minimum. I thought the infringement was the software, but apparently it's stickers with model and serial number on them.


----------



## James Long

Buyerchoice said:


> What facts are wrong? In 2008, when the appeals court upheld the 2006 software infringement verdict, the stay immediately dissolved on April 18, 2008.


I stated that the appeals court stayed the injunction ... you replied that my statement was incorrect. Yet you once again CONFIRM that the injunction was stayed by the appeals court - so my statement was not an "incorrect" statement. If you're going to quote a statement and label it "incorrect" be truthful about it.


Buyerchoice said:


> I believe that is an incorrect statement. I have been following this case closely and the first time I ever heard DISH announce new software was one day after the appeals court stated that the software infringes. That dissolved the stay immediately, as the language shows. Feel free to try to prove me wrong.


It is obvious that you're not following the situation close enough. The patent filing for the new software was being discussed on this very forum long before the stay of the injunction ended. And no, the new software DID NOT dissolve the stay of the injunction ... returning the case to the lower court ended the stay. It had NOTHING to do with the new software.


----------



## James Long

phrelin said:


> Maybe, but not without another trial if you accept the arguments of the literalists here who are going by the numbers on the boxes instead of what's in them. If what's in them turns out to be the issue, it will require hearings with expert testimony at a minimum. I thought the infringement was the software, but apparently it's stickers with model and serial number on them.


Unfortunately the newer models were not offered at the time that the court case was filed so Tivo couldn't name them. But they apparently _used_ (past tense) the same software. Part of the discovery now is to decide if they should be considered covered by the injunction.


----------



## dgordo

Buyerchoice said:


> Once again, that was the case one day before DISH announced new software, but now the issue has to be decided before any Judge would agree to possibly wrongfully harm DISH with an injunction. New ballgame.


Incorrect, as others have stated, Dish announced that they had a new "uninfringing software" well before the case went to the appellate court.


----------



## Curtis52

dgordo said:


> Incorrect, as others have stated, Dish announced that they had a new "uninfringing software" well before the case went to the appellate court.


Link?


----------



## HobbyTalk

This forum has a search feature, that even you can use. Why should we do your work for you? Hint: it was Jan. 31.


----------



## Curtis52

The case was appealed in 2006.


----------



## Jim5506

I compared the operation of my 622 with the operation of my TiVo Series 2 DVR.

With the 622 there is almost no delay at all with programming going through the box, but with the TiVo, there is a noticable 1/2 second or more delay while the box processes the stream.

It looks to me on the face of it that they are two very different processes happening.

If Dish has applied thie same processes to their older DVRs, they are obviously different from TiVo.

I realize that this is not proof that the two ARE different, but maybe those who will not take yes for an answer will pause their senseless diatribes for 2-3 seconds.


----------



## jacmyoung

Curtis52 said:


> The case was appealed in 2006.


I think he meant 1/31/08.


----------



## HobbyTalk

> The case was appealed in 2006.


You asked for a link to where E* announced their new software and I gave you a hint. No I didn't give the year, it was only a hint, I'm not going to do all of your work for you. Please keep up with the conversion


----------



## Curtis52

2008 is not before 2006.


----------



## Greg Bimson

> "...Even if Kobrin's modified mirror assembly infringes the Sure Plus patent, as long as it is more than colorably different the infringement should not amount to a contempt nor should it be tested in contempt proceedings..."


I'll agree with this, except one point, directly from the injunction:


> 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 otherwise infringing or inducing others to infringe the Infringed Claims of the '389 patent.


This injunction is a bit more broad than the one issued in Kobrin. If there is a belief that the modified product infringes, it can still be addressed in contempt proceedings, because the injunction says DISH/SATS can no longer infringe. Find a product that still infringes, and it can be raised and adjudicated in a contempt hearing. Colorably different has no play in this; infringe and you are in contempt.


----------



## Curtis52

Jim5506 said:


> I compared the operation of my 622 with the operation of my TiVo Series 2 DVR.
> 
> With the 622 there is almost no delay at all with programming going through the box, but with the TiVo, there is a noticable 1/2 second or more delay while the box processes the stream.


With most series 2 TiVos there is an analog to digital conversion step that isn't in the 622.


----------



## Herdfan

Buyerchoice said:


> Manual recordings on a TIVO do not give any information on recordings. They just say "manual recording" Therefore the only way to know what a recorded program is, would be to begin playing it.


I don't think that is correct. It has been a while since I did a manual recording on a TiVo, but IIRC, it is listed in the NPL as "_Manual Record: (Name of Show)"_.

I may have to go set one up to be sure.

Edit: Its in the To Do list as *Manual: Go, Diego Go.* (Its the channel my daughter was watching)

Edit 2: It is even slotted in the To Do List in the "G's" instead of the "M's".


----------



## jacmyoung

James Long said:


> Unfortunately the newer models were not offered at the time that the court case was filed so Tivo couldn't name them. But they apparently _used_ (past tense) the same software. Part of the discovery now is to decide if they should be considered covered by the injunction.


I think he was correct in that if only the literal interpretation may be applied, that the 510, 625... are the only things that matter, than one can argue 622, 722 do not apply.

Yes the software can be discussed, but "622", "722"... can not because they do not appear anywhere in the injunction language, regardless what is in them. The same line of thinking since the "510", "625"... appear in the injunction language, nevermind what is happening to them inside, they are nailed.

Maybe that logic (or the lack of it) can convince some people to abandon it.


----------



## jacmyoung

Greg Bimson said:


> I'll agree with this, except one point, directly from the injunction:This injunction is a bit more broad than the one issued in Kobrin. If there is a belief that the modified product infringes, it can still be addressed in contempt proceedings, because the injunction says DISH/SATS can no longer infringe. Find a product that still infringes, and it can be raised and adjudicated in a contempt hearing. Colorably different has no play in this; infringe and you are in contempt.


Unfortunately we did not get to see the actual language of the injunction in that case so you can not assume that injunction was less broad. How much do you want to bet that injunciton was equally lengthy and boring to read?

Of course they can go find anything not on the injunction list, include them with the modified DVRs that were once on the list, to be reviewed for the purpose of a contempt discussion, but as long as all those things under consideration are more than colorably different, even if they still infringe, DISH may not be found in contempt. An "independent" proceeding must take place to determine the infringement of all those devices in discussion, because they are more than colorably different, compared to the "Infringing Products" on the injuction list.


----------



## Greg Bimson

jacmyoung said:


> Of course they can go find anything not on the injunction list, include them with the modified DVRs that were once on the list, to be reviewed for the purpose of a contempt discussion, but as long as all those things under consideration are more than colorably different, even if they still infringe, DISH may not be found in contempt.


Incorrect.

The injunction says DISH/SATS can no longer infringe. If TiVo finds a product DISH/SATS has released that still infringes, it can be brought up in a contempt proceeding. If that product is found to infringe, DISH/SATS will be in contempt. Colorably different does not play into the discussion at all.

I suspect the only way you'll understand is when DISH/SATS is found in contempt because they haven't stopped the sales nor functionality of the listed DVR's. Once the contempt order is issued, you'll see that colorably different is not the only issue in a contempt proceeding.


----------



## jacmyoung

Greg Bimson said:


> ...I suspect the only way you'll understand is when DISH/SATS is found in contempt because they haven't stopped the sales nor functionality of the listed DVR's. Once the contempt order is issued, you'll see that colorably different is not the only issue in a contempt proceeding.


I suspect the only way you will understand is if you begin to read the case law.

But you only have to ask this question, why are you now the ONLY person continue to aruge on this paticluar aspect of the law?

Our resident attorney dgordo has agreed 100% with me on this issue, even Curtis, your closest ally, is not aruging on this paticular legal interpretation.

Have you ever for a moment asked why?

BTW, I would not even be totally shocked if the judge does exactly what you want him to do, but if so the appeals court will overturn his decision, just like in those case law I have cited, when the appeals courts overturned the lower courts's contempt rulings.


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## Curtis52

In the KSM Fastener decision the defendant was not required to disable previously delivered products. It's apples and oranges.


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## Greg Bimson

jacmyoung said:


> I suspect the only way you will understand is if you begin to read the case law.


I've read the case law. You've misread the issue. The plaintiff is trying to stop sales of a new piece of hardware by saying it is still infringing. However, it is "colorably different", and not subject to the injunction.

However, the law on this is clear. The injunction states to shut down certain models. There is no colorably different here. If DISH/SATS didn't like the language of the injunction, they should have brought it up at the Court of Appeals, but did not.


jacmyoung said:


> But you only have to ask this question, why are you now the ONLY person continue to aruge on this paticluar aspect of the law?
> 
> Our resident attorney dgordo has agreed 100% with me on this issue, even Curtis, your closest ally, is not aruging on this paticular legal interpretation.


Because you continually interpret something that is incorrect. No one wants to argue over it except me.

Besides, I just found the treasure, and no one wants to argue it yet...


> 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 otherwise infringing or inducing others to infringe the Infringed Claims of the '389 patent.


If a "new" DISH/SATS DVR infringes, it will only take a contempt proceeding to shut those infringing DVR's down. Colorably different is no longer an issue, and it will *not* require a new suit.

After all, since I've made the posting on this treasure, only you have decided to argue with me. No one else has even brought it up.


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## spear61

Greg; I understand your arguement about "Infringing Products" and also the counter arguement about the new software making the "boxes" non infringing. If I understand correctly, those "old" boxes required a special processor to make them work. The workaround may or may not have made that processor redundant.

Have you argued that the box was designed to enable future infringement?

"When inventors worry about infringement of their patents, most envision someone knocking off and selling exact copies of their invention, or perhaps making small changes in their inventions that are close enough to qualify as infringement. For a device that constitutes a combination of elements, this would normally be a device hat includes all the elements. But consider another "infringement" scenario. A device that has less than the elements of a patented device is normally noninfringing. Suppose a copier makes a device that is intentionally less than patented knowing that his device will have other elements added that will make it into an infringing device? For example, your patented radio is manufactured with one component missing, that a user can easily buy and add. Is there liability?

Often yes, thanks to the doctrine of contributory infringement. First developed in the courts over 130 years ago, this doctrine is now codified in the patent statute, at 35 U. S. S 271(c). The section provides:

"Whoever imports into the United States a component of a patented machine, manufacture, combination or composition, or a material or apparatus for use in practicing a patented process, constituting a material part of the invention, knowing the same to be especially made or especially adapted for in an infringement of such patent, and not a staple article or commodity of commerce suitable for substantial noninfringng use, shall be liable as a contributory infringer."


----------



## Greg Bimson

spear61 said:


> Greg; I understand your arguement about "Infringing Products" and also the counter arguement about the new software making the "boxes" non infringing. If I understand correctly, those "old" boxes required a special processor to make them work. The workaround may or may not have made that processor redundant.
> 
> Have you argued that the box was designed to enable future infringement?


Let's try the argument in reverse, with explanation...

TiVo is going after the listed receivers, in hopes that DISH/SATS will capitulate and finally license the Time Warp function. If found in contempt, what does DISH/SATS do next?

Fact: the listed receivers infringed
Fact: the listed receivers have received a software revision
Fact: it is unknown if the revision still infringes

So,
Opinion: no one knows if the listed receivers still infringe, but there is an order to shut them down. The new software has no bearing. So in a contempt proceeding where the infringer is found in contempt, DISH/SATS will be facing stiff fines for ignoring an injunction.

The shut down and sales cessation of listed products in the injunction order is not open to interpretation as DISH/SATS has argued. New software does not change anything to determine the status of the injunction. The injunction only says to stop selling and shut down listed DVR's.

In order to receive relief from Judge Folsom's injunction, it would have needed to be appealed along with the rest of the case. However, since DISH/SATS did not bring up the injunction on appeal, it stands as-is, and causes DISH/SATS much grief.

And because I've found in the injunction order that simply infringing upon the software claims of the patent is forbidden, DISH/SATS is in a DEEP hole. That is because any colorably different device is still subject to the injunction, contrary to what anyone else believes.


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## James Long

Curtis52 said:


> 2008 is not before 2006.


The date of the announcement was not the date of the creation of the new software.



Curtis52 said:


> With most series 2 TiVos there is an analog to digital conversion step that isn't in the 622.


There is no analog to digital conversion step in most DISH DVRs ... they receive a digital MPEG2 (or MPEG4) satellite signal or ATSC OTA TV signal. Name the DVRs that have an analog input (either composite or NTSC OTA TV). That's your homework for the holiday.


----------



## Greg Bimson

James Long said:


> Name the DVRs that have an analog input (either composite or NTSC OTA TV). That's your homework for the holiday.


This is a little simplistic, but simply true none the less: All DVR's have an analog input.

All "signals" are analog, because they are radio waves. Something has to process an analog radio wave to obtain the digitial signal that was encoded in the wave.


----------



## James Long

OK, using a generally accepted difference between analog and digital ... what DISH DVRs have an analog input?


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## Greg Bimson

James Long said:


> OK, using a generally accepted difference between analog and digital ... what DISH DVRs have an analog input?


Using a digital "signal" methodology, I think it is none. Dish Network DVR's do not record the NTSC broadcast method (what is commonly referred to as analog).


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## scooper

That's right - it is EXACTLY none, because NONE of the Dish DVRs have any chip to convert the NTSC broadcast signal to MPEG2 digital. The HD models don't even have NTSC tuners ! And the only tuners in the SD DVRs are the satellite ones.

Or - the other way to look at it - Dish, as a service, provides the conversion from analog to digital at some point before it gets transmitted to the customers.


----------



## Greg Bimson

scooper said:


> Dish, as a service, provides the conversion from analog to digital at some point before it gets transmitted to the customers.


I must have missed the post where we are discussing the relevance.

Dish, as a service, cannot provide that conversion before it gets to the customers. Dish Network transmits over analog radio waves, and the receiver at each customers' location converts the analog wave to its digital transmission.


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## spear61

I'll guess that the new boxes are home free. And, the old boxes will also be non infringing unless TIVO can show the old boxes contain legacy circuitry that is needed by the TIVO "switch" but is not needed by the new non-infringing Dish software. If they can show that, they can argue that freely available information is available on the web or elsewhere that can "enable" the infringing software - thus contributory infringement and falling under the injunction.


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## scooper

Greg Bimson said:


> I must have missed the post where we are discussing the relevance.
> 
> Dish, as a service, cannot provide that conversion before it gets to the customers. Dish Network transmits over analog radio waves, and the receiver at each customers' location converts the analog wave to its digital transmission.


I don't see it either, because the readings from the exhibits specifically included just about any a/v stream in existence..


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## scooper

spear61 said:


> I'll guess that the new boxes are home free. And, the old boxes will also be non infringing unless TIVO can show the old boxes contain legacy circuitry that is needed by the TIVO "switch" but is not needed by the new non-infringing Dish software. If they can show that, they can argue that freely available information is available on the web or elsewhere that can "enable" the infringing software - thus contributory infringement and falling under the injunction.


It doesn't matter if the circuitry is in them or not - the Barton media switch is, in concept, achievable either in Hardware (as in the older Tivo's / older Dish DVRs with the old software) or as in software. The key point with the Media switch is the preliminary analysis that creates the segment table. The key point here on the "new Dish software" is that it must NOT do any preliminary analysis and create said segment table.

You can compare that with V.42 / V.42bis modems and Windows modems. In "real modems", the modem's hardware has the processing for MNP 2/4/5 /V.42 / V.42bis, while "Windows Modems" have just the circuitry needed to convert the signal from analog phone lines to digital - they rely on the computer's CPU to handle the error correction / compression. I had several online arguements with otherwise knowledgeable people who insisted that V.42 was "too complicated" for a software solution, when I had PC software that did MNP 2/4/5 under DOS.


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## jacmyoung

Greg Bimson said:


> I've read the case law. You've misread the issue. The plaintiff is trying to stop sales of a new piece of hardware by saying it is still infringing. However, it is "colorably different", and not subject to the injunction....


Then please read again:

http://bulk.resource.org/courts.gov/...4.82-5889.html

"The question is presented as to how a patentee should be allowed to proceed when following a successful infringement suit the infringer modifies the infringing structure and continues as before..."

Tell me what part of this definition excludes the modification of an old infringing device (which was under injunction) in the field, and continues (its use) as before?


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## James Long

Greg Bimson said:


> I must have missed the post where we are discussing the relevance.


You expect relevance now? You are a couple thousand posts late to expect any Tivo thread to remain relevant. 

But you can blame Curtis52 (not Curtis0620) for bringing up the analog question - which I answered based on the hardware:


James Long said:


> Curtis52 said:
> 
> 
> 
> With most series 2 TiVos there is an analog to digital conversion step that isn't in the 622.
> 
> 
> 
> There is no analog to digital conversion step in most DISH DVRs ... they receive a digital MPEG2 (or MPEG4) satellite signal or ATSC OTA TV signal.
Click to expand...

Using the common description of analog vs digital and not sinking to the "all signals are voltage" level (which tends to just drag the discussion further off track).

Perhaps all of this afternoon angst should be aimed at Curtis52's comment?



scooper said:


> I don't see it either, because the readings from the exhibits specifically included just about any a/v stream in existence..


Yes ... Tivo's patent claim was very broad and included all sorts of transmission methods. They described their analog reception as being converted to MPEG2, but also specified satellite reception in their patent.

I thought we were at a point in the discussion where the differences between the named 50x and other receivers and the unnamed 622 and other receivers was being discussed. Both being receivers that receive a MPEG2 DBS signal from a satellite for storage and viewing with neither having any direct analog reception and the 622 differing from the named models only in that it can also receive MPEG4 DBS (some named models can receive ATSC signals - so that isn't a difference).

What would make the 622/722 not be included as a DISH DVR not too much different than the named DVRs? Have they NEVER operated using "Tivo code" or the hardware in question? If they have EVER operated using the "Tivo code" what makes them immune to the injunction any more than a named DVR that has received a software change?

Personally I don't see the difference between a 622 that had "Tivo code" when released in 2006 and no longer has it (as of some time in 2007) and a named 501 that had "Tivo code" in 2004 (when the suit was filed) and 2006 (when the suit was decided) and now no longer has it (as of some time in 2007).

Either DISH wins because new code makes all old DVRs non-infringing or they lose because there is no software remedy. I don't see a split based on model numbers (unless DISH proves that the unnamed models NEVER used "Tivo code").


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## James Long

scooper said:


> In "real modems", the modem's hardware has the processing for MNP 2/4/5 /V.42 / V.42bis, while "Windows Modems" have just the circuitry needed to convert the signal from analog phone lines to digital - they rely on the computer's CPU to handle the error correction / compression.


OT on my part, but I had no end of trouble with "windows modems" ... I replaced as many as I could with "real modems" until the point became moot (ethernet connectivity).



jacmyoung said:


> Then please read again:
> 
> http://bulk.resource.org/courts.gov/...4.82-5889.html


A broken link.


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## spear61

QUOTE=scooper;1617488]It doesn't matter if the circuitry is in them or not .[/QUOTE]

In general, the appeals court tossed the old boxes (hardware) back to the lower court for futher consideration (if desired) so the old box is non infringing at this time. My thought is that the old boxes and processers within them may indeed require certain circuitry that is required to make "infringing" software run but is not needed for the new (non infringing Dish software). Then one may ask, why does that circuitry exist in the old box and what can it be used for? It could be argued that it physically exists (only in those old boxes) to allow enabling of the old "infringing" software and thus contributes to infringement. Whereas, if all the circuitry in the old boxes continues to be used by the new "non-infringing" software, the box would not be contributing to infringement (substancial non-infringing use).


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## scooper

(Responding to James) 
That's exactly how I see it. 

This doesn't mean that Dish owes Tivo nothing - they still have the past infringements to pay for. But I would say the new method puts Dish much more as an equal in negotiations rather than as an infringer without a license.


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## jacmyoung

James Long said:


> ...A broken link.


http://bulk.resource.org/courts.gov/c/F2/719/719.F2d.1114.82-5889.html

This will do.


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## scooper

James Long said:


> OT on my part, but I had no end of trouble with "windows modems" ... I replaced as many as I could with "real modems" until the point became moot (ethernet connectivity).
> 
> A broken link.


It was an amusing toy at the time, but I ALWAYS bought (and still own) several "real modems" myself. Data compression was a favorite subject of mine when I was first getting into PCs, also data communications. I was ALWAYS looking for better ways to communicate online in the dialup world  .


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## jacmyoung

James Long said:


> ...Either DISH wins because new code makes all old DVRs non-infringing or they lose because there is no software remedy. I don't see a split based on model numbers (unless DISH proves that the unnamed models NEVER used "Tivo code").


I agree with the above characterization.

But if there is no software remedy, then the DVRs, old and new, as long as they once used the Tivo code, will not be able to be used as just a receiver anymore, even if all DVR functions are removed. Is this what the injunction says? And if it says so, is it serving the public interest?

What will be the harm if those receivers be continue to at least used as simple non-DVR recievers? Because in considering a permanent injunction as remedy, one of the four tests is the public interest test.

But if one can not argue harm done for allowing the receivers be used as non-DVRs, one must accept a software remedy, because this is the only way to make it happen.

So besically some are arguing it is ok to use a new software update to disable the DVR functions in order to avoid future infringement, or it is ok to even allow new software downloads in the future as long as the downloads will not turn them into a DVR, but it is not ok to download a new software to make the receivers DVRs again even if the new DVRs will no longer infringe.

That flies in the face of the court requirement that workarounds must be allowed as long as they are legitimate.

Unless of course if one insist turning a DVR into a non-DVR a workaround.

But wait, in a literal sense, even if the DVR functions are not available anymore, it still does not satisfy the language of the injunction, because if I understand the injunction correctly, all the DVRs must be wasted, not used at all, anymore, thrown into the landfill. Not just the ones on the list, but all DISH DVRs that ever has the old software installed in them at one time or another.

If that statement sounds silly to you, then the alternative will be a new, non-infringing software must be allowed as a remedy, whether the software can do DVR or not, and if such remedy is allowed, it must be allowed in all DVRs, on the list or not.


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## James Long

jacmyoung said:


> But if there is no software remedy, then the DVRs, old and new, as long as they once used the Tivo code, will not be able to be used as just a receiver anymore, even if all DVR functions are removed. Is this what the injunction says?


The injunction (which you read, right?) says that the hard drive must be disabled in the named infringing models and models that are not more than colorably different. It does not say that the receivers are bricks.

Whether or not the design of the receiver allows the received streams to be sent to the output stages other than via the hard drive is a technical question. Reports are that 50x models with failed hard drives also fail as a receiver ... but that doesn't mean that there is absolutely no way that there isn't a signal path that would work ... it just means current design is to use the data via the hard drive buffer.

It is a moot point in my book, as I don't believe DISH will ever disable those receivers (even under penalty of law).



> What will be the harm if those receivers be continue to at least used as simple non-DVR recievers? Because in considering a permanent injunction as remedy, one of the four tests is the public interest test.


DISH could argue that that hard drive is needed for non-DVR functions and that disabling the hard drive would go beyond the remedy the injunction is intended to serve. Perhaps in that case the injunction would technically be violated (as the hard drives would not be disabled) but if the DVR functions are disabled the remedy is met.

Using that logic, DVR software that does not infringe should also meet the requirements of a remedy.

DISH could prove that the injunction would irreparably harm their business if they were forced to disable all functions of the receiver, not only the DVR functions. But again, I believe it is moot as DISH isn't disabling anything beyond the "Tivo code".


----------



## jacmyoung

James Long said:


> The injunction (which you read, right?) says that the hard drive must be disabled in the named infringing models and models that are not more than colorably different. It does not say that the receivers are bricks.


But it also says to cease the making, *using*... of the Infringing Products, effectively turning them into bricks.



> Whether or not the design of the receiver allows the received streams to be sent to the output stages other than via the hard drive is a technical question. Reports are that 50x models with failed hard drives also fail as a receiver ... but that doesn't mean that there is absolutely no way that there isn't a signal path that would work ... it just means current design is to use the data via the hard drive buffer.
> 
> It is a moot point in my book, as I don't believe DISH will ever disable those receivers (even under penalty of law).
> 
> DISH could argue that that hard drive is needed for non-DVR functions and that disabling the hard drive would go beyond the remedy the injunction is intended to serve. Perhaps in that case the injunction would technically be violated (as the hard drives would not be disabled) but if the DVR functions are disabled the remedy is met.
> 
> Using that logic, DVR software that does not infringe should also meet the requirements of a remedy.
> 
> DISH could prove that the injunction would irreparably harm their business if they were forced to disable all functions of the receiver, not only the DVR functions. But again, I believe it is moot as DISH isn't disabling anything beyond the "Tivo code".


While what you said above is a very eloquent way for DISH to defend itself, it is not necessary. If we read past cases and legal opinions regarding how the injunctions must be carried out, one must agree all definitions/limitations must be met precisely, in order for it to be enforceable.

If you read the injunction language, the term "Infringing Produrcts" is used in each and every one of its sentences, repeated over and over. Meaning for a device to meet the injunction limitations, therefore be subject to the enforcement, it must be an infringing product.

If there is any doubt (more than colorably different as a doubt) as whether the product is infringing or not, the use of such product can not constitute a contempt. Additional proceedings can be ordered to determine whether the modified products are still infringing or not.


----------



## jacmyoung

The injunction indeed will turn all "infringing products" into bricks, regardless there models, color, smell and taste. The use of the DVR510, 625... only served as an example as what those "infringing products" might mean, and for all other "infringing products" be measured against, at the time the injunction was written, or at the time when the stay was lifted by the appeals court.

But if there is a possibility DISH may prove all their current DVRs, in use or not, on the list or not, are no longer "infringing products" as explicitly defined as one of the limitations in the injunction, then their use can not result in a contempt ruling as far as this injunction is concerned.

The term "infringing products", inserted in front of, in between, and at the end of each limitation sentence, was put there not to fill the space, rather to be one clear limitation of this injunction, among many other limitations (510, 625... being one of them) in this injunction, and for the injunction to be enforceable, all limitations must be met, otherwise there was no reason to put this limitation (infringing products) in there, everywhere.


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## Greg Bimson

jacmyoung said:


> But if there is a possibility DISH may prove all their current DVRs, in use or not, on the list or not, are no longer "infringing products" as explicitly defined as one of the limitations in the injunction, then their use can not result in a contempt ruling as far as this injunction is concerned.
> 
> The term "infringing products", inserted in front of, in between, and at the end of each limitation sentence, was put there not to fill the space, rather to be one clear limitation of this injunction, among many other limitations (510, 625... being one of them) in this injunction, and for the injunction to be enforceable, all limitations must be met, otherwise there was no reason to put this limitation in there, everywhere.


Then you are reading too much into it...


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


This is the only limitation in the injunction regarding current and future use. There is no discussion of what the listed products might mean. The definition of "Infringing Products" is absolute. Those products must be shut down.


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## scooper

Ok Greg - define "shut down" for us .


----------



## Greg Bimson

James Long said:


> Using the common description of analog vs digital and not sinking to the "all signals are voltage" level (which tends to just drag the discussion further off track).
> 
> Perhaps all of this afternoon angst should be aimed at Curtis52's comment?


Just wondering where this line of questioning came from...


scooper said:


> Ok Greg - define "shut down" for us .


Oops. Second part of the injunction which I forgot to copy...

I'll get it later. [space reserved for editing]


----------



## Richard King

> It is a moot point in my book, as I don't believe DISH will ever disable those receivers (even under penalty of law).


Much as I don't want them shutdown, as both, a customer and a shareholder, I suspect that you may be wrong on this. If the power of the court is brought down, I suspect that Charlie, who would most likely be the person to make an ultimate decision about ignoring a court order, will respect the law even if he disagrees with it. Besides, Charlie can be bypassed since the order refers to "Each Defendant, its officers, agents, servants employees and attorneys, and those persons in active concert or participation with them who receive actual notice hereof" by simply sending a shut down notice to "Joe" in the engineering department. I doubt that "Joe" wants the penalities attached to be attached to him. Additionally, if they really wanted to play hardball, cease orders could be sent to all dealers disallowing them the right to sell the "infinging" product.


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## Curtis52

Judge Spencer's talk that caused RIMM to settle for $612 million (and there wasn't even an injunction in that case yet).

http://news.cnet.com/Judge-faces-reality-in-BlackBerry-case/2100-1041_3-6043212.html


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## jacmyoung

Greg Bimson said:


> Then you are reading too much into it...The definition of "Infringing Products" is absolute...


One can not read too much into anything in an injunction, every word must be examined carefully, as insisted in many prior cases when the contempt rulings were overturned, sometimes due to the overlook of merely a single word.

When you say the term is absolute, I take that you believe the DVRs 510, 625 being infringing products is absolute, not changeable, that there is no possibility they may be non-infringing when the injunction was in full force?


----------



## scooper

jacmyoung said:


> One can not read too much into anything in an injunction, every word must be examined carefully, as insisted in many prior cases when the contempt rulings were overturned, sometimes due to the overlook of merely a single word.
> 
> When you say the term is absolute, I take that you believe the DVRs 510, 625 being infringing products is absolute, not changeable, that there is no possibility they may be non-infringing when the injunction was in full force?


Like I said - I want to see what the meaning of the term "shut down" really means....

If it means "brick the receivers" - Dish will be irrepairably harmed and I see this being appealed ASAP (can you imagine getting 1 million calls about "my DVR doesn't work for anything any more" would be like ?)

If it means they can't be used as DVRs any more, but can still be used as receivers - this isn't quite as bad, but it's bad enough.


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## James Long

Riddle me this:


> The DVR functionality, i.e., disable all storage to and playback from a hard disk drive of television data) shall not be enabled in any new placements of the Infringing Products.


If DISH and it's agents, etc, cannot place any new "Infringing Products" at all why would the injunction specifically mention DVR functionality in future placements?

...Pursuant to Rule 58 of the Federal Rules of Civil Procedure and in accordance with the jury verdict delivered on April 13, 2006 and with the Court's contemporaneously filed orders, the Court thereby enters judgment for Plaintiff against Defendants for infringement of U.S. Patent No. 6,233,389 ("'389 patent"), claims 1, 5, 21, 23, 32, 36, 52, 31 and 61 ("the Infringed Claims") by Defendants' following DVR receivers (collectively the "Infringing Products"): DP-501; DP-508; DP-510; DP-522; DP-625; DP-721; DP-921; and the DP-942.

...*IT IS THEREFORE ORDERED THAT* Plaintiff shall have and recover from Defendants, jointly and severally, the total sum of $73,991,964.00, together with prejudgment interest at the rate of prime, said prejudgment interest in the total sum of $5,367,544.001, together with supplemental damages in the amount of $10,317,108.00, together with post-judgment interest on the entire sum calculated pursuant to 28 U.S.C. § 1961. The amounts awarded in this judgment shall bear interest from the date of judgment at the lawful federal rate.

...*IT IS FURTHER ORDERED THAT*

...Each Defendant, its officers, agents, servants, employees and attorneys, and those persons in active concert or participation with them who receive actual notice hereof, are hereby restrained and enjoined, pursuant to 35 U.S.C. § 283 and Fed. R. Civ. P. 65(d), from making, using, offering to sell 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.

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

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

...This injunction shall run until the expiration of the '389 patent.

...This Court retains jurisdiction over Defendants to enforce any and all aspects of this Judgment and Permanent Injunction.

...The Court further retains jurisdiction to award Plaintiff amounts for supplemental damages, interest, costs, attorneys fees and such other or further relief as may be just and proper.

...All relief not specifically granted herein in denied. All pending motions not previously ruled on are denied. This is a Final Judgment and is appealable.

...*Signed this 17th day of August, 2006.*


----------



## Greg Bimson

Rather than go back to my [insert here] post, I've added the other part of the injunction order:


> Defendants are hereby *FURTHER ORDERED* to, within thirty (30) days of the issuance of this order, disable the DVR functionality (i.e., disable all storage to and playback from a hard disk drive of television data) in all but 192,708 units of the Infringing Products that have been placed with and end user or subscriber.


Doesn't get much more cut and dried that that, as "Infringing Products" simply has the meaning "DP-501, DP-508, DP-510, DP-522, DP-625, DP-721, DP-921, and DP-942".


jacmyoung said:


> When you say the term is absolute, I take that you believe the DVRs 510, 625 being infringing products is absolute, not changeable, that there is no possibility they may be non-infringing when the injunction was in full force?


They could be non-infringing now. That does not change the above section of the injunction, which says to disable all storage to and playback from a hard disk drive of television data.


----------



## Greg Bimson

James Long said:


> If DISH and it's agents, etc, cannot place any new "Infringing Products" at all why would the injunction specifically mention DVR functionality in future placements?


If DISH needs to replace a faulty 721, they can, provided the storage is disabled.


----------



## jacmyoung

scooper said:


> Like I said - I want to see what the meaning of the term "shut down" really means....
> 
> If it means "brick the receivers" - Dish will be irrepairably harmed and I see this being appealed ASAP (can you imagine getting 1 million calls about "my DVR doesn't work for anything any more" would be like ?)
> 
> If it means they can't be used as DVRs any more, but can still be used as receivers - this isn't quite as bad, but it's bad enough.


The injunction language strictly related to the Infringing Proudcts: DVR 510, 625... are two parts:

1) Stop the selling, *using*, marketing... of the Infringing Products.

2) Disable the DVR functionalities of the Infringing Products at the end users...and stop/disable the DVR functionalities of the new placement of the Infringing Products to the end users...

From 1) it is clear the Infringing Products can not be used. It may not sound fair but remember, it did not say a non-infringing product may not be used, only the Infringing Products. Likewise from 2) the disabling of the DVR functionalities applies to the Infringing Products, not a non-infringing product.

If the injunction is only interested in shutting off the DVRs on that list, there is no reason to use and reuse the term "Infringing Products" to define the limitations, they can simply use "The DVRs", "The Said DVR Models" or "The Listed DVRs"...

If the Infringing Products were no longer infringing before the injunction took effect, therefore did not satisfy the "Infringing Products" limitation, one can see why the 1) and 2) will not take effect on such products, only on those that can still considered as Infringing Products--the DVR models 510, 625... that still has the infringing software, which was why they were first and formost defined as Infringing Products.


----------



## James Long

Greg Bimson said:


> Rather than go back to my [insert here] post, I've added the other part of the injunction order:


Again a partial quote. The complete injunction is in my post above.

"The DVR functionality, i.e., disable all storage to and playback from a hard disk drive of television data) shall not be enabled in any new placements of the Infringing Products." seems to leave the door open for new placements of the products, sans DVR function.

This isn't an order to "brick the receivers".


----------



## Greg Bimson

James Long said:


> Again a partial quote. The complete injunction is in my post above.
> 
> "The DVR functionality, i.e., disable all storage to and playback from a hard disk drive of television data) shall not be enabled in any new placements of the Infringing Products." seems to leave the door open for new placements of the products, sans DVR function.
> 
> This isn't an order to "brick the receivers".


It does, however, "brick the receivers" as a DVR, and DISH/SATS certanly hasn't disabled the DVR functions on the "Infringing Products".


----------



## James Long

Not the question that was being answered ... but thanks for playing.


----------



## Curtis52

Greg Bimson said:


> It does, however, "brick the receivers" as a DVR, and DISH/SATS certanly hasn't disabled the DVR functions on the "Infringing Products".


If a particular model can act as a receiver without recording TV data to the hard drive then that model can continue to be used.


----------



## jacmyoung

James Long said:


> Again a partial quote. The complete injunction is in my post above.
> 
> "The DVR functionality, i.e., disable all storage to and playback from a hard disk drive of television data) shall not be enabled in any new placements of the Infringing Products." seems to leave the door open for new placements of the products, sans DVR function.
> 
> This isn't an order to "brick the receivers".


I agree with you now, the Infringing Products can still be used, old or new, as long as the DVR functions are disabled.

I think if one is willing to look at the language in the case law I linked before:

""The question is presented as to how a patentee should be allowed to proceed when following a successful infringement suit the infringer modifies the infringing structure and continues as before..."

And the rest discussion followed.


----------



## Greg Bimson

jacmyoung said:


> If the injunction is only interested in shutting off the DVRs on that list, there is no reason to use and reuse the term "Infringing Products" to define the limitations, they can simply use "The DVRs", "The Said DVR Models" or "The Listed DVRs"...


Go back and read James Long's post. "Infringing Products" has a definition. Sure, the court could have used "The DVRs", "The Said DVR Models" or "The Listed DVRs", but that still would render the exact same result.


----------



## spear61

Greg Bimson said:


> Rather than go back to my [insert here] post, I've added the other part of the injunction orderoesn't get much more cut and dried that that, as "Infringing Products" simply has the meaning "DP-501, DP-508, DP-510, DP-522, DP-625, DP-721, DP-921, and DP-942".They could be non-infringing now. That does not change the above section of the injunction, which says to disable all storage to and playback from a hard disk drive of television data.


Not quite so cut and dried. Think the judge has to re-consider some other minor details?

"On January 31, 2008, the Federal Circuit reversed the judgment against EchoStar on

TiVo's "hardware" claims (Claims 1,5,21,23,32,36, and 52 of the '389 patent...."


----------



## Greg Bimson

spear61 said:


> Not quite so cut and dried. Think the judge has to re-consider some other minor details?
> 
> "On January 31, 2008, the Federal Circuit reversed the judgment against EchoStar on TiVo's "hardware" claims (Claims 1,5,21,23,32,36, and 52 of the '389 patent...."


I was the first one to state that something has to be done with the injunction, because the hardware claims are there. But because it appears neither party addressed it, it will probably be left alone.


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## Curtis52

Greg Bimson said:


> I was the first one to state that something has to be done with the injunction, because the hardware claims are there. But because it appears neither party addressed it, it will probably be left alone.


The document is called "FINAL JUDGMENT AND PERMANENT INJUNCTION". The judgment portion could be changed but it isn't necessary. The appeals court has already done that for all intents and purposes. They didn't change the injunction portion.


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## Greg Bimson

Let's try the entire paragraph, shall we?


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


The order states to shut down all Infringing Products _except for 192,708 units._ So the injunction order leaves the door open to allow some units to function as normal. However, if my 721 dies, and I have to get another 721, it can no longer be a 721 with an active DVR function.

Think warranty.


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## jacmyoung

Greg Bimson said:


> Go back and read James Long's post. "Infringing Products" has a definition. Sure, the court could have used "The DVRs", "The Said DVR Models" or "The Listed DVRs", but that still would render the exact same result.


Not the same if they are not infringing products anymore before the injunction was in full force.

The uniqueness of this case is the infringing products in the field can be modified into non-infringing products without the removal of the products, only a few minutes of disabling of the use of the products while the new software is downloaded.

In most cases, an infringing product in the field can not be modified into a non-infringing product, so a new modified product has to take its place, and as long as the new modified product is more than colorably different, it can take the place of the old product without being in contempt, even if the model #s are still the same.

Is the court so literal that the manufacture can not even reuse the outer shells of the old boxes, as longe as the newly installed boxes do not infringe? Because if so it runs in contrast to the idea that the labeling, the look--the "mere colorable" elements, shall not count.


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## Greg Bimson

jacmyoung said:


> Not the same if they are not infringing products anymore before the injunction was in full force.


Show me where that is in the injunction order and you win, and so does DISH/SATS. If you can't find it, I win, and so does TiVo.

And I will point out that it must be found in the injunction order; the final judgment and permanent injunction written by Judge Folsom. It is because ignoring this document is cause for contempt.


----------



## jacmyoung

Greg Bimson said:


> Show me where that is in the injunction order and you win, and so does DISH/SATS. If you can't find it, I win, and so does TiVo.
> 
> And I will point out that it must be found in the injunction order; the final judgment and permanent injunction written by Judge Folsom. It is because ignoring this document is cause for contempt.


You win only if the judge does what you say, and only if the appeals court upholds it, so please do not get ahead of yourself.

Now let me try to satisfy you by DISH ordering its installers to get to everyone of the users of the DVRs on the list, and place a new model # on each and everyone of those DVRs, along with the installation of a new, non-infringing software, will that make you happy?

If not why?


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## scooper

Again - the meeting Friday 30 May is NOT a contempt hearing, only a status meeting where Tivo MAY ask for a contempt hearing.


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## Greg Bimson

jacmyoung said:


> Now let me try to satisfy you by DISH ordering its installers to get to everyone of the users of the DVRs on the list, and place a new model # on each and everyone of those DVRs, along with the installation of a new, non-infringing software, will that make you happy?
> 
> If not why?


This has nothing to do with making me happy. This has more to do with you interpreting that there are 45,000 ways for DISH/SATS to get out of the injunction. There are others reading this, and if the basis for your argument is already incorrect, people will get the wrong impression that some of your proposed actions could actually happen.

I have admitted where I've made errors. You can look back on many posts and find them.

The problem is that there is a two sentence paragraph that has you befuddled, and there isn't much "interpreting" that will get DISH/SATS out of it:


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


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## Jim5506

It sounds like Dish made their mistake here in not recalling all the infringing hardware and reloading it with the non-infringing software and reboxing it with new names.

That would have met the letter of the injunction?? "Yer hon'er this here DVR is the new Dish 502."

Of course what they did was essentially the same, but the names were not changed.


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## jacmyoung

Greg Bimson said:


> This has nothing to do with making me happy. This has more to do with you interpreting that there are 45,000 ways for DISH/SATS to get out of the injunction. There are others reading this, and if the basis for your argument is already incorrect, people will get the wrong impression that some of your proposed actions could actually happen.
> 
> I have admitted where I've made errors. You can look back on many posts and find them.
> 
> The problem is that there is a two sentence paragraph that has you befuddled, and there isn't much "interpreting" that will get DISH/SATS out of it:


You did not answer my question.


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## Greg Bimson

jacmyoung said:


> You did not answer my question.


It's generally scenario after scenario. I've done a couple during this discussion, but not to this extent...


jacmyoung said:


> Now let me try to satisfy you by DISH ordering its installers to get to everyone of the users of the DVRs on the list, and place a new model # on each and everyone of those DVRs, along with the installation of a new, non-infringing software, will that make you happy?


Well, there most definitely would be a hearing to determine if the "new" products are old products with modified software.

Would I be happy? I'd say let it live, if in fact the software is no longer infringing. The problem here is that this is another scenario that has no basis regarding the current situation. The modified software downloaded to Dish Network's "Infringing Products" has yet to be found infringing or not.


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## spear61

Greg Bimson said:


> The modified software downloaded to Dish Network's "Infringing Products" has yet to be found infringing or not.


And there lies the rub. Ever see a lawyer argue the other sides strong points? There is no way that Dish or it's lawyers are going to say anything other than that their "new" software is non-infringing. If either side does not clearly lose, they retreat a bit, regroup their forces, and set up a new defensive position.


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## jacmyoung

Greg Bimson said:


> ...Would I be happy? I'd say let it live, if in fact the software is no longer infringing. The problem here is that this is another scenario that has no basis regarding the current situation. ...


But you do realize such scenario is very easy to establish, all DISH has to do is mail out new labels to all DVR users on the list, and push a banner on their recievers that tells the end users they need to attach the new labels on to the DVR model labels, otherwise their DVR will stop working, becasue it is the law. BTW, call a 1-800 number to verify the replacement to ensure your new DVR will continue to work.

DISH just developed a new DVR software they like to call it DVR Plus v1.0, and they also like to download the newsoftware to all the DVRs, and BTW all the DVRs with the new software shall now be called DVRXXXPlus.

According to you that will be ok, because that had really made the DVRs truely different?


----------



## James Long

Greg Bimson said:


> Let's try the entire paragraph, shall we?
> 
> 
> 
> Defendants are hereby FURTHER ORDERED to, within thirty (30) days of the issuance of this order, disable the DVR functionality (i.e., disable all storage to and playback from a hard disk drive of television data) in all but 192,708 units of the Infringing Products that have been placed with an end user or subscriber. The DVR functionality, i.e., disable all storage to and playback from a hard disk drive of television data) shall not be enabled in any new placements of the Infringing Products.
> 
> 
> 
> The order states to shut down all Infringing Products _except for 192,708 units._ So the injunction order leaves the door open to allow some units to function as normal. However, if my 721 dies, and I have to get another 721, it can no longer be a 721 with an active DVR function.
> 
> Think warranty.
Click to expand...

The injunction ALLOWS new placement of Infringing Products ... despite the earlier paragraph prohibiting DISH from "making, using, offering to sell or selling in the Untied States, the Infringing Products". (BTW: I'm sure they meant "United States, but that's what document 776 which contains the injunction actually says.)

It isn't a huge step to allow the Infringing Products to be operated with non-infringing software.



jacmyoung said:


> But you do realize such scenario is very easy to establish, all DISH has to do is mail out new labels to all DVR users on the list, and push a banner on their recievers that tells the end users they need to attach the new labels on to the DVR model labels, otherwise their DVR will stop working, becasue it is the law.


Is a 502 colorably different than a 501? Is a DISH 501 DVR colorably different than a DP-501 from DISH? Changing a model name or number would be rejected so fast that it would make your head spin.

DISH has a better chance of proving that a software change makes the DVR functions non-infringing and not require the shutdown of the new "Tivo free" DVR software than to prove anything besides their contempt for the court with a labeling game.


----------



## jacmyoung

James Long said:


> ...Is a 502 colorably different than a 501? Is a DISH 501 DVR colorably different than a DP-501 from DISH? Changing a model name or number would be rejected so fast that it would make your head spin.
> 
> DISH has a better chance of proving that a software change makes the DVR functions non-infringing and not require the shutdown of the new "Tivo free" DVR software than to prove anything besides their contempt for the court with a labeling game.


All I was trying to demonstrate was how silly it is to insist that no good faith effort may work, despite the law says good faith effort, legitimate workaround should be allowed, yet some silly superficial name tag change can magically serve everyone's interest (which it does not BTW).

If this is what our legal system designed to be, then we are truely hopeless.


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## Herdfan

scooper said:


> Again - the meeting Friday 30 May is NOT a contempt hearing, only a status meeting where Tivo MAY ask for a contempt hearing.


But is there anything that would stop the judge from getting pi**ed that DISH has not followed his injunction and issuing a contempt order on the spot?


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## Greg Bimson

jacmyoung said:


> But you do realize such scenario is very easy to establish, all DISH has to do is mail out new labels to all DVR users on the list, and push a banner on their recievers that tells the end users they need to attach the new labels on to the DVR model labels, otherwise their DVR will stop working, becasue it is the law. BTW, call a 1-800 number to verify the replacement to ensure your new DVR will continue to work.


But that is not what you said in your scenario, so it is a strawman.


James Long said:


> The injunction ALLOWS new placement of Infringing Products ... despite the earlier paragraph prohibiting DISH from "making, using, offering to sell or selling in the Untied States, the Infringing Products". (BTW: I'm sure they meant "United States, but that's what document 776 which contains the injunction actually says.)
> 
> It isn't a huge step to allow the Infringing Products to be operated with non-infringing software.


Of course it is a huge step, because a new placement must have the DVR functionality disabled. Therefore, it doesn't matter whether or not there is new software, Infringing Products must have their DVR functionality shut down.

Remember, the injunction restrains and enjoins what amounts to the retail channel, from, "making, using, offering to sell, selling, or importing in the United States, the Infringing Products". If there are any currently in distribution, nothing has been said about giving them away. If a 721 is "given away", it is not..
making
using
offering to sell
selling
or importing.

Like I said, think warranty.

Here is one for you, that I don't believe anyone has covered:

Can a ViP622 be shut down with this order?


----------



## jacmyoung

Herdfan said:


> But is there anything that would stop the judge from getting pi**ed that DISH has not followed his injunction and issuing a contempt order on the spot?


Let's first agree on one thing, the injunction never said DISH can not make changes, any changes, to their Infringing Products.

DISH can change the name of the Infringing Products, DISH can change the software in those Infringing Products, DISH can even ask all end users to simply spray-paint all their DVRs into a different color, their own favorite colors, as long as it is different than the original color.

But changes one and three are mere colorable.

Change #2 is not, because DISH spent over a year, countless man-hour, verified by patent experts, that the change is not only more than colorable, but it made the software non-infringing.

What some of you insist the judge to do is, he may only allow those changes that are mere colorable to be considered so he could find DISH in contempt, yet he may not considder changes that are more than colorable because he does not like to say DISH is not in contempt.

See the problem with your line of thinking? There is a place such thinking works well, let me think, how about North Korea?


----------



## Greg Bimson

jacmyoung said:


> What some of you insist the judge to do is, he may only allow those changes that are mere colorable to be considered so he could find DISH in contempt, yet he may not considder changes that are more than colorable because he does not like to say DISH is not in contempt.
> 
> See the problem with your line of thinking? There is a place such thinking works well, let me think, how about North Korea?


Riddle me this. DISH/SATS had documents from law firms _during the case_ that said the old software/hardware product did not infringe. Yet DISH/SATS was found to infringe.

Just because the software was changed and there are reviews from other law firms that state the new software does not infringe, does not mean it still does not infringe.


jacmyoung said:


> Let's first agree on one thing, the injunction never said DISH can not make changes, any changes, to their Infringing Products.


Okay, but let's agree that the injunction order to disable DVR functions only applies to certain, listed models, and we know that none of those have been shut down. Nowhere in that order does it say a modification on the Infringing Products can keep them from being shut down.

If anyone thinks my logic is bad, this is much worse.


----------



## Herdfan

jacmyoung said:


> Let's first agree on one thing, the injunction never said DISH can not make changes, any changes, to their Infringing Products.


I totally agree that the injunction does not prohibit DISH from doing what ever it pleases to the DVR's either before or after they are shut down (which could also be considered a change).


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## James Long

Greg Bimson said:


> Here is one for you, that I don't believe anyone has covered:
> 
> Can a ViP622 be shut down with this order?


We've covered it. God only knows. Or in this case, Judge Folsom. 
(It is one of the issues Tivo has raised.)


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## HiDefGator

Question for the lawyers...suppose the judge does tell Tivo they need a new trial before he can find either the hardware or the new software infringing. Can Dish continue to stall on paying Tivo the money? You know they will try.


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## nobody99

jacmyoung said:


> Let's first agree on one thing, the injunction never said DISH can not make changes, any changes, to their Infringing Products.


I am not sure why you are having such a hard time getting your head around this.

DISH can do whatever they want to the infringing products. *Until the court decides they are not infringing, they are infringing*. It's really that simple.

That determination will not be made at the May 30 status hearing. It will not be made at a contempt hearing that is scheduled during the May 30 hearing.

Really, honestly, it's that simple.


----------



## James Long

And yet "Infringing Products" are still permitted to be placed under the injunction.
(And no, it's not limited to warranty replacements.)

The question of "Infringing Products" with non-infringing DVR software did not exist in 2006. It will be a highlight of Friday's meeting.


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## Greg Bimson

James Long said:


> And yet "Infringing Products" are still permitted to be placed under the injunction.


But only if the DVR functions are disabled.


James Long said:


> The question of "Infringing Products" with non-infringing DVR software did not exist in 2006. It will be a highlight of Friday's meeting.


But the answer is that "Infringing Products" must be have their DVR functions disabled once the injunction order is in full force and effect. New software does not change that.


----------



## TBoneit

James Long said:


> The date of the announcement was not the date of the creation of the new software.
> 
> There is no analog to digital conversion step in most DISH DVRs ... they receive a digital MPEG2 (or MPEG4) satellite signal or ATSC OTA TV signal. Name the DVRs that have an analog input (either composite or NTSC OTA TV). That's your homework for the holiday.


Just taking a wild stab here.

Dishplayer 7x00 and the 721.

The Dishplayer has analog inputs for use with WebTV.
The 721 has analog inputs that can be used to pass through a camera or whatever to the TV.

If I'm wrong, appologies.

Cheers

 BTW Did too. Did not.


----------



## jacmyoung

nobody99 said:


> I am not sure why you are having such a hard time getting your head around this.
> 
> DISH can do whatever they want to the infringing products. *Until the court decides they are not infringing, they are infringing*. It's really that simple.
> 
> That determination will not be made at the May 30 status hearing. It will not be made at a contempt hearing that is scheduled during the May 30 hearing.
> 
> Really, honestly, it's that simple.


But at the meantime if DISH made a change of the Infringing Products, and that change makes the Infinging Products more than colorably different compared to the Infinging Products defined in the injunction, DISH can not be found in contempt, a new "independet" proceeding must follow to determine if the changed products are still infringing or not.

Not that DISH is home free. If the changed products are found to infringe in the future, they are screwed, but until then, they may not be found in contempt.

Insulting words do not hide your refusal to read the law.

"*Until the court decides they are not infringing, they are infringing*. "

They may or they may not, if you were correct, there would be absolutely no reason to even try to find out, because as you said they are still infringing, so why bother to find out? Why the court even bother to allow workaround to begin with, because according to you the infringing products will always be infringing no matter the changes, until the court later determine if it is not infringing.

But understand one thing, at the meantime, during the time such issue is to be determined, DISH is not in contempt, because the changes they made are more than colorable.

But I will give you credit, you at least admitted changes are allowed.


----------



## nobody99

jacmyoung said:


> But at the meantime if DISH made a change of the Infringing Products, and that change makes the Infinging Products more than colorably different compared to the Infinging Products defined in the injunction, DISH can not be found in contempt, a new "independet" proceeding must follow to determine if the changed products are still infringing or not.
> 
> Not that DISH is home free. If the changed products are found to infringe in the future, they are screwed, but until then, they may not be found in contempt.
> 
> Insulting words do not hide your refusal to read the law.


We'll just agree to disagree, and on June 1, I'll just come back and gloat.


----------



## jacmyoung

Greg Bimson said:


> ... Nowhere in that order does it say a modification on the Infringing Products can keep them from being shut down.
> 
> If anyone thinks my logic is bad, this is much worse.


Nowhere did it say it can not.


----------



## nobody99

jacmyoung said:


> They may or they may not, if you were correct, there would be absolutely no reason to even try to find out, because as you said they are still infringing, so why bother to find out? Why the court even bother to allow workaround to begin with, because according to you the infringing products will always be infringing no matter the changes, until the court later determine if it is not infringing.
> 
> But understand one thing, at the meantime, during the time such issue is to be determined, DISH is not in contempt, because the changes they made are more than colorable.
> 
> But I will give you credit, you at least admitted changes are allowed.


I figure since you edited your post since my response, I may as well pile on.

No one is stopping Dish from doing whatever the hell they want, and I don't think anyone suggested it. Hell, Charlie can go out, buy a gun, and hunt down and kill James Barton for patenting the ideas. That doesn't make *legal*. And that's the distinction you seem to missing and seem, for whatever reason, to be really hung up on. I don't think anyone here suggested that DISH couldn't change things.

Here, let's look at it this way. Way before anyone went court, and before there were any decisions made one way or the other. DISH put software on their boxes. TiVo said that software infringed. But TiVo *had to prove it in a court of law.* Up until that point, it was not infringing. DISH could (and did) use all the delay techniques they could come up with.

Now it's TiVo's turn to game the system after their victory and appeals victory. DISH may have come up with an absolutely brilliant workaround that not only works around the patent, but also perhaps works around any future finding that the hardware does not infringe. But, and please, pay attention here, *until they prove this in a court of law*, it still infringes. Even though it doesn't _actually_ infringe, in infringes legally. So after the May 30 status meeting a date will be set for a contempt hearing. At that contempt hearing, which will take exactly 30 seconds, Dish will be found in contempt for the *listed DVRs*. They will be required to shut them off. Folsom might even add some hefty penalties for every day that goes by that they aren't shut off.

DISH can then prove - in another trial - that they software doesn't infringe. Good luck with that. Probably several years away if TiVo works it correctly.

But I don't know why this bothers you so much. It'll all be clear in a few weeks.


----------



## Greg Bimson

Greg Bimson said:


> Nowhere in that order does it say a modification on the Infringing Products can keep them from being shut down.





jacmyoung said:


> Nowhere did it say it can not.





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


That's right. It only says to shut down the "Infringing Products". Sure, DISH/SATS can modify them all they want. However, once the injunction is in full force and effect, the only real modification is that DVR functionality must be removed from the listed receivers, except for 192,708 of them.


----------



## Greg Bimson

nobody99 said:


> DISH can then prove - in another trial - that they software doesn't infringe. Good luck with that. Probably several years away if TiVo works it correctly.


Except that I guarantee that a settlement will also include that neither party is allowed to sue each other, unless one party doesn't read that settlement agreement too carefully.


----------



## nobody99

Just for the fun of it. From Wikipedia:



> To prove contempt, the prosecutor or complainant must prove the four elements of contempt. These are (1) existence of a lawful order, (2) the contemnor's knowledge of the order, (3) the contemnor's ability to comply, and (4) the contemnor's failure to comply.


I don't see anything in their about the contemnor can simply decide they aren't violating the order because they changed software.

jacmyoung, you should do a Wikipedia entry to add:

(5) the contemnor has downloaded software which no longer infringes, and this time we really, really mean it I promise

:hurah:


----------



## Curtis52

> "WHAT'S AHEAD: A court-ordered "status conference" is scheduled for May 30 to coax TiVo to settle with Dish. Coyne said that the judge may be required to enforce the injunction against Dish providing digital video recorder services to its subscribers, boosting the chances of a payoff.
> 
> "We think that TiVo has all but won this case," said Mitchell. He estimated that a licensing deal would be worth at least $250 million."


http://biz.yahoo.com/ap/080527/tivo_earnings_preview.html?.v=1


----------



## phrelin

Gee, you mean brokerage analysts think this thing's only about money?:lol:


----------



## dgordo

HiDefGator said:


> Question for the lawyers...suppose the judge does tell Tivo they need a new trial before he can find either the hardware or the new software infringing. Can Dish continue to stall on paying Tivo the money? You know they will try.


No, the money damages are for past infringement, what happens in the future is what is yet to be determined.


----------



## jacmyoung

Greg Bimson said:


> That's right. It only says to shut down the "Infringing Products". Sure, DISH/SATS can modify them all they want. However, once the injunction is in full force and effect, the only real modification is that DVR functionality must be removed from the listed receivers, except for 192,708 of them.


I think we are making progress already, at least you agree DISH is allowed to make any modifications to the Infringing Products. Now let me go through that case law very carefully one more time:

http://bulk.resource.org/courts.gov/c/F2/719/719.F2d.1114.82-5889.html

"The question is presented as to how a patentee should be allowed to proceed when following a successful infringement suit the infringer modifies the infringing structure and continues as before..."

I hope we can agree this is exactly what DISH has done so far.

"...Allowing the patentee to proceed by a summary contempt proceeding in all cases would unnecessarily deter parties from marketing new devices that are legitimately outside the scope of the patent in question. On the other hand, to require in each instance the patentee to institute a new infringement suit diminishes the significance of the patent and the order of the court holding the patent to be valid and infringed. Obviously there must be a dividing point between those cases which should be handled by a summary contempt proceeding and those cases which should be more fully viewed in an infringement proceeding. Courts have uniformly held that the standard to be applied in determining the dividing point is whether the alleged offending device is "merely 'colorably' different from the enjoined device or from the patent."

In the above the court explained why the colorable difference deterimination process.

"...It is unclear from the record, however, whether the court compared these features with the corresponding features of the infringing assembly to determine whether they were more than colorably different. The order merely finds Kobrin's entire modified assembly "substantially identical or similar" to the infringing assembly. On remand, the court should enter findings on its comparison of these two differences as well."

"If any of the differences are found to be more than colorable, summary contempt proceedings would be inappropriate and Sure Plus would be relegated to an independent action for infringement."

And the appeals court therefore overturned the lower court's contempt ruling, and remanded the case back to the lower court so the "differences" could then be further evaluated to see if they were more than colorable or not.

I know Curtis made a good point about the difference between the two cases, that in the above linked case, the offender stopped selling the old infringing products, made some modifications and started to sell the modified devices right the way.

In this case, DISH appeared to have not "stopped" the DVR functions ever. But as I have pointed out earlier, DISH in fact did, when they were downloading the new software, the DVR stopped working, for a few minutes, and after that it became a modified device and "continued as before".

But the reason such detail is not important is because what the court has said:

"The question is presented as to how a patentee should be allowed to proceed when following a successful infringement suit the infringer modifies the infringing structure and continues as before..."

There is no requirement that there has to be a discrete time period during which the infringer must stop before he "continues as before."

As long as the "modified devices" are different than the "Infringing Products" defined in the injunction, the judge MUST consider the differences, and determine if the differences are more than colorable or not, and:

"If any of the differences are found to be more than colorable, summary contempt proceedings would be inappropriate and Sure Plus would be relegated to an independent action for infringement."

And this will be my last attempt to address the issue, we will just have to agree to disagree, and wait after the meeting to find out who is right who is wrong.


----------



## Greg Bimson

jacmyoung said:


> I think we are making progress already, at least you agree DISH is allowed to make any modifications to the Infringing Products.





Greg Bimson said:


> However, once the injunction is in full force and effect, the only real modification is that DVR functionality must be removed from the listed receivers, except for 192,708 of them.





jacmyoung said:


> As long as the "modified devices" are different than the "Infringing Products" defined in the injunction,


A DP-501 is an "Infringing Product". No modification changes that, according to the injunction order.

Your portion of case law is completely irrelevant, because TiVo is only requesting to have DISH/SATS follow the original "disable" order from the injunction. New software does not matter.


----------



## jacmyoung

Greg Bimson said:


> A DP-501 is an "Infringing Product". No modification changes that, according to the injunction order.


Please find where the injunction said no modifications can change that. In fact even you agreed it is possible that modifications can turn the Infringing Product into a non-infringing product, only that you want to wait till the determination is made in a later date, and meanwhile the boxes must be shut off.



> ...Your portion of case law is completely irrelevant, because TiVo is only requesting to have DISH/SATS follow the original order. New software does not matter.


The patentee in that case did precisely what Tivo is doing right now, and the district court even agreed with them and found the infringer in contempt, but still the ruling was overturned because the lower court failed to address the differences between the modified prodcuts, and the Infringing Products, as you have suggested for Judge Folsom.


----------



## Greg Bimson

jacmyoung said:


> Please find where the injunction said no modifications can change that.


Again...


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


The only exception to the "disable" order is that 192,708 units can remain active. There isn't an exception for modification, and "Infringing Products" is absolute.


jacmyoung said:


> The patentee in that case did precisely what Tivo is doing right now, and the district court even agreeed with them and found the infringer in contempt, but still the ruling was overturned because the lower court failed to address the differences between the modified prodcuts, and the Infringing Products, as you have suggested for Judge Folsom.


TiVo is not questioning whether a "new product" is subject to the injunction order, yet; TiVo is asking for a contempt hearing because no "Infringing Products" have been disabled.


----------



## dgordo

Not that it matters, but I had an interesting conversation this morning. I think I mentioned that when I was in law school I interned at the PTO. I decided long ago that I had no interest in patent law but stayed good friends with a lawyer I met there. He now works at a huge law firm, still in patent law, and won a huge judgment against Microsoft for patent infringement several years ago. He has no interest in this case. I asked him if he had paid any attention to the case and he said he had because it could become an issue for one if his clients, I would never think of asking who. Anyway, he tends to agree with Greg and Curtis and thinks that all the devices mentioned in the injunction must be shutdown, new software or not. He also thinks that if Tivo wants other devices included in the injunction they will need to ask for a new trial.

Anyway, not that it matters, but still interesting to hear him talk about the case.


----------



## jacmyoung

Greg Bimson said:


> Again...The only exception to the "disable" order is that 192,708 units can remain active. There isn't an exception for modification, and "Infringing Products" is absolute.


I simply asked you where in the injunction did it say no modification may change the Infringing Products into a non-infringing product. Let's for argument sake in a later time DISH's new software is found not to infringe, so that all the DVRs will no longer infringe, do you think those that are shut off will be allowed to be turned back on?



> TiVo is not questioning whether a "new product" is subject to the injunction order, yet; TiVo is asking for a contempt hearing because no "Infringing Products" have been disabled.


But if the Infringing Products no longer exsit, and replaced with non-infringing products, do you not agree "no 'Infinging Products' have been disabled" statement simply no longer apply?

I know you believe Infinging Product: DVR501... is absolute, but I hope you do not disagree if the new software can be proven non-infringing in the future, by that time, the same DVR501 with that new software will be considered a non-infringing product?

Because if you say no on this one, then of course I can't argue with you on that.


----------



## nobody99

jacmyoung said:


> But if the Infringing Products no longer exsit


How many times, over and over, do we have to explain this.

Infringing products do exist. Until DISH gets a court to say they no longer infringe, they do. Once they get a court to say they don't infringe, the injunction will be lifted.

Until that time, they infringe, and if the DVR functionality is not turned off, they are in contempt.


----------



## jacmyoung

dgordo said:


> Not that it matters, but I had an interesting conversation this morning. I think I mentioned that when I was in law school I interned at the PTO. I decided long ago that I had no interest in patent law but stayed good friends with a lawyer I met there. He now works at a huge law firm, still in patent law, and won a huge judgment against Microsoft for patent infringement several years ago. He has no interest in this case. I asked him if he had paid any attention to the case and he said he had because it could become an issue for one if his clients, I would never think of asking who. Anyway, he tends to agree with Greg and Curtis and thinks that all the devices mentioned in the injunction must be shutdown, new software or not. He also thinks that if Tivo wants other devices included in the injunction they will need to ask for a new trial.
> 
> Anyway, not that it matters, but still interesting to hear him talk about the case.


Did he ever realized those DVRs were actually shut down once during the modification? If so basically he was saying the DVRs on the list can never be used again, even if in a later date, when the new software is proven non-infringing, that the same boxes with that model labels attached and using the new non-infringing software, will still be considered Infinging Products, even though they clearly will no longer be actually infringing on anything?


----------



## Greg Bimson

jacmyoung said:


> I simply asked you where in the injunction did it say no modification may change the Infringing Products into a non-infringing product. Let's for argument sake in a later time DISH's new software is found not to infringe, so that all the DVRs will no longer infringe, do you think those that are shut off will be allowed to be turned back on?


I must assume that DISH/SATS would file a motion in order to get those products turned back on. Could they be turned back on? Yes. Very difficult and time consuming. And probably "fine consuming", too.


> But if the Infringing Products no longer exsit, and replaced with non-infringing products, do you not agree "no 'Infinging Products' have been disabled" statement simply no longer apply?


I have a hard time saying the "Infringing Products" no longer exist, because even DISH/SATS agrees they do:


> This is a clarification of the "Notice of Tivo Injunction" that was sent this morning. DVR models 501, 508, 510, 522, 625, 622, Homezone 622, and 722, have all received the redesigned software and can continue to be sold, installed and activated.


The "models" exist, because DISH/SATS say they do.


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## Greg Bimson

jacmyoung said:


> Did he ever realized those DVRs were actually shut down once during the modification?


There is a difference between willingly shutting down before an injunction order in full force and effect, and not shutting anything down once an injunction order is in full force and effect.

Just because something was shut down a year ago to switch out software does not comply with the present terms of the injunction.


----------



## jacmyoung

nobody99 said:


> How many times, over and over, do we have to explain this.
> 
> Infringing products do exist. Until DISH gets a court to say they no longer infringe, they do. Once they get a court to say they don't infringe, the injunction will be lifted.
> 
> Until that time, they infringe, and if the DVR functionality is not turned off, they are in contempt.


Except you do agree the Infringing Produsts might be later found not infinging products, the possibility does exist?

Because according to Greg, even that is not possible, once a prduct is detemined an infringing product, no modification can be done to make it non-infringing.

If this is what the court believes and interprets, then yes I have no argument on that. The case law time after time however pointed to a different direction.


----------



## dgordo

jacmyoung said:


> Did he ever realized those DVRs were actually shut down once during the modification?


Yes, but he said that the court never gave permission to turn them back on.



jacmyoung said:


> If so basically he was saying the DVRs on the list can never be used again, even if in a later date, when the new software is proven non-infringing, that the same boxes with that model labels attached and using the new non-infringing software, will still be considered Infinging Products, even though they clearly will no longer be actually infringing on anything?


He said DISH needs to turn them off and then seek permission to turn them back on with new software.

Again, this is just his opinion.


----------



## jacmyoung

Greg Bimson said:


> There is a difference between willingly shutting down before an injunction order in full force and effect, and not shutting anything down once an injunction order is in full force and effect.
> 
> Just because something was shut down a year ago to switch out software does not comply with the present terms of the injunction.


Not true at all, the sole purpose to shut down those Infringing Products right before the injunction took effect, and replace the old-infringing software with the new, different software, was so the Infringing Products no longer existed, replaced with the new DVRs.

It was absolutely a willful act to comply with the injunction, that is to shut off the Infringing Products, and "continue as before" with the new products.


----------



## HobbyTalk

Greg Bimson said:


> Riddle me this. DISH/SATS had documents from law firms _during the case_ that said the old software/hardware product did not infringe. Yet DISH/SATS was found to infringe.


Ahhhh, there's the rub. If the trial would have been held any place other then this single district, would it have been found to be infringing? The experts may really have been right, the software doesn't actually infringe, just in the minds of the self-serving jury of this district.


----------



## James Long

Greg Bimson said:


> But the answer is that "Infringing Products" must be have their DVR functions disabled once the injunction order is in full force and effect. New software does not change that.


That is for a court to decide.


Greg Bimson said:


> A DP-501 is an "Infringing Product". No modification changes that, according to the injunction order.


Yes, in the same poorly worded ("Untied States") injunction DISH is told to cease using/etc infringing products and are told they can continue to place infringing products. There must be something you are overlooking that doesn't make these statements contradict.

Likely the DVR software ... which is the only thing, per the injunction, that the lack of makes a difference between an Infringing Product that _CAN_ be used vs one that cannot be used.

And unlike the distants case, there is no federal death penalty that says "if you mess up providing DVR service you can NEVER provide DVR service again". DISH is absolutely permitted to design, use and sell DVRs that do not infringe.


----------



## jacmyoung

dgordo said:


> Yes, but he said that the court never gave permission to turn them back on.


Sounded a very good argument, but did the court always have to give permission before an infringer may begin to sell any modified devices? If you read the case law apparent not, not in even one of them. In fact the law clearly stated that legitimate workaround should be allowed so the infringer may "continue as before."



> ...He said DISH needs to turn them off and then seek permission to turn them back on with new software.
> 
> Again, this is just his opinion.


Under what circumstances the judge would agree to let them turn back on? If there is simply no chance, then demand to ask for permission would be unreasonable, would it?

What I am saying is, while fully respect your friend's opinion and recognize his credential, what he said did not seem to help Greg and Curtis.

So may be DISH can ask for permission during that meeting to turn the DVRs off then back on with a new software called DVR plus v.2.0, and tell the judge the new plus v.2.0 is not infringing, what should the judge do?

The judge will say but you must turn them off first before I even will consider your request. Good then but for how long? One day? Two days? before he will consider the request to turn them back on with a new software download? Or never?

Assume your friend is correct, and I actually am not just saying it, he might very well be correct, did he not imply there is a chance the judge will allow it? If so then he seemed to not think the Infringing Products are "absolute", because if so the judge should never allow such request.


----------



## Greg Bimson

HobbyTalk said:


> Ahhhh, there's the rub. If the trial would have been held any place other then this single district, would it have been found to be infringing? The experts may really have been right, the software doesn't actually infringe, just in the minds of the self-serving jury of this district.


Oh, I doubt that is the jury's fault. I could go review what the issues were upon appeal, but it technically doesn't matter.

Read that article I linked on the Eastern Texas Circuit.

And if TiVo ever does get around to checking the new software and filing for contempt, and if Judge Folsom then turns around and finds DISH/SATS in contempt on the new software, then the jury is vindicated.

Heck, the jury has already been vindicated by Judge Folsom, who could have immediately reversed the jury's verdict. The jury was also vindicated by the Court of Appeals, as the only reversal occurred because the Court of Appeals did not like Judge Folsom's instructions for finding literal infringement (the determination of infringement by the doctrine of equivalents was not given to the jury) and Judge Folsom's construction of the hardware claim (all based off of a literal interpretation of the word "a" or "an").


----------



## nobody99

jacmyoung said:


> Except you do agree the Infringing Produsts might be later found not infinging products, the possibility does exist?
> 
> Because according to Greg, even that is not possible, once a prduct is detemined an infringing product, no modification can be done to make it non-infringing.
> 
> If this is what the court believes and interprets, then yes I have no argument on that. The case law time after time however pointed to a different direction.


Yes I fully believe that it is possible that at some point in the future the product can be found to no longer be infringing if DISH can come up with software to do it. Is it the current version? Who knows. That's for another court in another proceeding to figure out.

And you are misrepresenting what Greg is saying. He's saying that the contempt hearing is not the place to make that determination. In the meantime, if the DVR functionality is not turned off, DISH is in contempt.


----------



## HobbyTalk

Greg Bimson said:


> Heck, the jury has already been vindicated by Judge Folsom, who could have immediately reversed the jury's verdict.


And is that any surprise?


----------



## Greg Bimson

No, but what the Court of Appeals did was, at least to DISH/SATS. The only way to avoid the injunction, because DISH/SATS didn't address it at the Court of Appeals, was to win an outright reversal of the entire verdict. There wasn't one; just a reversal on the hardware claims. That left the injunction intact, as-is. Now DISH/SATS cannot even attack the injunction as incorrect.


----------



## dgordo

jacmyoung said:


> Sounded a very good argument, but did the court always have to give permission before an infringer may begin to sell any modified devices? If you read the case law apparent not, not in even one of them. In fact the law clearly stated that legitimate workaround should be allowed so the infringer may "continue as before."
> 
> Under what circumstances the judge would agree to let them turn back on? If there is simply no chance, then demand to ask for permission would be unreasonable, would it?
> 
> What I am saying is, while fully respect your friend's opinion and recognize his credential, what he said did not seem to help Greg and Curtis.
> 
> So may be DISH can ask for permission during that meeting to turn the DVRs off then back on with a new software called DVR plus v.2.0, and tell the judge the new plus v.2.0 is not infringing, what should the judge do?
> 
> The judge will say but you must turn them off first before I even will consider your request. Good then but for how long? One day? Two days? before he will consider the request to turn them back on with a new software download? Or never?
> 
> Assume your friend is correct, and I actually am not just saying it, he might very well be correct, did he not imply there is a chance the judge will allow it? If so then he seemed to not think the Infringing Products are "absolute", because if so the judge should never allow such request.


I understand your questions, as I said my research has shown this can go either way and neither one of us found a single case that was fact for fact just like this case. I didn't ask many follow up questions, I just wanted to hear him talk about the case. I'm certainly not implying that he is correct, like I said, just his opinion.


----------



## jacmyoung

dgordo said:


> I understand your questions, as I said my research has shown this can go either way and neither one of us found a single case that was fact for fact just like this case. I didn't ask many follow up questions, I just wanted to hear him talk about the case. I'm certainly not implying that he is correct, like I said, just his opinion.


I agree completely, and I was not trying to dispute you or our friend. I said before this case is unique in that the products can be modified without being physically taking off the field, nor do they require any physical work done in field for modification. In that sense, yes it is hard to say how the judge wants his injunction interpreted.

But from you and your friend, even nobody99, we appear to agree the term "Infringing Products" is not absolute, that the same DVR501&#8230; products, which were Infringing Products at the time the injunction was written, can be made into non-infringing products by installing a new and non-infringing software.

I hope we can agree on that.


----------



## Greg Bimson

"Infringing Products" is absolute, but it is possible at a later date that DISH/SATS files a motion with the court asking that the injunction no longer apply if DISH/SATS is not infringing with new software on the "Infringing Products"

DISH/SATS, however, has not filed, nor will any of that be heard, until TiVo has a chance to review the software. Meanwhile, "Infringing Products" must no longer have DVR functionality, and arguing that there is new software does not skirt the injunction.


----------



## James Long

Greg Bimson said:


> No, but what the Court of Appeals did was, at least to DISH/SATS. The only way to avoid the injunction, because DISH/SATS didn't address it at the Court of Appeals, was to win an outright reversal of the entire verdict. There wasn't one; just a reversal on the hardware claims. That left the injunction intact, as-is. Now DISH/SATS cannot even attack the injunction as incorrect.


Sure they can. They are back in the court of the judge that wrote the injunction. The appeals court didn't bind him from changing it.


----------



## Greg Bimson

How often is a standing injunction "rewritten", or changed, or modified?

As I seem to recall, neither TiVo nor DISH/SATS filed a request to have the injunction changed. And from what TiVo wrote, case law supports that an injunction, even with errors, cannot be attacked during a contempt proceeding.


----------



## James Long

It is good that Friday isn't a contempt hearing, isn't it?

Something will (eventually) have to happen to that injunction to make Tivo happy ... perhaps nothing more than interpretation, but Tivo needs some work done there too.


----------



## jacmyoung

Greg Bimson said:


> "Infringing Products" is absolute, but it is possible at a later date that DISH/SATS files a motion with the court asking that the injunction no longer apply if DISH/SATS is not infringing with new software on the "Infringing Products"
> 
> DISH/SATS, however, has not filed, nor will any of that be heard, until TiVo has a chance to review the software. Meanwhile, "Infringing Products" must no longer have DVR functionality, and arguing that there is new software does not skirt the injunction.


Now when you said it is absolute, then also said it may not be absolute in a later time, I guess you were saying it was absolute at the time when the injunction was written, and at the time yes the Infringing Product was absolute.

Once the Infringing Products are installed with a new software, it is possible the Infringing Products may be found non-infirnging, if the new software is found non-infringnig.

The question then becomes, when should the determination of the new software infringement occur? You believe it must happen after DISH file a motion to allow the discovery of such issue first, before they may even dream about trying to use the modified devices. My quesiton to you is have you EVER researched and discovered such motion EVER filed by any infringer? Ever? If so please offer the evidence, you can not simply make up a motion that simply doe not exist in the court of law.

On the other hand, I have several cases where it was clear by reading them, that:

"A difference more than colorable is one that gives rise to some fair ground for *doubt* that the modified product is within the scope of the injunction. American Foundry & Mfg. Co. v. Josam Mfg. Co., 79 F.2d 116, 118-19 (8th Cir.1935); 8 A. Deller, supra, at Sec. 736."

If you agree that such doubt exists (since you said it is *possible* the modified DVRs could be found no longer the Infinging Products in a later time), then you must accept that appeals court's decision to overturn that contempt ruling, can happen here.


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## jacmyoung

James Long said:


> Sure they can. They are back in the court of the judge that wrote the injunction. The appeals court didn't bind him from changing it.


IMHO, the judge does not need to change a thing about the injunction in order to move the case right into an "independent" proceeding on the new software infringement issue, as requested by Tivo.


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## Greg Bimson

jacmyoung said:


> IMHO, the judge does not need to change a thing about the injunction in order to move the case right into an "independent" proceeding on the new software infringement issue, as requested by Tivo.


And where did TiVo request a proceeding on "new software infringement" issues? I don't see one.


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## jacmyoung

Greg Bimson said:


> And where did TiVo request a proceeding on "new software infringement" issues? I don't see one.


In the part 3 of that 3-part topic.


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## Greg Bimson

jacmyoung said:


> In the part 3 of that 3-part topic.





> With respect to EchoStar's modified software, TiVo requests permission to serve limited discovery to obtain additional technical information before bringing a motion on ground number three.


Not bringing up a contempt motion on the modified software. Nice try, though.


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## James Long

Greg Bimson said:


> And where did TiVo request a proceeding on "new software infringement" issues? I don't see one.


Tivo has not made that specific request yet, but they are laying the groundwork by asking for discovery on the issue.


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## Greg Bimson

James Long said:


> Tivo has not made that specific request yet, but they are laying the groundwork by asking for discovery on the issue.


I agree with you. Just trying to clear up more misinformation.

No one has asked for any ruling regarding "new software". The "new software" is DISH/SATS defense regarding the lack of disabling the "Infringing Products".


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## jacmyoung

James Long said:


> Tivo has not made that specific request yet, but they are laying the groundwork by asking for discovery on the issue.


In fact DISH pointed out the error Tivo made by discussing the new software infringement issue in its contempt discussion. The law does not allow the discussion of infringement issue during a contempt discussion, only the colorable difference issue.

But still judge can easily grant Tivo an independent proceeding or suit to pursue the infringement issue, even though it was not appropriate to raise the issue in a contempt setting. But this is not even the pressing item at this point. Tivo must have realized the contempt issue might not fly, because the new software is obviously more than colorably different to the old software, so they decided to lay the groundwork for a new suit on the new software infringement.

If the contempt will stick, meaning the new software is only colorably different, there will be no need to even consider the new software infringement issue, becasue all DISH DVRs use the same new software, if DISH is in contempt of using the DVRs on the list because of the use of this mere colorable different software, it is in contempt of using all its DVRs. Infringement of the new software will not even be looked at by the judge, or any judge, at any time, DISH is done.


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## James Long

Tivo didn't do much of anything except ask a lot of questions ... they need answers before they can actually ask the court to do anything.


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## Greg Bimson

jacmyoung said:


> The law does not allow the discussion of infringement issue during a contempt discussion, only the colorable difference issue.


One glaring mistake, here.

The injunction order states DISH/SATS is restrained and enjoined, "from otherwise infringing or inducing others to infringe the Infringed Claims of the '389 patent." In other words, if the work around still infringes, it can be subject to a contempt hearing, and "colorably different" will again have no play in the discussion.


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## jacmyoung

Greg Bimson said:


> One glaring mistake, here.
> 
> The injunction order states DISH/SATS is restrained and enjoined, "from otherwise infringing or inducing others to infringe the Infringed Claims of the '389 patent." In other words, if the work around still infringes, it can be subject to a contempt hearing, and "colorably different" will again have no play in the discussion.


The only thing a contempt discussion should be concerned is the colorable difference issue, not infringement issue, the law is clear on this case after case, I simply don't understand how one can continue to state in contrast to the law and be ok with it. Quote me one case law you have ever researched to support your notion please, don't tell me what Tivo said, but case law.

One can not first determine the infringement issue, before the colorable difference issue, it is the other way around.

Do you want me to quote the case law on this again or can ou simply read for yourself?


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## nobody99

jacmyoung said:


> The only thing a contempt discussion should be concerned is the colorable difference issue, not infringement issue, the law is clear on this case after case, I simply don't understand how one can continue to state in contrast to the law and be ok with it. Quote me one case law you have ever researched to support your notion please, don't tell me what Tivo said, but case law.
> 
> One can not first determine the infringement issue, before the colorable difference issue, it is the other way around.
> 
> Do you want me to quote the case law on this again or can ou simply read for yourself?


uh, case after case? Every case you've mentioned involves a *new* product being a change from a different product that infringes. None of your examples have anything to do with shutting off the functionality of an *existing* product that is named explicitly in an injunction that is in full force and effect.


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## jacmyoung

nobody99 said:


> uh, case after case? Every case you've mentioned involves a *new* product being a change from a different product that infringes. None of your examples have anything to do with shutting off the functionality of an *existing* product that is named explicitly in an injunction that is in full force and effect.


It is irrelavent, the question here is which should occur first, colorable difference determination, or infringement of a new device:

"Substantial open issues concerning whether a modified product infringes a patent cannot be tried in summary contempt proceedings. Arbek Mfg., 55 F.3d at 1570"

"In proceedings for contempt for violation of an injunction against further infringement of a patent a court should first determine whether there is more than a colorable difference between the modified device and the enjoined device. In McCullough Tool Co. v. Well Surveys, Inc., 395 F.2d 230, 233 (10th Cir.) (citations omitted), cert. denied, 393 U.S. 925, 89 S.Ct. 257, 21 L.Ed.2d 261 (1968)"

We are not even talking about the shut-off of the DVRs, rather the basic understanding of what a contempt proceeding is, and it is not about the infringement issue, only the colorable difference issue, the law can not be more clear on this. Don't think for yourself, read what the law says.

If the only issue is the act of "shutting off" while you refuse to consider anything else, then it is just that, don't even consider anything else, don't bringing the infringement issue, or the colorable difference issue, into the discussion, because neither of them apparently are of any interest to you, because the only thing you care about is the term "shut off."


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## James Long

nobody99 said:


> Every case you've mentioned involves a *new* product being a change from a different product that infringes.


That is how DISH is characterizing their receivers ... change the software and the DVRs are fine.



> None of your examples have anything to do with shutting off the functionality of an *existing* product that is named explicitly in an injunction that is in full force and effect.


Not very effective if you're on Tivo's side of the argument and expect DISH's DVRs to be disabled.


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## jacmyoung

nobody99 said:


> uh, case after case? Every case you've mentioned involves a *new* product being a change from a different product that infringes.


No, in every case I mentioned, it involves a *modified* product. In fact you are not likely to see any mentioning of the word *new*, only *modified*. We sometimes used "new" but the law is clear, never "new" but "modified." There is a reason for that, because an old, infringing product can be modified and still be used as long as the modification causes it to no longer infringe so that they are no longer "Infringing Products."

When you read the law, only quote the exact words, don't insert your own word. Because each key word has its purpose.

Once the new (modified) software was downloaded, all DISH DVRs, on the list or not, became "modified products" and therefore the opinons of all those prior cases apply, literally--how funny it comes around.


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## nobody99

jacmyoung said:


> No, in every case I mentioned, it involves a *modified* product. In fact you are not likely to see any mentioning of the word *new*, only *modified*. We sometimes used "new" but the law is clear, never "new" but "modified." There is a reason for that, because an old, infringing product can be modified and still be used as long as the modification causes it to no longer infringe.
> 
> When you read the law, only quote the exact words, don't insert your own word. Because each key word has its purpose.


Ok, let me see if I can use baby words. Let's skip past the "new" or "modified" crap that seems to be confusing you.

Ignore the whole DVR thing for now. Suppose we have a widget. In all the cases you used as an example, a manufacturing process was changed to create a derivative product, call it a wadget. That product, since it was not the original infringing product, would have to be more than colorably different or it would also infringe. As the owner of the patent, I could ask for a contempt hearing, and which time the judge could determine if the wadget was more than colorably different from the widget.

However, if the warehouse still had some of the original infringing widgets, they could not be sold. If I pulled the widgets out of the warehouse, added some parts to make them not infringe, I still can't sell them until I have proven that they no longer infringe.

And this doesn't even bring up existing widgets that are already in the field. Suppose we sold all these widgets to Blackberry employees. The injunction says that the widget functionality must be turned off. I send the Blackberry people a few screws and a sheet of instructions how to turn the widgets into wadgets...it doesn't matter. The court has ordered me to shut them off, and I haven't. I'm in contempt.

Back to DISH / TiVo...

DISH doesn't get to decide that it is no longer infringing. As it stands, today, there is an injunction that is in effect, today, that says the DVR functionality of the named DVRS is to be shut off. It doesn't matter if a perfectly clean piece of code has been downloaded that no longer infringes. At some future hearing at some future date -- long after the contempt hearing -- it very well may be determined that the new code no longer infringes and the injunction gets lifted.

But, for now, there is still a simple question: are the devices listed in the injunction still providing DVR functionality? If yes, they are in contempt. It's that simple.


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## jacmyoung

nobody99 said:


> Ok, let me see if I can use baby words. Let's skip past the "new" or "modified" crap that seems to be confusing you.
> 
> Ignore the whole DVR thing for now. Suppose we have a widget. In all the cases you used as an example, a manufacturing process was changed to create a derivative product, call it a wadget. That product, since it was not the original infringing product, would have to be more than colorably different or it would also infringe. As the owner of the patent, I could ask for a contempt hearing, and which time the judge could determine if the wadget was more than colorably different from the widget.
> 
> However, if the warehouse still had some of the original infringing widgets, they could not be sold. If I pulled the widgets out of the warehouse, added some parts to make them not infringe, I still can't sell them until I have proven that they no longer infringe.
> 
> And this doesn't even bring up existing widgets that are already in the field. Suppose we sold all these widgets to Blackberry employees. The injunction says that the widget functionality must be turned off. I send the Blackberry people a few screws and a sheet of instructions how to turn the widgets into wadgets...it doesn't matter. The court has ordered me to shut them off, and I haven't. I'm in contempt.
> 
> Back to DISH / TiVo...
> 
> DISH doesn't get to decide that it is no longer infringing. As it stands, today, there is an injunction that is in effect, today, that says the DVR functionality of the named DVRS is to be shut off. It doesn't matter if a perfectly clean piece of code has been downloaded that no longer infringes. At some future hearing at some future date -- long after the contempt hearing -- it very well may be determined that the new code no longer infringes and the injunction gets lifted.
> 
> But, for now, there is still a simple question: are the devices listed in the injunction still providing DVR functionality? If yes, they are in contempt. It's that simple.


That is actually a pretty good post, as you said earlier, we can agree to disagree, until the judge makes his decision, and/or the appeals court either uphold or overturn it.

One thing I want to be very clear, one can not disagree that the current DISH DVRs are *modified devices* compared to the old ones, so if you want to be literal about the language of the injunction, you must also allow literal interpretation of the case law, and the DISH *modified* DVRs most certainly fit in the language of the case law, regardless the circumstances, can't have it both ways.

Because when arguing in a legal setting, lawyers and judges only use the opinions of the prior cases, without discussing the background of those cases. For that reason, each word must be carefully chosen to avoid confusion and misinterpretation. And why the word "new" is never used, only "modified", it is to tell you something, it is not just an after thought.


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## Greg Bimson

jacmyoung said:


> One thing I want to be very clear, one can not disagree that the current DISH DVRs are *modified devices* compared to the old ones, so if you want to be literal about the language of the injunction, you must also allow literal interpretation of the case law, and the DISH *modified* DVRs most certainly fit in the language of the case law, regardless the circumstances, can't have it both ways.


Except you forgot something...


> In proceedings for contempt for violation of an injunction against further infringement of a patent a court should first determine whether there is more than a colorable difference between the modified device and the enjoined device...


TiVo isn't asking for a proceeding "for contempt violation of an injunction against further infringement of a patent." TiVo is asking for a proceeding "for contempt violation of an injunction against an enjoined device"; they want the injunction order to be "followed". The injunction states something must happen to the "enjoined devices", and it hasn't. That is why "colorably different" has no play in this. That is why you have been using the wrong standard.

When it comes down to the cessation of sales and functionality of enjoined devices, DISH/SATS has done neither. The order specifically defines, without any interpretation, that DISH/SATS has an action to follow regarding enjoined devices; an action that has been ignored. So the first test in a contempt proceeding is to see if the order is being followed.

If or when TiVo decides to drag DISH/SATS back into court regarding the 622 and 722, then your "colorably different" standard applies. And that is only if TiVo files for a contempt hearing and decides to argue those devices are not more than colorably different and subject to the injunction.


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## jacmyoung

After further research, I must admit that DISH made a grave error, as Tivo stated, by not raising the issue of modifying the infringing software, during the appeal. As such the act of modifying the software into a non-infinging one, may not be used to bring the DVRs on the list out of the scope of the injunction.

An junction however must meet one of four tests, the last one is the test of public interest. It is reasonable to argue that it may be against public interest to insist the DVRs on the list be turned off, even though there is a chance they may no longer Infringing Products.

In that sense, I agree with our lawyer friend's friend now, that DISH must first shut off all DVRs on the list, before the judge may entertain the idea whether he will allow the modified products to be used again.

When DISH is forced to ask for such permission, it then becomes a question how long the shut off must be before the judge may allow the reboot of the new software to work again, if at all.

I think if the public interest test is seriously considered, DISH has a good chance to work out an acceptable schedule for the shut off and restart of the DVRs on the list and be allowed to use the modified DVRs, while the new software infringement is tested in an independent proceeding.

But the judge does not have to allow that, only he can make such decision. DISH of course can still appeal to any of the judge's contempt ruling, but since DISH can not attack the injunction, it will be at the mercy of the appeals court's public interest consideration, and if the appeals court is more mindful of such interest than the judge, it can vacate the contempt ruling by the judge on the ground that he refused to consider one of DISH's proposals of turning off the DVRs on the list for an acceptable time, then load up the new software and continue with the modified products. Because such proposal meets the requirement of the injunction, and also meets the public interest concern.

But it may not come to that, the judge has broad leverage on how he does with his injucntion, and allow the public interest into the picture, and accept DISH's proposal to shut off the DVRs on the list then turn them back on as the modified devices. Such will not harm Tivo, but Tivo can certainly object to it.

But on what ground should Tivo object to such arrangement, when the arrangement will clearly satisfy the language of the injunction?

The argument that the infringement issue must be first resolved simply is wrong because the law clearly states, as long as we are in a contempt setting, the infringement issue can not be discussed, only the colorable difference issue. If DISH is found in contempt and fails on appeal, DISH is done, they must turn off the DVRs on the list, only when DISH is not found in contempt, will the new software infringement issue be then judged, if Tivo asks for that.

Of course the judge can also do exactly what I predicted, move the whole process right into a new infringement proceeding without any contempt finding, if he can agree that the DVRs on the list were indeed turned off during the time the new software was installed, therefore literally satisfied the requirement of the injunction. While the injunction said the DVR functionalities must be turned off, it did not say they may not be turned back on, in a literal sense of course, and especially if by doing so no longer infringes.


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## nobody99

jacmyoung said:


> One thing I want to be very clear, one can not disagree that the current DISH DVRs are *modified devices* compared to the old ones


Therein lies our difference.

Are they modified devices? It depends on your point of view. From a real world perspective, sure, they are modified. To what extent, we certainly don't know.

But from a legal standpoint, and more specifically from the perspective of the injunction, no, they are not modified. Until a hearing or another court decision says they are now modified, they are not. And the contempt hearing will occur before they can considered *legally* modified. And that's all that really matters.

It might be interesting to speculate what exactly would be required to find them "legally modified" from the court's perspective. Think about it - it took a jury and a full court case several years to find that the software infringed. The presumption before that trial - that the software did not infringe - is now reversed. The presumption is that the software _does_ infringe. So why wouldn't this require a whole new jury trial? Who says that a judge (at some future hearing) is simply allowed to decide if the new software infringes.


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## Curtis52

jacmyoung said:


> After further research, I must admit that DISH made a grave error, as Tivo stated, by not raising the issue of modifying the infringing software, during the appeal. As such the act of modifying the software into a non-infinging one, may not be used to bring the DVRs on the list out of the scope of the injunction.


What did you find in your research that convinced you that Dish must disable the DVRs? Did you actually find something that people here haven't been saying for weeks?


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## jacmyoung

Curtis52 said:


> What did you find in your research that convinced you that Dish must disable the DVRs? Did you actually find something that people here haven't been saying for weeks?


Not too fast

It was because I have always believed serving the interest of all based on the spirite of the law, not on the language of the law, and such belief has a lot to do with my job background but I will not go there.

That is not to say I am not capable of switching to the "literal mode."

Let's first agree the judge is fully aware the power of a "software download" in this case. He must be not only aware that while DISH is asked to (download a modified software to) disable the DVR functionalities, but DISH may (download a modified software to) bring back another DVR functionalities. If he wanted to prevent DISH from bringing back any DVR functionalites, he would have done so in the injunction, because an injunction must be very specific.

Now since DISH must literally (download a modified softeware to) disable the DVRs, and DISH did, albeit for only a few minutes, and since DISH also downloaded a modified software to bring back the DVRs, DISH did do what the injunction said, and also did do what the injunction did not prohibit it from doing.

Of course if DISH simply changed the name of the software, then downloaded such modified software to bring back the DVRs, DISH is still in contempt becaues the difference is only colorable, but if DISH downloaded a truely different software and brought back the DVRs (which the injunction does not prohibit), DISH may not be found in contempt, a new independent proceeding must take place to resolve the infringement of the new software.

You wanted to be literal, I am game.


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## nobody99

jacmyoung said:


> You wanted to be literal, I am game.


I think you have a typo there...it's not spelled "game," it's spelled "delusional."


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## Greg Bimson

jacmyoung said:


> If he wanted to prevent DISH from bringing back any DVR functionalites, he would have done so in the injunction, because an injunction must be very specific.





> Defendants are hereby FURTHER ORDERED to, within thirty (30) days of the issuance of this order, disable the DVR functionality (i.e., disable all storage to and playback from a hard disk drive of television data) in all but 192,708 units of the Infringing Products that have been placed with an end user or subscriber.


And later in the injunction order:


> All relief not specifically granted herein is denied.


Sounds rather cut and dried, and quite specific, to me.


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## Curtis52

jacmyoung said:


> After further research, I must admit that DISH made a grave error, as Tivo stated, by not raising the issue of modifying the infringing software, during the appeal. As such the act of modifying the software into a non-infinging one, may not be used to bring the DVRs on the list out of the scope of the injunction.


If you really found something new to convince you that the DVRs need to be shut down why not share it with us? Is it really something that hasn't been discussed here for weeks? Is it a secret?


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## jacmyoung

nobody99 said:


> I think you have a typo there...it's not spelled "game," it's spelled "delusional."


Let me say this to you one more time, let's not insult each other, it does not land credibilty to you.


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## jacmyoung

Curtis52 said:


> If you really found something new to convince you that the DVRs need to be shut down why not share it with us? Is it really something that hasn't been discussed here for weeks? Is it a secret?


Yes it is and I don't want to share Actually I had read one case law that touched on it, just too much at this time to cite it because it was truely lengthy and boring.


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## jacmyoung

Greg Bimson said:


> And later in the injunction order:Sounds rather cut and dried, and quite specific, to me.


Of course it is very specific as far as "disabling the DVR functionalities" is concerned, but did you find anywhere it says DISH is further enjoined from ever starting the DVR functions on the enjoined devices?

As I said the judge must be aware of the tool DISH has to later restart the DVR functionalities, becaue he knew the same tool will be used to stop the DVRs.

The reason he did not specify such, can only be two:

1) He made a mistake;
2) He did not think he should prohibit DISH from restarting the DVRs in a later time.

One of the relieves mentioned was DISH's proposal to install a modified software so the DVR functions can be allowed not to be disabled. Such relief was denied. So DISH disables the DVRs, though for a very short time. They then re-enabled the DVRs, which the injunction did not literally prohibit.

Which was what I said for how long the DVRs must be disabled can be debatable, but in a literal sense, there is no time requirement, only the act of disabling, which DISH followed, and the act of re-enabling, which DISH did, which is not explicitely prohibited.


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## spear61

The Dish filing for this Friday's little get together mentions that they put their engineers to work and developed the solution way back (2006). One has to ask, Why did they not formally tell the court or the appeals court they had implimented a workaround long before the injunction came into effect? I remember the battle royal I was involved in. You did not do anything white, gray or otherwise, without fully informing either the judge or the appeals court. Or did they?


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## Curtis52

jacmyoung said:


> Yes it is and I don't want to share Actually I had read one case law that touched on it, just too much at this time to cite it because it was truely lengthy and boring.


Do you have a link? I mean if it caused you to completely change from someone that says that Dish doesn't have to shut down the DVRs to someone that says the opposite it must have been pretty profound. It must have been an epiphany.


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## nobody99

jacmyoung said:


> Let me say this to you one more time, let's not insult each other, it does not land credibilty to you.


That's fine, but when you insult others by insinuating that "shut down" means that it can be shut down for five minutes and then turned back on, you should realize that we're all trying to have a serious conversation here.

If you truly believe that's what the court meant - that DISH could shut down the offending receivers for five minutes and turn them back on - then my original post stands.


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## Greg Bimson

jacmyoung said:


> Of course it is very specific as far as "disabling the DVR functionalities" is concerned, but did you find anywhere it says DISH is further enjoined from ever starting the DVR functions on the enjoined devices?


Why is it sometimes I feel I should just give up?

The order says to disable. The order does not say to enable. Doing anything to the disabled DVR's would be considered "relief", which was denied.


spear61 said:


> The Dish filing for this Friday's little get together mentions that they put their engineers to work and developed the solution way back (2006). One has to ask, Why did they not formally tell the court or the appeals court they had implimented a workaround long before the injunction came into effect?


DISH/SATS f'ed up.

They never addressed the injunction and they never addressed their workaround solultion to the Court of Appeals. DISH/SATS hoped to achieve total victory at the Court of Appeals.


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## jacmyoung

Greg Bimson said:


> ...The order says to disable. The order does not say to enable. Doing anything to the disabled DVR's would be considered "relief", ...


Of course an injunction order never says to "enable", only to stop something. Because it is not the job of an injunction to permit what the infringer may do, only what he may not do.

Usually, an injunction does not include any Infringing Products that are already in the hands of the end users, because there are no practical ways to enforced it. But in this case there is a way to easily enforce it, so the judge included a separate prevision to do it, rightfully so.

Now if DISH by re-enabling the DVRs actually made the devices in the end users hands non-infringing, it is reasonable to argue that the situation is already more in favor of the public interest than most other cases, where the Infringing Products already with the end users are still allowed to infringe.

So basically the judge is punishing DISH by imposing an order that is unreasonably more severe than in other similar cases. Now I will admit that the judge does not have to care, he has the power to do what he sees reasonable, but the appeals court may be more mindful of the public interest issue than the judge, or more even-handed in considering both the interest of DISH and Tivo, as already shown during the appeal.

And if the modified products indeed can be proven non-infringing, then it will most certainly land favor to DISH, away from Tivo. And in such case it will be in the best interest of the public to allow a non-infringing DVR in the field to continue, if the same court often does allow still-infringing products in the field to continue.


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## Curtis52

Allowing companies to ignore court orders is not in the public interest.



> The public interest would not be disserved by a permanent injunction. The public has an interest in maintaining a strong patent system. This interest is served by enforcing an adequate remedy for patent infringement --- in this case, a permanent injunction. The infringing products are not related to any issue of public health or any other equally key interest; they are used for entertainment. The public does not have a greater interest in allowing Defendants' customers' to continue to use their infringing DVRs.


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## nobody99

jacmyoung said:


> Now if DISH by re-enabling the DVRs actually made the devices in the end users hands non-infringing


Why I keep repeating this I have no idea.

DISH doesn't get to decide if they are now non-infringing. The court does. Until that decision has been made, they are in contempt. Simple, simple, simple.


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## phrelin

nobody99 said:


> Why I keep repeating this I have no idea.
> 
> DISH doesn't get to decide if they are now non-infringing. The court does. Until that decision has been made, they are in contempt. Simple, simple, simple.


It is simple until one realizes that while Echostar may or may not be in contempt, unlike in 2006 anything involving turning off the all the DVRs while the legal world contemplates its naval not only could cause significant financial damage to Dish Network, it would damage me and several hundred thousand others subscribers.

How do the interested we become a party to the case?


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## spear61

A couple of years old, but an example of how non-infringing" software was developed and loaded down to device so that it could be "activiated" AFTER receiving an injunction to stop using "infringing" software.

http://blogs.zdnet.com/ip-telephony/?p=902


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## nobody99

phrelin said:


> not only could cause significant financial damage to Dish Network, it would damage me and several hundred thousand others subscribers.


Already considered by Judge Folsom when the injunction was first written. He considers the public good of a strong patent system more valuable than the loss of use of an entertainment device.

And let's not forget, DISH could end this by simply licensing the technology from TiVo.


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## spear61

Here's a nice analysis of the Supreme Court's decison regarding patent injunctions and some of the interpretations that have flowed from that decision.

http://www.bromsun.com/media/RMA_Hot_Topics_2007.pdf


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## Greg Bimson

spear61 said:


> A couple of years old, but an example of how non-infringing" software was developed and loaded down to device so that it could be "activiated" AFTER receiving an injunction to stop using "infringing" software.


I think you'll be mortified to hear this...

That case was settled before an injunction was ever in full force and effect, and the workaround software was never evaluated nor activated. That is far more different than what we have here.


----------



## jacmyoung

Curtis52 said:


> Allowing companies to ignore court orders is not in the public interest.


A court order must also be reasonable. It is reasonable to order that DISH disable the DVR functions in the Infringing Products in the field, even though ordinarily infringing products in the field are not ordered to be disabled. That is because the method used to comply with such order is simple.

Now to go one step further to order that DISH may not re-load DVR functions, even though the new DVR functions may not infringe, will most certainly be unfair, compared to the usual cases where the infringing products in the field are actually allowed to continue to infringe. Not to mention such "additional order" is not even specified in the injunction.

If one can argue that allowing infringing products in the field to continue to infringe, in most cases anyway, can be considered still adequate in serving the public interest and the patent system, then how one can with a straight face, argue that allowing a non-infringing product in the field to continue may not serve the public interest and the patent system?


----------



## nobody99

jacmyoung said:


> how one can with a straight face, argue that allowing a non-infringing product in the field to continue may not serve the public interest and the patent system?


Really? Seriously? This is an honest question you are asking?

Let me count the ways:

Because the alleged "non-infringer" was found in a court of law to be infringing.

Because the alleged "non-infringer" was found in an appeals court to still be infringing.

Because there is an injunction, in full force and effect, that the products have their DVR functions shut down.

No one, not a single person, outside of Dish Networks has said they are non-infringing. Again (and again, and again, and again) until they are found by a court to be non-infringing, THEY ARE. Why isn't this getting through to you?


----------



## spear61

Greg Bimson said:


> I think you'll be mortified to hear this...
> 
> That case was settled before an injunction was ever in full force and effect, and the workaround software was never evaluated nor activated. That is far more different than what we have here.


So what. The software was downloaded and ready if they needed it. They did their homwork and had it ready if needed, something they would not have done if their legal team did not think it would provide them needed protection. Almost exactly the plan DISH executed.


----------



## phrelin

nobody99 said:


> Already considered by Judge Folsom when the injunction was first written. He considers the public good of a strong patent system more valuable than the loss of use of an entertainment device.
> 
> And let's not forget, DISH could end this by simply licensing the technology from TiVo.


While I think TiVo and Echostar should come to a fairly priced licensing agreement, I'd love to argue the issue of _entertainment_ in the abstract, where all this is being discussed here. There is a long legal history that places tv squarely in the public interest as a significant source of information related to the common good, as opposed to considering it primarily a domain of private enterprise. It is why we have an FCC. As far as I'm concernced anything associated with the field is to be considered with regard to my interest as a citizen first, the corporations and their rights are secondary.

(And, yes, I realize that the FCC and Congress have slowly abandoned that history in favor of making multimedia conglomerates richer and more able to contribute to reelection campaigns.)


----------



## scooper

nobody99 said:


> Really? Seriously? This is an honest question you are asking?
> 
> Let me count the ways:
> 
> Because the alleged "non-infringer" was found in a court of law to be infringing.
> 
> Because the alleged "non-infringer" was found in an appeals court to still be infringing.
> 
> Because there is an injunction, in full force and effect, that the products have their DVR functions shut down.
> 
> No one, not a single person, outside of Dish Networks has said they are non-infringing. Again (and again, and again, and again) until they are found by a court to be non-infringing, THEY ARE. Why isn't this getting through to you?


Again - WHY should the "infringing" devices already in the field be disabled as well (and don't go back to the injunction either - because that's circular logic) ? In almost any other infringement case, it would be impossible to change the deployed units. Why is Echostar being singled out ? Or - if it's ok to disable deployed units, why is it NOT ok to change them into non-infringing devices that use a (unproven to be sure) method that is (again, supposedly non-infringing) ?

If they got their software updates only over phoneline, but the subscribers didn't have them on phone - they wouldn't get the software either.


----------



## Herdfan

jacmyoung said:


> Now if DISH by re-enabling the DVRs actually made the devices in the end users hands non-infringing, it is reasonable to argue that the situation is already more in favor of the public interest than most other cases, where the Infringing Products already with the end users are still allowed to infringe.


But let's take it another direction. What if the judge issued the injunction as a method to punish DISH ( and yes I understand the general concept of punishment is waning in this country ), then the punishment was to have to shut off its DVR's until it could find an alternate solution.

This was meant not only to punish DISH, but to help provide a more level playing field for TiVO, ie there are no longer millions of infringing DVR's out in the market and maybe TiVo would sell a few more of its own boxes.

But since the COA stayed the injunction, DISH had the time to develop new software thus denying TiVo the level playing field, ie the time in which it would have taken DISH to either develop new software or replace every infringing box with one not listed in the injunction.


----------



## Greg Bimson

scooper said:


> Again - WHY should the "infringing" devices already in the field be disabled as well? In almost any other infringement case, it would be impossible to change the deployed units.


Because unlike a patent infringement suit on something like a rear-view mirror, where money exchanges hands for that product once, the business plan both TiVo and DISH/SATS employ for DVR functionality is an ongoing monthly fee.

Such as the rear view mirror case, the infringer was enjoined from sales of that product. However, in the final judgment and permanent injunction, it is more than likely the plaintiff was compensated, in the form of damages.


----------



## jacmyoung

Herdfan said:


> But let's take it another direction. What if the judge issued the injunction as a method to punish DISH ( and yes I understand the general concept of punishment is waning in this country ), then the punishment was to have to shut off its DVR's until it could find an alternate solution.
> 
> This was meant not only to punish DISH, but to help provide a more level playing field for TiVO, ie there are no longer millions of infringing DVR's out in the market and maybe TiVo would sell a few more of its own boxes.
> 
> But since the COA stayed the injunction, DISH had the time to develop new software thus denying TiVo the level playing field, ie the time in which it would have taken DISH to either develop new software or replace every infringing box with one not listed in the injunction.


First off what you said did not dispute the fairness or equable issue, because it is unusual for a judge to do so, punishment, even if it is still fashionable as before, did not go as far as to insist all infringing devices be disabled, in most cases. In fact DISH can easily make a long list of such cases Judge Folsom himself presided and point out the severity he might have opinioned on those infringers, and still to have examples of him allowing the infringing products in the field to continue to infringe.

As far as the lost opportunities by Tivo during the stay of the injunction, it will be addressed in the damage section.


----------



## jacmyoung

Greg Bimson said:


> ... it is more than likely the plaintiff was compensated, in the form of damages.


So will in this case.


----------



## Greg Bimson

jacmyoung said:


> So will in this case.


Sure it will, but unlike selling 100,000 rear view mirror units, which have a single, absolute dollar figure attached, DVR's have a monthly fee, which needs to be licensed. So every month of infringement on a DVR produces more damages, unlike infringement on a rear view mirror.


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## jacmyoung

Greg Bimson said:


> Sure it will, but unlike selling 100,000 rear view mirror units, which have a single, absolute dollar figure attached, DVR's have a monthly fee, which needs to be licensed. So every month of infringement on a DVR produces more damages, unlike infringement on a rear view mirror.


Again, it can be addressed by the demages. There is no reason to insist even a non-infringing product may not continue.


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## phrelin

From here.


----------



## Curtis52

Greg Bimson said:


> Such as the rear view mirror case, the infringer was enjoined from sales of that product. However, in the final judgment and permanent injunction, it is more than likely the plaintiff was compensated, in the form of damages.


The damages don't compensate for irreparable harm. There is no remedy for that other than the injunction.


----------



## nobody99

phrelin said:


> From here.


Nice spin.

Before DirecTV was bought out by Rupert Murdoch, who has his own DVR, the DirecTiVo ruled. It cost $5.99 per month for DVR fees - no matter how many you had. It was believed that TiVo made somewhere around $1 a month per subscriber (no matter how many DirecTivo's they had)

Once Murdoch arrived, he put the kibosh on TiVo. That was it for me as a subscriber - I'm now back to cable. But, I now have three high def TiVos. One has lifetime sub, the others are about $7 a month. So instead of getting $1 from me per month, they are getting $14.

You tell me which is better. At this rate, TiVo only needs to find one TiVo-owned subscriber for each fourteen it loses at DirecTV.


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## spear61

QUOTE=Herdfan;1620535]But let's take it another direction. What if the judge issued the injunction as a method to punish DISH ( and yes I understand the general concept of punishment is waning in this country ), then the punishment was to have to shut off its DVR's until it could find an alternate solution.

This was meant not only to punish DISH, but to help provide a more level playing field for TiVO, ie there are no longer millions of infringing DVR's out in the market and maybe TiVo would sell a few more of its own boxes.......

QUOTE]

An excellent summary of the situation the judge needs to resolve. And he will look at equitable relief. What is the remedy for the lost and unrecoverable time of TIVO's patent? If DISH does not want to buy TIVO boxes or pay a royalty, what does he do? Or, as you say, perhaps the judge would want punishment for abuse of the patent system ( another equity problem).


"In general, a litigant cannot obtain equitable relief unless there is "no adequate remedy at law"—that is, a court will not grant an injunction unless monetary damages are an insufficient remedy for the injury in question".


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## brettbolt

Herdfan said:


> But let's take it another direction. What if the judge issued the injunction as a method to punish DISH ( and yes I understand the general concept of punishment is waning in this country ), then the punishment was to have to shut off its DVR's until it could find an alternate solution.


I understand the judge wanting to punish Dish, but the collateral damage of shutting off customers DVRs is definitely not in the public interest, as the patent system was intended.

Lets say Ford Motor Co. was found to have violated a patent in its car stereo systems. He would punish Ford by making them pay $$$, but he would not require them to break into every infringing vehicle and disable the stereo. So where is the legal precedent saying its OK to electronically disable a consumer product?

I understand that judges are given 'broad authority' to remedy a patent infringement. But I think he has gone overboard here. Effectively, he is demanding that Dish/SATS perform an act of vandalism.

There is simply too much collateral damage. Lets punish the infringers directly if they are found to infringe, not their innocent customers.


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## jacmyoung

nobody99 said:


> Nice spin.
> 
> Before DirecTV was bought out by Rupert Murdoch, who has his own DVR, the DirecTiVo ruled. It cost $5.99 per month for DVR fees - no matter how many you had. It was believed that TiVo made somewhere around $1 a month per subscriber (no matter how many DirecTivo's they had)
> 
> Once Murdoch arrived, he put the kibosh on TiVo. That was it for me as a subscriber - I'm now back to cable. But, I now have three high def TiVos. One has lifetime sub, the others are about $7 a month. So instead of getting $1 from me per month, they are getting $14.
> 
> You tell me which is better. At this rate, TiVo only needs to find one TiVo-owned subscriber for each fourteen it loses at DirecTV.


Tivo lost 580,000 DirecTivo accounts in the last FY, and only added a net of 19,000 of its own subs like you in the same year, and BTW how many of them do you believe pay $14/mo. like you do? Actually Tivo's own number is $9/mo. on average.

Let's not forget, everytime they sell a new Tivo box, they lose an average of about little under $300. They did not have to eat such loss when DirecTivo accounts were added on back then because DirecTV ate the costs.


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## Curtis52

brettbolt said:


> I understand that judges are given 'broad authority' to remedy a patent infringement. But I think he has gone overboard here. Effectively, he is demanding that Dish/SATS perform an act of vandalism.
> 
> There is simply too much collateral damage. Lets punish the infringers directly if they are found to infringe, not their innocent customers.


I believe that a fence's innocent customers are required to return stolen merchandise.


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## phrelin

Curtis52 said:


> I believe that a fence's innocent customers are required to return stolen merchandise.


Interesting point. Who at TiVo should I send my two 508's to if they are turned off?:sure:


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## jacmyoung

brettbolt said:


> ...There is simply too much collateral damage. Lets punish the infringers directly if they are found to infringe, not their innocent customers.


I wonder if it ever happened before when a judge's decision was allowed to render millions of people's products useless? I agree it simply does not sound right, especially when the infringer can show a good faith effort to ensure the infringement may not occur in the future.

I guess it comes down to this, we are in an uncharted territory, where tranditionally the court used the injunction as means to coax settlement, which for the most part they succeeded. But in this case they may not, we don't know but it is unlikely a settlement can be forced into soon.

What is the court going to do? If DISH today decided "against its own subs' interest" to fight on, should the court be part of such effort? Or should the court say wait a minute, may be we should simply ask DISH to "pay through the nose" rather to harm the public.


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## jacmyoung

Curtis52 said:


> I believe that a fence's innocent customers are required to return stolen merchandise.


But why wasn't such done in almost all other cases? Has our court system been encouraging wrong doing all this time?

When faced with a tough decision, it may not be Judge Folsom, but the appeals court may find loopholes to avoid harming the public. Believe me there are always holes even in the tightest fence.

A question for the legal experts, DISH is appealing the entire court ruling to the Supreme Court. Can they still do so after a contempt ruling and after they fail at appeal? I know they can not attack the injunction at appeals court level, but since the appeal to the Supreme Court is for prior ruling and yet to happen, can they attack the injunction at the Supreme Court level, citing in part the harm to the public of the supposed contempt ruling?

I also know that in most cases the Supreme Court may not even hear the case, but if millions of public will be negatively impacted, and the fact this case is unlike anything before, they should pay attention to it.


----------



## phrelin

jacmyoung said:


> Tivo lost 580,000 DirecTivo accounts in the last FY, and only added a net of 19,000 of its own subs like you in the same year, and BTW how many of them do you believe pay $14/mo. like you do? Actually Tivo's own number is $9/mo. on average.
> 
> Let's not forget, everytime they sell a new Tivo box, they lose an average of about little under $300. They did not have to eat such loss when DirecTivo accounts were added on back then because DirecTV ate the costs.


Which is why they ought to be in the licensing business so they can make money. Let the well capitalized signal providers front the box cost.


----------



## phrelin

By the way, TiVo actually made money, 4¢ a share, this last quarter according to this article:


> Digital video recorder pioneer TiVo reported Wednesday that its first-quarter net income more than quadrupled as operating costs, most notably for marketing and research, declined.
> 
> ...TiVo rarely posts a profitable quarter and said Wednesday it expects a net loss of $2 million to $4 million in the current quarter on service and technology revenue of $53 million to $55 million.


----------



## Greg Bimson

jacmyoung said:


> Again, it can be addressed by the demages. There is no reason to insist even a non-infringing product may not continue.


Sure it can be addressed by damages. How much has TiVo received, so far?

When did DISH/SATS come up with a non-infringing product?

In ordinary terms, DISH/SATS is being called to the carpet for ignoring Judge Folsom's injunction order. Even if DISH/SATS argues and loses, it is entirely possible that DISH/SATS does not turn off a single DVR. They'll just pay the fines.

Which would cost more than a licensing agreement ever would have, two years ago. And this entire suit would be moot.

Truth be told, if found in contempt, I say throw DISH/SATS executives in the brig until they shut down their offending DVR's. You'll see how fast an agreement can be made.


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## jacmyoung

phrelin said:


> By the way, TiVo actually made money, 4¢ a share, this last quarter according to this article:


When you are not adding any new subs, therefore not spending on the "new sub acquisition" costs, only to sit back and collect the monthly fees, then yes it is easy to turn profit, just not for very long.


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## jacmyoung

Greg Bimson said:


> ...Truth be told, if found in contempt, I say throw DISH/SATS executives in the brig until they shut down their offending DVR's. You'll see how fast an agreement can be made.


But if they can still use DISH DVRs in there, should they care?


----------



## Greg Bimson

jacmyoung said:


> I wonder if it ever happened before when a judge's decision was allowed to render millions of people's products useless? I agree it simply does not sound right, especially when the infringer can show a good faith effort to ensure the infringement may not occur in the future.


Well, it was about to, but the Blackberry case was settled before the injunction was issued.

The surprising part is that several different agencies of the US Government were imploring the judge in that case to allow Blackberries to operate, so that the Government could continue using them. When the judge did his little tirade that the parties didn't want the court to issue the terms of what should be a business agreement, the parties finally settled.

The TiVo v. DISH/SATS case is much different. There is a standing injunction, which does not appear to have been completely followed by the defendants. There is a difference between losing a patent infringement case and losing a contempt violation proceeding.


----------



## spear61

jacmyoung said:


> .......I also know that in most cases the Supreme Court may not even hear the case, but if millions of public will be negatively impacted, and the fact this case is unlike anything before, they should pay attention to it.


In regard to damage to customers, DISH is probably in a weaker position today than they were two years ago since the new boxes they are installing were not included in the injunction and it could be argued that a viable alternative exits for DISH ( replace the old boxes with the new ones).


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## brettbolt

jacmyoung said:


> I also know that in most cases the Supreme Court may not even hear the case, but if millions of public will be negatively impacted, and the fact this case is unlike anything before, they should pay attention to it.


This case is certainly unlike anything before, and I hope that consumer rights/public interest issues are fully adressed (with a positive outcome for consumers).

Ironically, there are 2 bonuses in there for Dish if they actually end up shutting down the older DVRs (501, 508) but not the newer 622/722s.
1) There will no longer be any receivers exempt from the $5.98 monthly DVR fee
2) If/when they switch transmission entirely to MPEG4, there will be fewer receivers to replace.

Brett


----------



## jacmyoung

I just don't think the court will end up shuting off millions of DVRs at the end users level, especially when DISH can reasonably argue they made an intense effort to workaround the patent and at least seem to be successful, there is no harm done to wait and see. If they are found to infringe again, they will have to pay Tivo, not as if Tivo will be seriously harmed.

If you compared "Tivo will be compensated" with "millions will lose their products and service", just exactly what good it is to insist the injunction to go the extra mile, especially when such extra mile is not even required in the language of the injunction?

Ordinarily “disabling the XXX functionalities” will be enough to stop the products from being used ever again, but in this case it may be reactivated easily, so the injunction should be clear of its intent and lay out the explicit steps to prevent the act of reactivation, if this is indeed its intent. But it did not emphasize such need, only to disable, nothing about never allowed to re-enable.

In fact even those arguing for DVR shut off admitted that it is reasonable to allow re-enabling in a later time if the new software is found non-infringing, meaning there is really no intent in the injunction to permanently disable DVR functionalities, only the DVR functionalities that infringed.

Therefore most can agree the only difference is when such act may happen. I don’t think there is ever a rule of thumb on this one. The only thing closest in explaining how this may be handled is the court ruling on how “colorable difference” issue should be handled in the current setting.


----------



## brettbolt

jacmyoung said:


> If you compared "Tivo will be compensated" with "millions will lose their products and service", just exactly what good it is to insist the injunction to go the extra mile, especially when such extra mile is not even required in the language of the injunction?


Maybe the judge thinks that shutting off the DVRs will force consumers to go out and buy a Tivo? But the newer Tivos do not work with satellite. So how are we supposed to record satellite TV?

And what about the recorded content residing on the DVRs that might be shut off? How many millions of dollars of paid movies will be lost?

Plus, I'll lose recordings of a sentimental value, like when my wife and I were on ESPN.

To use the car stereo analogy, the judge is taking my stereo AND my CD collection. What gives him the right?


----------



## James Long

Greg Bimson said:


> All relief not specifically granted herein is denied.
> 
> 
> 
> Sounds rather cut and dried, and quite specific, to me.
Click to expand...

You do realize that this is a limit on the relief granted to Tivo? The injunction specifies a penalty and draws the line ... denying any relief not specifically granted.



spear61 said:


> The Dish filing for this Friday's little get together mentions that they put their engineers to work and developed the solution way back (2006). One has to ask, Why did they not formally tell the court or the appeals court they had implimented a workaround long before the injunction came into effect?


It helps that the injunction took about 18 months to take effect. The solution was not implemented until late last year. Before that it was a proposed solution ... and even if it was ready to go in August 2006, announcing that they were switching code would be nearly an admission of guilt.

Imagine a kid walking out of a store with a candy bar hidden in his pocket ... security stops them. The kid walks back in the store, removes a candy bar from his pocket and sets it on the counter and turns to leave. That action makes it a lot harder for the kid to argue that he didn't steal the candy bar. He's better off leaving it in his pocket and removing it discretely.

That is what DISH has done with the software ... a few hints that "Tivo code" may be removable but no announcement that the code had actually been removed until months later.



Greg Bimson said:


> In ordinary terms, DISH/SATS is being called to the carpet for ignoring Judge Folsom's injunction order.


Not yet. DISH is being called in alongside Tivo to discuss the status of the case. While the courtroom is likely carpeted, DISH isn't being called on the carpet.


----------



## Greg Bimson

DISH/SATS most likely won't shut down DVR's at the contempt hearing. If found guilty of contempt, they'll more than likely appeal. They've already stated they won't shut down DVR's, or at least that's what they've told their customers.


----------



## James Long

We can agree on that ... DISH will not be shutting down their DVRs.

But I do have to ask, what contempt hearing? Friday is a status hearing. When you say "the contempt hearing" you make it sound like one is already scheduled.


----------



## Greg Bimson

James Long said:


> But I do have to ask, what contempt hearing? Friday is a status hearing. When you say "the contempt hearing" you make it sound like one is already scheduled.


In my mind there will definitely be a contempt hearing scheduled, it is just a matter of when.


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## scooper

Maybe, but as of *RIGHT NOW* there is not one scheduled.


----------



## peak_reception

jacmyoung said:


> When you are not adding any new subs, therefore not spending on the "new sub acquisition" costs, only to sit back and collect the monthly fees, then yes it is easy to turn profit, just not for very long.


Ironic that Dish and TiVo are having the same problem here.


----------



## inkahauts

jacmyoung said:


> I just don't think the court will end up shuting off millions of DVRs at the end users level, especially when DISH can reasonably argue they made an intense effort to workaround the patent and at least seem to be successful, there is no harm done to wait and see. If they are found to infringe again, they will have to pay Tivo, not as if Tivo will be seriously harmed.
> 
> If you compared "Tivo will be compensated" with "millions will lose their products and service", just exactly what good it is to insist the injunction to go the extra mile, especially when such extra mile is not even required in the language of the injunction?
> 
> Ordinarily "disabling the XXX functionalities" will be enough to stop the products from being used ever again, but in this case it may be reactivated easily, so the injunction should be clear of its intent and lay out the explicit steps to prevent the act of reactivation, if this is indeed its intent. But it did not emphasize such need, only to disable, nothing about never allowed to re-enable.
> 
> In fact even those arguing for DVR shut off admitted that it is reasonable to allow re-enabling in a later time if the new software is found non-infringing, meaning there is really no intent in the injunction to permanently disable DVR functionalities, only the DVR functionalities that infringed.
> 
> Therefore most can agree the only difference is when such act may happen. I don't think there is ever a rule of thumb on this one. The only thing closest in explaining how this may be handled is the court ruling on how "colorable difference" issue should be handled in the current setting.


How much effort Dish put into working around the patents is not something the judge should take into account in any way. At some point, I think the judge needs to put his foot down. I'm not a tivo fan in general, but if they won an injunction and Dish is ignoring it, there needs to be real consequences, and they need to take place now. They have spent plenty of time appealing already and they have gotten no where in changing the verdict....


----------



## James Long

peak_reception said:


> jacmyoung said:
> 
> 
> 
> When you are not adding any new subs, therefore not spending on the "new sub acquisition" costs, only to sit back and collect the monthly fees, then yes it is easy to turn profit, just not for very long.
> 
> 
> 
> Ironic that Dish and TiVo are having the same problem here.
Click to expand...

DISH managed to add 730k new subs in the 1st quarter ... down from last year's addition of 890k new subs. Unfortunately they also lost subscribers ... giving them a net gain of 35k for the quarter.

Subscriber acquisition cost was $709 ... up from $663 for the same quarter last year. Net income was $258 million for the quarter.

Tivo added 276k subscriptions last year ... net 4k for their own subscription but thanks to DirecTV and cable company subscriptions they LOST a net 499k subscribers in the last physical year. The year before they had a net gain of 70k, before that a net gain of over 1.3 million. Tivo is tanking fast ... and it isn't DISH's fault ... it is DirecTV and cable operators.

Tivo had a net loss of 6.3 million dollars ... which isn't really bad compared to previous quarters. For all but one going back to 2006 the loss was greater (that one quarter they posted a gain). But they did manage to spend only $294 per subscriber added (SAC).

I wouldn't say DISH was having the same problem as Tivo.



inkahauts said:


> I'm not a tivo fan in general, but if they won an injunction and Dish is ignoring it, there needs to be real consequences, and they need to take place now.


DISH isn't ignoring the injunction. They have taken major steps to make sure that they are no longer infringing on Tivo's patented process. There is nothing in the law that allows DISH from being banned from ever offering any DVR ever again.


----------



## jacmyoung

I think there lies an obvious argument to stay the injunctin again, if such is still possible. The judge should have broad laverage to do so, if I understand it correctly.

The reason is, despite the judge's argument against a stay during the last appeal, the appeals court ruled in favor of DISH. And as far as I can tell, the reason, and the *only reason* the appeals court stayed the injunction, was because there existed a *doubt* whether the jury's verdicts was valid or not, even though as we could all agree such doubt was very small, but as long as the doubt existed, it was enough for the court to stay the injunction.

Of course once the court removed such doubt, the stay was lifted, rightfully so.

Now it is obvious a *doubt* has resurfaced, this time a bigger doubt, because even Tivo admitted such doubt by asking the judge for additional information just "to be sure."

Keeping with exactly the same logic, this time, taking the advice from the appeals court prior decision, the judge should stay the injuncion pending the removal of such *doubt*, and of course the process of doing so are two two fold:

First he should look at the colorable difference issue, and if it is more than colorable, next is to order a new independent proceeding to determine the infringement of the new softeware.

But during such time when he tries to resolve such *doubt* issue, he should stay his injunction.

And if he refuses to do so, then the appeals court should do so on appeal, because they did the exact same thing last time, for the exact same reason, the only difference is the reason today is more compelling.

Staying an injunction is not an attack on it, nor even trying to interpret it.

So the only question I ask is can the injunction be again stayed by the appeals court? I am almost certain the judge can stay his own injunction, but can the appeals court do so too, at this juncture?


----------



## Greg Bimson

jacmyoung said:


> The reason is, despite the judge's argument against a stay during the last appeal, the appeals court ruled in favor of DISH.


When the appeal was done, DISH was still guilty of willful patent infringement and also had the district court's injunction in full force against them. Since when is that "in favor of DISH?"


jacmyoung said:


> And as far as I can tell, the reason, and the *only reason* the appeals court stayed the injunction, was because there existed a *doubt* whether the jury's verdicts was valid or not, even though as we could all agree such doubt was very small, but as long as the doubt existed, it was enough for the court to stay the injunction.


Of course there was doubt. But I think your doubt is misplaced...

Judge Folsom signed the Final Judgment and Permanent Injunction on 8 September 2006. Judge Folsom also denied a stay on the injunction because he felt that DISH/SATS would not be able to achieve total victory upon appeal. Because the software claims and the injunction were upheld, it turns out he was correct. However, the very next day, the Court of Appeals accepted the case and stayed the injunction during the appeals process. The official date of that stay was in early October.

How did the Court of Appeals feel there was any doubt when they hadn't even seen the case? The Court of Appeals simply stayed the injunction because it hadn't been through the appeals process yet. There is wayyy toooo muccch interpretation of the Court of Appeals staying the injunction, especially once that court validated part of the verdict and allowed the injunction to take hold, in full force and effect.

Staying an injunction upon appeal is standard operating procedure for the Court of Appeals. Considering they never looked at the case until brief were filed by the parties to address issues with the District Court's proceedings, there is simply too much interpretation that because the Court of Appeals stayed the injunction there were doubts.


----------



## peak_reception

James Long said:


> DISH managed... a net gain of 35k for the quarter...
> I wouldn't say DISH was having the same problem as Tivo.


Ok a _similar_ problem in that their profits were up for the quarter but only because _net_ subscriber gain was so weak. (downright abysmal compared to D*'s gain). That's all I meant. The details you add are interesting though.

:backtotop (there. beat you to it  )


----------



## jacmyoung

Greg Bimson said:


> ... Since when is that "in favor of DISH?"...
> 
> ...However, the very next day, the Court of Appeals accepted the case and stayed the injunction during the appeals process. ...


There was the favor they did DISH, they did not have to but they did.

There has to be a reason for an action. Even if it is routine. The appeal process itself assumed *doubt* otherwise there should not be any appeal. Once DISH exhaust all appeals, there will be no *doubt* left.

Clearly a reasonable *doubt* now exists as whether the modified products are still Infringing Products. I understand the literal interpretation of "shutting off regardless", but given the public interest issue on the back of their minds, it is reasonable to think the judges will find a remedy to avoid attacking the injunction, yet still allow the newly surfaced issue to be addressed.

Because there is no compelling reason to punish DISH by not allowing a non-infringing product in the field to continue, while in almost all other cases, the infringers are always allowed to have the infringing devices in the field to continue.

The reason the infringing devices in the field have always been allowed to continue is precisely due to the public interest test. The public interest test is just as compelling here as in any other cases, if not more, because now even the test of future harm to Tivo may be in doubt, if the modified devices may be indeed proven to no longer infringe.


----------



## TBoneit

spear61 said:


> QUOTE=Herdfan;1620535]But let's take it another direction. What if the judge issued the injunction as a method to punish DISH ( and yes I understand the general concept of punishment is waning in this country ), then the punishment was to have to shut off its DVR's until it could find an alternate solution.
> 
> This was meant not only to punish DISH, but to help provide a more level playing field for TiVO, ie there are no longer millions of infringing DVR's out in the market and maybe TiVo would sell a few more of its own boxes.......
> 
> QUOTE]
> 
> An excellent summary of the situation the judge needs to resolve. And he will look at equitable relief. What is the remedy for the lost and unrecoverable time of TIVO's patent? If DISH does not want to buy TIVO boxes or pay a royalty, what does he do? Or, as you say, perhaps the judge would want punishment for abuse of the patent system ( another equity problem).
> 
> "In general, a litigant cannot obtain equitable relief unless there is "no adequate remedy at law"-that is, a court will not grant an injunction unless monetary damages are an insufficient remedy for the injury in question".


I wouldn't go running out and buy a new Tivo if the worst happened. I have a Tivo Standalone that works and has a lifetime sub. I much prefer the E* DVRs. I only have the Tivo because at that time the choice was beteen it and Replay. I felt that Replay might not last as long. Several reasons for that. Since I would keep Satellite TV
and any Tivo would only work in SD that way, why pay a monthly fee to Tivo?

as soon as E* introduced the 7100 Dishplayers and the DVR functionality I ran out and got two of them. Upped the hard drive and put the Tivo into semi-retirement.

So I currently have a Tivo and a DVD recorder with a hard drive in it as a fall back if the 7100, the 721 (Not VIP722) , and the VIP622 get turned off.

I've been thinking of running to wally world and picking up a new DVD recorder with a hard drive as they seem to be disappearing form the market. That decision isn't connected to the Tivo/E* dispute either. It is just to put on the 721 for another family membe to use in place of the VHS tape deck.

In fact I'd be tempted to look for new Tivo units with no sub period attached and sub them for one month only if I lost my DVRs from E*.


----------



## James Long

peak_reception said:


> Ok a _similar_ problem in that their profits were up for the quarter but only because _net_ subscriber gain was so weak. (downright abysmal compared to D*'s gain). That's all I meant. The details you add are interesting though.


You were comparing DISH to Tivo not DirecTV ... but DirecTV had their fair share of lost customers (689k where DISH lost 695k) ... they just managed to woo enough new ones that it didn't hurt (as much). (BTW: SAC cost DirecTV $712 per subscriber, about the same as DISH.)

Tivo wasn't up for the quarter ... so there really isn't a similarity there. Tivo has had a couple of years of net lost customers and profits. DISH is still adding net customers and making money. Tivo needs another source of income - pronto.


----------



## Greg Bimson

jacmyoung said:


> The reason the infringing devices in the field have always been allowed to continue is precisely due to the public interest test. The public interest test is just as compelling here as in any other cases, if not more, because now even the test of future harm to Tivo may be in doubt, if the modified devices may be indeed proven to no longer infringe.


There are still 192,708 devices allowed to infringe, because TiVo was awarded $32.66 million for lost profits on those 192,708 units. The assumption is that TiVo could have sold those almost 193K with lifetime subscriptions if DISH/SATS had not infringed.

The rest of the damages is lost royalties (monthly licensing fees) on the remaining units. The reason for the injunction is because there is no way for TiVo to completely recover any royalties until there is a licensing agreement in place.

That would be unlike a rear-view mirror, where royalties are not ongoing. The rear-view mirror is paid for once, and it is done.

But it certainly has no relation to the "public interest test".


----------



## JyroBip

Anyone else notice that the current full page Dish newspaper ads and Dish's website no longer include the "Better than Tivo" tag line?
Maybe they are concerned.


----------



## nobody99

jacmyoung said:


> Clearly a reasonable *doubt* now exists as whether the modified products are still Infringing Products.


THANK YOU! You have just made it easier to explain!

There is reasonable doubt, and a new trial, or a hearing, or some other court action will be required to settle the doubt one way or the other. IN THE MEANTIME, the injunction is already, today, right now, in effect.

Two sentences. I'll get this down to one sentence eventually, and maybe then, finally, you'll take off the dish-colored glasses.

A guy can hope.


----------



## odbrv

I have taught Software development at the university level (undergad and grad)for 25 years and practiced in the field for over 40 years. When it comes to programming, unless one copied the instruction set, line by line, and used the same naming set for variables, it would be almost impossible to determine plagerism/cheating. Our teaching assistants have reviewed the programs of 1400 students per year and 6 programming assignments. That comes to 210,000 programs evaluated over 25 years. Very rarely does a student do an exact copy and get caught.
From reading TIVO's statement on their review of E*'s software, I did not read their claim of an exact copy. Anything other than an exact copy has a counter claim of coincidence and would be impossible to prove otherwise. Without an exact copy, you would find many expert witnesses arguing for E*. Even if TIVO find experts to argue for them, there would still be too much doubt to make a judgement againt E*.


----------



## Curtis52

odbrv said:


> I have taught Software development at the university level (undergad and grad)for 25 years and practiced in the field for over 40 years. When it comes to programming, unless one copied the instruction set, line by line, and used the same naming set for variables, it would be almost impossible to determine plagerism/cheating. Our teaching assistants have reviewed the programs of 1400 students per year and 6 programming assignments. That comes to 210,000 programs evaluated over 25 years. Very rarely does a student do an exact copy and get caught.
> From reading TIVO's statement on their review of E*'s software, I did not read their claim of an exact copy. Anything other than an exact copy has a counter claim of coincidence and would be impossible to prove otherwise. Without an exact copy, you would find many expert witnesses arguing for E*. Even if TIVO find experts to argue for them, there would still be too much doubt to make a judgement againt E*.


Exact copy of what? There is not one line of code in TiVo's patent.

Here is the process Dish infringed:



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


----------



## odbrv

For those of us who have written programs, they know it is a set of instructions(code). What you have listed is more a set of design objectives. To solve a problem it is easy for more than one student to come to the same set of design objectives. The problem to be solved sometimes limits the solution possibilities. However, the code for the program could be greatly different in structure and variable names. Again, unless the program ( all code ) is exactly the same , one could argue against cheating/plagerism.


----------



## jacmyoung

odbrv said:


> For those of us who have written programs, they know it is a set of instructions(code). What you have listed is more a set of design objectives. To solve a problem it is easy for more than one student to come to the same set of design objectives. The problem to be solved sometimes limits the solution possibilities. However, the code for the program could be greatly different in structure and variable names.


The point here is always that, it is almost impossible to say two sets of software codes are "only colorably different", therefore a contempt is not appropriate.

Once that is established, one can then try to determine the infringement issue, and that will have to rely on the patent claims Curtis quoted above, not line by line comparison of the codes. Which is why the old software DISH used (bet it was different from the exact Tivo code line by line), did infringe.


----------



## Curtis52

odbrv said:


> For those of us who have written programs, they know it is a set of instructions(code). What you have listed is more a set of design objectives. To solve a problem it is easy for more than one student to come to the same set of design objectives. The problem to be solved sometimes limits the solution possibilities. However, the code for the program could be greatly different in structure and variable names. Again, unless the program ( all code ) is exactly the same , one could argue against cheating/plagerism.


Dish was not accused of plagiarism. They were found to infringe claim 31 of TiVo's patent. How they got to that point is irrelevent.


----------



## odbrv

jacmyoung said:


> The point here is always that, it is almost impossible to say two sets of software codes are "only colorably different", therefore a contempt is not appropriate.
> 
> Once that is established, one can then try to determine the infringement issue, and that will have to rely on the patent claims Curtis quoted above, not line by line comparison of the codes. Which is why the old software DISH used (bet it was different from the exact Tivo code line by line), did infringe.


Well E* can easily retain myself and hundreds of other experts to argue their side. TIVo can do the same. There is just too much doubt when it comes to software development to solve similar problems.


----------



## Greg Bimson

If I recall correctly, one can apply to the Patent and Trademark Office a to receive exclusive rights for a product with an innovative, never seen before design. That would be a patent. Worrying about cheating or plagerism is more along the lines of copyright infringement.


----------



## jacmyoung

nobody99 said:


> THANK YOU! You have just made it easier to explain!
> 
> There is reasonable doubt, and a new trial, or a hearing, or some other court action will be required to settle the doubt one way or the other. IN THE MEANTIME, the injunction is already, today, right now, in effect.
> 
> Two sentences. I'll get this down to one sentence eventually, and maybe then, finally, you'll take off the dish-colored glasses.
> 
> A guy can hope.


I hope you realize I have listed case after case when the two above sentences applied, and yet the contempt rulings were overturned? Because a contempt discussion is NOT that new trial, or hearing, or something else, it is just that, a contempt issue. If there is the *doubt* then there should not be a contempt ruling, an "independent" proceeding must follow, if Tivo asks for it.

Now I have admitted in this case there is a unique provision to turn off the DVR functionalities in the field, and this one is highly unusual because it serves to go beyond any usual injunctions in which infringing devices in the field never were disabled, but in this case it did.

Because it is not heard before, the court is presented a unique issue, that in the past for public interest reasons, infringing devices in the field were allowed to continue to infringe. How does the court answer the equitable test, when in this case, there is clear possibility the modified devices in the field will not even infringe, yet they will not be allowed even not to infringe.


----------



## Curtis52

The key phrase from the injunction is "colorably different therefrom in the context of the Infringed Claims" not "colorably different in the context of the computer code". Dish infringed processes in claim 31 of TiVo's patent.


----------



## Greg Bimson

odbrv said:


> Well E* can easily retain myself and hundreds of other experts to argue their side. TIVo can do the same. There is just too much doubt when it comes to software development to solve similar problems.


Two people walked into the Patent Office in 1876. Only one was awarded the patent.

Those two people had designs for a device, and their designs were quite similar. Hardly anyone remembers Elisha Gray. Everyone knows who Alexander Graham Bell was.

Both were solving similar problems. But only one was granted patent protection of their design.

And somehow an "expert" can discuss "software development to solve similar problems", and that will make everything "OK"? Not when it involves a patent.


----------



## nobody99

jacmyoung said:


> The point here is always that, it is almost impossible to say two sets of software codes are "only colorably different", therefore a contempt is not appropriate.


And fortunately for TiVo, the burden of proof is for DISH to show that the code is *more than colorably different*.

And, oh, yeah, until they do, they are in contempt. Have I mentioned that before?


----------



## Curtis52

Greg Bimson said:


> If I recall correctly, one can apply to the Patent and Trademark Office a to receive exclusive rights for a product with an innovative, never seen before design. That would be a patent. Worrying about cheating or plagerism is more along the lines of copyright infringement.


I don't think he knows what a patent is.


----------



## Greg Bimson

jacmyoung said:


> If there is the *doubt* then there should not be a contempt ruling...


Funny, but there is no *doubt* that the "Infringing Products" have not been disabled. DISH/SATS weak argument in their brief cannot even change that. And at one point even you acknowlegded that...


jacmyoung said:


> As such the act of modifying the software into a non-infinging one, may not be used to bring the DVRs on the list out of the scope of the injunction.


----------



## nobody99

jacmyoung said:


> I hope you realize I have listed case after case when the two above sentences applied, and yet the contempt rulings were overturned? Because a contempt discussion is NOT that new trial, or hearing, or something else, it is just that, a contempt issue. If there is the *doubt* then there should not be a contempt ruling, an "independent" proceeding must follow, if Tivo asks for it.


No, you haven't.

You've listed case after case where a company makes a change and pushes an allegedly new product out the door for sale. Much different.



> Now I have admitted in this case there is a unique provision to turn off the DVR functionalities in the field, and this one is highly unusual because it serves to go beyond any usual injunctions in which infringing devices in the field never were disabled, but in this case it did.


It doesn't matter how highly unusual it is. It doesn't matter if Marvin The Martian came down, got an injunction against NASA to stop sending probes to Mars. The point is, there's an injunction to turn of the DVR functionality of a half dozen or so reveivers. That injunction is in effect, and being ignored, today. DISH will have their day in court to prove that the new software doesn't infringe. It might be Friday afternoon after the status meeting. It might be two weeks from now. It might be a month from now. But until it happens, the DVR functionality is supposed to be turned off.
[/quote]



> Because it is not heard before, the court is presented a unique issue, that in the past for public interest reasons, infringing devices in the field were allowed to continue to infringe.


Give me a break. What public interest is being served by being able to record a show and watch it later? Your interest? Absolutely. Not mine. Not TiVo's. Not TiVo shareholders. Not the "public good of a strong patent system." Oh, did I mention that the judge thinks a strong patent system is more important than your ability to watch Oprah on time delay?



> How does the court answer the equitable test, when in this case, there is clear possibility the modified devices in the field will not even infringe, yet they will not be allowed even not to infringe.


As I said, DISH will have its day in court. And the injunction will be lifted if the new software no longer infringes. But DISH doesn't get to unilaterally decide the the software no longer infringes!

Here - food for though.

Way back when TiVo brought this lawsuit, before it went to trial, TiVo though that DISH infringed on its patent. Why wasn't an injunction slapped on them right then and there, before trial, because TiVo said it infringes?


----------



## phrelin

odbrv said:


> For those of us who have written programs, they know it is a set of instructions(code). What you have listed is more a set of design objectives. To solve a problem it is easy for more than one student to come to the same set of design objectives. The problem to be solved sometimes limits the solution possibilities. However, the code for the program could be greatly different in structure and variable names. Again, unless the program ( all code ) is exactly the same , one could arue against cheating/plagerism.


As someone who was writing code in 1970 and has had to suffer through the growth of "bloating of code" and listen to people argue over whose word processing software design was "better" (most of us could get by on the Wang 1200), I was delighted by the development of generative programming and find the idea of people asserting that their "system" and "code" has been "infringed upon" silly.

TiVo's approach to solving the problem of the simultaneous storage and play back of multimedia data is interesting, but it's already "too old" and other ways to do the same thing are already in use. Under the intent of the law, Echostar owes a few hundred million in back licensing fees to TiVo, but I doubt they owe anything in the future.

It's a good thing the guy who first stuck an engine on a carriage couldn't prevent anyone else from sticking his own engine on a wheeled frame or we'd all be driving steam cars. Then again, how about the guy who invented the wheel....


----------



## jwhayn

Anyone remember the SCO lawsuits covered so well by Groklaw? Many of the so called objective commentators turned out to be shills for SCO and their opponents. I sense the same thing is happening here. Bah humbug.


----------



## nobody99

jwhayn said:


> Anyone remember the SCO lawsuits covered so well by Groklaw? Many of the so called objective commentators turned out to be shills for SCO and their opponents. I sense the same thing is happening here. Bah humbug.


I'm a TiVo shareholder, but I'm a shareholder because I've had TiVo's for years - I had one of the original 14 hour jobs in fact.

So, no, I'm not a shill.


----------



## Greg Bimson

nobody99 said:


> That injunction is in effect, and being ignored, today.


Oh, let me be fair about this. Only parts of the injunction order are being ignored.

DISH/SATS did send out the "Amended Final Judgment and Permanent Injunction" to all of _their officers, directors, agents, servants, representatives, attorneys, employees, subsidiaries and affiliates, and those persons in active concert or participation with them, including any and all manufacturers, distributors, retailers, and service providers who have been involved in the making, using, selling, offering for sale or importing of any Infringing Products; and to all other persons or entities involved in any way with the making, using, selling, offering for sale or importing of any Infringing Products._ Of course, there was an explanation letter attached to the order which told the above parties not to worry, we aren't in any violation so you can continue to sell what you've always sold in the past. So DISH/SATS did follow the order to send out a copy of the judgment and injunction order, but also gave free legal advice (in DISH/SATS' best interest) to continue on, like "business as usual".

Then there was a second letter that stated the 721, 921, 942 and Homezone 1022 "cannot be installed or activated in the field ... because the injunction [went]into effect [that day]". So DISH is not activating three of the listed "Infringing Products" (and a fourth one which must have been not more than "colorably different") because they weren't able to modify the software, so they know those are subject to the injunction.

DISH/SATS is allowed to keep 192,708 DVR's on. They've complied there, but only by not disabling a single DVR, which is out of compliance of the injunction order.


----------



## phrelin

jwhayn said:


> Anyone remember the SCO lawsuits covered so well by Groklaw? Many of the so called objective commentators turned out to be shills for SCO and their opponents. I sense the same thing is happening here. Bah humbug.


Yes.

I'm an extreme radical who believes "open source" is the only way to go and is deeply disturbed that anyone can use the Linux environment and gain exclusive rights to their work. But that's me.


----------



## Greg Bimson

Wasn't on the SCO wars. Didn't care. Do own three DirecTV receivers with TiVo. Do not own TiVo (nor any) stock, unless in my (k) plan. Don't work for a company that has a direct business relationship with either.

It's my hobby. I like to understand what the laws are. I dislike blanket statements that are so out of context to the laws and lawsuits that I fight so those errors aren't repeated.


----------



## Curtis52

I'm a shill.


----------



## spear61

JyroBip said:


> Anyone else notice that the current full page Dish newspaper ads and Dish's website no longer include the "Better than Tivo" tag line?
> Maybe they are concerned.


That was a stupid ad slogan to use while in litigation and TIVO whacked it good in their brief. Dish will regret using it!


----------



## spear61

Regarding public interest. The Appeals Court let the injunction take effect. If those several million boxes are infringing, they are toast since public interest was considered in that review. DISH needs to prevail on the non-infringing arguement or the old boxes are gone.


----------



## Curtis52

spear61 said:


> If those several million boxes are infringing, they are toast since public interest was considered in that review. DISH needs to prevail on the non-infringing arguement or the old boxes are gone.


and in the interim they need to be shut down because that's what the injunction requires.


----------



## jacmyoung

Curtis52 said:


> The key phrase from the injunction is "colorably different therefrom in the context of the Infringed Claims" not "colorably different in the context of the computer code". Dish infringed processes in claim 31 of TiVo's patent.


And DISH has stated rather in details in their filing the colorable differences in the context of the Infringed Claims.


----------



## jacmyoung

nobody99 said:


> And fortunately for TiVo, the burden of proof is for DISH to show that the code is *more than colorably different*.
> 
> And, oh, yeah, until they do, they are in contempt. Have I mentioned that before?


Like I said above, DISH has provided the evidence, the judge will have to decide in the meeting tommorrow, and if he finds the differences more than colorable, he can not begin a contempt hearing.

Now I agree on the issue of shutting off the DVRs in the field, whether DISH is in contempt may be a different concept altogether. I will come back with two questions on that one later for everyone to answer if I may.


----------



## spear61

jacmyoung said:


> And DISH has stated rather in details in their filing the colorable differences in the context of the Infringed Claims.


Colorable differences have little to do with it.

The question is - Did the judge order the then infringing boxes to be shut down as a matter of equity - that is to limit competition and level the playing field and give TIVO an opportunity to sell into the market - or was it a simple matter of eliminating infringing boxes.

The judge could have, if he desired, allowed the old infringing boxes to continue operating with a monetary payment to TIVO to compensate them for use of their patented technology. In fact, the law requires him to do that very thing with monetary compensation trumping equity (injunction) unless money can not correct the harm. He included equity in his order. That indicates that DISH is at great risk of losing the old boxes.


----------



## Paul Secic

nobody99 said:


> I'm a TiVo shareholder, but I'm a shareholder because I've had TiVo's for years - I had one of the original 14 hour jobs in fact.
> 
> So, no, I'm not a shill.


I still say Charlie should buy 'em.


----------



## phrelin

Paul Secic said:


> I still say Charlie should buy 'em.


+1


----------



## HobbyTalk

I'm just waiting for all these fireworks tomorrow. The 4th comes early


----------



## Greg Bimson

jacmyoung said:


> Like I said above, DISH has provided the evidence, the judge will have to decide in the meeting tommorrow, and if he finds the differences more than colorable, he can not begin a contempt hearing.


Incorrect.

The hearing tomorrow is a status hearing. If DISH/SATS intends to present some aspect of the new software, it will only be on defense, and will most likely not be heard as TiVo is requesting limited discovery on the software. DISH/SATS cannot produce "evidence" that TiVo cannot refute, because they haven't had time to go over everything.

But the judge can certainly start a contempt hearing, with a proceeding for contempt of a standing order, that is, to disable and to cease sales of "Infringing Products".


----------



## James Long

Greg Bimson said:


> If DISH/SATS intends to present some aspect of the new software, it will only be on defense, and will most likely not be heard as TiVo is requesting limited discovery on the software. DISH/SATS cannot produce "evidence" that TiVo cannot refute, because they haven't had time to go over everything.


OK, Tivo wants the data, DISH _can_ present the data. They can also argue that their presentation is clear enough that no further action need to be taken AT THIS TIME against DISH DVRs. Tivo will be given their opportunity to review the data.



> But the judge can certainly start a contempt hearing, with a proceeding for contempt of a standing order, that is, to disable and to cease sales of "Infringing Products".


One more time ... DISH is not prohibited from selling "Infinging Products".


----------



## scooper

Curtis52 said:


> I'm a shill.


We can tell....


----------



## Greg Bimson

James Long said:


> One more time ... DISH is not prohibited from selling "Infinging Products".


No, but they are prohibited from selling "Infringing Products" 


> *Each Defendant*, its officers, agents, servants employees and attorneys, and those persons in active concert or participation with them who receive actual notice hereof, *are hereby restrained and enjoined*, pursuant to 35 U.S.C. 283 and Fed. R. Civ. P. 65(d), *from* making, using, offering to sell, *selling*, or importing into the United States, the *Infringing Products*...


...and those not colorably different, yada, yada, yada...


----------



## peak_reception

James Long said:


> Tivo wasn't up for the quarter ... so there really isn't a similarity there. Tivo has had a couple of years of net lost customers and profits. DISH is still adding net customers and making money. Tivo needs another source of income - pronto.


TiVo's money drain this quarter was very small by TiVo standards [the good news] but they lost 500,000 subscribers compared to last year [the bad news].

Dish's net income was solidly up this quarter compared to last year [the good news] but they only gained a net 35,000 new subscribers compared to a net gain of 310,000 subscribers a year ago [the bad news].

In both cases the the good financial news (for TiVo a small loss is good news) was undercut by gloomy subscriber acquisition and retention numbers. *For Dish a miniscule 35k gain is bad news no matter how you slice it.*

So yes, I find that to be a _similar_ problem. You don't. fine. whatever.

:backtotop


----------



## James Long

Greg Bimson said:


> James Long said:
> 
> 
> 
> One more time ... DISH is not prohibited from selling "Infinging Products".
> 
> 
> 
> No, but they are prohibited from selling "Infringing Products"
Click to expand...

You're forgetting the rest of the injunction again where it talks about new placement of "Infringing Products".
Not "replacement" placements or any other weasel words, "new".

The products will always be Infringing ... even when they no longer violate any patent of Tivo.


----------



## Greg Bimson

James Long said:


> You're forgetting the rest of the injunction again where it talks about new placement of "Infringing Products".
> Not "replacement" placements or any other weasel words, "new".


Yes, but who exactly wants a 721 with its DVR functionality removed?


----------



## jacmyoung

Greg Bimson said:


> ...But the judge can certainly start a contempt hearing, with a proceeding for contempt of a standing order, that is, to disable and to cease sales of "Infringing Products".


Yes but he can certainly decide not to start a contempt hearing, if he buys DISH's argument, not Tivo's. I know you don't think it is possible.

Now here is my multiple choice question, and before I ask, let's first assume you are impartial in this matter (I know you are not but let's assume) and also you are a regular person like most of us.

And you are now the judge, and standing at the folk where two paths go their own way in front of you.

On one path you begin by shutting down all DISH DVRs in the field, then on appeal DISH will ask why is it fair for you to do so by shutting off our DVRs, when we have already presented strong evidence that those DVRs no longer infringe, and how would you explain the fact you have almost never denied the use of infringing products in the field in the past (and we have a long list of them BTW), and let those infringing products to continue to infringe. But all the sudden in this case, not only have you decided to shut off the Infringing Products in the field (which you almost never did), but you are going one step further, denying a likely non-infringing product to be used, ever.

On the other path, you begin by not finding DISH in contempt, because you explain while you have said in your injunction the Infringing Products: DVRs 501..., must be disabled, you did emphasize that they were Infringing Products foremost. Now it appears there is *doubt* whether the current products (DVRs 501...) are still infringing, therefore "give the fair ground for the doubt whether the modified devices are still within the scope of the injunction." Therefore you will instead issue an order to start a new proceeding to resolve the infringement issue of the new software, and go from there.

Now if you are impartial and reasonable, you must agree path #1 is unconventional and has some valid questions to be answered, and has no one passed on it to lay the trail out for you to follow, you have to creat such path and make sure you stay the right direction.

Path #2 is both familiar and logical , no one can say it is a wrong path, your explanation is logical, people may disagree, or interpret in a different way, but they can not refute you. And BTW you do not have to answer any of those potential nasty questions about whether you are a fair-minded judge or not.

Now if you are who I earlier assumed you are, which path would you rather take?

And of course let's also assume you are not Robert Frost, most of us are not anyway.


----------



## James Long

peak_reception said:


> TiVo's money drain this quarter was very small by TiVo standards [the good news] but they lost 500,000 subscribers compared to last year [the bad news].


When losing 6.3 million dollars is good news you're either the government or DirecTV before they started on their current good streak. Except with Tivo there is no big daddy corporation keeping them afloat while they are consistently losing money and increasingly the ability to make money.

The situations really are not comparable. If you want to compare them and tell people not to reply you can do that in a PM to yourself. There is no reason to involve me or this thread.


----------



## HobbyTalk

jacmyoung said:


> Now if you are who I earlier assumed you are, which path would you rather take?


Let's repeat the manta... the DVRs must be shut down, the DVRs must be shut down, the DVRs must be shut down... there is NO other solution


----------



## Greg Bimson

jacmyoung said:


> On one path you begin by shutting down all DISH DVRs in the field, then on appeal DISH will ask why is it fair for you to do so by shutting off our DVRs, when we have already presented strong evidence that those DVRs no longer infringe, and how would you explain the fact you have almost never denied the use of infringing products in the field in the past (and we have a long list of them BTW), and let those infringing products to continue to infringe. But all the sudden in this case, not only have you decided to shut off the Infringing Products in the field (which you almost never did), but you are going one step further, denying a likely non-infringing product to be used, ever.


Wow. And my impartiality is being questioned...

There is "new" software. That has no bearing on the injunction. Collateral attacks on a standing injunction are not allowed during a contempt proceeding. I would argue it in this manner if it were an injunction against DirecTV, TiVo, or DISH/SATS.


jacmyoung said:


> how would you explain the fact you have almost never denied the use of infringing products in the field in the past


Again, because unlike most other products cited before the computer age, the continuing use of a DVR in the field is governed by a monthly royalty for a license. DISH/SATS is generating revenue monthly while they were at one point infringing. It is unknown if at this time they are still infringing.

Either way, DISH/SATS did not argue the injunction upon appeal. They cannot argue the injunction is incorrect now that it is in full force and effect.


----------



## Greg Bimson

jacmyoung said:


> Yes but he can certainly decide not to start a contempt hearing, if he buys DISH's argument, not Tivo's. I know you don't think it is possible.


Judge: No, TiVo, you are not allowed a contempt hearing.

Right.


----------



## Greg Bimson

jacmyoung said:


> And of course let's also assume you are not Robert Frost, most of us are not anyway.


Who is Robert Frost? I know of the writer. I assume you think it is my _nom de plume_ elsewhere?


----------



## peak_reception

James Long said:


> When losing 6.3 million dollars is good news you're either the government or DirecTV before they started on their current good streak. Except with Tivo there is no big daddy corporation keeping them afloat while they are consistently losing money and increasingly the ability to make money.


 EchoStar may soon serve that "big daddy" role depending on how this case turns out.



> The situations really are not comparable. If you want to compare them and tell people not to reply you can do that in a PM to yourself.


 We disagree, why not leave it at that? 


> There is no reason to involve me...


 I agree. Can we drop it and move on now?


----------



## James Long

A one time payment isn't going to help Tivo long term ... unless that payment is someone buying the company and leaving the owners set "for life" (or until they squander it). It will give them one "profitable" quarter ... assuming they have not already booked the payment.

If you don't want to discuss it, don't bring it up.

:backtotop


----------



## jacmyoung

Greg Bimson said:


> Wow. And my impartiality is being questioned...
> 
> There is "new" software. That has no bearing on the injunction. Collateral attacks on a standing injunction are not allowed during a contempt proceeding.
> 
> 
> 
> Yes but during the appeal, equitable issue can certainly be brought up to argue that judge had gone beyond the scope of the injunction. Yes it is a matter of interpretation, but still it is an argument to be made, a very compelling one BTW.
> 
> 
> 
> 
> ... I would argue it in this manner if it were an injunction against DirecTV, TiVo, or DISH/SATS.Again, because unlike most other products cited before the computer age, the continuing use of a DVR in the field is governed by a monthly royalty for a license. DISH/SATS is generating revenue monthly while they were at one point infringing. It is unknown if at this time they are still infringing.
> 
> Either way, DISH/SATS did not argue the injunction upon appeal. They cannot argue the injunction is incorrect now that it is in full force and effect.
> 
> 
> 
> But notice you must first argue for this path you take, the other path has no argument, you simply tell people how your injunction should be interpreted to exclude non-infringing products, end of argument or history making.
> 
> As far as on-going loyalties, how did you figure they came up with the payment for excluding that 192,000 units? Why was that done, and why were those 192,000 allowed to continue to infringe, do they not command an on-going fee?
> 
> Now we are talking about the modified devices that may not even infringe in the future, therefore on-going fees may not even be an issue anymore, and you think here there is a good explanation for the double standards, even within the very same case?
> 
> I simply asked you to honestly pretend to be impartial and think what an average person may do, I did not ask you how you must try to argue for one path or the other, just under the normal circumstance, which path would one likely take, that is all, no argument, no justification, at least when you try to answer this question.
> 
> Click to expand...
Click to expand...


----------



## Greg Bimson

jacmyoung said:


> As far as on-going loyalties, how did you figure they came up with the payment for excluding that 192,000 units? Why was that done, and why were those 192,000 allowed to continue to infringe, do they not command an on-going fee?


I remember it being from the trial. I think it has something to do with TiVo's sold with lifetime service.


jacmyoung said:


> But notice you must first argue for this path you take, the other path has no argument, you simply tell people how your injunction should be interpreted to exclude non-infringing products, end of argument or history making.


That wouldn't solve the problem at hand, as the argument that non-infringing products should have brought up before the injunction went into full force and effect.


----------



## jacmyoung

peak_reception said:


> EchoStar may soon serve that "big daddy" role depending on how this case turns out. ..


Judging from who Charlie is and what he has done, I say he'd rather have the DVRs turned off before he would sign a license with Tivo. I don't agree with that, as I stated before I in fact believe DISH and Tivo are like-minded companies when it comes to catering to the consumers rather the studios or the networks. DISH and Tivo together can eat everyone else live. But I am not going to judge him, it is his company.

Just based on his personality, he would rather have the DVRs turned off, suffer some big loss of subs, before he would sign a license with Tivo. The DVRs can be replaced over time, it can even be done in a short time if he is willing to put up the money, if he is determined to let Tivo have as little of his money as possible.

Which is why I am not ruling out the likelihood of my 625 being replaced by a 722 for free


----------



## phrelin

jacmyoung said:


> Which is why I am not ruling out the likelihood of my 625 being replaced by a 722 for free


Heck I'm ruling in my two 508's replaced with a 722. Go Charlie, show those TiVo folks!


----------



## peak_reception

So how decisive will "Status Meeting" day be?

Are we going to see the long-awaited Fireworks?

Or will it be more of a tense but contained re-hashing of the agenda and reply between the litigants?

On the most critical issues:

TiVo will request the contempt hearing on what they claim is E*'s essential non-compliance with the injunction.

E* will request that their design-around software be evaluated first before further action is taken against them.

Will Judge Folsom be calm and circumspect, or will he read the riot act to one or both litigants?

If the judge accommodates TiVo and schedules a contempt hearing, will he also accommodate E* by first scheduling a hearing to determine if E*'s design-around is 'more than colorably different'?

Will the injunction stand as written and in full force and effect, with all that entails? Or will the judge push the pause button until E*'s new software gets a hearing?

My opinion is that we'll see fireworks and Judge Folsom sternly warn E*. I think he will schedule the TiVo contempt hearing for June and warn E* that time has run out for avoiding consequences that the injunction brings . I also think he will warn of heavy fines to come if E* does not completely comply with the injunction (rejecting E*'s argument that they _are_ in compliance) by the time of the contempt hearing. He will also say that the case has run its course and justice is not served by delaying things even further. He will wield the injunction as a club to force E* to settle or face the consequences. He may offer 3rd party binding arbitration as a way for both sides to accept a resolution if they agree. I think he will push hard for a settlement *now*.

Or will things go a whole 'nother way? Should be fascinating. 
I hope we find out details before Monday.


----------



## jacmyoung

Greg Bimson said:


> I remember it being from the trial. I think it has something to do with TiVo's sold with lifetime service...


Such logic is bad because if DISH is responsible for the "lifetime" damages of those DVRs on the list, then what Tivo should get is a lifetime payment by DISH forced on by the judge, even thougn not agreed by DISH, I hope even you are not envisioning such arrangement.

Because had DISH mailed each user a new DVR, and instructed them to remove the DVRs under injunction, placed them with the new ones, DISH would still be in contempt because the "lifetime" loyalties of those DVRs on the list is still the same issue that exists, no injunction can repair it.


----------



## Greg Bimson

jacmyoung said:


> Such logic is bad because if DISH is responsible for the "lifetime" damages of those DVRs on the list, then what Tivo should get is a lifetime payment by DISH forced on by the judge, even thougn not agreed by DISH, I hope even you are not envisioning such arrangement.


That would be a TiVo paid with a "lifetime service". That is, the customer makes one payment and the TiVo is good forever, instead of a monthly fee.

That has nothing to do with "lifetime damages". I have no idea what your interpretation is here. It doesn't make any sense.


----------



## jacmyoung

peak_reception said:


> So how decisive will "Status Meeting" day be?
> 
> Are we going to see the long-awaited Fireworks?
> 
> Or will it be more of a tense but contained re-hashing of the agenda and reply between the litigants?
> 
> On the most critical issues:
> 
> TiVo will request the contempt hearing on what they claim is E*'s essential non-compliance with the injunction.
> 
> E* will request that their design-around software be evaluated first before further action is taken against them.
> 
> Will Judge Folsom be calm and circumspect, or will he read the riot act to one or both litigants?
> 
> If the judge accommodates TiVo and schedules a contempt hearing, will he also accommodate E* by first scheduling a hearing to determine if E*'s design-around is 'more than colorably different'?
> 
> Will the injunction stand as written and in full force and effect, with all that entails? Or will the judge push the pause button until E*'s new software gets a hearing?
> 
> My opinion is that we'll see fireworks and Judge Folsom sternly warn E*. I think he will schedule the TiVo contempt hearing for June and warn E* that time has run out for avoiding consequences that the injunction brings . I also think he will warn of heavy fines to come if E* does not completely comply with the injunction (rejecting E*'s argument that they _are_ in compliance) by the time of the contempt hearing. He will also say that the case has run its course and justice is not served by delaying things even further. He will wield the injunction as a club to force E* to settle or face the consequences. He may offer 3rd party binding arbitration as a way for both sides to accept a resolution if they agree. I think he will push hard for a settlement *now*.
> 
> Or will things go a whole 'nother way? Should be fascinating.
> I hope we find out details before Monday.


But he had warned DISH so many times, why do you think DISH will have a sudden change of heart? I am not saying DISH will not settle, just why now? The consequences is no different if they do it now, or if they wait till after the appeal fails, and do it then. If they are in contempt, they are in contempt already. At least if the judge make such ruling, DISH has a fighting chance on appeal.

If they fight to the end, it buys them more time to assess the options, one of which is presented above, to actually replace those DVRs in time. In fact if DISH makes such proposal to the court, I bet for the sake of public interest, the court will even give them some reasonable time to carry out such plan.

Of course if DISH already realized it is not worth it to replace the DVRs, or at least not all of them, then they can do one of the two:

1) Settle with Tivo;
2) Let the DVRs die and eat the loss and move on.

And in the latter case, believe it or not, I will still be ok, because last time I checked, DISH will indeed be able to replace my 625 with a 622 for free, when I asked how I can upgrade my service to the $30 HD-Only package.

I bet for most people, changing their current package to the $30 HD-Only pack with an HDDVR replacement, presents a reasonable alternative, especially if the other 20 more HDs are added soon.

Of course DISH does not even have to replace them with HDDVRs, only SDDVRs. In fact they just came out with a new MPEG4-only SDDVR, and its "Eastern Arc" plan has just started, why not shoot two birds with one stone, move all those folks to the "Easern Arc" with the all new MPEG4-only plan, they need to do it anyway, only a matter of time.

Not that I refuse to think DISH may settle, I actually wish they settle with Tivo, but just to point put disabling the DVRs on the list is not the end for DISH.


----------



## jacmyoung

Greg Bimson said:


> ...That has nothing to do with "lifetime damages". I have no idea what your interpretation is here. It doesn't make any sense.


Because you used such logic to argue the difference between a traditional infringing product in the field, and the DISH infringing DVRs in the field.


----------



## Greg Bimson

jacmyoung said:


> Such logic is bad because if DISH is responsible for the "lifetime" damages of those DVRs on the list, then what Tivo should get is a lifetime payment by DISH forced on by the judge, even thougn not agreed by DISH, I hope even you are not envisioning such arrangement.


Now I get it.

No, damages is for the length of infringement. If it can be rectified by shutting down the infringement, that is what happens.

But let's be very specific, here. At this point, four years later, TiVo has received no damages from DISH, even though they were found to be guilty of infringement. I hope logic doesn't dictate that the judge can award "lifetime damages" when not one cent has been paid to TiVo at this time.

A civil procedure can normally be set aside by a settlement. Civil procedures exist to interpret the issues between two parties. If the parties can come to an agreement, then the courts have done their job.


jacmyoung said:


> Just based on his personality, he would rather have the DVRs turned off, suffer some big loss of subs, before he would sign a license with Tivo.


And therein lies the rub. If one party does not want to agree, then a third party adjudicates based on a given set of guidelines what should happen. Want it to disappear? Settle the case.


----------



## Greg Bimson

jacmyoung said:


> Because you used such logic to argue the difference between a traditional infringing product in the field, and the DISH infringing DVRs in the field.


Because some DVR's, 192,708 of them, will remain on, because like the rear view mirror analogy, the damages awarded will have paid the royalties up front. That is exactly like a traditional infringing product in the field.

The remainder of the DVR's, which command a royalty or licensing payment in perpetuity, are subject to a shut down.


----------



## harsh

jacmyoung said:


> I don't agree with that, as I stated before I in fact believe DISH and Tivo are like-minded companies when it comes to catering to the consumers rather the studios or the networks.


In listening to the recent TiVo earnings call, they have labeled themselves as "the friend of the advertiser, not the foe".


----------



## nobody99

jacmyoung said:


> I am not saying DISH will not settle, just why now? The consequences is no different if they do it now, or if they wait till after the appeal fails, and do it then. If they are in contempt, they are in contempt already.


If they are in contempt, it's is going to cost them ALOT more (enhanced damages). TiVo brought this up in their letter for today's status meeting.

So it boils down to this: they currently owe at least $125 million in a best-case scenario (for DISH that is). If they continue to play chicken with the court, who knows how high that could go. TiVo's already asking for $335 million (or thereabouts, I don't have it in front of me). And that doesn't even count future boxes that they go after.

So the consequences are, in fact, quite different.


----------



## HiDefGator

How will we hear what happens in Texas today? Wait for press release?


----------



## Herdfan

Greg Bimson said:


> Because some DVR's, 192,708 of them, will remain on, because like the rear view mirror analogy, the damages awarded will have paid the royalties up front. That is exactly like a traditional infringing product in the field.
> 
> The remainder of the DVR's, which command a royalty or licensing payment in perpetuity, are subject to a shut down.


And if I understtod the logic correctly in determining the 192,708, it is based on the pecentage of lifetime subscriptions TiVo sold in relation to total DVR and that was applied to the # of DISH DVR's in service.

Now I know it has been argued that money alone is not enough relief for TiVo, but what if the judge decides to convert all DISH DVR's to "lifetime subs" and award TiVo damages on that amount. That would be around $169M per 1M DVR's.

Then infrining DVR's could remain in the field and this case would be over. Of course, then TiVo could go after models not listed in the injunction. So it never ends. They need to settle.


----------



## Greg Bimson

Herdfan said:


> And if I understtod the logic correctly in determining the 192,708, it is based on the pecentage of lifetime subscriptions TiVo sold in relation to total DVR and that was applied to the # of DISH DVR's in service.


That jogged my mind.

It is the amount of DVR's the court believes TiVo would have sold if DISH/SATS hadn't infringed. That is the "lost profits" part of the damages. So those behave like the rear view mirror scenario, as the profits on those are finite.

It is the rest of the infringing boxes, which are due licensing fees, that make up a large chunk of the rest of the damages.


----------



## Curtis52

Early word:

"Judge set contempt hearing ignoring his injunction for September 4.
Not dealing with the "work around"- thats shelved
TiVo gets limited discovery for enhanced damages, the boxes since the trial and higher damages per box will be examined"


----------



## jacmyoung

Curtis52 said:


> Early word:
> 
> "Judge set contempt hearing ignoring his injunction for September 4.
> Not dealing with the "work around"- thats shelved
> TiVo gets limited discovery for enhanced damages, the boxes since the trial and higher damages per box will be examined"


Sounded like the judge wanted to resolve the new software infringement issue first, while letting the DVRs on the list live, pretty much what I predicted?

Or did you mean the judge did not even grant Tivo's request for the discovery of the new software issue?

If he is truely "ignoring his injunction" does that mean he is going to modify the injunction before the contempt hearing? How can he ignore the injunction himself?

One thing though, he apparently did not see any urgency on the "shutting off" of the DVRs in the field, rather the damages being the issue of his concern.


----------



## spear61

Herdfan said:


> And if I understtod the logic correctly in determining the 192,708, it is based on the pecentage of lifetime subscriptions TiVo sold in relation to total DVR and that was applied to the # of DISH DVR's in service.
> 
> Now I know it has been argued that money alone is not enough relief for TiVo, but what if the judge decides to convert all DISH DVR's to "lifetime subs" and award TiVo damages on that amount. That would be around $169M per 1M DVR's.
> 
> Then infringing DVR's could remain in the field and this case would be over. Of course, then TiVo could go after models not listed in the injunction. So it never ends. They need to settle.


You could be close to the final outcome concerning money.

"On May 15, 2006, the United States Supreme Court wiped clean the Federal
Circuit Court of Appeals' entire jurisprudence regarding the appropriateness of a
permanent injunction to prohibit continued infringement by an adjudicated patent
infringer. Given the importance of a patent owner's right to exclude, the Federal Circuit
had evolved a "general rule that courts will issue permanent injunctions against patent
infringement absent exceptional circumstances." Henceforth, the Court will need to
follow the four-factor test set out by the Supreme Court:
According to well-established principles of equity, a plaintiff seeking a permanent
injunction must satisfy a four-factor test before a court may grant such relief. A
plaintiff must demonstrate: (1) that it has suffered an irreparable injury; (*2) that
remedies available at law, such as monetary damages, are inadequate to
compensate for that injury;* (3) that, considering the balance of hardships between
the plaintiff and defendant, a remedy in equity is warranted; and (4) that the
public interest would not be disserved by a permanent injunction. See, e.g.,
Weinberger v. Romero-Barcelo, 456 U.S. 305, 311-312 (1982); Amoco
Production Co. v. Gambell, 480 U.S. 531, 542 (1987).


----------



## Greg Bimson

Curtis52 said:


> Not dealing with the "work around"- thats shelved





jacmyoung said:


> Sounded like the judge wanted to resolve the new software infringement issue first, while letting the DVRs on the list live, pretty much what I predicted?


How in the world did the first sentence get interpreted into the second sentence?


----------



## nobody99

jacmyoung said:


> Sounded like the judge wanted to resolve the new software infringement issue first, while letting the DVRs on the list live, pretty much what I predicted?


OMG, is that really your interpretation?

The Judge is giving DISH 90 days to settle and reach a licensing agreement with TiVo. They don't get to use the new software in the contempt hearing. That means contempt a given, which means enhanced damages since the injunction was first issued.

$300-$500 million if DISH doesn't work out a licensing agreement.


----------



## Curtis52

Just what I said. The first contempt hearing will be on grounds 1 and 2. There is no contempt hearing scheduled on the alleged workaround.



Curtis52 said:


> It really isn't complicated. TiVo will file a motion for contempt on grounds 1 and 2. The hearing will be on some TBD date. The topic of the contempt hearing will be grounds 1 and 2.
> 
> TiVo may or may not file a motion for a contempt hearing for grounds 3 at a later date for a separate contempt hearing.


----------



## spear61

Curtis52 said:


> Early word:
> 
> "Judge set contempt hearing ignoring his injunction for September 4.
> Not dealing with the "work around"- thats shelved
> TiVo gets limited discovery for enhanced damages, the boxes since the trial and higher damages per box will be examined"


Black, White, or Gray; When you are operating under an appealed order, you do not do anything without fully informing the court before you do it (been there, done that).


----------



## jacmyoung

While I agree with your interpretation of his goal, I do not agree the "workaround is shelved" means it can not be brought back. Just that before that such issue is not going to be visited, and rightfully so.

Because before a contempt proceeding, the new device infringement issue should not be discussed at all, only if DISH is found not in contempt, so can it be visited.

It will be interesting to see if DISH will settle, if not, judge must still be faced with the exact same issues, we just have to wait till September to find out.

But none of you wants to address the "ignoring his injunction" part. Don't you agree the best way to "encourage" DISH to settle is to find it in contempt sooner, on parts 1 and 2? It is very clear cut, needs no testimonies, no arguments, why wait till September?

He apparently did not mind the trouble of assessing the damages, which will certainly be more complicated than ruling DISH in contempt on parts 1 and 2.


----------



## jacmyoung

It will be interesting to read the full scope of the judge's decision, and later the spins by both DISH and Tivo.

But one must agree, for now, DISH gets what it seeks, not to be forced to turn off the DVRs. DISH never argued against the discussion of the enhenced damages since 2006, it is a given.


----------



## Greg Bimson

jacmyoung said:


> But none of you wants to address the "ignoring his injunction" part.


Because it is exactly as we stated. The injunction says to cease sales and disable "Infringing Products", among other things, and those are being "ignored". That is the argument most of us have been making all along.

Understand what has happened here. Read TiVo's brief to the court for the outstanding issues which need to be addressed. Now read what Curtis52's early word from the court is.

Funny how they look very similar.


----------



## Greg Bimson

jacmyoung said:


> DISH never argued against the discussion of the enhenced damages since 2006, it is a given.


Go back and read DISH/SATS brief. They most certainly did argue about the "enhanced damages" discovery that TiVo was requesting.


----------



## jacmyoung

spear61 said:


> Black, White, or Gray; When you are operating under an appealed order, you do not do anything without fully informing the court before you do it (been there, done that).


What are you saying is the judge is giving DISH time to seek such permission to restart the DVRs?


----------



## jacmyoung

Greg Bimson said:


> Go back and read DISH/SATS brief. They most certainly did argue about the "enhanced damages" discovery that TiVo was requesting.


Oh yeah, what I meant was DISH never argued that such proceeding should not take place, so the fact the judge is letting it to take place is not a defeat of DISH.


----------



## nobody99

jacmyoung said:


> But one must agree, for now, DISH gets what it seeks, not to be forced to turn off the DVRs. DISH never argued against the discussion of the enhenced damages since 2006, it is a given.


Wow, you are really missing a big point, and no, I dont think "one must agree." This was always a status meeting today, and not a contempt hearing.

At the contempt hearing...

- Enhanced damages occur if found in contempt.
- Found in contempt if 
a) DVR functions are not shut off 
b) The new software is not infringing

DISH was counting on being able to say the new software doesn't infringe. The problem is that now they don't get to say that. Since the DVR functions are not shut off, contempt is a foregone conclusion. That also means that enhanced damages will be in effect since the original date of the injunction, less the time it was stayed.

How this is "DISH gets what it seeks" I have no idea.


----------



## jacmyoung

But again, you refused to answer the question, why did he ignore his own injunction for now? Wouldn't the best way to get DISH to settle be to quickly schedule a contempt hearing and find DISH in contempt? He does not even have to waste time to figure out the damages, if DISH fails on appeal, DISH will have to settle, and his job will be done, or shut off the DVRs, his job will also be done.

Why go the difficult route, and wasting more taxpayers money?


----------



## Curtis52

TiVo's attorneys wanted an earlier contempt hearing. Dish said they needed more time.


----------



## spear61

DISH could have gone to the judge way back and said. "Judge, we have a workaround that is non-infringing. We would like to download and enable it in the old boxes. We would like your permission to do it. And, if it is determined that our new technology is determined to be infringing, we will pay royalties and other compensation to TIVO for those boxes, to be determined by the court.

They would have likely got the judge to say ok. But, they decided to sneak around and go in the back door. Not a good idea.


----------



## jacmyoung

Curtis52 said:


> TiVo's attorneys wanted an earlier contempt hearing. Dish said they needed more time.


Why gave DISH more time? It was so clear cut isn't it? What more can DISH possibly do to argue parts 1 and 2?

BTW, if the above is true, can one say the judge ruled in favor of DISH, against Tivo's wish, at the risk of ignoring the very injunction he said he set out to enforce?


----------



## nobody99

jacmyoung said:


> But again, you refused to answer the question, why did he ignore his own injunction for now?


What part of me earlier comment "This was always a status meeting today, and not a contempt hearing" didn't make sense to you? He's not ignoring the injunction - he scheduled a contempt hearing.



jacmyoung said:


> Why go the difficult route, and wasting more taxpayers money?


This is such a bizarre comment that I'm not even sure what you are asking. Are you suggesting that he was supposed to hold the contempt hearing simultaneously with the status hearing today? If not, what difference does it make to the taxpayer if it is tomorrow, next week or next month?

DISH did get a delay - 3 months - but it will be VERY EXPENSIVE for them if they don't settle, because every one of those 90 or so days between now and then will be enhanced damages.

Look at the RIM v NTP case again. This is going in that same direction, where the judge is basically telling DISH "Seriously, are you going to play chicken with me?"


----------



## spear61

jacmyoung said:


> But again, you refused to answer the question, why did he ignore his own injunction for now? Wouldn't the best way to get DISH to settle be to quickly schedule a contempt hearing and find DISH in contempt? He does not even have to waste time to figure out the damages, if DISH fails on appeal, DISH will have to settle, and his job will be done, or shut off the DVRs, his job will also be done.
> 
> Why go the difficult route, and wasting more taxpayers money?


As others have suggested, the judge is probably giving DISH a little time to settle down emotionally. Then, perhaps DISH will cut a deal with TIVO to make the problem go away. As I recall, Dish projected they could lose something like 90 million a month if they lost half their DVR customers. Really, high stakes poker with TIVO holding the best cards.


----------



## jacmyoung

spear61 said:


> DISH could have gone to the judge way back and said. "Judge, we have a workaround that is non-infringing. We would like to download and enable it in the old boxes. We would like your permission to do it. And, if it is determined that our new technology is determined to be infringing, we will pay royalties and other compensation to TIVO for those boxes, to be determined by the court.
> 
> They would have likely got the judge to say ok. But, they decided to sneak around and go in the back door. Not a good idea.


But what if DISH thought at some point, wait we did not have to ask for permission at all, the way we read the injunction, we interpreted it as the devices were "Infringing Products", so that if we could prove our modified devices were not infringing products, such devices woudl naturally be out or the scope of the injunction, so why ask for permission?

Now the judge can of course way no, your interpretation is wrong, here is mine, but he can certainly not punish DISH for making a good faith interpretation of the injunction. Therefore after the judge clarifies his own interpretation, he should allow DISH to seek the permission, if that is indeed something he is seeking.


----------



## nobody99

jacmyoung said:


> Why gave DISH more time? It was so clear cut isn't it? What more can DISH possibly do to argue parts 1 and 2?
> 
> BTW, if the above is true, can one say the judge ruled in favor of DISH, against Tivo's wish, at the risk of ignoring the very injunction he said he set out to enforce?


Your interpretation kind of reminds me of the old story:

If you put a frog in boiling water, it will jump out. BUT, if you put a frog in lukewarm water and bring the water to a boil gradually, the frog will stay put and be cooked alive. He doesn't notice the heat turning up gradually.

That's what's happening here. DISH is in serious trouble now.


----------



## nobody99

jacmyoung said:


> the judge can of course way no, your interpretation is wrong, here is mine, but he can certainly not punish DISH for making a good faith interpretation of the injunction. Therefore after the judge clarifies his own interpretation, he should allow DISH to seek the permission, if that is indeed something he is seeking.


Why do you keep ignoring the continued points that people keep making - DISH asked for the injunction to have this language. So how can it be a good faith interpretation when DISH is doing something that they were expressly told was unacceptable?


----------



## jacmyoung

spear61 said:


> As others have suggested, the judge is probably giving DISH a little time to settle down emotionally. Then, perhaps DISH will cut a deal with TIVO to make the problem go away. As I recall, Dish projected they could lose something like 90 million a month if they lost half their DVR customers. Really, high stakes poker with TIVO holding the best cards.


If this line of thinking is true, then the only reason will be DISH is ready to settle, and by asking to delay the contempt hearing, DISH had also somehow signaled the judge they intended to settle, and of course in such condition, the judge should have given DISH some more time.

Is that what the impression you all got? If so I have no problem with it, I like the idea of some coorperation between the two.

But then what about Tivo? They did not want to delay it, apparently they did not get the same impression that DISH was willing to settle? What's up with that? If so shouldn't the best for a settlement be to grant Tivo the early request, shouldn't that be a more forceful way to get DISH to settle?


----------



## Herdfan

Right now DISH has 3 options:

1) Settle - Best option for their customers

2) They have 3 months to replace all infringing DVR's on the list. They will pay TiVo damages until the final infringing DVR is removed from service and they run the risk of a new trial on those DVR's

3) Do nothing and see how mad the court gets - worst option for customers and DISH


----------



## dgordo

Curtis52 said:


> Early word:
> 
> "Judge set contempt hearing ignoring his injunction for September 4.
> Not dealing with the "work around"- thats shelved
> TiVo gets limited discovery for enhanced damages, the boxes since the trial and higher damages per box will be examined"


Where are you getting this from?
I know someone who said they would tell me what happened but I have not heard from them yet.


----------



## jacmyoung

nobody99 said:


> Your interpretation kind of reminds me of the old story:
> 
> If you put a frog in boiling water, it will jump out. BUT, if you put a frog in lukewarm water and bring the water to a boil gradually, the frog will stay put and be cooked alive. He doesn't notice the heat turning up gradually.
> 
> That's what's happening here. DISH is in serious trouble now.


When people lose argument or could not respond to logic, they often turn philosophical.


----------



## jacmyoung

nobody99 said:


> Why do you keep ignoring the continued points that people keep making - DISH asked for the injunction to have this language. So how can it be a good faith interpretation when DISH is doing something that they were expressly told was unacceptable?


Becasue DISH believed it was acceptable. And BTW, the judge did not even say it was not acceptable, he could have easily told DISH in the meeting no it was not acceptable. Did he say so? If he did, then why grant DISH's wish, not Tivo's wish?


----------



## nobody99

jacmyoung said:


> When people lose argument or could not respond to logic, they often turn philosophical.


Isn't that a philosophical statement in itself? :lol:

Or, when someone bangs there head against a brick wall trying to get the brick wall to understand common sense, they turn philosophical.


----------



## jacmyoung

What exactly did DISH say or do that had caused the judge to grant DISH's wish, rather Tivo's wish, that is what I want to know.


----------



## jacmyoung

nobody99 said:


> Isn't that a philosophical statement in itself? :lol:
> 
> Or, when someone bangs there head against a brick wall trying to get the brick wall to understand common sense, they turn philosophical.


I am still sticking to the issues, you are continuing on the philosophical path.


----------



## jims

Curtis52 said:


> Early word:
> 
> "Judge set contempt hearing ignoring his injunction for September 4.
> Not dealing with the "work around"- thats shelved
> TiVo gets limited discovery for enhanced damages, the boxes since the trial and higher damages per box will be examined"


Curtis, Thank you very much for this expedient notification. I think there is some interpretation going on in your first sentence. Please clarify is it:

1) The Judge set a comtempt hearing for his injunction being ignored and that meeting will occur on Sept 4

or

2) Judge will set a contempt hearing for Sept 4 and decided that he will ignore for now his injunction.

I personally think you meant #1


----------



## spear61

jacmyoung said:


> If this line of thinking is true, then the only reason will be DISH is ready to settle...
> 
> But then what about Tivo? ?


It was my experience that the judges usually went the extra mile and would have lots of "back room meetings" and drag thing out trying to get combatants to get along and settle their differences. They used the hammer as a last resort. Don't know if that applies here though.


----------



## nobody99

jacmyoung said:


> Becasue DISH believed it was acceptable. And BTW, the judge did not even say it was not acceptable, he could have easily told DISH in the meeting no it was not acceptable. Did he say so? If he did, then why grant DISH's wish, not Tivo's wish?


Here's what TiVo said in its brief for today's meeting in regards DISH's request to allow new software for devices to get by the injunction:



> This clever formulation is an invitation for EchoStar to engage in mischief. Such an injunction would only result in EchoStar providing what it deemed as "non-infringing" DVR software to its already-found-to-be-infringing DVRs, creating the opportunity for interminable disputes to determine what exactly is "infringing DVR software." This Court rejected EchoStar's proposal and adopted, instead, the straightforward "disable the DVR functionality" provision that appears in the Permanent Injunction.


When a court rejects a proposal, how can it later be considered "good faith" as you mentioned a few posts later?

Honestly, can you just answer that question?


----------



## jacmyoung

spear61 said:


> It was my experience that the judges usually went the extra mile and would have lots of "back room meetings" and drag thing out trying to get combatants to get along and settle their differences. They used the hammer as a last resort. Don't know if that applies here though.


That I can certainly understand and most certainly agree the correct way to go. Which is why I am curious what did DISH say or do to make the judge go in DISH's favor in this meeting?


----------



## jacmyoung

jims said:


> ...I personally think you meant #1


I agree, I took it the other way but did not even think it made sense.


----------



## Greg Bimson

jacmyoung said:


> When people lose argument or could not respond to logic, they often turn philosophical.


I thought it was people turn philosophical when losing an argument and when logic is incorrect?

I mean, let's get down to it here, with the information that Curtis52 has provided:
TiVo had three points on their brief. However, since Judge Folsom decided to have a contempt hearing, we will only address points one and two...


Curtis52 said:


> First, TiVo believes that EchoStar is in violation of the injunction by failing to "disable the DVR functionality," and by selling new DVRs, regardless of any changes to the software.
> 
> Second, ... EchoStar is taking the position that it can place new infringing DVRs on an ongoing basis, as long as the total number of infringing DVRs does not exceed 192,708





bidderman9 from DISH/SATS counterbrief said:


> 1) ... If the software used in an EchoStar product has been changed so that the software claims are no longer infringed, the product is no longer an Infringing Product.
> 
> 2) ... To be absolutely clear, EchoStar has not placed any infringing DVR since this Court's injunction took effect, and it has absolutely no intention of doing so.


The first point now belongs to TiVo, as Curtis52's information from today's status hearing states "Not dealing with the "work around"- thats shelved"

The second point also now belongs to TiVo, as the only definition of "infringing products" are those based off of DISH/SATS new software, which is also "shelved". Of course, this only applies to "Infringing Products".

DISH/SATS request for more time could be a few different things, a few of which were mentioned by Herdfan:


> 1) Settle - Best option for their customers
> 
> 2) They have 3 months to replace all infringing DVR's on the list. They will pay TiVo damages until the final infringing DVR is removed from service and they run the risk of a new trial on those DVR's
> 
> 3) Do nothing and see how mad the court gets - worst option for customers and DISH


4) Do nothing, and if the contempt proceeding sides with TiVo as it should...
a) Do not turn off the DVR's, and find out it costs more to keep them on than a settlement; or,
b) turn them off, and find out how quickly people leave

5) Give DISH/SATS legal team enough time to find some kind of obscure case law that would support their assertion that contempt cannot be found. This is last because it is far from likely.


----------



## jims

The court order was to disable the DVR functionality not to modify it in such a way that one of the parties feels that it no longer infringes. From that sense the statement of "not looking at workaround and selved" indicates the worst possible scenario for Dish. They are now in violation of an injunction that has been reviewed at multiple levels and their main defense as all but been denied. The appeals court will still side with the judge and say "why didn't you do what we said?"

Others have stated that Charlie will never do this or that, but in the end he is the custodian of Dish and Echostar and the board of directors will have a lot to say in terms of the risk that is now being introduced. The courts can now make it very painfull if a settlement doesn't occur by September.

Tivo is probably celebrating right now.


----------



## jacmyoung

nobody99 said:


> Here's what TiVo said in its brief for today's meeting in regards DISH's request to allow new software for devices to get by the injunction:
> 
> When a court rejects a proposal, how can it later be considered "good faith" as you mentioned a few posts later?
> 
> Honestly, can you just answer that question?


Yes I have answered it many times, because DISH also approved the term "Infinging Products" be added in every reference in the injunction, as such to be within the scope of the injunction the devices must meet the following criteria:

1) They be 'Infinging Products";
2) They carry the model #s described in the injunction; and
3) They carry *the* DVR functionalities as specified in the "Infringing Products."

The devices must meet all three above to be within the scope of the injunction, now again the judge can say no, you are wrong in such interpretation, but he can not say DISH's attempt in such interpretation is not in good faith. Because I actually agree with DISH's interpretation.


----------



## nobody99

jacmyoung said:


> Yes I have answered it many times, because DISH also approved the term "Infinging Products" be added in every reference in the injunction, as such to be within the scope of the injunction the devices must meet the following criteria:
> 
> 1) They be 'Infinging Products";
> 2) They carry the model #s described in the injunction; and
> 3) They carry *the* DVR functionalities as specified in the "Infringing Products."
> 
> The devices must meet all three above to be within the scope of the injunction, now again the judge can say no, you are wrong in such interpretation, but he can not say DISH's attempt in such interpretation is not in good faith. Because I actually agree with DISH's interpretation.


I give up. You win. DISH wins the whole thing. TiVo is toast. Congratulations.


----------



## jims

Sounds to me like Tivo got what they wanted and Dish only got a delay of the contempt hearing until September. This is an extremely tight schedule for the lawers to prepre but will become an eternity on this board.


----------



## jacmyoung

jims said:


> ...From that sense the statement of "not looking at workaround and selved" indicates the worst possible scenario for Dish. ...


That I agree, we need to find out exactly how he said it. We don't know where Curtis got his quote, and whether his quote was accurate.


----------



## jacmyoung

jims said:


> Sounds to me like Tivo got what they wanted and Dish only got a delay of the contempt hearing until September. This is an extremely tight schedule for the lawers to prepre but will become an eternity on this board.


I think DISH had to have told more than just please allow us more time to prepare, for the judge to ignore Tivo's wish.

I don't think it is the settlement, though I wish myself it is. Maybe DISH signaled they could manage to replace most of the DVRs and asked the judge to allow time so the end users will not be adversely impacted.

As far as the judge is concerned, there is really nothing more to prepare, it is clear cut on parts 1 or 2, if this is indeed what the judge is thinking.


----------



## Greg Bimson

jacmyoung said:


> 1) They be 'Infinging Products";
> 2) They carry the model #s described in the injunction; and
> 3) They carry the DVR functionalities as specified in the "Infringing Products."
> 
> The devices must meet all three above to be within the scope of the injunction, now again the judge can say no, you are wrong in such interpretation, but he can not say DISH's attempt in such interpretation is not in good faith. Because I actually agree with DISH's interpretation.


You would agree with that interpretation.

The problem is that "Infringing Products" has one meaning. You can find it in the Amended Final Judgment and Injunction Order.

Let's put it another way. If there is no settlement in 90 days, and the modified software is off the table, you can guess how the judge will interpret non-compliance of his injunction.


----------



## nobody99

jacmyoung said:


> I think DISH had to have told more than just please allow us more time to prepare, for the judge to ignore Tivo's wish.


Maybe the judge wanted to avoid grounds for appeal?


----------



## spear61

Nothing in WSJ, Reuters , Bloomberg or Dallas news yet


----------



## jacmyoung

nobody99 said:


> Maybe the judge wanted to avoid grounds for appeal?


He already did it by removing the "workaround" issue, if this was actually what he did.

Although still there is nothing to prevent DISH from bringing up this issue during an appeal, in fact during appeals, a lot of time the infringers argued precisely that the lower courts ignored or set aside some issues incorrectly.


----------



## nobody99

jacmyoung said:


> He already did it by removing the "workaround" issue, if this was actually what he did.


Do I have to explain little last piece to you?

How about "Maybe the judge wanted to avoid grounds for appeal?" becomes "Maybe the judge wanted to avoid one possible, but not the only, grounds for appeal?"


----------



## Greg Bimson

jacmyoung said:


> Although still there is nothing to prevent DISH from bringing up this issue during an appeal, in fact during appeals, a lot of time the infringers argue precisely that the lower courts ignored or set aside some issues incorrectly.


That I can wholeheartedly agree with. Only issue is if they go that route it will cost them more than a settlement if they lose.


----------



## peak_reception

Well, if the judge has postponed things until September 4 then I was waaaaaaaaaaaaaay off in my prediction for how today would go. I finally went with what I thought _should_ happen. Looks like E* may well succeed in their strategy to drag things out forever. Come September they'll find some other way to muddy the water and wiggle out of their predicament.

That "Final and Permanent" Injunction was all bark and no bite. I knew the judge could 'workaround' his own injunction but i didn't think he would.


----------



## jacmyoung

Greg Bimson said:


> You would agree with that interpretation.
> 
> The problem is that "Infringing Products" has one meaning. You can find it in the Amended Final Judgment and Injunction Order.
> 
> Let's put it another way. If there is no settlement in 90 days, and the modified software is off the table, you can guess how the judge will interpret non-compliance of his injunction.


Whether we agree or not is not the question, the question is can one make a mistake and still doing so in good faith?

You can say you are correct, I can say I am correct, what you cannot say is because I believe you are incorrect, therefore you are malicious.


----------



## phrelin

The following summary is a lead to a longer article yesterday from Silicon Alley Insider:


> TiVo created the DVR business, which is in the process of destroying TV. But TiVo itself is struggling as generic DVRs displace it. How can it survive? CEO Tom Rogers lays out a carrot and stick strategy at the D conference: We'll offer TV networks a way to survive "dark days" by creating ads people want to watch, and accurate ways to measure those ads. And we'll sue the heck out of Echostar -- and scare other copycats into coming around.


Rogers came to TiVo from NBC (really from the GE management training culture). If he keeps this up, Charlie will make it his life's goal to own TiVo. Charlie is the 34th richest person in the world with a net worth of $9.1 Billion. He didn't get there by losing.

Why won't TiVo shutup, win gracefully, so I can get my free 722?


----------



## jacmyoung

nobody99 said:


> Do I have to explain little last piece to you?
> 
> How about "Maybe the judge wanted to avoid grounds for appeal?" becomes "Maybe the judge wanted to avoid one possible, but not the only, grounds for appeal?"


What is more important? Allow DISH time to collect more possible nonsense to throw at the judge at the contempt hearing in 09/08 so the judge can be sure when he finds DISH in contempt, he will have covered all his bases?

Is that what you are actually saying? You do understand it is a badly imagined excuse?


----------



## nobody99

jacmyoung said:


> What is more important? Allow DISH time to collect more possible nonsense to throw at the judge at the contempt hearing in 09/08 so the judge can be sure when he finds DISH in contempt, he will have covered all his bases?
> 
> Is that what you are actually saying? You do understand it is a badly imagined excuse?


:nono2:

Dish to Court of Appeals: We would like to appeal the finding of contempt that was just handed down.

Court of Appeals: on what grounds?

Dish: We did not have adequate time to prepare for he contempt hearing. The judge gave us only 30 days.

Court of appeals: Appeal on finding of contempt granted. In the meantime, the injunction is stayed.

Does that make more sense? What is the average time from a request for a contempt hearing to when the hearing actually takes place? Is 90 days that far outside the realm of reality?

How about what happens now:

Court of Appeals: Appeal denied. Stay denied.


----------



## HiDefGator

nobody99 said:


> They don't get to use the new software in the contempt hearing.


The judge said what they could and couldn't argue in the contempt hearing? He must be a really fast talker for such a short meeting.


----------



## nobody99

HiDefGator said:


> The judge said what they could and couldn't argue in the contempt hearing? He must be a really fast talker for such a short meeting.


Just going by what was posted.


----------



## nobody99

http://biz.yahoo.com/pz/080530/143786.html

Yeah, THAT'S not going piss Folsom off.



> Today, DISH Network and EchoStar filed a lawsuit against Tivo asking a Delaware court to find that our new DVR software does not infringe Tivo's '389 patent.


----------



## Greg Bimson

Better yet, from Dish Network's joint press release with Echostar...


> We believe any contempt motion by Tivo should be denied because we are in full compliance with the injunction.


It ain't going to be over any time soon.


----------



## Curtis52

http://biz.yahoo.com/pz/080530/143786.html



> ENGLEWOOD, Colo., May 30, 2008 (PRIME NEWSWIRE) -- DISH Network Corporation (NasdaqGSISH - News) and EchoStar Corporation (NasdaqGS:SATS - News) issued the following statement regarding Tivo:
> 
> ``Today, DISH Network and EchoStar filed a lawsuit against Tivo asking a Delaware court to find that our new DVR software does not infringe Tivo's '389 patent. The lawsuit is in response to Tivo's continued public statements that our new DVR software infringes.
> 
> ``This action is independent of Tivo's anticipated motion for contempt in the Eastern District of Texas. We believe any contempt motion by Tivo should be denied because we are in full compliance with the injunction.''


----------



## nobody99

Would I be correct in assuming that, in the off-chance that DISH can somehow win the new lawsuit before September 4 wouldn't even come into play in the contempt hearing. 

In the RIM v NTP case, when the patents were under review and widely believed they'd be overturned, the judge had to act as if the patents were not even under review. 

I would guess, but I'm not sure, that this would be the same thing. 

But I can't see how it would be even remotely possible that the VA lawsuit would be over (or, for that matter, even start) before September 4.


----------



## phrelin

*DISH Network and EchoStar Statement Regarding Tivo*

ENGLEWOOD, Colo., May 30, 2008 (PrimeNewswire via COMTEX News Network) -- DISH Network Corporation (Nasdaq-DISH) and EchoStar Corporation (Nasdaq-SATS) issued the following statement regarding Tivo:

"Today, DISH Network and EchoStar filed a lawsuit against Tivo asking a Delaware court to find that our new DVR software does not infringe Tivo's '389 patent. The lawsuit is in response to Tivo's continued public statements that our new DVR software infringes.

"This action is independent of Tivo's anticipated motion for contempt in the Eastern District of Texas. We believe any contempt motion by Tivo should be denied because we are in full compliance with the injunction."

About DISH Network Corporation

DISH Network Corporation (Nasdaq - DISH), the nation's third largest pay-TV provider and the leader in digital television, provides more than 13.815 million satellite TV customers with industry-leading customer satisfaction which has surpassed major cable TV providers for eight consecutive years. DISH Network also provides customers with award-winning HD and DVR technology including the ViP722(tm) HD DVR, which received the Editors' Choice awards from both CNET and PC Magazine. In addition, subscribers enjoy access to hundreds of video and audio channels, the most International channels in the U.S., industry-leading Interactive TV applications, Latino programming, and the best sports and movies in HD. DISH Network offers a variety of package and price options including the lowest all-digital price in America, the DishDVR Advantage Package, high-speed Internet service, and a free upgrade to the best HD DVR in the industry. DISH Network is included in the Nasdaq-100 Index (NDX) and is a Fortune 300 company. Visit www.dishnetwork.com/aboutus or call 1-800-333-DISH (3474) for more information.

About EchoStar Corporation

EchoStar Corporation (Nasdaq:SATS) operates two primary businesses: (1) equipment sales and digital broadcast operations, and (2) fixed satellite services. The equipment sales and digital broadcast operations business includes the Sling Media business; designs, develops and distributes set-top boxes and related products for direct-to-home satellite television service providers; and includes a network of seven full-service digital broadcast centers and leased fiber optic capacity with points of presence in approximately 150 cities. The fixed satellite services business provides service on nine owned and leased in-orbit satellites and includes related FCC licenses. Visit www.echostar.com for more information.

This news release was distributed by PrimeNewswire, www.primenewswire.com

SOURCE: DISH Network Corporation; EchoStar Corporation

DISH Network 
Corporation
Media Contact:
Parker McConachie
720-514-5351
[email protected]


----------



## Greg Bimson

nobody99 said:


> Would I be correct in assuming that, in the off-chance that DISH can somehow win the new lawsuit before September 4 wouldn't even come into play in the contempt hearing.


I believe you are right. It has to go through the appeals process before it could be brought up on a contempt hearing. But, as you said...


> But I can't see how it would be even remotely possible that the VA lawsuit would be over (or, for that matter, even start) before September 4.


Bingo. And let's make this clear. Depending on Judge Folsom's rendition of "the new software is shelved" today, it is entirely possible this new case is joined with the one in Judge Folsom's case, specifically if the software "is not more than colorably different".


----------



## jacmyoung

Here is what I think might have happened in the meeting, assume what Curtis quoted was accurate. And it is not what many of you want to hear.

The judge did look at the new software evidence (unlike some said he did not have to), and he said well DISH it looked to me you are right the new software is obviously more than colorably different, so here is what I am going to do. I am going to shelve the new software, as far as I am concerned it is not in the scope of this lawsuit anymore. The question and only one is I am asking you why you believe you are in compliance. No more no less (other than the damages of course), the DVRs not on the list will not be reviewed by me or in this lawsuit anymore.

DISH says to the judge, good your honor, we did make a good faith attempt to comply with your injunction based on the interpretation we made of the injunction, and we appreciate the fact you are not going to look at any other devices, only the ones on the list, that will make it easier on our end users, and we think we can come up with a good response to your above question. Please allow us more time.

The judge said, fine, I understand your attempt was in good faith, I will grant you till 09/08 to come into compliance with my injunction.

The reason why I said no DVRs outside of the listed models will be visited again by this judge is because he “shelved” the new software issue. We all agree for anything that is not on the list the workaround must be evaluated, by not looking at it anymore is an indication he will not consider any other devices, at least not within the scope of this lawsuit. Which is also why he did not grant Tivo’s wish for a discovery on the new software.

If the DVRs not on the list were part of the agenda in the 09/08 contempt hearing, he could not have "shelved" the new software, it has to be discussed.


----------



## Curtis52

Dish apparently got the judge's clear message that they can't bring up the new software in the contempt hearing. Now they are running amok in desperation trying to drag it out longer.


----------



## jacmyoung

This new lawsuit by DISH has confirmed my belief that Judge Folsom had made it clear he will not determine the new software (workaround) infringement in his case. Because correct me if I am wrong, if the judge was to take up such issue, DISH can not file a new lawsuit on the same issue?

And since the new software issue will not be visited in Judge Folsom's lawsuit anymore, all DVRs not on the injunction list will not be under discussion, other than the damages of course. See my above post for rationale.


----------



## dgordo

I have been told that I will get some details from the meeting later today.

All I have been told so far is that the judge is not happy with either side, he wants this case settled and out off his hands yesterday.


----------



## jacmyoung

dgordo said:


> I have been told that I will get some details from the meeting later today.
> 
> All I have been told so far is that the judge is not happy with either side, he wants this case settled and out off his hands yesterday.


I guess neither wished to settle. But your post does support my notion that the judge wants to get rid of this whole thing, he did so in his first step by excluding all DVRs not on the list, he simply does not want any more part of it. He still has to take care of the past damages and the DVRs on his injunction list, but no more than those.

And DISH could taste it, which is why they went on attack, because if the judge simply is tired of it, and if neither side wants to do what he wants them to do, then it seems the whole situation could tilt in DISH's favor.

I know some of you will have a completely different take


----------



## Herdfan

phrelin said:


> Today, DISH Network and EchoStar filed a lawsuit against Tivo asking a Delaware court to find that our new DVR software does not infringe Tivo's '389 patent.


Delaware Court. Hmmm... Someone correct me if I am wrong, but unless it is a Federal Court, it would only be valid in the State of Delaware. Yes, other courts use the findings, but the US District Court or any other court would not be bound by any finding in Delaware.

Even if it was a Federal Court, then would it not only apply within that District?


----------



## dgordo

Herdfan said:


> Delaware Court. Hmmm... Someone correct me if I am wrong, but unless it is a Federal Court, it would only be valid in the State of Delaware. Yes, other courts use the findings, but the US District Court or any other court would not be bound by any finding in Delaware.
> 
> Even if it was a Federal Court, then would it not only apply within that District?


Under the principles of comity states recognize rulings of another state's courts as they want other states to do the same.

I believe you may be thinking of the concept that when deciding a *new* case with *new* parties another state is not bound by the ruling of another state's court.


----------



## dgordo

jacmyoung said:


> I guess neither wished to settle. But your post does support my notion that the judge wants to get rid of this whole thing, he did so in his first step by excluding all DVRs not on the list, he simply does not want any more part of it. He still has to take care of the past damages and the DVRs on his injunction list, but no more than those.
> 
> And DISH could taste it, which is why they went on attack, because if the judge simply is tired of it, and if neither side wants to do what he wants them to do, then it seems the whole situation could tilt in DISH's favor.
> 
> I know some of you will have a completely different take


I hope when I hear more later I can clarify. But this is not an unusual attitude for a judge, they love settlements and they hate to work.


----------



## Herdfan

dgordo said:


> Under the principles of comity states recognize rulings of another state's courts as they want other states to do the same.


But would a Federal Court be bound by a state court ruling? Especially of the Federal Court has already ruled on a similar issue.


----------



## jacmyoung

Curtis52 said:


> Dish apparently got the judge's clear message that they can't bring up the new software in the contempt hearing. Now they are running amok in desperation trying to drag it out longer.


DISH did seem to have a game plan more so than Tivo. They had to have multiple scenarios planned out, one of which was the new infringement issue, and they must also had various papers ready to file, and had the messengers waiting at the clerk's office all day for instruction, and all he/she was told to do was when the call came from the dispatch, the right-color coded papers would be handed over the clerk's window for stamp of receipt. And then as soon as the messenger confirmed the receipt, the boys and girls at the pressroom would pick the correct one among several prepared announcements, and issue a statement.

It was all planned Curtis, not some desperate move after the fact, not enough time to do that.


----------



## dgordo

Herdfan said:


> But would a Federal Court be bound by a state court ruling? Especially of the Federal Court has already ruled on a similar issue.


Generally, under res judicata and collateral estoppel, if one court rules on an issue a court in another jurisdiction cannot even hear a case regarding that issue.

DISH will have to claim that the issue has not been addressed in order for the Delaware courts to hear the case.


----------



## Greg Bimson

As we are dealing with patent infringement, I think this has to be done at a Federal Circuit court.


jacmyoung said:


> This new lawsuit by DISH has confirmed my belief that Judge Folsom had made it clear he will not determine the new software (workaround) infringement in his case. Because correct me if I am wrong, if the judge was to take up such issue, DISH can not file a new lawsuit on the same issue?


I believe that to be correct.


----------



## nobody99

jacmyoung said:


> DISH did seem to have a game plan more so than Tivo. They had to have multiple scenarios planned out, one of which was the new infringement issue, and they must also had various papers ready to file, and had the messengers waiting at the clerk's office all day for instruction, and all he/she was told to do was when the call came from the dispatch, the right-color coded papers would be handed over the clerk's window for stamp of receipt. And then as soon as the messenger confirmed the receipt, the boys and girls at the pressroom would pick the correct one among several prepared announcements, and issue a statement.
> 
> It was all planned Curtis, not some desperate move after the fact, not enough time to do that.


Wow. Just...wow. I honestly thought that after today's events you'd finally come to realize just how desperate this situation has become for DISH.

Charlie Ergen put his entire company in serious jeopardy today. If you can't see that, I really don't know what else there is to say.


----------



## Richard King

> I hope when I hear more later I can clarify. But this is not an unusual attitude for a judge, they love settlements and *they hate to work*.


I'll ask my brother, the judge, about this. :lol:


----------



## Greg Bimson

Richard King said:


> I'll ask my brother, the judge, about this.


Couldn't you just call his cell now, so you can interrupt his backswing?


----------



## Richard King

Greg Bimson said:


> Couldn't you just call his cell now, so you can interrupt his backswing?


He's in Minnesota. It's too cold there to be using the backswing yet. :lol:


----------



## dgordo

Greg Bimson said:


> As we are dealing with patent infringement, I think this has to be done at a Federal Circuit court.I believe that to be correct.


State courts are allowed to rule on patent issues but its complicated.


----------



## nobody99

Richard King said:


> He's in Minnesota. It's too cold there to be using the backswing yet. :lol:


It's finally warmed up a bit. It's 68 right now. We might even hit 80 degrees on Sunday for the SECOND TIME this year!


----------



## jims

I almost think that Dishes defense is being run by their marketing dept instead of the law dept. They seem to be trying to win this through press releases instead of the court system.


----------



## James Long

So ... while we wait for an official court summary (and not a "what I understand happened" summary) ...

It seems that DISH has come up with an action no one predicted.


----------



## jims

James Long said:


> So ... while we wait for an official court summary (and not a "what I understand happened" summary) ...
> 
> It seems that DISH has come up with an action no one predicted.


+1 on getting an official summary.


----------



## Curtis52

jims said:


> I almost think that Dishes defense is being run by their marketing dept instead of the law dept. They seem to be trying to win this through press releases instead of the court system.


Dish had a bad day. They needed something cosmetic to make shareholders think they are winning.


----------



## nobody99

James Long said:


> So ... while we wait for an official court summary (and not a "what I understand happened" summary) ...
> 
> It seems that DISH has come up with an action no one predicted.


I can't imagine anyone, in their wildest dreams, would have predicted what they did in Virginia.


----------



## dgordo

Delaware, and it is unlikely we will get an official summary from a closed door meeting.


----------



## spear61

Greg Bimson said:


> I believe you are right. It has to go through the appeals process before it could be brought up on a contempt hearing. But, as you said...Bingo. And let's make this clear. Depending on Judge Folsom's rendition of "the new software is shelved" today, it is entirely possible this new case is joined with the one in Judge Folsom's case, specifically if the software "is not more than colorably different".


Look where Dish filed: DELEWARE - Judge shopping of a different kind


----------



## James Long

dgordo said:


> Delaware, and it is unlikely we will get an official summary from a closed door meeting.


We will get any ruling and scheduling that came out of the meeting. I'm not expecting a transcript, but there has to be some report.


----------



## nobody99

dgordo said:


> Delaware, and it is unlikely we will get an official summary from a closed door meeting.


Oops, my bad


----------



## jims

Could someone with a law degree explain how a Deleware court could overrule the Eastern District Court or the Court of Appeals? Or for that matter how their ruling could influence an end game plan. They felt having a Patent firm issue an opinion was a substitute for filing a petition with the court that they were adjudicating through, but what relief can Deleware actually provide?

Please in responding state whether you practice law or not.


----------



## dgordo

spear61 said:


> Look where Dish filed: DELEWARE - Judge shopping of a different kind


Absolutely, Judge and jury shopping of a different kind.


----------



## phrelin

> Today, DISH Network and EchoStar filed a lawsuit against Tivo asking a Delaware court to find that our new DVR software does not infringe Tivo's '389 patent. The lawsuit is in response to Tivo's continued public statements that our new DVR software infringes.


I'll be curious to see what this is. It sounds almost like a defamation case.


----------



## spear61

Need to see how the judge addressed the "new software" today. Deleware is well know as being a favorite location for corporations to do business. Dish must have an idea that they can get better treatment there and had the papers ready for whatever Texas ruled today And with today's filing, which looks like it might have been a race to the courthouse, one would suspect that Texas made a ruling today that the "new software " was independent and not a part of the existing lawsuit. Otherwise, Dish would not be allowed to file in another circuit (Deleware).

This may be good for Dish on the new software but bad news for Dish in regard to almost everthing else. 

I'll predict it get's tossed out of Deleware and sent back to Texas.


----------



## dgordo

jims said:


> Could someone with a law degree explain how a Deleware court could overrule the Eastern District Court or the Court of Appeals? Or for that matter how their ruling could influence an end game plan. They felt having a Patent firm issue an opinion was a substitute for filing a petition with the court that they were adjudicating through, but what relief can Deleware actually provide?
> 
> Please in responding state whether you practice law or not.


Read my other posts, they cannot overrule the Texas court but Dish will likely argue that the Texas court has not addressed this issue and TIVO will likely argue that the Texas court has addressed the issue. If the Texas court has not addressed the issue another court can rule on the issue.

I am a lawyer.


----------



## Greg Bimson

DISH/SATS received a ruling today that their new software won't be considered. Until a court rules, the software is neither infringing or non-infringing.

This is a pre-emptive strike to get the new software ruled as non-infringing.

As it took two years to get from a filed lawsuit to a trial date, this may also take a couple of years. It appears DISH/SATS is going to drag this entire thing out as long as possible. The problem is that they may catch the ire of Judge Folsom if they do not comply with the injunction in 90 days. Of course, a contempt proceeding may be appealed, so DISH/SATS can drag that out for even longer.

The big problem is if they lose.


----------



## Herdfan

dgordo said:


> Absolutely, Judge and jury shopping of a different kind.


Then why Delaware? File it here in WV where half the state has a DISH on their trailer.:lol:


----------



## nobody99

Greg Bimson said:


> DISH/SATS received a ruling today that their new software won't be considered. Until a court rules, the software is neither infringing or non-infringing.
> 
> This is a pre-emptive strike to get the new software ruled as non-infringing.
> 
> As it took two years to get from a filed lawsuit to a trial date, this may also take a couple of years. It appears DISH/SATS is going to drag this entire thing out as long as possible. The problem is that they may catch the ire of Judge Folsom if they do not comply with the injunction in 90 days. Of course, a contempt proceeding may be appealed, so DISH/SATS can drag that out for even longer.
> 
> The big problem is if they lose.


Correct me if I am wrong, but if, in 90 days, Folsom rules them in contempt and they appeal, the appeals court does not have to stay the injunction during the appeal of the contempt finding.

Also, during the contempt hearing, would the damages to date be calculated if Folsom rules that they are in contempt? So let's say that number is $333 million and change as TiVo says - or $350 million by the time September 4 rolls around. Will they have to put that money in escrow like they did the original amount before an appeal is even considered?


----------



## James Long

Herdfan said:


> Then why Delaware? File it here in WV where half the state has a DISH on their trailer.:lol:


They needed a state where half of the cars were not up on blocks in the front yard. 

Delaware is a decent state ... one of those corporation havens a lot of companies like to incorporate in.


----------



## James Long

nobody99 said:


> Correct me if I am wrong, but if, in 90 days, Folsom rules them in contempt and they appeal, the appeals court does not have to stay the injunction during the appeal of the contempt finding.


I would not expect a stay during a contempt appeal. DISH is already operating on the assumption that their software is fine. If they are ruled in contempt they will just keep operating that way during the appeal.


----------



## Curtis52

PACER:



> IN THE UNITED STATES DISTRICT COURT
> FOR THE EASTERN DISTRICT OF TEXAS
> MARSHALL DIVISION
> 
> Judge David Folsom
> 
> TIVO §
> §
> 
> V. § CIVIL ACTION NO. 2:04CV1
> ECHOSTAR §
> 
> ATTORNEY FOR PLAINTIFFS: Morgan Chu; Sam Baxter; Andrei Iancu
> 
> ATTORNEY FOR DEFENDANTS: Damon Young; John Pickett; Joe Patino; Harold
> McElhinny
> 
> LAW CLERK: Jennifer Orgeron
> COURTROOM DEPUTY: Mel Martin
> COURT REPORTER: Libby Crawford
> STATUS CONFERENCE
> 
> May 30, 2008 @ 10:00 a.m.
> OPEN: 9:53 ADJOURN: 10:17
> 
> 9:53 ct opens; ct/ what remains to be undone; correspondence is part of the record;
> 9:53 Chu/ have some good news; have reached agreement on bill of costs;
> 9:53 ct/ discovery and time frame from plfs standpoint and then will hear from dft; 2
> unresolved issues
> 9:54 Chu/ 1st issue if injunction has been violated;
> 9:55 ct/ what time period/ time frame and if discovery needed;
> 9:55 Chu/ responds; 2nd part of injunction question;
> 
> 9:56 ct/ that need not be taken up until after ruling on initial issue re: injunction;
> 9:57 Chu/ accelerated briefing schedule
> 9:57 ct/ my schedule doesn't allow for two weeks it would be more like a couple of months;
> how much time to file motion a week, 10 days;
> 9:58 Chu/ 10 days;
> 9:58 McElhinny/ responds;
> 9:59 ct/ correct procedure; filing of motion might clarify that;
> 10:00 McElhiny/ one contempt motion;
> 10:01 ct/ damage issue;
> 10:01 McElhinny/ damage issue is very interesting;
> 10:01 ct/ discovery if any
> 10:02 McElhinny/ if mini-trial we would like discovery;
> 10:02 ct/ Paice order; would that arrangement be appropraite;
> 10:02 ptys agree that would be appropriate
> 10:03 ct/ re: injunction and Mr. McElhinny feels you don't need to do this in two bites;
> 10:03 Chu/ responds;
> 10:03 ct/ file motion within 10 days; no more than 25 pages; brief in connection with motion no
> more than 20 pages; response how long with normal response time; reply not to exceed
> 10 pages; if sur-reply you will need leave of court; potential date to hear this; it will be
> August to September before we can set this;
> 10:05 Chu/ dates that are good for me;
> th th
> 
> 10:05 ct/ a date the week of August 25 , how does 8/26 or 27 ;
> 10:06 Chu/ both dates are good
> 10:06 McElhinny/ could I have one more week;
> 10:07 ct/ how is Thursday, 9/4th; ptys agree; 10am; how much time might be needed;
> 
> 10:07 Chu/ will not need witness'; 30 mins each side should be fine;
> 10:07 McElhinny/ 2 issues;
> 10:07 ct/ approach; do you envision any more interrogatories;
> 10:08 Chu/ responds; for purpose of injunction we don't need further discovery, right now;
> 10:09 ct/ no additional discovery unless leave of court;
> 10:09 Chu/ separate issue; they have stated that they have swapped out boxes;
> 10:10 ct/ what do you think you need
> 10:10 Chu/ responds;
> 10:10 ct/ don't need discovery for hearing that we have set; no discovery until you request leave
> of court;
> 10:11 Chu/ responds;
> 10:11 ct/ in what form and how much;
> 10:11 Chu/ responds; basic documentation;
> 10:12 ct/ is this going to be addressed in motion;
> 10:12 Chu/ no
> 10:12 McElhinny/ this is what we don't want;
> 10:13 ct/ will look at correspondence and give some guidance; damages same process, what
> time period are we talking about for discovery;
> 10:14 Chu/ 45 days or so;
> 10:14 ct/ look at Paice order for roadmap and do scheduling order; within 14 days; what else
> needs attention; ct/ hearing on 9/4th how much time
> 10:14 McElhinny/ 30 mins;
> 10:15 ct/ 30 mins each side for hrg set 9/4th;
> 10:15 McElhinny/ repair of boxes; will file motion for clarification and can hear it on the same
> day;
> 
> 10:15 Chu/ responds;
> 10:16 ct/ file that motion in same time period as motion for injunction; technical advisor for this
> phase of the case;
> 10:16 Chu/ don't feel we need one; strictly a legal question;
> 10:16 McElhinny/ agrees;
> 10:17 adjourned;


----------



## nobody99

James Long said:


> I would not expect a stay during a contempt appeal. DISH is already operating on the assumption that their software is fine. If they are ruled in contempt they will just keep operating that way during the appeal.


But if they are found in contempt, does the court not impose additional per-day fines? Say (to pick a number out of a hat), $10 million per day that DVR functionality is not shut off? My understanding is that contempt fines are extraordinarily painful.


----------



## spear61

dgordo said:


> Read my other posts, they cannot overrule the Texas court but Dish will likely argue that the Texas court has not addressed this issue and TIVO will likely argue that the Texas court has addressed the issue. If the Texas court has not addressed the issue another court can rule on the issue.
> 
> I am a lawyer.


dgordo; What is the significance of the Dish and Tivo status filings where they both go into some detail concerning the new software with Tivo asking for more discovery? Seems to me like Texas was asked to start plowing this field by both parties.


----------



## jacmyoung

Now I hope most of us can agree any DVRs not on the injunction list will have to be addressed in a new suit, if Tivo still wants to, because Judge Folsom has decided to "shelve" the new software, meaning the new software issue will not be discussed in the 9/08 contempt hearing, meaning DVRs not on the list will not be addressed.

Now as soon as that is determined, DISH quickly filed its own suit to address the new software infringement issue, the basis is of course that the judge decided not to address it, and also because Tivo has been saying in public that DISH's new software still infringes.

What is interesting to me is DISH continues with the old claim that they are in compliance with the injunction now. That is an indication that judge did not even clarify parts 1 and 2 raised by Tivo, because if he did, and made it clear he agreed with Tivo's interpretation, DISH would not have used the same old claim, and only stated the intent of the new lawsuit.

Because to state in clear defiance of what the judge explained to them to the contrary in that meeting would certainly be a bad legal move. Therefore the logical explanation is the judge did not even go into the injunction and the interpretation of it. He probably focused on the new software issue only, and determined it was more than colorably different, so no more discussion of anything not on the list, just let's get it done with what happened in the past, and what is still to be addressed on that list, in a later time.

Let's assume the judge will find DISH in contempt in 09/08, and DISH will appeal, did they just buy another year of time almost? Or at least a good 8 or 9 months time?


----------



## phrelin

nobody99 said:


> But if they are found in contempt, does the court not impose additional per-day fines? Say (to pick a number out of a hat), $10 million per day that DVR functionality is not shut off? My understanding is that contempt fines are extraordinarily painful.


Gee, hope they don't fine Charlie that amount. In a year he might begin to notice it.:lol:


----------



## dgordo

spear61 said:


> dgordo; What is the significance of the Dish and Tivo status filings where they both go into some detail concerning the new software with Tivo asking for more discovery? Seems to me like Texas was asked to start plowing this field by both parties.


I could only speculate on why they included the info in the filings and that has already been done here by both sides.


----------



## Curtis52

TiVo may file a contempt motion on the new boxes after the Infringing Products are disabled as a coup de grâce.


----------



## Greg Bimson

reading transcript...

doesn't that mean the new software will be heard after the contempt motion for violation of injunction is completed? i think that's how i read it.

this could be even more interesting.


----------



## jacmyoung

Curtis52 said:


> PACER:


Is that all? Where is the "shelving" of the new software thing?


----------



## jims

thank you


----------



## spear61

The judge said part 2 "need not be taken up until after" part 1 is resolved. 
of the TIVO request: Does not sound like he dropped it at all.
part 2
"Permission to serve limited discovery to obtain additional information before determining the damages TiVo sustained during the stay of the injunction, and, if necessary, bringing a motion for an order to show cause why EchoStar is not in contempt for the continuing use of the Infringing Products, changed only by downloading modified, but still infringing, software (and new EchoStar products that are only colorably different)."


----------



## dgordo

That transcript is as confusing as possible.


----------



## jacmyoung

This much we know now, this meeting did nothing to resolve anything at all, only to schedule the next hearing. No one's arguments were even considered.

And in the next hearing, only the DVRs on the list will be addressed as whether DISH is in violation of the injunction by not disabling the DVRs, nothing more on injunction will be discussed.

So where is this thing about the Judge was not happy, and he decided to shelve the new software? Nothing was even talked about, only to schedule the next one and to decide what may be talked about then.

If so then no conclusion can be made at all today, can it?


----------



## spear61

dgordo said:


> That transcript is as confusing as possible.


24 minutes of stenotalk


----------



## spear61

jacmyoung said:


> If so then no conclusion can be made at all today, can it?


Better have James Long see if they can get bigger mass storage for the server. Looks like it will be needed.


----------



## jacmyoung

spear61 said:


> The judge said part 2 "need not be taken up until after" part 1 is resolved.
> of the TIVO request: Does not sound like he dropped it at all.
> part 2
> "Permission to serve limited discovery to obtain additional information before determining the damages TiVo sustained during the stay of the injunction, and, if necessary, bringing a motion for an order to show cause why EchoStar is not in contempt for the continuing use of the Infringing Products, changed only by downloading modified, but still infringing, software (and new EchoStar products that are only colorably different)."


I am just as confused, how can it be that the part 2 may only be addressed after part 1? So what if DISH is not in contempt, they don't even have to pay damages during the stay of the injunction even though DISH itself did not say they had new software during the stay, the software was still infringing during the stay?


----------



## jacmyoung

Curtis52 said:


> TiVo may file a contempt motion on the new boxes after the Infringing Products are disabled as a coup de grâce.


Only if DISH is found in contempt in that meeting, and then fails on all appeals, after that yes.


----------



## spear61

Tivos first bullet (part 1)

A hearing at the earliest possible date to determine whether EchoStar should be held
in contempt for its failure to disable the DVR functionality in the Infringing Products and for its placement of new infringing DVRs (and new EchoStar products that are only colorably different); and

I think this goes straight to the heart of the arguement of those saying that "infringing boxes" was used to describe specific models that were to be disabled. Since the judge did not want to talk about new software , it inicates that the Judge meant that exact thing and intends his injuction to be enforced as if conditions today (software) are frozen in time at the original day he issued the injunction.

Definitely not good news for Dish and probably the reason they are trying to escape to a different circuit.

Nor does it appear that he has "released control" of the new "non-infringing"software.


----------



## sbiller1

spear61 said:


> Tivos first bullet (part 1)
> 
> A hearing at the earliest possible date to determine whether EchoStar should be held
> in contempt for its failure to disable the DVR functionality in the Infringing Products and for its placement of new infringing DVRs (and new EchoStar products that are only colorably different); and
> 
> I think this goes straight to the heart of the arguement of those saying that "infringing boxes" was used to describe specific models that were to be disabled. Since the judge did not want to talk about new software , it inicates that the Judge meant that exact thing and intends his injuction to be enforced as if conditions today (software) are frozen in time at the original day he issued the injunction.
> 
> Definitely not good news for Dish and probably the reason they are trying to escape to a different circuit.
> 
> Nor does it appear that he has "released control" of the new "non-infringing"software.


Is this statement from the E* attorney what makes you think that?

10:12 McElhinny/ this is what we don't want;


----------



## jacmyoung

spear61 said:


> Tivos first bullet (part 1)
> 
> A hearing at the earliest possible date to determine whether EchoStar should be held
> in contempt for its failure to disable the DVR functionality in the Infringing Products and for its placement of new infringing DVRs (and new EchoStar products that are only colorably different); and
> 
> I think this goes straight to the heart of the arguement of those saying that "infringing boxes" was used to describe specific models that were to be disabled. Since the judge did not want to talk about new software , it inicates that the Judge meant that exact thing and intends his injuction to be enforced as if conditions today (software) are frozen in time at the original day he issued the injunction.
> 
> Definitely not good news for Dish and probably the reason they are trying to escape to a different circuit.
> 
> Nor does it appear that he has "released control" of the new "non-infringing"software.


That is the problem, the judge did not say anything about not hearing the new software at all. One can not draw any conclusion from this meeting, not you, not me, no one.


----------



## jacmyoung

sbiller1 said:


> Is this statement from the E* attorney what makes you think that?
> 
> 10:12 McElhinny/ this is what we don't want;


No that was about box repair issue.


----------



## Greg Bimson

jacmyoung said:


> That is the problem, the judge did not say anything about not hearing the new software at all. One can not draw any conclusion from this meeting, not you, not me, no one.


Actually there are two conclusions that come from this meeting:

1) A contempt hearing is scheduled for 4 September, regarding the continuing sales and functionality of DVR's that are listed as "Infringing Products", and

2) The software may be adjudicated at a later time.

[I will now point out this is what most of us had been saying]

What we don't know...

Whether the suit DISH/SATS just filed in Delaware will even be valid.


----------



## scooper

My interprtation of the steno record ...

My remarks prefaced by ">>"

IN THE UNITED STATES DISTRICT COURT
FOR THE EASTERN DISTRICT OF TEXAS
MARSHALL DIVISION

Judge David Folsom

TIVO §
§

V. § CIVIL ACTION NO. 2:04CV1
ECHOSTAR §

ATTORNEY FOR PLAINTIFFS: Morgan Chu; Sam Baxter; Andrei Iancu

ATTORNEY FOR DEFENDANTS: Damon Young; John Pickett; Joe Patino; Harold
McElhinny

LAW CLERK: Jennifer Orgeron
COURTROOM DEPUTY: Mel Martin
COURT REPORTER: Libby Crawford
STATUS CONFERENCE

May 30, 2008 @ 10:00 a.m.
OPEN: 9:53 ADJOURN: 10:17

9:53 ct opens; ct/ what remains to be undone; correspondence is part of the record;

>> Previous briefs accepted as part of trial record

9:53 Chu/ have some good news; have reached agreement on bill of costs;
>> - apparently an agreement on what Echostar is going to pay Tivo on costs

9:53 ct/ discovery and time frame from plfs standpoint and then will hear from dft; 2
unresolved issues
9:54 Chu/ 1st issue if injunction has been violated;

>> - Tivo asking for contempt hearing

9:55 ct/ what time period/ time frame and if discovery needed;
9:55 Chu/ responds; 2nd part of injunction question;

9:56 ct/ that need not be taken up until after ruling on initial issue re: injunction;
>> Court said don't worry about the 2nd part until the first part is decided
9:57 Chu/ accelerated briefing schedule
>> Tivo requesting contempt hearing ASAP
9:57 ct/ my schedule doesn't allow for two weeks it would be more like a couple of months;
how much time to file motion a week, 10 days;
>> court says - "I'm booked - can't accomodate you on that"
9:58 Chu/ 10 days;
9:58 McElhinny/ responds;
9:59 ct/ correct procedure; filing of motion might clarify that;
10:00 McElhiny/ one contempt motion;
10:01 ct/ damage issue;
10:01 McElhinny/ damage issue is very interesting;
10:01 ct/ discovery if any
10:02 McElhinny/ if mini-trial we would like discovery;
10:02 ct/ Paice order; would that arrangement be appropraite;
10:02 ptys agree that would be appropriate
>> agreement on discovery happening
10:03 ct/ re: injunction and Mr. McElhinny feels you don't need to do this in two bites;
10:03 Chu/ responds;
10:03 ct/ file motion within 10 days; no more than 25 pages; brief in connection with motion no
more than 20 pages; response how long with normal response time; reply not to exceed
10 pages; if sur-reply you will need leave of court; potential date to hear this; it will be
August to September before we can set this;
>> Short briefs - 25 pages max Tivo, 10 pages max Echostar
10:05 Chu/ dates that are good for me;
th th

10:05 ct/ a date the week of August 25 , how does 8/26 or 27 ;
10:06 Chu/ both dates are good
10:06 McElhinny/ could I have one more week;
10:07 ct/ how is Thursday, 9/4th; ptys agree; 10am; how much time might be needed;
>> - Date and time set
10:07 Chu/ will not need witness'; 30 mins each side should be fine;
>> - duration
10:07 McElhinny/ 2 issues;
10:07 ct/ approach; do you envision any more interrogatories;
10:08 Chu/ responds; for purpose of injunction we don't need further discovery, right now;
10:09 ct/ no additional discovery unless leave of court;
10:09 Chu/ separate issue; they have stated that they have swapped out boxes;
10:10 ct/ what do you think you need
10:10 Chu/ responds;
10:10 ct/ don't need discovery for hearing that we have set; no discovery until you request leave
of court;
10:11 Chu/ responds;
10:11 ct/ in what form and how much;
10:11 Chu/ responds; basic documentation;
10:12 ct/ is this going to be addressed in motion;
10:12 Chu/ no
*10:12 McElhinny/ this is what we don't want;
>> I don't know what this means*
10:13 ct/ will look at correspondence and give some guidance; damages same process, what
time period are we talking about for discovery;
10:14 Chu/ 45 days or so;
10:14 ct/ look at Paice order for roadmap and do scheduling order; within 14 days; what else
needs attention; ct/ hearing on 9/4th how much time
10:14 McElhinny/ 30 mins;
10:15 ct/ 30 mins each side for hrg set 9/4th;
10:15 McElhinny/ repair of boxes; will file motion for clarification and can hear it on the same
day;

10:15 Chu/ responds;
10:16 ct/ file that motion in same time period as motion for injunction; technical advisor for this
phase of the case;
10:16 Chu/ don't feel we need one; strictly a legal question;
10:16 McElhinny/ agrees;

>> - No Tech witnesses - strictly legal

10:17 adjourned;


----------



## phrelin

Greg Bimson said:


> What we don't know...
> 
> Whether the suit DISH/SATS just filed in Delaware will even be valid.


What we do know...

TiVo will have to shell out scarce cash to defend it. That's all that matters to Charlie.


----------



## Curtis52

My interpretation:


> 10:09 Chu/ separate issue; they have stated that they have swapped out boxes;
> 10:10 ct/ what do you think you need
> 10:10 Chu/ responds;
> 10:10 ct/ don't need discovery for hearing that we have set; no discovery until you request leave of court;


Discussion is about new software. Judge asks TiVo what they need. TiVo apparently says they don't need anything for the contempt hearing set but will need discovery for any contempt hearing about the new software if one is set up in a later motion. Judge says "fine. No discovery is needed for this hearing. Let me know when you want discovery."


> 10:11 Chu/ responds;
> 10:11 ct/ in what form and how much;
> 10:11 Chu/ responds; basic documentation;
> 10:12 ct/ is this going to be addressed in motion;
> 10:12 Chu/ no


TiVo says new software won't be addressed in motion.


> 10:12 McElhinny/ this is what we don't want;


Dish is saying they really wanted to talk about the software.


----------



## James Long

nobody99 said:


> But if they are found in contempt, does the court not impose additional per-day fines? Say (to pick a number out of a hat), $10 million per day that DVR functionality is not shut off? My understanding is that contempt fines are extraordinarily painful.


And extraordinarily refundable if the appeal is won.

Look at this STRICTLY from the view of DISH.
They believe that they are not in contempt.
They will ACT based on their beliefs.

BTW: Thanks Curtis52 for the conference notes. The PDF version is attached here.


----------



## sbiller1

Curtis52 said:


> My interpretation:
> 
> Discussion is about new software. Judge asks TiVo what they need. TiVo apparently says they don't need anything for the contempt hearing set but will need discovery for any contempt hearing about the new software if one is set up in a later motion. Judge says "fine. No discovery is needed for this hearing. Let me know when you want discovery."
> 
> TiVo says new software won't be addressed in motion.
> 
> Dish is saying they really wanted to talk about the software.


That is what I was thinking. This is the only place in the transcript where a party expresses something they don't like with the court.

Is it possible that the Judge already discussed some of the issues with the lawyers prior to the public court appearance? Both Chu and the E* attorney seem to understand what is going on but it is really hard for a layman to understand.

I guess we now need to wait and see if TiVo releases a press statement. After that, their motion is in 10 days?


----------



## spear61

Curtis52 said:


> My interpretation:
> 
> TiVo says new software won't be addressed in motion.
> 
> Dish is saying they really wanted to talk about the software.


Judge and dish may be saying discovery must be done by motion. Seems to me dish was providing voluntary disclosure earlier.


----------



## phrelin

James Long said:


> And extraordinarily refundable if the appeal is won.
> 
> Look at this STRICTLY from the view of DISH.
> They believe that they are not in contempt.
> They will ACT based on their beliefs.


And act like they have [strike]all the money[/strike] ...oops... I mean... all the time in the world. Something TiVo doesn't have.


----------



## dgordo

phrelin said:


> What we do know...
> 
> TiVo will have to shell out scarce cash to defend it. That's all that matters to Charlie.


Wasnt DISH orderd to pay attorney's fees?


----------



## phrelin

dgordo said:


> Wasnt DISH orderd to pay attorney's fees?


Yes, but not the new suit Dish filed against TiVo. And even if they lose and have to reimburse attorney's fees, TiVo has to upfront the fees.


----------



## dgordo

phrelin said:


> Yes, but not the new suit Dish filed against TiVo. And even if they lose and have to reimburse attorney's fees, TiVo has to upfront the fees.


I see what you were saying. Its likely that Tivo, with the relationship they have with Irell and Manella, doesn't need to worry about that.


----------



## Curtis52

dgordo said:


> Wasnt DISH orderd to pay attorney's fees?


No. Not in the trial or in the appeal.

Trial:



> "Having considered the motion, all other relevant briefing, and the applicable law, the Court finds Plaintiff's Motion for
> Treble Damages and for a Determination that this is an "Exceptional Case" Entitling TiVo to Recover Attorneys' Fees should be DENIED. "


Appeal:


> "Each party shall bear its own costs for this appeal."


----------



## phrelin

dgordo said:


> I see what you were saying. Its likely that Tivo, with the relationship they have with Irell and Manella, doesn't need to worry about that.


Morgan Chu may have a soft place for TiVo, but that will only go so far. If I were in his position, I'd be pushing Rogers to shutup and negotiate a settlement.

The problem here is that I'm certain Charlie believes his new code/system doesn't infringe. If it doesn't and he's as "upset" by TiVo as I think he is, he'll be giving away new Echostar boxes for cable customers to the first 1,000,000 customers just for spite. It just doesn't make sense to think you can win against a billionaire unless you are one.


----------



## scooper

phrelin said:


> Morgan Chu may have a soft place for TiVo, but that will only go so far. If I were in his position, I'd be pushing Rogers to shutup and negotiate a settlement.
> 
> The problem here is that I'm certain Charlie believes his new code/system doesn't infringe. If it doesn't and he's as "upset" by TiVo as I think he is, he'll be giving away new Echostar boxes for cable customers to the first 1,000,000 customers just for spite. It just doesn't make sense to think you can win against a billionaire unless you are one.


IOW - Tivo may win the legal "battle", but ultimately lose the "war"...


----------



## phrelin

scooper said:


> IOW - Tivo may win the legal "battle", but ultimately lose the "war"...


There's the law and then there's the "war". In the "war" the "law" is just one battleground. Unfortunately for TiVo and all us "little guys" there just aren't many Thermopylae's in history (see the movie _300_). Most wars are won by the side that has the critical resources, in this case money and time. Charlie just opened a "new front" in Delaware. TiVo has to keep it a minor skirmish. They could. We'll see how well that goes.


----------



## James Long

Have people in Delaware cringed all day long reading this thread?


----------



## dgordo

Curtis52 said:


> No. Not in the trial or in the appeal.
> 
> Trial:
> 
> Appeal:


Thanks


----------



## dgordo

James Long said:


> Have people in Delaware cringed all day long reading this thread?


I was wondering the same thing.


----------



## dgordo

phrelin said:


> Morgan Chu may have a soft place for TiVo, but that will only go so far. If I were in his position, I'd be pushing Rogers to shutup and negotiate a settlement.
> 
> The problem here is that I'm certain Charlie believes his new code/system doesn't infringe. If it doesn't and he's as "upset" by TiVo as I think he is, he'll be giving away new Echostar boxes for cable customers to the first 1,000,000 customers just for spite. It just doesn't make sense to think you can win against a billionaire unless you are one.


I suspect he is pushing for settlement, lawyers don't like to work either. 
I think he also knows how important this case is for Tivo, if he ever wants to get paid he cant let Tivo lose.


----------



## scooper

Tivo wants a settlement that looks good enough to convince Motorola and Scientific Atlanta (Cisco) (the big cable DVR makers) to decide to not fight Tivo and get some negotiated license fees. If Echostar can turn the situation into "Tivo - you're not relevant anymore" - they are through as a company for the long term.


----------



## Herdfan

James Long said:


> Look at this STRICTLY from the view of DISH.
> They believe that they are not in contempt.


They did not believe they infringed in the first place so them believing they are not in comtempt is not a stretch for them.



> They will ACT based on their beliefs.


How has that been working out for them so far? My count is at least 0-4.


----------



## jacmyoung

Curtis52 said:


> My interpretation:
> 
> Discussion is about new software. Judge asks TiVo what they need. TiVo apparently says they don't need anything for the contempt hearing set but will need discovery for any contempt hearing about the new software if one is set up in a later motion. Judge says "fine. No discovery is needed for this hearing. Let me know when you want discovery."
> 
> TiVo says new software won't be addressed in motion.
> 
> Dish is saying they really wanted to talk about the software.


This entire section was about swapping of boxes (for repair), if you read what DISH's filing in response to Tivo, there was disagreement about whether the broken boxes among the 192,000 could be swapped out by another one of the Infringing Products to keep the 192,000 total number of Infringing Products forever.

Nothing is talked about the new software at all in this meeting.


----------



## jacmyoung

Greg Bimson said:


> Actually there are two conclusions that come from this meeting:
> 
> 1) A contempt hearing is scheduled for 4 September, regarding the continuing sales and functionality of DVR's that are listed as "Infringing Products", and
> 
> 2) The software may be adjudicated at a later time.
> 
> [I will now point out this is what most of us had been saying]
> 
> What we don't know...
> 
> Whether the suit DISH/SATS just filed in Delaware will even be valid.


This meeting addressed only ONE issue injunction related to be discussed in the 9/08 hearing, that is part 1 of Tivo's filing about the "Disabling of the DVR functionalities", and the judge denied the part 2 to be included, saying part 2 will have to be addressed after part 1 is resolved, that is actually pretty bad for Tivo because part 2 addresses both the damages during the stay and the continued sale and use of ALL DISH DVRs with the new software.

So to address anyting in addition to what had been already agreed on, the contempt hearing on the "disabling of the DVR functionalities" must first be resolved, which can mean a long wait time because even if DISH is in contempt they can still appeal, only after they fail on all appeals, then can the rest of the issues be addressed based on the contempt resolution.


----------



## jacmyoung

Herdfan said:


> They did not believe they infringed in the first place so them believing they are not in comtempt is not a stretch for them.
> 
> How has that been working out for them so far? My count is at least 0-4.


People keep saying since DISH has "lied" all this time why should one believe they did not lie about the new software this time.

Such statement is a total misunderstanding of the legal maneuvers. What DISH did in the past was "rigorous defense", through which they bought time, while they seriously worked on the new software, for over one year during the appeal.

Once they got the jury's verdicts they had to know it was almost certain they would not win on appeal, the only way around would be to eventually work out a new non-infringinge software.

I am not saying the new software will be non-infringing, it is yet determined, but the work was most certainly a serious one, because they knew they could only buy so much time, eventually they need a non-infringing product else they would be toast, sooner or later.


----------



## jacmyoung

There is a good reason why DISH believed they should file a new lawsuit on the new software infringement issue now, because the judge not only did not touch on it, but also stated anything at all must wait till the "disabling of the DVR functionalities" issue is resolved first, which can mean a long time with appeals, and DISH is hoping if the new suit can be moved along fast enough, hopefully when the time comes the new software will already have been determined non-infringing.

I agree though whether the State Court will take up that lawsuit or not is unknown, because they must first look at this case and find out if the new software has been addressed or is scheduled to be addressed.


----------



## jims

I don’t believe that Dish has lied but I do believe that they have consistently chosen the wrong venue for resolving these issues. I believe that given an order to disable the DVR functions, if they felt that modified software eliminated the need to do this, they should have obtained the courts permission before proceeding. That is why contempt is now a reality. I understand that they are trying to regain the field advantage by attempting to switch courts but where they might try and argue that damages cannot be assessed while the separate court hears their case, it will end up being doubtful at best and it is possible that the court will refuse to even hear their case. Delaware is known to be corporate friendly because they have no corporation tax and I have worked for F500 companies that registered in DE. That does not necessarily translate to a favorable ear on their dilemma. They are going to have a long road in gaining little ground using this strategy. I also think that though the Appeals court removed lawyer’s fees, they can always be embossed based on the court seeing shenanigans.


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## jims

If you want to look at how Deleware will feel about this case look at Dupont, because you can't say Delaware wo Dupont and you can't say Dupont wo Delaware/


----------



## jacmyoung

Oh well, still not much fireworks. Summer break is here for some anyway.


----------



## phrelin

I don't think the Delaware case has anything to do with the federal case in Dish's strategy. But we don't have enough info yet. Someone's going to have to get us a copy of the filing.

And the anticipated big turn off. Have you heard about the "non-listed" new 722_*s*_'s. The "722s" is the silver case 722 - same drive size as the 722, same non-infringing software, oh and they are all refurbished due to a manufacturing defect recently discovered in the 622/722 line, a different cooling fan was required.


----------



## Curtis52

phrelin said:


> I don't think the Delaware case has anything to do with the federal case in Dish's strategy. But we don't have enough info yet. Someone's going to have to get us a copy of the filing.


The suit was filed in a *federal* court in Delaware.


----------



## Greg Bimson

jacmyoung said:


> So to address anyting in addition to what had been already agreed on, the contempt hearing on the "disabling of the DVR functionalities" must first be resolved, which can mean a long wait time because even if DISH is in contempt they can still appeal, only after they fail on all appeals, then can the rest of the issues be addressed based on the contempt resolution.


I have some bad news for you on this. I have a feeling that the first contempt hearing will not be appealable.

If you are talking about the second one, that may be true. But think about it this way. If DISH/SATS does not cease sales of nor disable the infringing DVR's, waiting to schedule a contempt hearing on the new software will take time, while the fines if found guilty of contempt would rack up.


----------



## Richard King

jims said:


> If you want to look at how Deleware will feel about this case look at Dupont, because you can't say Delaware wo Dupont and you can't say Dupont wo Delaware/


A VERY large portion of the companies in the US are incorporated in Delaware. I suspect that Dish may be incorporated there as well, although I am too lazy to look it up. A case being tried in Delaware makes a lot more sense than in Texas (other than, of course, Tivo wanted a Texas jury in a Texas town who's economy relies on plaintiffs winning such cases).

Edit... Echostar is incorporated in Nevada, probably the second most common state of incorporation.


----------



## Richard King

Herdfan said:


> How has that been working out for them so far? My count is at least 0-4.


Do a search for the term Finisar


----------



## Kheldar

Richard King said:


> Edit... Echostar is incorporated in Nevada, probably the second most common state of incorporation.


That also could explain why Charlie is such a gambler. :sure:


----------



## Greg Bimson

phrelin said:


> I don't think the Delaware case has anything to do with the federal case in Dish's strategy. But we don't have enough info yet. Someone's going to have to get us a copy of the filing.


The case filed in Delaware yesterday must have something to do with the ongoing proceedings in East Texas. From the transcript of yesterday's status hearing with Judge Folsom, there was a motion for discovery relating to damages and possible infringement of the new software. That motion has been delayed.

Meanwhile, the suit DISH/SATS filed in Delaware is regarding the new software, the same software that is in the pending discovery motion.


phrelin said:


> And the anticipated big turn off. Have you heard about the "non-listed" new 722s's. The "722s" is the silver case 722 - same drive size as the 722, same non-infringing software, oh and they are all refurbished due to a manufacturing defect recently discovered in the 622/722 line, a different cooling fan was required.


Acutally, the 722 is not part of the "anticipated big turn off". The only receivers that must have DVR functionality disabled are the "Infringing Products", and the order does not force disabling others that are "colorably different".

I don't know about the same "non-infringing software", though. I don't think there has been a determination regarding the new software, yet.


----------



## spear61

The transcript refers to a Paice order several times but references are terse. Apparantly, one might call it a form of mandatory royalty payment without a license.

http://www.uhlawblog.com/tags/paice-llc/


----------



## Curtis52

spear61 said:


> The transcript refers to a Paice order several times but references are terse. Apparantly, one might call it a form of mandatory royalty payment without a license.
> 
> http://www.uhlawblog.com/tags/paice-llc/


Judge Folsom only referred to Paice as a guideline for setting up the scheduling order. Here is an excerpt from the scheduling order in the Paice case:


----------



## Herdfan

Curtis52 said:


> The suit was filed in a *federal* court in Delaware.


So will a Federal Court in DE be willing to hear a case in which the basis is already being tried in a TX court? Yes, the judge said he wasn't willing to discuss the new software yet, but he could at some point in time.

Also, was TiVo expecting such a strategy which is why they added the new software to their initial brief in an attept to preempt such a manuever?


----------



## Greg Bimson

Herdfan said:


> Also, was TiVo expecting such a strategy which is why they added the new software to their initial brief in an attept to preempt such a manuever?


Oh, it most definitely could have been a defensive maneuver. We would need to see the filed suit in the Delaware court to understand what DISH/SATS' motives are.


----------



## phrelin

Curtis52 said:


> The suit was filed in a *federal* court in Delaware.


What I meant was the existing case. What I find odd about the language in the Dish news release was this language: "The lawsuit is in response to Tivo's continued public statements that our new DVR software infringes." Does the new lawsuit structure a case around TiVo's public assertions in such a way that makes it a different _*type*_ of case than the typical patent case?



Greg Bimson said:


> Acutally, the 722 is not part of the "anticipated big turn off". The only receivers that must have DVR functionality disabled are the "Infringing Products", and the order does not force disabling others that are "colorably different".


When I was discussing the "new 722s model" as being the "new" silver model, what I was saying is that Dish is getting back a bunch of 622's because they have cooling problems (see multiple threads elsewhere). The 622 is silver and has a smaller drive than the black 722. So, take a returned 622, put in a larger drive and different fan, slap a new sticker on it calling it a 722_s_, and voila - an unlisted model.

My point being that it's dumb, dumb, dumb to shut off the boxes based on the model/serial sticker. The sticker, the shape and color of the case, the hard drive, etc. do not infringe. The old system/code infringed. No one in the legal system "knows" if the new system/code infringes. By choosing to enforce the jury's decision by relying upon the model number, the Judge would force the appellate judges to cope with an obvious dumbness, or they could simply refuse to hear the appeal which is more likely. Of course, dumbness frequently exists in law, so Dish is taking a gamble that it may have to replace boxes somewhat sooner than planned.

IIMHO that is the risk as Charlie sees it. He knows the company will have to pay some damages - retro license fees essentially. It's a number in the books. It might get bigger, but its still only a number in the millions, not billions. They also might have to accelerate the depreciation on leased boxes. But its still only a number in the millions, not billions. They might also have to deliver to customers like me a 722 or two 712s using what Charlie believe's is the non-infringing code/system, but they'll likely offer it as a lease or reduced price purchase, which is fair since my two owned 508's are old.

I don't know why TiVo didn't ask that the original order simply refer to all Echostar video recorders since all were using infringing code with a provision that Echostar could sell or lease new ones only after establishing to the satisfaction of the court that a new non-infringing code/system design was going to be used. As it stands, it's all just too messy.


----------



## Curtis52

phrelin said:


> But its still only a number in the millions, not billions. They might also have to deliver to customers like me a 722 or two 712s using what Charlie believe's is the non-infringing code/system, but they'll likely offer it as a lease or reduced price purchase, which is fair since my two owned 508's are old.


I don't think anyone would wait more than a couple of days before switching providers. The double whammy would come when Ergen changes out boxes to remaining customers (if any) only to have the court tell them that those DVRs infringe too.


----------



## James Long

Herdfan said:


> They will ACT based on their beliefs.
> 
> 
> 
> How has that been working out for them so far? My count is at least 0-4.
Click to expand...

It has been working fine. Thanks for asking. DISH has made over $3 billion dollars and added over 4 million subscribers since this case began. (That includes the set aside for paying Tivo for past infringement.)

DISH still offers DVR service and from all appearances will not be ending that any time soon. The next court date is months away ... I'm not sure where you got 0-4 from, but DISH is winning the war.



Herdfan said:


> So will a Federal Court in DE be willing to hear a case in which the basis is already being tried in a TX court? Yes, the judge said he wasn't willing to discuss the new software yet, but he could at some point in time.


The new software is not an issue in TX ... I'll have to dig for the filing to see what DISH is pushing in Delaware.


----------



## James Long

spear61 said:


> The transcript refers to a Paice order several times but references are terse. Apparantly, one might call it a form of mandatory royalty payment without a license.
> 
> http://www.uhlawblog.com/tags/paice-llc/


I was wondering what a Paice order was ... I figured it was something reasonable as both parties agreed to it.
10:01 ct/ damage issue;
10:01 McElhinny/ damage issue is very interesting;
10:01 ct/ discovery if any
10:02 McElhinny/ if mini-trial we would like discovery;
10:02 ct/ Paice order; would that arrangement be appropraite;
10:02 ptys agree that would be appropriate
. . .
10:13 ct/ will look at correspondence and give some guidance; damages same process, what time period are we talking about for discovery;
10:14 Chu/ 45 days or so;
10:14 ct/ look at Paice order for roadmap and do scheduling order; within 14 days; what else needs attention;​


----------



## spear61

James Long said:


> I was wondering what a Paice order was ... I figured it was something reasonable as both parties agreed to it.
> 10:01 ct/ damage issue;
> 10:01 McElhinny/ damage issue is very interesting;
> 10:01 ct/ discovery if any
> 10:02 McElhinny/ if mini-trial we would like discovery;
> 10:02 ct/ Paice order; would that arrangement be appropraite;
> 10:02 ptys agree that would be appropriate
> . . .
> 10:13 ct/ will look at correspondence and give some guidance; damages same process, what time period are we talking about for discovery;
> 10:14 Chu/ 45 days or so;
> 10:14 ct/ look at Paice order for roadmap and do scheduling order; within 14 days; what else needs attention;​


Whatever it is, Judge Folsum knows because he was the judge on the Paice case.

http://www.patentlyo.com/patent/2006/08/injunction_gran.html


----------



## spear61

the Paice order for reference

http://www.patentlyo.com/patent/Paice_20Denying_20INj_1.pdf


----------



## Herdfan

James Long said:


> I'm not sure where you got 0-4 from,


Distants trial: 0-1
Distants appeal: 0-2
TiVo trial: 0-3
TiVo appeal: 0-4

Yes they have won other cases during this time frame, but in these big cases when they have really dug in their heels and been stuborn as mules, they haven't done so well.

OTOH, when Charlie has dug in when it comes to paying for content, that has generally paid off for him.


----------



## Greg Bimson

phrelin said:


> My point being that it's dumb, dumb, dumb to shut off the boxes based on the model/serial sticker. The sticker, the shape and color of the case, the hard drive, etc. do not infringe. The old system/code infringed. No one in the legal system "knows" if the new system/code infringes. By choosing to enforce the jury's decision by relying upon the model number, the Judge would force the appellate judges to cope with an obvious dumbness, or they could simply refuse to hear the appeal which is more likely. Of course, dumbness frequently exists in law, so Dish is taking a gamble that it may have to replace boxes somewhat sooner than planned.


I don't think that the judge can simply order DISH/SATS to stop selling nor disable all DVR's until they are proven that they no longer infringe. The testimony given during the case is only for the models found to infringe. It is those models that are "Infringing Products" which were evaluated in the court, and which are subject to the injunction.

It becomes to onerous for DISH/SATS to prove every single DVR they make doesn't infringe before they can sell it. That is counter to almost every case law, which allows for a modified product to be sold without any legal interference, until the party with the injunction asks for a contempt hearing on it.


----------



## Curtis52

Herdfan said:


> Distants trial: 0-1
> Distants appeal: 0-2
> TiVo trial: 0-3
> TiVo appeal: 0-4


TiVo patent reexamination 0-5


----------



## jims

Richard King said:


> A VERY large portion of the companies in the US are incorporated in Delaware. I suspect that Dish may be incorporated there as well, although I am too lazy to look it up. A case being tried in Delaware makes a lot more sense than in Texas (other than, of course, Tivo wanted a Texas jury in a Texas town who's economy relies on plaintiffs winning such cases).
> 
> Edit... Echostar is incorporated in Nevada, probably the second most common state of incorporation.


Thanks for the update on where Echostar is incorporated.


----------



## phrelin

Greg Bimson said:


> I don't think that the judge can simply order DISH/SATS to stop selling nor disable all DVR's until they are proven that they no longer infringe. The testimony given during the case is only for the models found to infringe. It is those models that are "Infringing Products" which were evaluated in the court, and which are subject to the injunction.
> 
> It becomes to onerous for DISH/SATS to prove every single DVR they make doesn't infringe before they can sell it. That is counter to almost every case law, which allows for a modified product to be sold without any legal interference, until the party with the injunction asks for a contempt hearing on it.


At the time the models were listed, I believe they were all the DVR's Echostar offered so the language could have been general. "Leasing" per subscription raises some complexities relative to the value not relevant in other cases. I could be wrong.


----------



## James Long

Herdfan said:


> Distants trial: 0-1
> Distants appeal: 0-2
> TiVo trial: 0-3
> TiVo appeal: 0-4
> 
> Yes they have won other cases during this time frame, but in these big cases when they have really dug in their heels and been stuborn as mules, they haven't done so well.


OK, as long as we can see that it is a completely biased list of only DISH's losses regardless of if they are related to this case we know where you're coming from. Thanks for the clarification.


----------



## dave1234

What about dismissal of all hardware claims.

Tivo 0 Dish 1


----------



## nobody99

dave1234 said:


> What about dismissal of all hardware claims.
> 
> Tivo 0 Dish 1


What dismissal? They were remanded back.


----------



## dave1234

nobody99 said:


> What dismissal? They were remanded back.


Call it what you want(or what the courts call it as you correctly stated), debate it till the cow's come home. It's still Tivo 0 Dish 1 on that issue....


----------



## Herdfan

James Long said:


> OK, as long as we can see that it is a completely biased list of only DISH's losses regardless of if they are related to this case we know where you're coming from. Thanks for the clarification.


My point was on the recent major cases that have or might have a direct effect on its subscribers.



dave1234 said:


> What about dismissal of all hardware claims.
> 
> Tivo 0 Dish 1





nobody99 said:


> What dismissal? They were remanded back.






dave1234 said:


> Call it what you want(or what the courts call it as you correctly stated), debate it till the cow's come home. It's still Tivo 0 Dish 1 on that issue....


At worst its 0 - 0. It was a 40 yard game winning Field Goal that was disallowed because the coach of the defensive team snuck in a timeout just before the ball was snapped, so they line up and do it again. But TiVo knows they already made it once.


----------



## jacmyoung

Greg Bimson said:


> I have some bad news for you on this. I have a feeling that the first contempt hearing will not be appealable.
> 
> If you are talking about the second one, that may be true.  But think about it this way. If DISH/SATS does not cease sales of nor disable the infringing DVR's, waiting to schedule a contempt hearing on the new software will take time, while the fines if found guilty of contempt would rack up.


You know you have been trying to speak for the judge for so long, and this is a new high point, that you "feel" a contempt ruling is not appealable? Which case law did you researched that told you that?

Do you really think DISH is going to stop the DVRs on the list at this point?

Let me repeat it, and I know you and many of your Tivo exclusive club members will never agree, and will continue to ridicule this opinion, but let me just say that this opinion is not mine but the courts':

During a contempt hearing, the judge MUST look at the differences between the products under injunction, and the modified products. He can certainly look at the similarities, or the sameness all he wants, and say look they are the same in name and labels and look. Fine, he can say that.

But the law says he cannot ignore the differences between the two, if he does so his contempt ruling WILL be overturned. On this point it is black and white.

Again, you only care about the sameness, the same names, the same labels, the same looks, but if the judge knows what he is doing, after he looked at the sameness issue you insist he does, he will not forget about the need to look at the differences, because the law requires him to do so in the contempt hearing. The case law was clear, no matter what the injunction says, he can not skip the step on the difference issue.

""In proceedings for contempt for violation of an injunction against further infringement of a patent a court should *first* determine whether there is more than a colorable difference between the modified device and the enjoined device. In McCullough Tool Co. v. Well Surveys, Inc., 395 F.2d 230, 233 (10th Cir.) (citations omitted), cert. denied, 393 U.S. 925, 89 S.Ct. 257, 21 L.Ed.2d 261 (1968)"

The *"first"* is unconditional, there is no regard of what the injunction says. No matter what you believe, or what he believes DISH is in contempt of the language of his injunction, as long as he is in a contempt hearing, he must *first* determine the difference issue. No matter how strongly he feels about the sameness between the two, he must put such issue after that first issue. Yes as hard as it is to believe it, he can not first look at if the boxes are still the same boxes, hard to believe but true.

"The question is presented as to how a patentee should be allowed to proceed when following a successful infringement suit the infringer modifies the infringing structure and continues as before."

Again no conditions set as how the modification is done, as long as there is modification. Does not matter if the modification is done on the same box, or a different box.

"A difference more than colorable is one that gives rise to some fair ground for *doubt* that the modified product is within the scope of the injunction. American Foundry & Mfg. Co. v. Josam Mfg. Co., 79 F.2d 116, 118-19 (8th Cir.1935); 8 A. Deller, supra, at Sec. 736."

You agreed the DVRs operating using the new software gave rise to some fair ground for *doubt* that the modified product within the scope of the injunction did you? Because you said yes in a later time they might be found not infringing.

"The upper mirror support shelves and the angled housing for the convex mirror were visible at the contempt hearing. It is unclear from the record, however, whether the court compared these features with the corresponding features of the infringing assembly to determine whether they were more than colorably different. *The order merely finds Kobrin's entire modified assembly "substantially identical or similar" to the infringing assembly.* On remand, the court should enter findings on its comparison of these two differences as well."

Therefore, if the judge finds DISH in contempt merely because he finds the DVRs before and after are substantially identical or similar, or even the same, he can do that, just that he can not not look at the differences, if he does not his ruling will be overturned, and on remand, he will be asked to look at the differences again.


----------



## DustoMan

If this was posted earlier in the thread, I applogize. I only went back a couple pages. I thought it was an interesting quote from the Tivo CEO at the "All Things D" conference earlier this week:


> He noted that the company has a third business model, in addition to selling subscriptions and offering custom advertising. That's getting royalties from other DVR makers.
> 
> Rogers said that the company is close to getting injunctive and financial relief in its long-running case against Echostar and suggested that may help bring others to the table. Still, he said TiVo's first goal is to actually work with cable and satellite providers.
> 
> "We want commercial deals," he said. "We sue as a last result."


http://news.cnet.com/8301-13860_3-9954992-56.html?tag=blogFeed


----------



## jacmyoung

And what the Tivo fan club folks have been very clever in trying to get people to believe is:

The judge can write his injunction in such way that the law no longer applies to his contempt hearing, where it says the first thing in an contempt hearing is to look at the differences.

The Tivo people are saying no not this time, because the way the judge wrote the injunciton he is no longer required to follow the reqiured court procedure.

How does this sound to you?


----------



## phrelin

DustoMan said:


> If this was posted earlier in the thread, I applogize. I only went back a couple pages. I thought it was an interesting quote from the Tivo CEO at the "All Things D" conference earlier this week:
> 
> http://news.cnet.com/8301-13860_3-9954992-56.html?tag=blogFeed


The problem with Rogers is he's been with TiVo too long and forgotten what it was like to be part of the GE management team where nobody noticed until the numbers had 11 zeros. The article I referenced here quotes him as saying: "And we'll sue the heck out of Echostar -- and scare other copycats into coming around." The copycats are cable and satellite providers, most of whom are big corporations that will be scared alright. They'll run away from TiVo like its carrying the plague if he continues to talk like that, even if he had the only game in town. Of course, he wouldn't for long. The big corporations would be certain one or more of them would own TiVo, poison pills and all. It appears TiVo execs think like the really hot, clever, smart, creative Digital Research people in 1982. (I was working in Monterey County where they were located and watched them screw it up.) Here's an excerpt from Wikipedia:


> When the IBM Personal Computer was being developed, DR was asked to supply a version of CP/M written for the Intel 8086 microprocessor as the standard operating system for the PC, which used the code-compatible Intel 8088 chip. DR, which had the dominant OS system of the day, was uneasy about the agreement with IBM and refused, Microsoft seized this opportunity to supply the OS in addition to other software (e.g. Basic) for the new IBM PC.


There's an urban legend about the DR folks. IBM execs came calling, but the DR execs were away for the day. Anyone on this board use a DR operating system?

In other words, having the best tech and a dollar will buy you a cup of coffee - today. You probably won't have the dollar tomorrow if you act like you have the best tech and that your only problem is that the idiots who can make you billions don't understand. That's because you don't know who your real customers are. Incidentally, you are not a real customer of TiVo if your relationship is primarily defined as owning the box. TiVo's customers are Comcast, Time Warner, DirecTV, etc. If the box won't work with those systems, TiVo's out of luck. So let's threaten to scare them. Smart thinking. You can only act like that when you are one of them.


----------



## HobbyTalk

Rogers is a joke. We know how well he did at Primedia!


----------



## Greg Bimson

jacmyoung said:


> The judge can write his injunction in such way that the law no longer applies to his contempt hearing, where it says the first thing in an contempt hearing is to look at the differences.


And the more you keep saying this, the more everyone else here stops believing.


> In proceedings for contempt for violation of an injunction against further infringement of a patent a court should first determine whether there is more than a colorable difference between the modified device and the enjoined device. In McCullough Tool Co. v. Well Surveys, Inc., 395 F.2d 230, 233 (10th Cir.) (citations omitted), cert. denied, 393 U.S. 925, 89 S.Ct. 257, 21 L.Ed.2d 261 (1968)


This is not a contempt proceeding for violatioin of an injunction against further infringement. This is a contempt proceeding for refusal to comply with the disable and cease offering order.

If there is any doubt that I am wrong, let's take your scenario:

If Judge Folsom must address the "new, colorably different software" in his injunction, why did DISH/SATS also file suit in Delaware over this exact issue? You cannot have two lawsuits simultaneously running over the exact same problem.


----------



## Greg Bimson

jacmyoung said:


> The Tivo people are saying no not this time, because the way the judge wrote the injunciton he is no longer required to follow the reqiured court procedure.





> In proceedings for contempt for violation of an injunction against further infringement of a patent a court should first determine whether there is more than a colorable difference between the modified device and the enjoined device. In McCullough Tool Co. v. Well Surveys, Inc., 395 F.2d 230, 233 (10th Cir.) (citations omitted), cert. denied, 393 U.S. 925, 89 S.Ct. 257, 21 L.Ed.2d 261 (1968)


And what you've completely missed is that TiVo is not asking for contempt proceedings for violation of an injunction against further infringement of a patent, so this does not apply.


----------



## jacmyoung

Greg Bimson said:


> And the more you keep saying this, the more everyone else here stops believing.This is not a contempt proceeding for violatioin of an injunction against further infringement. This is a contempt proceeding for refusal to comply with the disable and cease offering order.
> 
> If there is any doubt that I am wrong, let's take your scenario:
> 
> If Judge Folsom must address the "new, colorably different software" in his injunction, why did DISH/SATS also file suit in Delaware over this exact issue? You cannot have two lawsuits simultaneously running over the exact same problem.


Precisely because the judge did not want to address the new software infringement issue in the 09/08 hearing, DISH decided to file for a lawsuit on the new software infringement.

No one can file any lawsuit on "colorable difference" issue, this issue is contempt specific, can not be in a lawsuit itself, only discussed in a contempt proceeding, and will be discussed in 09/08.

The question Tivo asked the judge to consider in the next hearing is whether DISH complied with his injunction by "disabling the DVR functionalities", and this has everything to do with determining if the infringer is further infringing or not, no different than any other contempt proceedings.

Now you and many Tivo people had underpants in a knot waiting for the big hammer to drop on 5/30, when DISH would be crushed, and the end for DISH would be around.

It did not happen, no fireworks, just a schedule to hear only one out of many many things Tivo asked the judge to hear.

So I will ask you again, stop quoting Tivo, stop assume Tivo is the law, that the judge will do whatever Tivo asks, or do whatever you wish him to do, because I got news for you, if you have not learned already, he did not do it for you and for Tivo.

So if you really want to continue, I suggest you try something different, how about base your opinions on the law, yes the law, not what Tivo wish you to believe, not what Tivo is telling you, not even what you believe what the judge must believe, but what is the law that governs the contempt proceedings.

Do your own research, find case laws that deal with this issue, show me in what situations where a judge did not have to look at the difference issue, for whatever the reasons. Because by now you should have realized the law, only the law, will be your salvation. If you can find one, and to demonstrate based on that law, it said the judge did not have to look at the difference issue, I will be the first to admit it.

I have spent the last several week doing my own research, not relying on anyone's opinions, not even relying on what DISH was saying, but relying on the case laws, and I have found many.

You have three months, I am sure if you only try that you can find as many prior cases to back you up, so do it!


----------



## spear61

Dish is _attempting_ to move to Delaware for one reason. They think they are losing in Texas (where the judge still has control on "infringement" old or new).


----------



## James Long

spear61 said:


> Dish is _attempting_ to move to Delaware for one reason. They think they are losing in Texas (where the judge still has control on "infringement" old or new).


Not exactly losing ... just not being heard (on the "new software doesn't infringe" issue).

We'll know more when we can see the Delaware filing.


----------



## HobbyTalk

spear61 said:


> Dish is _attempting_ to move to Delaware for one reason. They think they are losing in Texas (where the judge still has control on "infringement" old or new).


It would appear that the DE lawsuit is a defamation lawsuit where they say TiVo is defaming them by publishing lies about their new software. E* wants the DE courts to determine if the new software is infringing. I would suspect that E* will attempt to fast track this ruling. DE is more friendly then the East TX court system. If E* gets the ruling they want, it could be used in TX to prove the "new" software no longer infringes and they can continue to use the STBs.

What will be interesting is if TiVo will continue to publicly state E*s new software continues to infringe, thus possibly increasing punitive damages should E* prevail.


----------



## Greg Bimson

jacmyoung said:


> The question Tivo asked the judge to consider in the next hearing is whether DISH complied with his injunction by "disabling the DVR functionalities", and this has everything to do with determining if the infringer is further infringing or not, no different than any other contempt proceedings.


How does understanding whether or not "disabling the DVR functionalities" has anything to do with further infringement? It doesn't.


jacmyoung said:


> Now you and many Tivo people had underpants in a knot waiting for the big hammer to drop on 5/30, when DISH would be crushed, and the end for DISH would be around.
> 
> It did not happen, no fireworks, just a schedule to hear only one out of many many things Tivo asked the judge to hear.


The fireworks did happen, but you appear to have been asleep. TiVo was granted a hearing regarding the legal issue for ignoring the court's plain language order, the new software can be taken up later on a separate issue, and limited discovery was granted to determine additional damages. That ruling so upset DISH/SATS that they filed another suit in Delaware.

At this point I would ask you to stop trolling.


jacmyoung said:


> So if you really want to continue, I suggest you try something different, how about base your opinions on the law, yes the law, not what Tivo wish you to believe, not what Tivo is telling you, not even what you believe what the judge must believe, but what is the law that governs the contempt proceedings.


Again stop trolling.

My opinions are based on the law. Yours are based upon a complete misunderstanding of the case law, a misinterpretation of that case law and a complete misrepresentation of fact.


HobbyTalk said:


> It would appear that the DE lawsuit is a defamation lawsuit where they say TiVo is defaming them by publishing lies about their new software.


I don't believe TiVo has "publicly" stated the new software infringes, unless one is discussing what was stated in the legal briefs in the ongoing contempt phase of the current lawsuit.


> Today, DISH Network and EchoStar filed a lawsuit against Tivo asking a Delaware court to find that our new DVR software does not infringe Tivo's '389 patent.


DISH/SATS did not file a defamation suit. They filed a suit to have a declaratory ruling that the new software doesn't infringe.

How many more people here are going to take leaps of faith regarding bad interpretations?


----------



## nobody99

jacmyoung said:


> You are correct, we are not in a contempt proceeding, in fact when I read the above court opinions, my impression was there will be a good chance the judge wouldn't even grant Tivo's request for a contempt hearing if Tivo asks for one in that meeting, because DISH has clearly laid out the differences between the new software and the old, infringing one, and it should be clear to a reasonable person that the two are more than colorably different.
> 
> But the judge should most certainly grant Tivo's request on the new software infringement issue, and the request on the damage issues.


I'd just like to point out, for sake of reference, how laughably wrong you've been in this case. This post is from a week ago. According to you:

"A good chance the judge wouldn't even grant Tivo's request for a contempt hearing"

And

"The judge should most certainly grant TiVp's request on the new software infringement issue"

It couldn't have turned out more opposite of your prediction.


----------



## James Long

Greg Bimson said:


> The fireworks did happen, but you appear to have been asleep.


It wasn't much of a show ... just a few sparklers. Not even an M-80.

Tivo was told "if you're going to file a motion, file it". And a date in September was picked for the next hearing. Yep, three months more speculation on what will happen next time the parties get together. What a joy!

Especially knowing how polite it will be ... with all the name calling. 

Meanwhile DISH's DVRs remain working with no sign that fact will ever change ... regardless on all the dire predictions and claims. 



> I don't believe TiVo has "publicly" stated the new software infringes, unless one is discussing what was stated in the legal briefs in the ongoing contempt phase of the current lawsuit.


Not one interview? Are you sure?


> DISH/SATS did not file a defamation suit. They filed a suit to have a declaratory ruling that the new software doesn't infringe.


Oh, so you've read the suit filed in Delaware? Care to link to it or provide a copy? Or is this just more speculation based on the same short press release we've all read?


> How many more people here are going to take leaps of faith regarding bad interpretations?


Apparently one more ... although it seems to be the same small group of people who keep making leaps of faith over and over again. Some just seem to be leaping from a "Tivo wins all" point of view.


----------



## HobbyTalk

Greg Bimson said:


> I don't believe TiVo has "publicly" stated the new software infringes, unless one is discussing what was stated in the legal briefs in the ongoing contempt phase of the current lawsuit.


Of course the WSJ (and others) is wrong and you are right
http://online.wsj.com/article/SB121217967590233637.html?mod=hps_us_at_glance_technology
http://www.broadcastingcable.com/article/CA6565595.html
http://www.tvpredictions.com/dishtivo053008.htm

All types of damages could be claimed for such intentional misstatements. Why not, might as well try and get some of the $100+ mil. back


----------



## BNUMM

HobbyTalk said:


> Of course the WSJ (and others) is wrong and you are right
> http://online.wsj.com/article/SB121217967590233637.html?mod=hps_us_at_glance_technology
> http://www.broadcastingcable.com/article/CA6565595.html
> http://www.tvpredictions.com/dishtivo053008.htm
> 
> All types of damages could be claimed for such intentional misstatements. Why not, might as well try and get some of the $100+ mil. back


Did I miss something? I just read the above articles and did not find where Tivo said anything about the new software.


----------



## Greg Bimson

Greg Bimson said:


> I don't believe TiVo has "publicly" stated the new software infringes, unless one is discussing what was stated in the legal briefs in the ongoing contempt phase of the current lawsuit.





James Long said:


> Not one interview? Are you sure?


No one else seems to be.

The only place we've seen that TiVo believes the new software does not infringe is in court documents. If it were anywhere else, and it were also preceded by, "we believe", then it is still not defamation, libel nor slander.

And DISH/SATS themselves stated the action in Delaware is to prove their new software does not infringe. That is not a defamation, libel, nor slander case, either.


James Long said:


> Meanwhile DISH's DVRs remain working with no sign that fact will ever change ... regardless on all the dire predictions and claims.


I've pretty much agreed with that, except I question the cost to DISH/SATS if a contempt proceeding comes to full fruition for TiVo. Ignoring a contempt order to leave the DVR's functional will cost much more than a settlement.


----------



## Greg Bimson

BNUMM said:


> Did I miss something? I just read the above articles and did not find where Tivo said anything about the new software.


It is the standard in this thread. TiVo didn't declare anything in these linked articles. That somehow is misinterpreted to "TiVo said DISH/SATS new software still infringes".


----------



## jacmyoung

Greg Bimson said:


> How does understanding whether or not "disabling the DVR functionalities" has anything to do with further infringement? It doesn't.


If you really think that way, then you must also admit disabling the DVR functions is not to prevent further infringement, is this what you believe? If so then why prevent it? Why insist the modified DVRs not have the functions back again? You did not care to prevent it anyway. DISH did disable the DVR fucntions, during the new software download, so just let the new software do its dirty work, why bother? Maybe, just maybe, it is to prevent DISH from further infringement?



> At this point I would ask you to stop trolling.Again stop trolling.


Just because you say so does not make it so Greg, again I am asking you to quote one, just one case law in which the judge did not have to look at the difference in a contempt hearing regarding patent infringement, only the similarity. You say I did not understand my own case law, well then show me your case law so I can understand, because in absence of your case law, I don't think your opinion is any more so than any one of us.



> My opinions are based on the law.


I have yet seen one, point it out to me where that case law is.



> I don't believe TiVo has "publicly" stated the new software infringes, unless one is discussing what was stated in the legal briefs in the ongoing contempt phase of the current lawsuit.DISH/SATS did not file a defamation suit. They filed a suit to have a declaratory ruling that the new software doesn't infringe.
> 
> How many more people here are going to take leaps of faith regarding bad interpretations?


Speaking of bad information, there you have it, Tivo did indeed publicly state DISH's new software still infringed, Rogers said so immediately after DISH applied for the new patent, and again in his conference call, and again in this filing, which is part of public record. In fact he said they even had their own engineers and lawyers studied the new patent application and determined it was still infringing, that was some time ago. You have consistently demosntrate the lack of interest in finding real facts, whether be bothered to do even the littlest research to cite a case law, or be bothered to go back and read what Rogers had said publicly.



> Dish is attempting to move to Delaware for one reason. They think they are losing in Texas (where the judge still has control on "infringement" old or new).


Of course spear61 you can spin this one all you wish. Except it makes no sense, if DISH believed it is losing, they need to be quiet and try to contact Tivo for a settlement.

So let me do my spin on this one then, not that it is of more value, but just for fun since you started it.

If DISH gets this new lawsuit accepted, Tivo can no longer bring up this issue, nor can Judge Foslom. So when and if DISH is not found in contempt in 9/08, this old case is over.

Tivo of course can counter sue DISH in this new DISH lawsuit, and the whole thing can take a long time, and since DISH is the mover and plaintiff on this new suit, DISH is in control, DISH can decide at anytime during this suit what they want to do, if DISH sees themselves winning they can keep it to the end, if DISH sees they may lose, they can withdraw, and Tivo will have to file a new lawsuit after that, which will sart it all over. Of course I could be wrong on the legal detail, so someone let me know if I am wrong.

But it is just a spin, like yours spear61, no more no less.


----------



## jacmyoung

nobody99 said:


> I'd just like to point out, for sake of reference, how laughably wrong you've been in this case. This post is from a week ago. According to you:
> 
> "A good chance the judge wouldn't even grant Tivo's request for a contempt hearing"
> 
> And
> 
> "The judge should most certainly grant TiVp's request on the new software infringement issue"
> 
> It couldn't have turned out more opposite of your prediction.


If you think by attacking some of my mistakes in the past while taking them out of context, is going to help you, then how about I take one of yours within the context in response?

You said after 5/30 you will come back to gloat, not too long ago, remember? I was waiting for you to show up to gloat, but instead you quietly went behind my back, all the way back trying to find any dirt on me possible.

I am still waiting for your gloat.

As far as I know, my 625 is still working, and Tivo did not get one penny more than what DISH already put in the escrow. I am still waiting for your gloat.


----------



## HobbyTalk

Greg Bimson said:


> It is the standard in this thread. TiVo didn't declare anything in these linked articles. That somehow is misinterpreted to "TiVo said DISH/SATS new software still infringes".


I have no plans to do your research for you: Dish says in the filing that it updated its software nearly two years ago in response to TiVo's patent violation suit. It wants TiVo to stop making public statements that allege that the current software on Dish's DVRs are still in violation because it's "causing uncertainty in the marketplace for DVRs," according to the court filing.


----------



## spear61

jacmyoung said:


> Of course spear61 you can spin this one all you wish. Except it makes no sense, if DISH believed it is losing, they need to be quiet and try to contact Tivo for a settlement.
> 
> So let me do my spin on this one then, not that it is of more value, but just for fun since you started it.
> 
> If DISH gets this new lawsuit accepted, Tivo can no longer bring up this issue, nor can Judge Foslom. So when and if DISH is not found in contempt in 9/08, this old case is over.
> 
> Tivo of course can counter sue DISH in this new DISH lawsuit, and the whole thing can take a long time, and since DISH is the mover and plaintiff on this new suit, DISH is in control, DISH can decide at anytime during this suit what they want to do, if DISH sees themselves winning they can keep it to the end, if DISH sees they may lose, they can withdraw, and Tivo will have to file a new lawsuit after that, which will sart it all over. Of course I could be wrong on the legal detail, so someone let me know if I am wrong.
> 
> But it is just a spin, like yours spear61, no more no less.


Reviewing the filing which include numerous references to the new software by both parties, I just can't see why Dish would want to start something in another court unless they feel they are on the losing end of the stick.

On the other side, I thought it odd that TIVO did not ask for discovery for the shutdown injunction since, come Sept, the judge could easily say that Dish is in compliance based on Dish representations.


----------



## Greg Bimson

HobbyTalk said:


> It wants TiVo to stop making public statements that allege that the current software on Dish's DVRs are still in violation because it's "causing uncertainty in the marketplace for DVRs," according to the court filing.


According to what filing?


----------



## phrelin

> The essence of strategy is that you must set limits on what you're trying to accomplish.
> *Michael Porter*


Charlie's strategy is to continue to operate as he is. According to Rogers TiVo's strategy apparently is to bring Comcast, DirecTV, Time Warner, Cox, etc. to their knees.



> However beautiful the strategy, you should occasionally look at the results.
> *Winston Churchill*


 Except for a minor drain on cash, Charlie's lost nothing by not settling with TiVo. Can the same be said for TiVo?



> Strategy without tactics is the slowest route to victory. Tactics without strategy is the noise before defeat.
> *Sun Tzu*


I'm not sure how the Delaware tactic fits into Charlie's strategy. Or maybe it is noise as some here would have us believe.


----------



## HobbyTalk

Greg Bimson said:


> According to what filing?


Please do your own research.


----------



## nobody99

jacmyoung said:


> I am still waiting for your gloat.


I love this conversation, but I can't take your inability to carry on a reasoned, friendly converation any more. So for the sake of my sanity, I've put you on my ignore list.

So, jacmyoung, have a nice life. No need to respond.


----------



## Herdfan

phrelin said:


> Except for a minor drain on cash, Charlie's lost nothing by not settling with TiVo. Can the same be said for TiVo?


But he is playing with fire if he loses. Then it will be a MAJOR drain on cash.

OTOH, he could settle and license the tech for what would be a VERY MINOR drain on cash.


----------



## scooper

Really ? what's the worst that can happen ?

By Tivo's own business plan - they would be paying that license fee forever (or at least until the end of the patent). Might very well be cheaper to keep draining them with legal fees.... Tivo can't do this as long as Echostar can.


----------



## Greg Bimson

HobbyTalk said:


> Please do your own research.


Okay...


> DISH Network and EchoStar filed a lawsuit against Tivo asking a Delaware court to find that our new DVR software does not infringe Tivo's '389 patent.


That isn't defamation.

Of course this is DISH/SATS' words. They want the Delaware court to find that their new software does not infringe on TiVo's Time Warp patent, to stop, "causing uncertainty in the marketplace for DVRs".


----------



## Herdfan

scooper said:


> Really ? what's the worst that can happen ?
> 
> By Tivo's own business plan - they would be paying that license fee forever (or at least until the end of the patent). Might very well be cheaper to keep draining them with legal fees.... Tivo can't do this as long as Echostar can.


Well, the worst is that the judge actually forces DISH to shut off the DVR's. I think DISH actually shutting them off is unlikely, but it is a possibility. Otherwise they keep their DVR's on and pay large contempt fines.

And at some point, TiVo should get a chunk of DISH cash for previous infringement which should be enough to keep playing the game. TiVo's "life" is on the line here so they won't give up.


----------



## scooper

Herdfan said:


> Well, the worst is that the judge actually forces DISH to shut off the DVR's. I think DISH actually shutting them off is unlikely, but it is a possibility. Otherwise they keep their DVR's on and pay large contempt fines.
> 
> And at some point, TiVo should get a chunk of DISH cash for previous infringement which should be enough to keep playing the game. TiVo's "life" is on the line here so they won't give up.


Well - If I was Charlie - the amount Tivo would get would be spread out for as long as I can possibly arrainge - something like $1.00/year would be ideal. Something as close to that as I can get away with would be the goal.


----------



## Greg Bimson

scooper said:


> Well - If I was Charlie - the amount Tivo would get would be spread out for as long as I can possibly arrainge - something like $1.00/year would be ideal. Something as close to that as I can get away with would be the goal.


Sure, but now let's talk a form of reality...

DISH is currently in the hole in the neighborhood of $105M. That doesn't include any infringement or interest since September 2006. Unless the somehow slim chance of the Supreme Court reversing the guilty verdict on the software occurs, this number just goes up. Way up.

So let's put it in Charlie's terms...

He is playing second hand, with a straight flush draw possible against someone with aces full. There comes a point when you fold. If he is forced to call and loses (my prediction...) he will not be the lead man.


----------



## Greg Bimson

jacmyoung said:


> If you really think that way, then you must also admit disabling the DVR functions is not to prevent further infringement, is this what you believe? If so then why prevent it? Why insist the modified DVRs not have the functions back again? You did not care to prevent it anyway. DISH did disable the DVR fucntions, during the new software download, so just let the new software do its dirty work, why bother? Maybe, just maybe, it is to prevent DISH from further infringement?


Go back and read your four-part test for a reason to issue an injunction. Maybe, just maybe, you'll find that the injunction has less to do with ongoing infringement.


----------



## spear61

From Curtis52's Paice Order schedule and the transcript it looks like the first salvo from Tivo will be filed around mid June followed about three weeks later by Dish's first response.


----------



## jacmyoung

spear61 said:


> Reviewing the filing which include numerous references to the new software by both parties, I just can't see why Dish would want to start something in another court unless they feel they are on the losing end of the stick.


The only reason DISH was able to file a new lawsuit was because of the below. And I already gave my spin on why DISH did it in my above post.



> On the other side, I thought it odd that TIVO did not ask for discovery for the shutdown injunction since, come Sept, the judge could easily say that Dish is in compliance based on Dish representations.


Tivo did ask for it in the meeting, the second part of Tivo's contempt topic, the judge said no, let's conclude the part 1 before I will touch your part 2. Of course at that point Tivo did not even try to mention part 3.

The second part is about enhenced demages during the stay of the injunction and all DISH's DVRs not on the list, if the judge saw a slam dunk contempt, he would have easily granted Tivo's part 2 in the 09/08 meeting, because to find DISH in contempt for part 1, it will easily mean DISH's new software is no more than colorably different, then part 2 will go to Tivo too, no need to wait till part 1 is concluded.

The fact of matter is, the Tivo crowd have said for sometime that 5/30 is the day DISH will have to answer to the judge, and pay through the nose, and shut off the DVRs. Tivo had grabbed DISH by the nose.

It turned out the Judge only granted one of the many many Tivo's requests, and even refused to visit the enhanced damages during the stay of the injunction, until the resolution of the 09/08 contempt hearing, and as I have already said, to get to that conclusion, the quick way is DISH is not in contempt, it is done, or the long way, DISH will be in contempt, and the appeals will take much more time to conclude.

Either way, Tivo hardly got what they asked for in their filing, so I think if I were predicting Tivo's total victory on 5/30, I would have been a bit quiet by now.


----------



## jacmyoung

Greg Bimson said:


> Go back and read your four-part test for a reason to issue an injunction. Maybe, just maybe, you'll find that the injunction has less to do with ongoing infringement.


I will accept that point. And let's not forget DISH did disable the DVR functionalities of those Infringing Products, during the software download time, then the modified DVRs "continued as before."

Remember what the case law said? Whether the infringer is allowed to "modify the structure of the products and continue as before." This contempt case is not unlike any others, do not fancy it is totally different, and somehow deserves one and only kind of special treatment.

No judge can word his injunction to make him exempt from the specific procedure during a contempt proceeding as mandated by law, that mandate is the judge must *first*, not doing it as an after thought, but *first*, look at the defference between the DISH's DVRs on the list, prior to the modification, compared to those after the modification.


----------



## Greg Bimson

jacmyoung said:


> The only reason DISH was able to file a new lawsuit was because of the below. And I already gave my spin on why DISH did it in my above post.
> 
> 
> jacmyoung said:
> 
> 
> 
> On the other side, I thought it odd that TIVO did not ask for discovery for the shutdown injunction since, come Sept, the judge could easily say that Dish is in compliance based on Dish representations.
> 
> 
> 
> Tivo did ask for it in the meeting, the second part of Tivo's contempt topic, the judge said no, let's conclude the part 1 before I will touch your part 2. Of course at that point Tivo did not even try to mention part 3.
Click to expand...

TiVo only had two requests pending in front of the judge:


> To provide prompt resolution of these issues, TiVo requests:
> • A hearing at the earliest possible date to determine whether EchoStar should be held
> in contempt for its failure to disable the DVR functionality in the Infringing Products and for its placement of new infringing DVRs (and new EchoStar products that are only colorably different); and
> 
> • Permission to serve limited discovery to obtain additional information before determining the damages TiVo sustained during the stay of the injunction, and, if necessary, bringing a motion for an order to show cause why EchoStar is not in contempt for the continuing use of the Infringing Products, changed only by downloading modified, but still infringing, software (and new EchoStar products that are only colorably different).


During the status hearing it is those two requests that were being discussed:


> 9:53 ct/ discovery and time frame from plfs standpoint and then will hear from dft; 2 unresolved issues
> 9:54 Chu/ 1st issue if injunction has been violated;
> 9:55 ct/ what time period/ time frame and if discovery needed;
> 9:55 Chu/ responds; 2nd part of injunction question;
> 9:56 ct/ that need not be taken up until after ruling on initial issue re: injunction;


The first point, which is being addressed, is simply the hearing on contempt of court, for disobeying the injunction. The second point, which "need not be taken up until after ruling on initial issue" is the "new software".


jacmyoung said:


> It turned out the Judge only granted one of the many many Tivo's requests, and even refused to visit the enhanced damages during the stay of the injunction...


TiVo only had two requests. One was granted while the other was deferred. As a matter of fact, the "enhanced damages" is being addressed:


> 10:01 ct/ damage issue;
> 10:01 McElhinny/ damage issue is very interesting;
> 10:01 ct/ discovery if any
> 10:02 McElhinny/ if mini-trial we would like discovery;
> 10:02 ct/ Paice order; would that arrangement be appropraite;
> 10:02 ptys agree that would be appropriate
> 10:03 ct/ re: injunction and Mr. McElhinny feels you don't need to do this in two bites;
> 10:03 Chu/ responds;
> 10:03 ct/ file motion within 10 days; no more than 25 pages; brief in connection with motion no more than 20 pages; response how long with normal response time; reply not to exceed 10 pages; if sur-reply you will need leave of court; potential date to hear this; it will be August to September before we can set this;


----------



## Curtis52

jacmyoung said:


> It turned out the Judge only granted one of the many many Tivo's requests, and even refused to visit the enhanced damages during the stay of the injunction, until the resolution of the 09/08 contempt hearing


TiVo got exactly what they wanted in the damages issue.

Here is what TiVo wanted:



> The Federal Circuit's recent decision mAmado v. Microsoft Corp.,
> 517 F.3d 1353, 1361-62 (Fed. Cir. 2008), makes clear that damages for infringement taking
> place after the injunction should be at a royalty rate higher than what the jury found to be an
> appropriate pre-verdict reasonable royalty.





> To that end, TiVo asked EchoStar to provide certain information related to the
> assessment of damages during the stay period, e.g., the number of infringing units and
> financial information related to EchoStar's nationwide "Better Than TiVo" advertising
> campaign undertaken during the stay period to attract new customers at TiVo's expense.
> EchoStar refused to provide informally most of the damages information that TiVo has
> requested. Accordingly, TiVo requests permission for limited formal discovery relating to
> the damages issues. *Once TiVo has obtained the information from EchoStar, TiVo will
> promptly file a motion requesting those damages.*


TiVo was given discovery on damages:



> 10:01 ct/ damage issue;
> 10:01 McElhinny/ damage issue is very interesting;
> 10:01 ct/ discovery if any
> 10:02 McElhinny/ if mini-trial we would like discovery;
> 10:02 ct/ Paice order; would that arrangement be appropraite;
> 10:02 ptys agree that would be appropriate


----------



## Greg Bimson

jacmyoung said:


> On the other side, I thought it odd that TIVO did not ask for discovery for the shutdown injunction since, come Sept, the judge could easily say that Dish is in compliance based on Dish representations.


So let's talk about "discovery" for one moment. From LegalLad.com:


> Contempt of court refers generally to any willful disobedience to, or disregard of, a court order or any misconduct in the presence of a court or action that interferes with a judge's ability to administer justice or that insults the dignity of the court, and is punishable by fine or imprisonment or both. A judge who feels someone is improperly challenging or ignoring the court's authority has the power to declare the defiant person (called the contemnor) in contempt of court.


That is the definition of contempt of court.

For example, the court tells a reporter to produce the name of his source for an article, where the source's information is important to discern. If the reporter does not give up the name of the source, the court will find the reporter in contempt, and more than likely throw the reporter in jail until s/he complies with the order. That is disobeying the court's direct order, and it is contempt of court.

The permanent injunction issued by Judge Folsom in this case directs DISH/SATS to disable the DVR functions of "Infringing Products". It has not been done. There is no need to determine any colorable difference. The order is being ignored, as DISH/SATS has not shut down one "Infringing Product". Why would anyone need discovery on this issue?

That is one of three issues that will be brought up at the September contempt hearing. The second is the placement of any new DVR's, while the third is the enhanced damages issue.

The "new software" appears to be in a motion pending in front of Judge Folsom. According to the status hearing transcript, that motion was neither granted nor denied.


----------



## Curtis52

Greg Bimson said:


> The permanent injunction issued by Judge Folsom in this case directs DISH/SATS to disable the DVR functions of "Infringing Products". It has not been done. There is no need to determine any colorable difference. The order is being ignored, as DISH/SATS has not shut down one "Infringing Product". Why would anyone need discovery on this issue?
> 
> That is one of three issues that will be brought up at the September contempt hearing. The second is the placement of any new DVR's, while the third is the enhanced damages issue.


The only thing that will be in the contempt motion will be the refusal to disable the hard drives and stop sales of the Infringing Products.


----------



## jacmyoung

Give me one case law related to the contempt issue related to a patent infringement case, where the judge needed not look at the colorable difference issue, and slapped a contempt ruling on, then was upheld on appeal.

Don't try to use the "attack on injunction" Tivo used because DISH is not attacking the injunction, they said they are in compliance with the injunction, so it is he said she said, the only problem is you folks can not find a single prior case to support Tivo's saying that the judge needs not look at the difference issue here, and DISH can point out case after case to the contrary.

Because the DVR functionalities were disabled, and then the modified devices were turned back on and "continued as before."

Again don't insist your interpretation of the injunction as correct, and my interpretation is wrong, because if so you should have provided many prior cases to prove your logic, I have done mine, it is your turn to do your job, and as soon as you provide such cases, I will be more than happy to look at them.

Short of that, you are basically saying this case is so unique that it somehow need only to obey its own set of rules, without anything in the past to go by, and in fact is to the contrary to the rules mandated by prior case law.

You can of course choose to insist on the above, that will not convince me at all, but we can agree to disagree, but if you ever want to convince me, then the only way to do so will be to produce your case law, I only need one, not many like I discovered, just one, and I will be more than willing to look at that one very carefully, give it my full attention.

You know what? I was doing my part to help you to find that one case, I have yet find that one, while I kept finding the ones I linked or quoted before that supported my interpretation. Don't be lazy, start working, three months can go by fast if you just kick back do nothing.

Please keep one thing in mind, your eyes on that ball, that is the prior cases provided guidelines as far as what the judge must do *first* during a contempt proceeding in a case where the infringer modifies the structure of the products and continued as before. Such rule made no mentioning of just some of such contempt proceedings, but all of them. It did not say there may be exceptions, depending on what the judge say in his injunction.

If what a judge said in his injunction can get him out of such mandated rule, such must have happened before, many times too, so go find it.


----------



## bobcamp1

Greg Bimson said:


> TiVo only had two requests pending in front of the judgeuring the status hearing it is those two requests that were being discussed:The first point, which is being addressed, is simply the hearing on contempt of court, for disobeying the injunction. The second point, which "need not be taken up until after ruling on initial issue" is the "new software".TiVo only had two requests. One was granted while the other was deferred. As a matter of fact, the "enhanced damages" is being addressed:


New software wasn't directly addressed. That shouldn't be brought up until the contempt hearing, anyway.

First issue: the court must determine if Dish is violating the injunction. Only the judge (and his appellate court) can determine exactly what the judge meant (or means now) when he issued his own injunction and the main reasons behind it. Note that if the reasons were mainly hardware-based, they aren't valid anymore. If they were part of the damage award, then it doesn't matter what Dish does. You can't read too much into an injunction. They are written to be concise, as complicated ones have been thrown out on appeal.

Second issue: if they are found to be violating it, Tivo asked the court to serve limited discovery so they can determine what the damages are. Or, if the court determines that Dish is no longer violating it, a specific list of reasons why not (to better appeal the ruling).

The judge said, well, the second item must be determined AFTER the first. And everyone agreed, because nobody had a time machine.

Did Tivo get what they wanted out of this hearing? Sure. But it's not like they weren't going to get it. Even Dish didn't protest all that much. The wheels of justice are really really really really slow.


----------



## tsmacro

...that a moderator will have the decency to post a new thread with the details of what happened so we don't have to try to wade through the mess that this thread is just to try to figure out what's actually happening. When I mean something real I mean something like DVR's getting turned off, Charlie being hauled off to prison, Dish/Echostar paying money to TiVo to settle the issue, you know something actually happening rather than motions and posing going on in court followed by pages and pages of 4 or 5 people going on and on and on and on and on and on and on......about what they think it means. Anyway i'm not saying all of you shouldn't enjoy you're ongoing debate, just give us a seperate thread with the actual happenings when it does. Thanks.


----------



## Herdfan

tsmacro said:


> I mean something like DVR's getting turned off,


You won't need a thread as you probably wouldn't be able to get in due to server load.


----------



## jacmyoung

bobcamp1 said:


> ... Note that if the reasons were mainly hardware-based, they aren't valid anymore. If they were part of the damage award, then it doesn't matter what Dish does. You can't read too much into an injunction. They are written to be concise, as complicated ones have been thrown out on appeal. ...


You have just made it a complicated one, what was the judge's true intent of the "disabling the DVR functions"? Was it because the hardware infringed? Was it to prevent future software infringement? Or was it to punish DISH for the past?

What you are saying is it could be any one of the three above. Because he was not specific, therefore it is complicated.

So if #1, you said it no longer applies.

If #2 then my line of thinking prevails.

But what if he meant #3? Can he punish DISH by not allowing DISH to "modify the structure of the products and continue as before"? What is the answer on that?

Does he not have to go by the uniform rule governing a contempt proceeding in such patent infringement case? Can he say nope, I wanted to punish DISH, and because I wanted that, I can disallow DISH from modifying the structure of the DVRs on my list and continue as before, even though in every case in the past, the law said yes an infringer could do that, as long as the modifications made the products more than colorably different, compared to the ones on the injunction list. Because that was my intent, therefore such rule simply does not apply to my case.

Or do you think the judge rather just say I meant #1 or #2, so I don't have to answer to the tough question if I insist on #3?


----------



## Greg Bimson

jacmyoung said:


> Give me one case law related to the contempt issue related to a patent infringement case, where the judge needed not look at the colorable difference issue, and slapped a contempt ruling on, then was upheld on appeal.





jacmyoung said:


> Please keep one thing in mind, your eyes on that ball, that is the prior cases provided guidelines as far as what the judge must do *first* during a contempt proceeding in a case where the infringer modifies the structure of the products and continued as before.


Here's the problem...

In almost every case of patent infringement I can find, the infringer does stop sales of "the infringing device", and starts sales of a new one. In this case, the issue is sales of a product ruled to be infringing, then being able to change the product so it may no longer infringe. Case law here is hard to find.

The best case I can find is Brine v. STX, regarding a patent of a lacrosse stick head. STX was enjoined from selling the X2, which infringed on the Brine "Offset Head" patent. Later, "Brine filed a complaint alleging that STX had violated this injunction by continuing to sell a product that was "substantially the same" as the X2, named the X2+." It also was found to infringe, and was put under the injunction.

If DISH/SATS changed the software in the end user enabled 501's and made them "501A" models, then I believe there may have been a case for DISH/SATS to get out of this strict reading of "Infringing Products".

The problem here is that DISH/SATS will have to argue that the 501 of today is different from the 501 at the time of the infringement. And with that argument, a literal reading of the order says it wouldn't matter, so a disabling of the 501 is in order, new software or not. That is my position.


----------



## jacmyoung

Greg Bimson said:


> ...The best case I can find is Brine v. STX, regarding a patent of a lacrosse stick head. STX was enjoined from selling the X2, which infringed on the Brine "Offset Head" patent. Later, "Brine filed a complaint alleging that STX had violated this injunction by continuing to sell a product that was "substantially the same" as the X2, named the X2+." It also was found to infringe, and was put under the injunction.


I appreciate your effort, that case was one of the first few I found, and the judge did look at the difference first, and he found out the only difference was X2 and X2+ labels, everything else was the same. So he looked at this sole difference, and decided such difference was "only colorable", and rightfully so. He did not say though X2+ still infringed, he only found the infringer in contempt. The contempt proceeding was not to decide if X2+ still infringed, only if it was more than colorably different. Since the answer was a no, the infringer was in contempt, and after the infringer appealed, the appeals court upheld the ruling.



> If DISH/SATS changed the software in the end user enabled 501's and made them "501A" models, then I believe there may have been a case for DISH/SATS to get out of this strict reading of "Infringing Products".


If you realized what had just happened in the above case, the answer to your question would be a no. DISH by merely re-labeling the DVRs will not be able to escape from a contempt charge, because the difference will only be colorable, DISH must do more, which they did.



> The problem here is that DISH/SATS will have to argue that the 501 of today is different from the 501 at the time of the infringement. And with that argument, a literal reading of the order says it wouldn't matter, so a disabling of the 501 is in order, new software or not. That is my position.


Of course they are different, they use an entirely different software that intended to get around the patent. Are you seriously believing they are the same?


----------



## spear61

This situation is similar to a chapter 11 bankruptcy. Business goes bankrupt using Chapter 11. Goes to the Judge and says " Let management continue running the company during bankruptcy" Judge says "ok". Management says " Wow, this is a good deal. We continue to get paid and can continue running the company the way we want".

Only problem is, that's not the way it works. Once you get yourself working under a court order or during a legal dispute under the courts control, you suddenly find that the judge and others have a keen interest in what you are doing and want to be fully informed. Dish did not do that when they unilaterally changed out the software on the old boxes. Not a good idea and no paper trail in the courthouse to protect them.


----------



## Curtis52

Page One:









Page 4:


----------



## Greg Bimson

I've edited this slightly to make for an easier reading:


jacmyoung said:


> You have just made it a complicated one, what was the judge's true intent of the "disabling the DVR functions"?
> 1) Was it because the hardware infringed?
> 2) Was it to prevent future software infringement?
> 3) Or was it to punish DISH for the past?
> 
> What you are saying is it could be any one of the three above. Because he was not specific, therefore it is complicated.


But understand you are now attacking the injunction, by trying to change the reasoning why it was issued? The injunction is the injunction; it is in full force and effect.

Like I said above in my "change the model number upon software revision" scenario, if all of the "Infringing Products" model number and software were changed, TiVo would probably file the exact same contempt charge they are trying to get now. The difference in this scenario is that DISH/SATS can answer there aren't any 5XX or 625's in the field, because they've all been changed.

If changing the model numbers in the field is a ruse, then I don't know about it. This scenario could be wrong, but I am simply interpreting the injunction order literally.

Anyways, here was a release from Fish and Richardson P.C. detailing why Judge Folsom issued the injunction [edited to show the four parts for determining when a judge should issue a permanent injunction]:


> Applying the eBay factors, the Court concluded that a permanent injunction was warranted.
> 
> 1) The Court held TiVo established both irreparable harm and that its remedy at law was inadequate because Echostar competes directly with TiVo, leading to TiVo's loss of market share at a critical time in the development of the nascent DVR market-market share it will not have the same opportunity to recapture later.
> 
> 2) The Court found that TiVo is a relatively new company with only one primary product, and that loss of market share in this context would cause severe injury that could not be remedied by monetary damages.
> 
> 3)The Court found the balance of hardships weighed in favor of an injunction because the impact on TiVo of Echostar's infringement would be proportionately greater than the impact of an injunction on Echostar's business, the core of which was not DVR based.
> 
> 4) Finally, the Court found the public interest "would not be disserved by a permanent injunction" since the public has an interest in maintaining a strong patent system, and the infringing products are used for entertainment, not public health or a similar key interest.


When I read this, I believe the injunction was issued to remedy the past infringement.


----------



## Greg Bimson

From this post yesterday:


Greg Bimson said:


> DISH/SATS did not file a defamation suit. They filed a suit to have a declaratory ruling that the new software doesn't infringe.


Curtis52 just posted the first page from DISH/SATS filed suit in Delaware.

The suit is a "Complaint For Declaratory Relief".

No defamation. No libel. No slander.


----------



## Greg Bimson

jacmyoung, understand what you just wrote here...


Greg Bimson said:


> If DISH/SATS changed the software in the end user enabled 501's and made them "501A" models, then I believe there may have been a case for DISH/SATS to get out of this strict reading of "Infringing Products".
> 
> 
> jacmyoung said:
> 
> 
> 
> If you realized what had just happened in the above case, the answer to your question would be a no. DISH by merely re-labeling the DVRs will not be able to escape from a contempt charge, because the difference will only be colorable, DISH must do more, which they did.
Click to expand...

They would be more than "colorably different". A 501 would have been retired with the old software, while a 501A would have the new software.


Greg Bimson said:


> The problem here is that DISH/SATS will have to argue that the 501 of today is different from the 501 at the time of the infringement. And with that argument, a literal reading of the order says it wouldn't matter, so a disabling of the 501 is in order, new software or not. That is my position.
> 
> 
> jacmyoung said:
> 
> 
> 
> Of course they are different, they use an entirely different software that intended to get around the patent. Are you seriously believing they are the same?
Click to expand...

They are because they are still 501's, and as spear61 points out, there was no attempt to tell the courts they were trying to change the software to no longer infringe.

Right now, according to the courts, a 501 has to be disabled because it infringed. Until the courts evaluate the new software, the 501 is still "infringing", even with modified software.

The only challenge to the injunction right now is that the 501 has not been disabled. There is no need to evaluate the software on it; an answer is simply needed to the question whether or not it has been shut down.

DISH/SATS does have an avenue to get the injunction readdressed. DISH/SATS can file a modification to permanent injunction to ask for it to be revoked. However, it can only occur when they are in compliance with the injunction. That is, TiVo must not have any claims against DISH/SATS adherence to the injunction. I don't think that will ever happen.


----------



## Herdfan

jacmyoung said:


> But what if he meant #3? Can he punish DISH by not allowing DISH to "modify the structure of the products and continue as before"? What is the answer on that?
> 
> Does he not have to go by the uniform rule governing a contempt proceeding in such patent infringement case? Can he say nope, I wanted to punish DISH, and because I wanted that, I can disallow DISH from modifying the structure of the DVRs on my list and continue as before, even though in every case in the past, the law said yes an infringer could do that, as long as the modifications made the products more than colorably different, compared to the ones on the injunction list. Because that was my intent, therefore such rule simply does not apply to my case.


You bring up a good point on what the judge intended. What if his point* was to punish DISH for the past infringement*. Nothing says a court can't do this. But, unlike most patent infringement cases, there is an easy way to remove the infringing products from the market, ie disable the hard drives.

Nothing the judge has ordered has prevented DISH from replacing the infringing DVR's with new ones and DISH has that right as long as they are "colorably different" from the infringing ones. And that will be a hearing for a different day.

But the judge can effectively remove from the market all the products that were found to be infringing. This is a rare instance as in most cases, that would be unworkable. But here, each and every product can be accounted for and removed from service as punishment.

If this was in fact the judge's intent, then no amount of new software will change that. Replacement with new boxes will be the only remedy.


----------



## James Long

tsmacro said:


> ...that a moderator will have the decency to post a new thread with the details of what happened so we don't have to try to wade through the mess that this thread is just to try to figure out what's actually happening.


No problem.


----------



## James Long

Curtis52 said:


> Images


Thanks Curtis.

Here is the full PDF. (Another case to watch ...  ).


----------



## Herdfan

James Long said:


> Thanks Curtis.
> 
> Here is the full PDF. (Another case to watch ...  ).


I find it very interesting that DISH only refers to the New DVR's product, but makes no claims as to which model numbers it includes. I would guess this is because the TX court has not yet addressed the new models.

If DISH were smart, they would replace every old DVR with a new DVR (actual replacement, not software update) before September. Then they can tell the court they have removed the DVR's from service and the TX case is over after the judgements are calculated.

Then all new infringement issues would go through the DE court. DISH could then refurbish the old boxes and place them back in service as new DVR's.


----------



## phrelin

James Long said:


> Thanks Curtis.
> 
> Here is the full PDF. (Another case to watch ...  ).


Thanks guys.

It is surely a simple, straightforward filing.

Edit: meaning it is focused on the code/system not boxes.


----------



## James Long

Herdfan said:


> If DISH were smart, they would replace every old DVR with a new DVR (actual replacement, not software update) before September. Then they can tell the court they have removed the DVR's from service and the TX case is over after the judgements are calculated.


That would be very expensive and would go toward proving Tivo's point ... why would DISH replace the receivers that they claim are not infringing?

There is also the risk that the ViPs would be ruled "only colorably different" ... and after months and millions of dollars in swaps DISH would be in the same position as today.

It they happen to do a major swap out of receivers (such as an MPEG4 conversion) that gets the named "infringing receivers" out of service that would be a different reason to swap receivers. But swapping for this case? I don't see that happening.


----------



## kmill14

jacmyoung,

If you were to draw a comparison of this case to a criminal case, E* at this point in time has been found guilty of "name your crime", appealed it, and the appeal was denied. 

In a criminal case, E* would be in jail. In this case, jail is pay a fine and shut off your DVRs. 

In our court system, you are innocent until proven guilty, but one proven guilty, you are always guilty until you prove your innocence, or at least allowed to get your sentence shortened. 

E* is now trying to prove its innocence/repentance, but until it does, it is still guilty and must stay "in jail." This will be the logic the judge uses for the injunction. 

The infringing products are still infringing until they are proven to no longer be infringing. That means they must be shut off. 

Since E* decided not to bring up the new software prior to now, they get to spend a long time in court proving their validity, but still get to stay in jail in the meantime.


----------



## Herdfan

James Long said:


> There is also the risk that the ViPs would be ruled "only colorably different" ... and after months and millions of dollars in swaps DISH would be in the same position as today.


Then they would be in a whole new world of hurt.

But it seems the case of the ViP's will be in DE which should prove to be a friendlier venue.


----------



## jacmyoung

Herdfan said:


> You bring up a good point on what the judge intended. What if his point* was to punish DISH for the past infringement*. Nothing says a court can't do this. But, unlike most patent infringement cases, there is an easy way to remove the infringing products from the market, ie disable the hard drives.
> 
> Nothing the judge has ordered has prevented DISH from replacing the infringing DVR's with new ones and DISH has that right as long as they are "colorably different" from the infringing ones. And that will be a hearing for a different day.
> 
> But the judge can effectively remove from the market all the products that were found to be infringing. This is a rare instance as in most cases, that would be unworkable. But here, each and every product can be accounted for and removed from service as punishment.
> 
> If this was in fact the judge's intent, then no amount of new software will change that. Replacement with new boxes will be the only remedy.


You have a very good point there.

Yes in this case there is a very unique and easy way to remove the infringing products from the field, by simply downloading a software to disable them, so DISH decided not to argue on that anymore, but guess what because the method to disable is easy, so is the method to modify and replace the products.

Now the question becomes, can the judge insist DISH use such simple method to remove, yet not able to use the same simple method to modifiy and replace?

Show me where the judge said DISH may not use such simple method to modify and replace. Remember an injunction must be very specific.

Now many of you have already agreed, under normal circumstances, it is not easy to modify and replace the existing produtcs in the field. But let's for argument sake the judge said you know what this infringer did so much harm to the other guy, I am going to ask him to in fact disable all the products in the field, and the only way is to remove all infringing products in the field, the infringer is asked to mail a box to each and every one of the product owners with a return label, and have all products returned in 90 days. Now the infringer complied, did what the judge said, and after they "recalled" all products, they modified them, and then send them all back out again.

Now according to you it is acceptable. But do you realize the only difference here is simply the difficulty level of the two methods? Nothing more nothing less. In this case we have a much easier way to disable, to modify and to return to service.

If you are ok with the earlier method, with what justification may you be not ok with the latter?


----------



## kmill14

jacmyoung,

Again, who is to say this new software is no longer infringing? As far as Judge Folsom is concerned, there is nothing proven to say that E* is no longer infringing. They can have their trial, but in the meantime, they get to put their boxes in jail.


----------



## HobbyTalk

I would suspect that the DE case is to prove that and they hope that gets done before the injuction would be enforced.


----------



## Greg Bimson

jacmyoung said:


> But let's for argument sake the judge said you know what this infringer did so much harm to the other guy, I am going to ask him to in fact disable all the products in the field, and the only way is to remove all infringing products in the field, the infringer is asked to mail a box to each and every one of the product owners with a return label, and have all products returned in 90 days. Now the infringer complied, did what the judge said, and after they "recalled" all products, they modified them, and then send them all back out again.
> 
> Now according to you it is acceptable. But do you realize the only difference here is simply the difficulty level of the two methods? Nothing more nothing less. In this case we have a much easier way to disable, to modify and to return to service.


But that is not even close to what the court told DISH/SATS to do. So this entire scenario is hollow.


----------



## Greg Bimson

HobbyTalk said:


> I would suspect that the DE case is to prove that and they hope that gets done before the injuction would be enforced.


I am more inclined to believe that the case is filed in Delaware as a defensive maneuver. DISH/SATS wants to have a ruling on the new software completed before DISH/SATS could be found in contempt of the Texas injunction.

And I am even more inclined to believe that the case in Delaware will end up being relocated to the proceedings in Texas.


----------



## kmill14

HobbyTalk said:


> I would suspect that the DE case is to prove that and they hope that gets done before the injuction would be enforced.


They are requesting a jury trial. Even if the DE court accepted the case (which is debatable), it will be quite some time before there is any resolution to that particular trial. The injunction on the otherhand will most certainly be enforced on Sep. 4th.


----------



## dave1234

Apparently investors think the score comming out of the hearing was Dish 2 Tivo 0...

http://blogs.barrons.com/techtraderdaily/2008/06/02/tivo-shares-slide-as-dish-litigation-plot-thickens/


----------



## old7

HobbyTalk said:


> I would suspect that the DE case is to prove that and they hope that gets done before the injuction would be enforced.


Are you kidding, I doubt that discovery could even begin before September. There is no way a federal patent trial can take place between now and September.

I have serious doubts that Dish Network/Echostar can even convince a judge that DE is the correct venue considering all that has transpired in Texas.


----------



## phrelin

dave1234 said:


> Apparently investors think the score comming out of the hearing was Dish 2 Tivo 0...
> 
> http://blogs.barrons.com/techtraderdaily/2008/06/02/tivo-shares-slide-as-dish-litigation-plot-thickens/


And they even have comments on the article reflecting the discussion here if you aren't already bored.


----------



## Herdfan

jacmyoung said:


> If you are ok with the earlier method, with what justification may you be not ok with the latter?





kmill14 said:


> jacmyoung,
> 
> Again, who is to say this new software is no longer infringing? As far as Judge Folsom is concerned, there is nothing proven to say that E* is no longer infringing.





Greg Bimson said:


> And I am even more inclined to believe that the case in Delaware will end up being relocated to the proceedings in Texas.


I guess the issue is that DISH did not comply with the letter of the shutdown order. They may have in spirit, but since they have not shut them off, they are not incompliance.

And like kmill points out, the judge has not said the new software is OK, nor does it seem DISH wants him to touch the new software since they want that issue tried in DE.

So DISH is kind of between Scylla and Charybdis. If they want the TX court to recognize the new software, then they probably can't have the DE court rule on its infringement. So what do they do next.

I think the DE filing was more of a way of strengthing their negotiation status instead of really being a defensive ploy.


----------



## old7

Herdfan said:


> I think the DE filing was more of a way of strengthing their negotiation status instead of really being a defensive ploy.


The DE filing was nothing but a smokescreen for the public.


----------



## Herdfan

dave1234 said:


> Apparently investors think the score comming out of the hearing was Dish 2 Tivo 0...
> 
> http://blogs.barrons.com/techtraderdaily/2008/06/02/tivo-shares-slide-as-dish-litigation-plot-thickens/





phrelin said:


> And they even have comments on the article reflecting the discussion here if you aren't already bored.


Does Philip Swan write investor blogs too? :lol:

* For those who didn't get the joke, Philip Swan writes a blog called TV Predictions. His "news" is usually based on something he read on DBSTalk.


----------



## jacmyoung

old7 said:


> The DE filing was nothing but a smokescreen for the public.


That I agree for the most part, only that if DE accepts it, DISH will be in driver's seat, it was worth the try.


----------



## phrelin

James Long said:


> That would be very expensive and would go toward proving Tivo's point ... why would DISH replace the receivers that they claim are not infringing?
> 
> There is also the risk that the ViPs would be ruled "only colorably different" ... and after months and millions of dollars in swaps DISH would be in the same position as today.
> 
> It they happen to do a major swap out of receivers (such as an MPEG4 conversion) that gets the named "infringing receivers" out of service that would be a different reason to swap receivers. But swapping for this case? I don't see that happening.


I don't either, darnit. But it appears from this post on another thread that the MPEG4 replacement program is maybe under way.


----------



## James Long

Herdfan said:


> But it seems the case of the ViP's will be in DE which should prove to be a friendlier venue.


The case in DE is not ViP restricted. DISH is talking about the new software they put on nearly ALL of their receivers.



Greg Bimson said:


> I am more inclined to believe that the case is filed in Delaware as a defensive maneuver. DISH/SATS wants to have a ruling on the new software completed before DISH/SATS could be found in contempt of the Texas injunction.


DISH requested a jury trial ... not likely to be done soon.


----------



## jacmyoung

kmill14 said:


> jacmyoung,
> 
> Again, who is to say this new software is no longer infringing? As far as Judge Folsom is concerned, there is nothing proven to say that E* is no longer infringing. They can have their trial, but in the meantime, they get to put their boxes in jail.


Looks to me you just joined the debate. We are in a contempt proceeding, or at least in such mode right now, and by law, whether the new software is still infringing or not can not be discussed in this phase, and the judge can not even consider it. The only thing matters right now for the judge is if the new software is more than colorably different or not, compared to the old one. That is it, no more no less.

And I just read that blog, it seems the analyst agreed with me on both issues. Now I have said more than once analysts are not judges nor lawyers, we must take their words with grain of salt.

I am not saying what they said gave me any more confidence, only that now I am not the only one who is saying it.

I have always been confident if you have not noticed that, and I have been willing to admit when I was proven wrong. If anyone finds a case law to prove an opposite point of view, I am more than happy to look into it.


----------



## jacmyoung

phrelin said:


> I don't either, darnit. But it appears from this post on another thread that the MPEG4 replacement program is maybe under way.


DISH needs to do that for an entirely different reason, to reclaim bandwidth so more services can be piled on, like new HDs, mobile services, even internet, who knows what more is going to pop up in the future that requires more BW? Every provider is faced with the same issue now.


----------



## kmill14

jacmyoung said:


> We are in a contempt proceeding, or at least in such mode right now, and by law, whether the new software is still infringing or not can not be discussed in this phase, and the judge can not even consider it.
> 
> The only thing matters right now for the judge is if the new software is more than colorably different or not, compared to the old one. That is it, no more no less.


Help me understand your statement above...if the judge is concerned about whether the new software is colorably different or not, is that not the same as determining if it infringes or not ? If it is ONLY colorably different, then it is still assumed to infringe on TiVo's patent. If it is more than colorably different, then it is assumed to no longer infringe on TiVo's patent. Am I getting this wrong?


----------



## scooper

You got it correct.


----------



## Greg Bimson

Something tells me here comes logic based on a Mobius strip.


----------



## old7

jacmyoung said:


> Yes in this case there is a very unique and easy way to remove the infringing products from the field, by simply downloading a software to disable them, so DISH decided not to argue on that anymore, but guess what because the method to disable is easy, so is the method to modify and replace the products.
> 
> Now the question becomes, can the judge insist DISH use such simple method to remove, yet not able to use the same simple method to modifiy and replace?
> 
> Show me where the judge said DISH may not use such simple method to modify and replace. Remember an injunction must be very specific.


Yes, the injunction is very specific, within 30 days disable the DVR functionality. Please show me where in the injunction there is any other option, but to "disable all storage to and playback from a hard disk drive of television data."



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


----------



## phrelin

"Infringing Products" is the critical terminology in the order. If my 508's are an "infringing product" no matter what system/code is being run, then the case-motherboard-processor-otherhardware is infringing. If they install new system/software and put a new sticker on them and call them 5080's are they an "infringing product." If they come out with a new model using the old system/software, it isn't listed among the "infringing products" so it's not an "infringing product"?

In other words, the "infringing product" is the system/software or it isn't, in which case the whole thing is so screwed up....


----------



## dgordo

kmill14 said:


> Help me understand your statement above...if the judge is concerned about whether the new software is colorably different or not, is that not the same as determining if it infringes or not ? If it is ONLY colorably different, then it is still assumed to infringe on TiVo's patent. If it is more than colorably different, then it is assumed to no longer infringe on TiVo's patent. Am I getting this wrong?


If it is only colorably different in infringes but it can be more than colorably different and still infringe under other standards.


----------



## jacmyoung

phrelin said:


> ...In other words, the "infringing product" is the system/software or it isn't, in which case the whole thing is so screwed up....


It is so only if we want to try to screw it up. A much simplified way to look at it is the "Infrgining Products" (in capital letters) were put in the injunction in serveral places to mean one thing, that those DVRs on the list were infringing at the time this injunction was written, both in hardware and in software. And the judge did say "even if" some of the verdicts might be reversed on appeal, the rest would still stand therefore the injunction would still stand.

He was right, the appeals court reversed the hardware verdict, affirmed the software verdicts, and the injunction was also affirmed because the reversal of the hardware claims did not invalidate the injunction at all, the DVRs on the list were till "Infringing Products" at the time, no longer in both hardware and software, but still in software, and that was sufficient to lift the stay of the injunction.

But right before the injunction was in full force, DISH installed the new software in the DVRs. The DVRs on the list were modified products at that point, compared to the Infringing Products defined in the injunction. I know some of you insist DISH DVRs were never disabled, but I already provided my explanation why those DVRs were actually indeed "disabled", during the new software download, the DVRs were totally disabled, for a few minutes, then after the new softeware was fully downloaded, and after the modified DVRs rebooted, they "continued as before."

The law has always said the infringer is allowed to modify the products and continue as before, as long as the workaround is legitimate, and the differences it made are more than colorable, the infgringer may not be in contempt. A new "independent" proceeding must be arranged (a new trial most likely) to determine if the new devices are still infringing or not, if Tivo request such new proceeding.

dgordo already touched on the question kmill14 asked about the "more than colorable difference" and whether the new software still infringe or not. To find the difference more than colorable does not mean it no longer infringes, it may still be found to infringe later, but as long as the difference is more than colorable, the infringer can not be in contempt, even if it is found to still infringe later. The determination of whether the new devices are still infringing or not can not be done in a contempt proceeding, a new independent trial must be arranged to decide on that.


----------



## Greg Bimson

jacmyoung said:


> DISH installed the new software in the DVRs. The DVRs on the list were modified products at that point, compared to the Infringing Products defined in the injunction.


The point here is although you and I have had disagreements over this, it is the point I am trying to drill home:

Although these products have new software and therefore have been modified, they are still "Infringing Products". Those products may or may not be infringing any longer, but they most definitely are still "Infringing Products".


jacmyoung said:


> The determination of whether the new devices are still infringing or not can not be done in a contempt proceeding, a new independent trial must be arranged to decide on that.


That is incorrect. It would be correct if said device is more than colorably different.

But "more than colorably different" brings up an important point. Just because the software is different doesn't mean it is more than colorably different. More than colorably different generally means having a slightly different use than the infringing product. There was a company that had been found to infringe on a patent relating to a screw used to reconstruct skull fragments for surgery. There was also a long version of the screw, which had a different function than the smaller screw. It was found that the long screw was not subject to the injunction because it was more than colorably different, as it had a slightly different use. However, it was also later found to infringe in a separate proceeding.

This software on DISH/SATS' DVR's only does one thing: enable simultaneous recording and playback of programs on a hard disk drive. I doubt there is a colorable difference between the old and new software. There is definitely a difference, but I doubt that it is more than colorable.

But it also may be different enough to get around claims 31 and 61 of the Time Warp patent. I just don't know.


----------



## scooper

Which Echostar has filed in Delaware...


----------



## HobbyTalk

(“Supreme Court does not countenance overly broad injunctions due to the
threat of costly contempt proceedings for acts unrelated to those originally judged unlawful.”)
Furthermore, Rule 65(d) “requires an injunction to prohibit only those acts sought to be restrained,” namely, “infringement of the patent by the devices adjudged to infringe and infringement by devices no more than colorably different therefrom.” International Rectifier, 383 F.3d at 1317. 

In other words, “an injunction cannot impose unnecessary restraints on lawful
activity.” Riles v. Shell Exploration & Prod. Co., 298 F.3d 1302, 1311 (Fed. Cir. 2002).

The Federal Circuit explained the “no more than colorably different” standard in KSM Fastening Sys., Inc. v. H.A. Jones Co., 776 F.2d 1522 (Fed. Cir. 1985). Specifically, Where the alteration in the device is “merely colorable” and obviously was made for the purpose of evading the decree without essential change in the nature of the device, the courts will try the question of infringement by the new device in proceedings for contempt for violation of the injunction. 

But where infringement by the new device is not clear on the face of the matter, and there are substantial issues for the determination of the court, the plaintiff may not have them determined in contempt proceedings, but must bring a supplemental bill for an injunction covering the new device, or institute a wholly new suit for such an injunction.

Id. at 1531 (citations omitted). Based on this standard, an infringer who has made a good-faith effort to modify an infringing device should not be punished by contempt charges resulting from a permanent injunction on other, non-adjudged devices. Arbek Mfg., Inc. v. Moazzam, 55 F.3d

Instead, “the modifying party generally deserves the opportunity to litigate the infringement question at a new trial, ‘particularly if expert and other testimony subject to cross-examination would be helpful or necessary.’” Arbek Mfg., 55 F.3d at 1570 (quoting KSM Fastening, 776 F.2d at 1531).


----------



## spear61

One can't forget that if the words in an injunction is not crystal clear, the benefit of the doubt goes to the defendent. Dish at a minimum might get off the comtempt issue by arguing that a reasonable reading was that "shuting down the the infringing software" was a valid reading of the intent.


----------



## old7

spear61 said:


> One can't forget that if the words in an injunction is not crystal clear, the benefit of the doubt goes to the defendent. Dish at a minimum might get off the comtempt issue by arguing that a reasonable reading was that "shuting down the the infringing software" was a valid reading of the intent.


But they will be arguing that in front of the judge that wrote the injunction. I'm very certain that the judge will know precisely what he meant. :lol:


----------



## phrelin

old7 said:


> But they will be arguing that in front of the judge that wrote the injunction. I'm very certain that the judge will know precisely what he meant. :lol:


That's what will be interesting, We'll finally *know* what he meant at the time he wrote it and what he means now in substantially changed circumstances. He could say changed circumstances don't matter, shut things off. He could say things have changed, Charlie you're in contempt leave a checks for $500 million made out to TiVo and $500 million made out to the court at the door on your way out and we'll set a new hearing on the new software.


----------



## jacmyoung

Greg Bimson said:


> The point here is although you and I have had disagreements over this, it is the point I am trying to drill home:
> 
> Although these products have new software and therefore have been modified, they are still "Infringing Products". Those products may or may not be infringing any longer, but they most definitely are still "Infringing Products".


As much as you want to drill home your idea, I have drilled home mine, which is different than yours.



> That is incorrect. It would be correct if said device is more than colorably different.


Don't bark on things we agree on, I only neglected to say if the new software is found mere colorably different, yes DISH will be in contempt, it will be over for DISH. I said it many times, I did not think to repeat it over and over.



> But "more than colorably different" brings up an important point. Just because the software is different doesn't mean it is more than colorably different. More than colorably different generally means having a slightly different use than the infringing product. There was a company that had been found to infringe on a patent relating to a screw used to reconstruct skull fragments for surgery. There was also a long version of the screw, which had a different function than the smaller screw. It was found that the long screw was not subject to the injunction because it was more than colorably different, as it had a slightly different use. However, it was also later found to infringe in a separate proceeding.


Yes but the use of the screw did not amount to contempt, only after another trial when the screw was found to still infringe, the infringer was found to infringe, but the infringer was not in contempt on the prior injunction.

I never said DISH's new software will not be found to infringe, no one knows, it will take a trial to found out.



> This software on DISH/SATS' DVR's only does one thing: enable simultaneous recording and playback of programs on a hard disk drive. I doubt there is a colorable difference between the old and new software. There is definitely a difference, but I doubt that it is more than colorable.
> 
> But it also may be different enough to get around claims 31 and 61 of the Time Warp patent. I just don't know.


If you read the case law DISH just cited to become available two weeks ago, it is very easy to say two are more than colorably different. And if you know how computer codes are made, like I do, it is almost certain the two software codes are MORE THAN colorably different. The new software may still infringe, but it almost is certain it is more than colorably different.


----------



## jacmyoung

phrelin said:


> That's what will be interesting, We'll finally *know* what he meant at the time he wrote it and what he means now in substantially changed circumstances. He could say changed circumstances don't matter, shut things off. He could say things have changed, Charlie you're in contempt leave a checks for $500 million made out to TiVo and $500 million made out to the court at the door on your way out and we'll set a new hearing on the new software.


And if he says that, DISH will appeal, and the appeals court can overturn the ruling.

While we do not know precisely what the judge meant, we did come up with three answers, and if the judge meant #1 and #2, DISH will not be in contempt. If he meant #3, he can find DISH in contempt, but as I said at the same time he must explain a lot of tough questions because doing #3 will be historical, uncharted water, and no prior cases for support. In fact DISH during appeal will be able to cite case after case in contrary to #3 decision, I am not a lawyer, I already found more than 5 prior cases to go against #3 route.

Have you ever read a judge's opinion/ruling in which he/she did not cite prior cases?


----------



## jacmyoung

spear61 said:


> One can't forget that if the words in an injunction is not crystal clear, the benefit of the doubt goes to the defendent. Dish at a minimum might get off the comtempt issue by arguing that a reasonable reading was that "shuting down the the infringing software" was a valid reading of the intent.


Not only that, what DISH did was well within what the law allows, and a path many past cases had followed.

Basically what some of the folks were trying to say is that somehow Judge Folsom will grant their wish to go against all past cases, including anything he himself did, just so he could punish DISH, because those folks want to punish DISH badly.

I happen to give Judge Folsom more credit than that.


----------



## BobaBird

In the DE suit, Dish says they "began deployment of their new DVR products to customers in the field on Oct 24, 2006." For that date, I find L411 for the 522 was released. No mention of changed DVR functionality (not unusual for Dish to omit changes and even promised features from their release notes), but users report problems with the picture freezing after Skip, FF or Rew.


----------



## Herdfan

scooper said:


> Which Echostar has filed in Delaware...


All of them I believe. There were at least 4 companies named as plaintiffs.



spear61 said:


> One can't forget that if the words in an injunction is not crystal clear, the benefit of the doubt goes to the defendent. Dish at a minimum might get off the comtempt issue by arguing that a reasonable reading was that "shuting down the the infringing software" was a valid reading of the intent.


DISH may in fact get around being in contempt by having loaded the new software, but still have to shut them off. Just no contempt fines.


----------



## jacmyoung

BobaBird said:


> In the DE suit, Dish says they "began deployment of their new DVR products to customers in the field on Oct 24, 2006." For that date, I find L411 for the 522 was released. No mention of changed DVR functionality (not unusual for Dish to omit changes and even promised features from their release notes), but users report problems with the picture freezing after Skip, FF or Rew.


This is the evidence James cited many times to support DISH's claim of the new software download. But officially in this lawsuit filing, DISH said the "non-infringing software" was downloaded right before the injunction went in full force, which was right before 4/16/08?.

Another thing people tried to point out was DISH's new software must be still infringing because it still does simultaneous record and playback. What they failed to realize that Tivo does not hold a patent on simultaneous record and playback, or pause, skip back and forward, or most of the trick plays, only the methods in which the above functions are achieved.

Because the law is also very clear, a patented art must not be obvious to a person of ordinary skills. The above functions are obvious to anyone two years old and above, in fact more so at the 2 to 5 years old level than any of us. It is called a VCR. Though I agree the two-year-olds now are showing more edge when it comes to modern electronics compared to the old VCRs.

The point is, only the methods that are not obvious to a person of ordinary skills may be patented and be infringed on. Which is why if anyone cared to read the appeals court opinions, they went into painstaking detail to evaluate each word described in the patent, to determine if the infrginement was true or not.

DISH screwed it up by copying Tivo's methods for the most part, in their old software, they got caught, and was find infringing, rightfully so, and was ordered to pay damages and to follow the injunction. DISH mounted a "rigorous defense" right after the jury verdict, to buy time, in order to seriously work on a "workaround" of the Tivo patent. It took nearly as long as it took the appeals to go through, to develop a new software they believed was no longer infringing.

DISH deserves to pay Tivo all necessary and reasonable damages, including those during the stay of the injunction. DISH also may have to pay later if their new software is again found to infringe in the future. But DISH's effort to modify its software amounts to a legitimate effort to seek a workaround of the patent, and is permitted by the law. Therefore DISH should not be found in contempt.

The reason the law is designed such is understandable, because while the law aims to respect and enforce our patent system, it also wishes not to restrict innovation and advances by not allowing people to make legitimate effort to come up with their own.


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## Greg Bimson

jacmyoung said:


> Basically what some of the folks were trying to say is that somehow Judge Folsom will grant their wish to go against all past cases, including anything he himself did, just so he could punish DISH, because those folks want to punish DISH badly.


Contempt:

Judge: Mr. Reporter, I ordered you to produce the name of your source. This is your last chance. What is the name of your source?
Reporter: I will not divulge.
Judge: Since you have ignored the direct order of this court, you are now in contempt, and will sit in the court lockup until you follow this order.

Judge: DISH/SATS, I ordered you to disable the DVR's named as "Infringing Products". This is your last chance. Will you disable the "Infringing Products"?
DISH/SATS: I will not.
Judge: Since you have ignored the direct order of this court, you are now in contempt, and will be paying fines...

If one ignores the above scenarios, one simply is making a one-sided argument. This is the classic definition of contempt. And the subject being addressed at the contempt hearing on 4 September is the belief that DISH/SATS is ignoring the court order, not a "colorable difference issue" on the new software.


----------



## Herdfan

Greg Bimson said:


> Judge: DISH/SATS, I ordered you to disable the DVR's named as "Infringing Products". This is your last chance. Will you disable the "Infringing Products"?
> DISH/SATS: I will not.
> Judge: Since you have ignored the direct order of this court, you are now in contempt, and will be paying fines...


Greg,

I agree with 90+% of your posts, but I do think DISH can get by without being held in contempt as of the date of the September hearing. The judge could find they made a good-faith attempt to modify the software and let them by on the contempt charges. At that point he can say, yes you tried, but I'm not buying it, so you will be in contempt from this date forward unless you shut them off.


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## Curtis52

Herdfan said:


> Greg,
> 
> I agree with 90+% of your posts, but I do think DISH can get by without being held in contempt as of the date of the September hearing. The judge could find they made a good-faith attempt to modify the software and let them by on the contempt charges. At that point he can say, yes you tried, but I'm not buying it, so you will be in contempt from this date forward unless you shut them off.


Dish stated after the trial that they could disable the hard drives. For them to do anything less is not a good faith effort to modify the software.


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## kmill14

jacmyoung,

I still don't understand your argument. You think because E* installed new software, and claims that it does not infringe, that *the Judge should take them at their word* until it can be proven they they don't in fact infringe with the new software?

You mentioned previously that the judge would rule on whether the new software is colorably or more than colorably different, but not on whether it infringes or not. I still can't see how if can be more than colorably different and yet infringe, or be less than colorably different and not infringe.

Your posts are too frequent and long-winded to sift through in short periods of time, so please answer me this:

Do you think the Judge sees the Dish products in the original trial as STILL infringing today?


----------



## scooper

What difference does THAT make ? The 5xx, 522, 625 of today is NOT the same unit it was at the start of the trial - the software has been changed significantly (says Dish/Echostar).

After reading the briefs - I'd say it isn't. But I'm not the judge. I can't presume to speak for him. Are the physical boxes the same - of course. How that software uses the hardware is different. And deciding this may well be out of scope for this contempt hearing - the most the judge may have to say is "yes, it is colorably different, but whether or not the new S/W is infringing will have to be settled in another trial". All of which has been pointed out in previous posts / previous cases. h Echostar has already started another trial in Delaware (certainly - judge / court shopping of a different type than East Texas).


----------



## kmill14

scooper,

Companies issue software patches all the time to their products, but in the eyes of the court, the products found to be infringing are still the same products they were at the start of the trial. 

Dish will have their day in court to defend their new software as being non-infringing, but until that comes to completion, Judge Folsom will view these products as still infringing.


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## scooper

What can I say - court doesn't move fast enough for today's technology advances...

The change Echostar says they put into their new DVR software is substantially different than what was in there before - hardly "just a patch" - they rewrote the entire way they are doing DVR functions. It's SO different that they have put in a request for their own patent on it.


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## Curtis52

scooper said:


> It's SO different that they have put in a request for their own patent on it.


Anyone can file a patent for anything. The examiner hasn't even looked at it yet. Predictable subterfuge.


----------



## jacmyoung

scooper said:


> What can I say - court doesn't move fast enough for today's technology advances...


Yes and no. If one uses the spirit of the law as guide, it is not difficult to reach a conclusion that best to interpret the law and its intent. I am not saying the judge will agree with me, what I am saying is I have decided through the reading of the law and past cases, my interpretation has the best chance to prevail. Is there a chance I may fail, of course, nothing is certain. All one can do is to seek the answer that may have the better odds, and it is my belief that the use of facts and logic will tend to give one better wining record, than the use of wishful thinking.

Wishful thinking can win too, but in the long run, use of facts and logic can win more often than not.

In this case it is true the advancement of technologies can be confusing to us, and even to the judges. But if only one keeps the eyes on the ball:

The question of more than colorable difference give rise to fair ground the doubt whether the modified products may be within the scope of the injunction&#8230;

During a summary contempt proceeding the judge should first determine the colorable difference issue between the infringing products and the modified products&#8230;

And if the modified products are determined to be more than colorably different, even if the modified products still infringe, a contempt charge will be inappropriate, an independent proceeding must be arranged to evaluate the infringement issue of the modified products, if the plaintiff insists.


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## phrelin

jacmyoung said:


> Another thing people tried to point out was DISH's new software must be still infringing because it still does simultaneous record and playback. What they failed to realize that Tivo does not hold a patent on simultaneous record and playback, or pause, skip back and forward, or most of the trick plays, only the methods in which the above functions are achieved.


This is what I find odd about the discussion here. What you say is a simple fact.

And it is clear that Dish now is doing it the "new way" rather than the "old way" which according to the legal system infringed on the TiVo system. Whether the "new way" is "colorably" different pursuant to law is unknown because no one in the legal system (apparently still functioning at an 1880's pace) yet has bothered to try to find out.

What I know is that these cases have a six month window to be tried and appealed before the whole thing looks to an outsider like the legal system is still being administered by Justice Learned Hand's (active judge 1924 - 1951) first court clerk.

What I also know to be generally clear is how this legal process was applied here - that after a lengthy process resulting in a jury decision, the judge issued some orders. One of those orders involved money. Charlie placed a trivial liability on his books for the money. Charlie then spent tons of money to appeal the jury decision. The interminable appellate court process upheld the determination that the "old way" system/software infringed, but sent the decision about hardware back. While under appeal, as Charlie wanted the judge's orders were stayed, until April 2008. By the time the order became "in effect" Charlie replaced the "old way" software/system. (For all I know, TiVo has redesigned its software/system because if they didn't they wouldn't be keeping pace with hardware changes.)

The thing is, since this lawsuit was first filed I've completely changed my computers twice to keep pace with hardware/bios/OS/software advances and I'm still a full generation behind. (I don't have a quad core processor and am not using a 64-bit OS though all my hardware could handle it.)

The decision in this case became technologically irrelevant even before Apple announced the iPhone on January 9, 2007.:nono2:


----------



## jacmyoung

phrelin said:


> ... Whether the "new way" is "colorably" different pursuant to law is unknown because no one in the legal system (apparently still functioning at an 1880's pace) yet has bothered to try to find out...


And believe it or not, the answer will be provided by the judge in that 09/08 contempt hearing. That will be the first thing the judge should do in that hearing, according to the law.

If you can just keep focused on the above, you will not lose sleep over all the other complicated issues.


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## phrelin

jacmyoung said:


> And believe it or not, the answer will be provided by the judge in that 09/08 contempt hearing. That will be the first thing the judge should do in that hearing, according to the law.


Yeah, I don't believe it - meaning I don't believe he'll resolve anything within the legal system in that hearing. But some have accused me of being a cynic and a pessimist.


> If you can just keep focused on the above, you will not lose sleep over all the other complicated issues.


I don't lose any sleep over any of this. I keep hoping Charlie will trade out my 508's for a 722 for just the monthly lease and 3rd and 4th receiver charges, but I'm not losing sleep over it. Hmmm, maybe I'm an optimist?


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## nobody99

phrelin said:


> And it is clear that Dish now is doing it the "new way" rather than the "old way" which according to the legal system infringed on the TiVo system. Whether the "new way" is "colorably" different pursuant to law is unknown because no one in the legal system (apparently still functioning at an 1880's pace) yet has bothered to try to find out.


All the precedence dealing with "more than colorably different" dealt with products/devices/etc that weren't specifically adjudicated to infringe. The language is to prevent a patent holder from filing a contempt charge each time a company tries to introduce a new product. There is case after case like this.

The typical injunction, where this language is used, is something along the lines of "All products with model ABC, DEF, XYZ and other models that are only colorably different."

Notice it doesn't say "product ABC, DEF, XYZ or in-the-field changes that make existing ABC, DEF, XYZ products only colorably different than they were at the time this injunction was written."

Not once, in any case, ever, has the "more than colorably different" standard been used for specifically-adjudicated products.


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## Greg Bimson

phrelin said:


> ... Whether the "new way" is "colorably" different pursuant to law is unknown because no one in the legal system (apparently still functioning at an 1880's pace) yet has bothered to try to find out...





jacmyoung said:


> And believe it or not, the answer will be provided by the judge in that 09/08 contempt hearing. That will be the first thing the judge should do in that hearing, according to the law.


According to your interpretation.


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## phrelin

nobody99 said:


> Not once, in any case, ever, has the "more than colorably different" standard been used for specifically-adjudicated products.


Yes, but IMHO determining that the infringing product is the box instead of the system/software is clearly "head-in-the-sand" thinking. But that's my opinon which with a dollar will buy me a cup of coffee.:lol:


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## Curtis0620

Here is what should happen:

DISH is in violation of the injunction and must de-activate the DVR's listed. If they want to turn them back on, then they must have a new trial for the updated software. Which is what they are doing in Delaware. 

It is unavoidable for DISH to not have to turn them off. 

If TiVo pushes the hardware issue and wins, then DISH is SOL.


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## nobody99

phrelin said:


> Yes, but IMHO determining that the infringing product is the box instead of the system/software is clearly "head-in-the-sand" thinking. But that's my opinon which with a dollar will buy me a cup of coffee.:lol:


Yes, it's head-in-the-sand thinking.

It's also head-in-the-sand thinking that five or six years ago, TiVo took a prototype DVR to Dish, left it with them, and they pretty much stole the technology.

Yet here we are years later, DISH has been convicted of willful infringement of the patent, lost an appeal, lost the chance for the patent office to find the patent invalid, have a standing injunction preventing their boxes from running.

Yet the boxes are still running and TiVo doesn't have a friggin' cent.


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## Curtis52

A couple of pages:


----------



## Greg Bimson

I think we're about to find out TiVo got exactly what they wanted...


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## jacmyoung

Curtis0620 said:


> Here is what should happen:
> 
> DISH is in violation of the injunction and must de-activate the DVR's listed. If they want to turn them back on, then they must have a new trial for the updated software. Which is what they are doing in Delaware...


You do understand this is incorrect as far as the law is. If DISH is found in contempt, they will not be able to turn them back on, period, they will not be able to even have a new trial to discuss the new software.


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## jacmyoung

Curtis52 said:


> A couple of pages:
> 
> View attachment 14053
> View attachment 14054


Because just look at what you have posted, Tivo said they will need any discovery, only if DISH is found not in contempt. Once DISH is in contempt, DISH is done, as far as the DVRs on the list, no chance to bring them back, modify them, or anything, which is why there will be no need for discovery if DISH will be in contempt.

Please do not again make up some proceedings that does not exist in the court of law just to argue for your cause.


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## Curtis52

jacmyoung said:


> Because just look at what you have posted, Tivo said they will need any discovery, only if DISH is found not in contempt. Once DISH is in contempt, DISH is done, as far as the DVRs on the list, no chance to bring them back, modify them, or anything, which is why there will be no need for discovery if DISH will be in contempt.
> 
> Please do not again make up some proceedings that does not exist in the court of law just to argue for your cause.


I have no idea what you are talking about.


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## Greg Bimson

jacmyoung said:


> You do understand this is incorrect as far as the law is. If DISH is found in contempt, they will not be able to turn them back on, period, they will not be able to even have a new trial to discuss the new software.


Sure they will be able to have a new trial to discuss the new software. Anyone can start a trial to receive a declaratory judgment of non-infringement. But it might not help DISH/SATS to turn on the "Infringing Products", as you've mentioned.


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## jacmyoung

So basically according to Tivo, the contempt ruling is the key as far as whether a discovery (albeit a limited one asked by Tivo, refuted by DISH) on the new software infringement issue, and Tivo asked the judge to rule on the contempt first, and if the judge rule in favor of DISH (not in contempt) then Tivo will seek limited discovery on the new software. But if DISH will be in contempt, Tivo will not ask for the limited discovery, why? It will not be needed, DISH is done.

You see even Tivo did not agree with you. Because according to you, once DISH is in contempt, they must shut off the DVRs, though DISH may bring them back later if after the discovery and a new trial on the new software DISH is not infringing. Except Tivo did not think what you proposed was necessary nor possible, if they did agree with you, they would have asked for the discovery even if DISH is in contempt, did it not?

Let me put it this way, why would Tivo ask for a limited discovery, in case DISH is not found in contempt? Tivo apparently itself considered the possibility of the judge not finding DISH in contempt, did it not? And in such case Tivo wanted a limited discovery on the new software to at least begin to address the new software infringement.

Therefore Tivo’s order of events are the same as mine, and opposite of yours. Why? Because yours were made up, not available according to the law.

BTW Greg, please do not even mention the DE case here, it is totally irrelevant as far as we are discussing right now.


----------



## James Long

Curtis52 said:


> A couple of pages:
> 
> View attachment 14053
> View attachment 14054


Hmm ... I don't see that on Pacer. Do you know the document #?


----------



## Curtis52

jacmyoung said:


> So basically according to Tivo, the contempt ruling is the key as far as whether a discovery (albeit a limited one asked by Tivo, refuted by DISH) on the new software infringement issue, and Tivo asked the judge to rule on the contempt first, and if the judge rule in favor of DISH (not in contempt) then Tivo will seek limited discovery on the new software. But if DISH will be in contempt, Tivo will not ask for the limited discovery, why? It will not be needed, DISH is done.
> 
> You see even Tivo did not agree with you. Because according to you, once DISH is in contempt, they must shut off the DVRs, though DISH may bring them back later if after the discovery and a new trial on the new software DISH is not infringing. Except Tivo did not think what you proposed was necessary nor possible, if they did agree with you, they would have asked for the discovery even if DISH is in contempt, did it not?
> 
> Let me put it this way, why would Tivo ask for a limited discovery, in case DISH is not found in contempt? Tivo apparently itself considered the possibility of the judge not finding DISH in contempt, did it not? And in such case Tivo wanted a limited discovery on the new software to at least begin to address the new software infringement.
> 
> Therefore Tivo's order of events are the same as mine, and opposite of yours. Why? Because yours were made up, not available according to the law.
> 
> BTW Greg, please do not even mention the DE case here, it is totally irrelevant as far as we are discussing right now.


If you are talking to me, I still don't know what you are talking about. You would need to quote something I said.


----------



## Greg Bimson

jacmyoung said:


> BTW Greg, please do not even mention the DE case here, it is totally irrelevant as far as we are discussing right now.





jacmyoung said:


> You do understand this is incorrect as far as the law is. If DISH is found in contempt, they will not be able to turn them back on, period, they will not be able to even have a *new trial* to discuss the new software.


Then start following your own rules.


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## spear61

James Long said:


> Hmm ... I don't see that on Pacer. Do you know the document #?


The Tivo lawyer transcription argues both sides of the issue, just like this thread. First Tivo argues that Dish is in contempt for not shutting down the boxes, But then, Tivo says "but, Judge if you decide Dish is not in contempt, we want discovery"

We will not know what the judge is thinking until we see his Sept Order.


----------



## Greg Bimson

I'll assume jacmyoung is talking to me.


jacmyoung said:


> So basically according to Tivo, the contempt ruling is the key as far as whether a discovery (albeit a limited one asked by Tivo, refuted by DISH) on the new software infringement issue, and Tivo asked the judge to rule on the contempt first, and if the judge rule in favor of DISH (not in contempt) then Tivo will seek limited discovery on the new software. But if DISH will be in contempt, Tivo will not ask for the limited discovery, why? It will not be needed, DISH is done.


The injunction demands eight models of DVR be disabled. Once that is done, do you honestly believe TiVo won't go after the 622 and 722? At one point, like during the trial, those models ran the exact same infringing software (but was never brought up at the trial).

Discovery will be needed after the first part is adjudicated, irrespective if found in contempt or not in contempt. As you've said before, if DISH/SATS is found in contempt, they'll appeal. Meanwhile, Judge Folsom can start the next phase.


----------



## jacmyoung

Curtis52 said:


> If you are talking to me, I still don't know what you are talking about. You would need to quote something I said.


Both you and Greg said if DISH is in contempt, DISH may bring the DVRs on the list back, after the new software is found non-infringing.

If Tivo thought so too, would it make sense for Tivo to seek the limited discovery on the new software regardless if DISH is in contempt or not? Why do you think Tivo was seeking the limited discovery on the new software only if DISH is not in contempt? Why not seek the same discovery even if DISH is in contempt? Because according to both of you, DISH would still try to bring back the DVRs, why not seek the discovery and find the new software infringing so to make sure DISH will not be able to do it ever? Why stop there?

Because once the DISH is found in contempt, and fails on all appeals, they are done, finished, no need for any more discovery, no need to answer the dreaded question if the new software is still infringing or not.

And guess how do you find DISH in contempt? You say that DISH's new software is only colorbly different. See how things come around in full circle?


----------



## jacmyoung

Greg Bimson said:


> ...Discovery will be needed after the first part is adjudicated, irrespective if found in contempt or not in contempt. As you've said before, if DISH/SATS is found in contempt, they'll appeal. Meanwhile, Judge Folsom can start the next phase.


Please realize Tivo did not ask for discovery if DISH is in contempt, Tivo only asked for the discovery if DISH is not in contempt, please go back and read it again.


----------



## jims

There are two types of discovery that Tivo is talking about. The first mentioned is that if the court sides with Dish a discovery on what the differences are. They are saying that is unnecessary now if Dish is not following the letter of the injunction. The other discovery is a longer one related to Dish turning over documents as requested relating to damages incurred while the injunction was stayed. Tivo wants that to continue in parrellel.


----------



## Curtis52

jacmyoung said:


> Both you and Greg said if DISH is in contempt, DISH may bring the DVRs on the list back, after the new software is found non-infringing.
> 
> If Tivo thought so too, would it make sense for Tivo to seek the limited discovery on the new software regardless if DISH is in contempt or not? Why do you think Tivo was seeking the limited discovery on the new software only if DISH is not in contempt? Why not seek the same discovery even if DISH is in contempt? Because according to both of you, DISH would still try to bring back the DVRs, why not seek the discovery and find the new software infringing so to make sure DISH will not be able to do it ever? Why stop there?
> 
> Because once the DISH is found in contempt, and fails on all appeals, they are done, finished, no need for any more discovery, no need to answer the dreaded question if the new software is still infringing or not.
> 
> And guess how do you find DISH in contempt? You say that DISH's new software is only colorbly different. See how things come around in full circle?


TiVo is seeking discovery. They will need it for determining damages if nothing else. They don't need discovery for the 9-4 meeting.


----------



## jacmyoung

Curtis52 said:


> TiVo is seeking discovery. They will need it for determining damages if nothing else. They don't need discovery for the 9-4 meeting.


Only if DISH is not in contempt, why?


----------



## Curtis52

jacmyoung said:


> Please realize Tivo did not ask for discovery if DISH is in contempt, Tivo only asked for the discovery if DISH is not in contempt, please go back and read it again.


TiVo did ask for discovery. They are not waiting for the contempt ruling to ask for it. The discovery will be done with Paice procedure as a guideline. That is happening now.


----------



## jacmyoung

Curtis52 said:


> TiVo did ask for discovery. They are not waiting for the contempt ruling to ask for it. The discovery will be done with Paice procedure as a guideline. That is happening now.


The discovery I am talking about is for determining the new software infringement, not damages.

And if you cared to post more, we would likely see that the judge said no, not until the contempt issue is resolved. Because the discovery in question was about the new software infringement. Tivo can't seek such discovery in the contempt proceeding, must wait till the contempt issue is resolved.

Agains, I am not talking about the discovery on the damages.

Two things for you to respond to:

1) Why Tivo said only to seek such discovery if DISH is not in contempt? According to you they need to seek such regardless, see my above posts.
2) Did you read that Tivo was anticipating DISH might not be found in contempt? Why? Did Tivo see things you guys do not?


----------



## Greg Bimson

jacmyoung said:


> Please realize Tivo did not ask for discovery if DISH is in contempt, Tivo only asked for the discovery if DISH is not in contempt, please go back and read it again.


I agree that is what is written. However, keep in mind, the 622 and 722 more than likely had the same infringing software at one point. Therefore, it is possible after the contempt hearing that TiVo will need more discovery. My question now relates directly to whether or not the interrogatories (all questions) were granted.

For that reason, I will reserve any more discussion of this until I see the entire transcript.

However, I will point out a very long time ago I mentioned that TiVo was trying to deflect any discussion of the new software until after a contempt proceeding is completed regarding the "Infringing Products". The way TiVo's lawyers have phrased the issue, it put the new software on the back burner again. *Pure and simple, it could be a delaying tactic.*

It is that action that caused DISH/SATS to file for a declaratory ruling of non-infringement in Delaware.


----------



## Curtis52

jacmyoung said:


> The discovery I am talking about is for determining the new software infringement, not damages.
> 
> And if you cared to post more, we would likely see that the judge said no, not until the contempt issue is resolved. Because the discovery in question was about the new software infringement. Tivo can't seek such discovery in the contempt proceeding, must wait till the contempt issue is resolved.
> 
> Agains, I am not talking about the discovery on the damages.
> 
> Two things for you to respond to:
> 
> 1) Why Tivo said only to seek such discovery if DISH is not in contempt? According to you they need to seek such regardless, see my above posts.
> 2) Did you read that Tivo was anticipating DISH might not be found in contempt? Why? Did Tivo see things you guys do not?


TiVo sought discovery on the new software at the 5-28 meeting. They included the interrogatories in the agenda they submitted. Why you keep saying they made the request conditional is beyond me. They very clearly asked for it. Period.


----------



## James Long

Curtis52 said:


> TiVo sought discovery on the new software at the 5-28 meeting.


The May 30th meeting? The discovery they were granted was on damages (via the Paice order). The second question - does DISH's new software infringe - was tabled. No discovery.



James Long said:


> Hmm ... I don't see that on Pacer. Do you know the document #?


Did you miss the question?


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## phrelin

After reading and rereading, I can't figure out how any reasonable person could conclude it is not lawfully possible to "turn the boxes back on" with new system/software installed. I don't see anything that special in terms of hardware on the inside or outside of my 508's.


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## jacmyoung

phrelin said:


> After reading and rereading, I can't figure out how any reasonable person could conclude it is not lawfully possible to "turn the boxes back on" with new system/software installed. I don't see anything that special in terms of hardware on the inside or outside of my 508's.


And the question I asked was, why even Tivo said DISH might not be in contempt, and they asked the judge for discovery if such is the case...I wonder what could Tivo possibly see that made them even think of such possibility?


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## Greg Bimson

jacmyoung said:


> And the question I asked was, why even Tivo said DISH might not be in contempt, and they asked the judge for discovery if such is the case...I wonder what could Tivo possibly see that made them even think of such possibility?


Because as a plaintiff, you want all of your bases covered.


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## jacmyoung

Greg Bimson said:


> Because as a plaintiff, you want all of your bases covered.


Of course, and can you tell me what possibly can be the reason that there is a need to cover that base? Think out loud please, try to come up with one reason, I am sure Tivo had its reason(s).


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## Curtis52

> Analyst: Dish Risks Mount
> TiVo Suit, Possible Sub Losses Haunt DBS Giant
> By Mike Farrell -- Multichannel News, 6/3/2008 4:11:00 PM
> Shares of Dish Network shed 91 cents, or 3%, to close at $34.37 Tuesday after Sanford Bernstein cable and satellite analyst Craig Moffett issued a report warning that litigation risks stemming from its ongoing patent fight with TiVo could translate into huge costs and larger than expected subscriber losses for the No. 2 satellite TV company.
> 
> In a research report Tuesday, Moffett wrote that investors have paid little attention to the TiVo lawsuits, adding that most followers of the stock believe that, at worst, Dish would have to pay TiVo $1 per month per subscriber (about $75 million per year) if its litigation efforts fail.
> 
> That $1 per month is about what cable operator Comcast and DirecTV pay TiVo as part of a licensing agreement to use TiVo's digital video recorder technology.
> 
> But Moffett warned that recent developments-on May 16 TiVo asked a Texas court to find Dish in contempt for not disabling its DVR functionality as previously ordered-could be the knockout blow for Dish.
> 
> "If Dish loses a current round of contempt litigation related to their alleged 'work around,' then the costs to Dish of disabling DVRs, settling with TiVo, or-worst of all-potentially engaging in a bidding war for the right to continue offering DVRs at all, could be in a worst case scenario in the billions&#8230; far higher than currently contemplated," Moffett wrote. "Even the option of settling the case for just $1 per month per subscriber may well have passed."
> 
> A hearing on the contempt matter is scheduled for Sept. 4.
> 
> Dish Network is in the midst of appealing a $74 million verdict that TiVo obtained against it in April 2006, in which a Texas jury found that some of Dish Network's DVRs infringed on TiVo's patents. That award is now in the area of $94 million, with interest added in.
> 
> In late January, a federal appeals court upheld the judgment against Dish Network. Then in April, the U.S. Court of Appeals for the Federal Circuit refused the satellite provider's request for a rehearing, a ruling that Dish said it would appeal to the U.S. Supreme Court.
> 
> And on May 30 Dish filed suit in Delaware state court asking a judge to rule that its new DVR software does not infringe on TiVo's patents.
> 
> While Moffett did not make any attempt to predict the outcome of the litigation, he noted the market has been "significantly" underestimating the risk to Dish Network.
> 
> Moffett estimated that if Dish were found in contempt and had to immediately disable its DVRs, it would cost the satellite giant about $1.6 billion. That is not to mention how much it would cost to license the technology from TiVo or if the DVR maker would license the technology to them at all.


http://www.multichannel.com/article/CA6566897.html?desc=topstory


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## Greg Bimson

jacmyoung said:


> Of course, and can you tell me what possibly can be the reason that there is a need to cover that base? Think out loud please, try to come up with one reason, I am sure Tivo had its reason(s).


I would like to see the entire transcript before making that judgment.

However, for a placation, just one reason:

TiVo will not rest until DISH/SATS pays.


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## HobbyTalk

Barron's


> June 2, 2008, 1:24 pm
> TiVo Shares Slide As DISH Litigation Plot Thickens
> Posted by Eric Savitz
> TiVo (TIVO) shares are down sharply today, apparently on new concerns about the outcome of its ongoing patent infringement litigation against DISH Network (DISH).
> 
> On Friday, according to Kaufman Bros. analyst Todd Mitchell, TiVo and Dish met for a status conference with the judge presiding over TiVo's patent infringement case against Dish over digital video recorder technology. Kaufman says TiVo asked the judge to enforce its injunction against Dish, and to declare the workaround Dish devised to be invalid. TiVo also asked for further discovery for enhanced damages. Dish asserted that its workaround renders the TiVo claims moot.
> 
> In response, Mitchell reports, the judge pushed out enforcement of the injunction against further violations of the patent until a hearing on September 4, and told TiVo he could not evaluate the workaround until the injunction had been evaluated. The result, Mitchell says, is that the judge "effectively put TiVo's claims for enhanced damages on hold."
> 
> Meanwhile, Dish filed a new suit against TiVo in Delaware asking for a declaratory judgment that its workaround is valid. The result, Mitchell, says, will be to prolong the timeframe for eventual resolution of the issue and to add uncertainty to the situation for TiVo.
> 
> TiVo today is down 75 cents, or 8.9%, to $7.66. DISH is down 36 cents, or 1%, at $34.75.


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## BNUMM

Why didn't Dish request a hearing to notify the court that they had new software that they were going to download?


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## jacmyoung

BNUMM said:


> Why didn't Dish request a hearing to notify the court that they had new software that they were going to download?


Because never in the history can you find an example in which an infringer must ask judge's permission in order to modify a product and continue as before.


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## jacmyoung

Greg Bimson said:


> I would like to see the entire transcript before making that judgment ...


I am curious why Curtis only provided two pages, what did the judge say in the following pages stopped him from showing?

Tivo asked the judge to find DISH in contempt of the injunction on its face, but also said if the judge would not find DISH in contempt on its face, they wanted a limited discovery on the new software and at the same time use that to assess enhanced damages.

So far all we know is the judge said no I would not grant Tivo your limited discovery request until the contempt issue would be resolved. I am also curious what was the exchange in the next page(s).


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## Curtis52

Transcript

http://www.tivocommunity.com/tivo-vb/attachment.php?attachmentid=10472&d=1212545706


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## Greg Bimson

The fireworks did fly!


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## jacmyoung

Can you not copy and paste? You are on the verge of proving your point, why not do it the easy way?



Greg Bimson said:


> The fireworks did fly!


Was the above your only judgment after reading the full transcript? Is it time to buy or sell Tivo stocks?


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## Greg Bimson

Won't allow me to copy and paste. It is a secured document, Acrobat style.


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## James Long

jacmyoung said:


> Can you not copy and paste? You are on the verge of proving your point, why not do it the easy way?


It isn't Curtis' work to post. If it were in PACER I'd post it for him ... but that document seems to be unlisted.

For credit ... the document is in a TivoCommunity thread, linked here:
http://www.tivocommunity.com/tivo-vb/showthread.php?p=6346174#post6346174


----------



## jacmyoung

James Long said:


> It isn't Curtis' work to post. If it were in PACER I'd post it for him ... but that document seems to be unlisted.
> 
> For credit ... the document is in a TivoCommunity thread, linked here:
> http://www.tivocommunity.com/tivo-vb/showthread.php?p=6346174#post6346174


If that is the case it might have been leaked out from the inside. How about a summary?

At the meantime, I just want to point out why I always take an analyst's words with grain of salt:

"Moffett estimated that if Dish were found in contempt and had to immediately disable its DVRs, it would cost the satellite giant about $1.6 billion. That is not to mention how much it would cost to license the technology from TiVo or if the DVR maker would license the technology to them at all."

For one thing Tivo has always said they would license to anyone on reasonable terms, secondly this analyst obviously had no clue what DVRs was he talking about. He seemed to believe all DISH DVRs are in danger, when even Greg and Curtis know only the DVRs on the injunction list are discussed right now.


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## Greg Bimson

Page 7, line 17:


> Judge Folsom: What do you think the correct procedure is?
> 
> McElhinny: The cases are quite clear that the correct procedure is that TiVo files a new suit accusing the next product of infringement. That's the way the questions about whether products that have no previously been before the court are resolved.
> 
> So answering directly Your Honor's question, if they intend to proceed through contempt, we think it would be very helpful for them to file a motion. I think we made it clear that we are not really clear -- it's not clear to us what their summary contempt arguments are. The first one seems to be that we are in -- well --
> 
> Judge Folsom: Well, then obviously the filing of a motion might clarify that.
> 
> McElhinny: And declarations and whatever their showing is for why contempt is appropriate would be helpful. If we are going down the contempt road to determine where the contempt is, we would prefer to do it in one, you know, fell swoop. I mean, if they think they can get contempt on the design-around rather than doing, you know, a first hearing to determine whether or not there is a, you know, a prima facie violation, then a second hearing, if the discovery is going to be going on in the same time and if the court is not going to move us in front of everything else on your schedule, then it makes sense to me to have them have one contempt motion and then the court can determine --
> 
> Judge Folsom: And do the discovery on that issue and determine that issue in one --
> 
> McElhinny: If that's the way it's going to go, then that's fine. Our, just so that it's clear for the record, we think -- we think it's certainly in our best interest, but we think it's the way the court should proceed in terms of its time, that the court, based on whatever they do file, based on, you know, what is now in the record in terms of our letters, the opinions of counsel, the court can make a very preliminary determination that the nature of the issues that are going to be disputed are not appropriate under the Federal Circuit guidelines for a summary hearing, and that they should be resolved in a more traditional fashion.


From page 10, line 17:


> Judge Folsom: Okay. Then obviously we have a disagreement. And I am going to give you a chance to respond, Mr. Chu, to the injunction. Obviously, Mr. McElhinny takes the position we don't need to do this in two bits, so to speak. Why do you feel that you need two hearings, so to speak, or perhaps two hearings?
> 
> Chu: I actually think we can resolve the core injunction issue in one hearing. Echostar had about 4 million DVR's in an installed base. The order said disable them. They haven't been disabled. That's the issue that we are proposing for this motion we could file in ten days.
> 
> Judge Folsom: Then I think everyone would have more guidance if you could file your motion within ten days. Any reason why you would need more than twenty-five or thirty pages in the body of the --
> 
> Chu: No.


The fireworks, page 15, line 5:


> Chu: There is an issue that's separate from what we were just discussing. They have stated that they've installed new boxes, or changed boxes, or swapped out boxes. So we are talking about something different from the installed base and the particular model numbers against which the injunction was specifically ordered. And there is the question of whether those additional boxes are colorably different and within the scope of the injunction.
> 
> And our suggestion would be that we take discovery related to that on a parallel track in time, but I don't anticipate that that will be the subject of the injunction hearing we are discussing right now, that we could take that discovery while we are taking the damages' discovery.
> 
> Judge Folsom: Well, and what do you think you need with this suggestion about deposing anyone that might sign a declaration or an expert report? Is that sufficient?
> 
> Chu: Well, it depends on what we learn. So we are talking about I will call them new boxes as this category that is different from the --
> 
> Judge Folsom: But you don't need any discovery in that connection for the hearing that we have set for the 4th of September?
> 
> Chu: Right. The one that's focused on whether they violate the injunction on its face.
> 
> Judge Folsom: Well, what would be wrong with them simply leaving in place no discovery until you know more about that subject and you request leave of court?
> 
> Chu: The reason is this, Your Honor. We do know, because they have stated it, that they are claiming that certain boxes, for example, that have been installed since the end of the trial are not infringing for one reason or another. And we have a disagreement on whether they are within the scope of the injunction or not, and therefore at some point in time we are going to need discovery on it. And rather than have that delayed in terms of beginning the discovery until some date in September, we think we ought to proceed with obtaining that limited discovery now.
> 
> Judge Folsom: My question is, in what for, how much?
> 
> Chu: I think it's the basic technical documentation. I think it would also be probably a very small two depositions, maybe three, for people to explain the basic documentation their grounds for claiming that it's outside the scope of the injunction.
> 
> Judge Folsom: Is this going to be addressed in your initial motion so we have more background in this regard?
> 
> Chu: No, Your Honor, because I am separating the installed base. We think we can address that in a very slim, pinpointed fashion, as opposed to their new arguments with these other boxes.
> 
> Judge Folsom: Mr. McElhinny, what's your response to this topic?
> 
> McElhinny: *Your Honor, this is exactly what we don't want.* This is we would like to file contempt motion one, and while we are doing that, we would like to do discovery, that there is absolutely no legal right for at all, to see if we have contempt motion number two. The facts are completely different. I mean, the accurate facts are set out in the letters. They are not set out in what was just told to the court.
> 
> We are dealing with redesigned software which, as Your Honor knows, was downloaded to the boxes, and TiVo before, in our lifetime, TiVo intends to challenge that software; and what they are trying to do is start that case now by taking discovery without ever filing a motion on it or doing anything. That's what the second motion is all about. And our position is that they shouldn't be able to do it at all.
> 
> Judge Folsom: Very well. I will look at the parties' correspondence and give some guidance on that issue. Now, so you are essentially needing no discovery on the initial motion?
> 
> Chu: Yes.
> 
> Judge Folsom: I am assuming you are in agreement? Mr. McElhinny, you don't need any discovery?
> 
> McElhinny: What we have agreed to, Your Honor, if we see their motion and there is something in there that we need discovery, we will come to Your Honor and ask for it.


All spelling or grammar mistakes are very well mine.


----------



## Greg Bimson

My typing fingers are tired. I'l find time to argue tomorrow.


----------



## James Long

Working on this while Greg was doing his work ... Not shouting ... the transcript is in all caps. 

*THE COURT:* SO SAVE ME THE ARGUMENT TODAY. YOU KNOW, IF THIS CASE HOLDS TRUE FROM PAST ENCOUNTERS, YOU CAN AGREE UPON NOTHING.
. . .
*THE COURT:* SO ESSENTIALLY WE ARE TALKING NOW TWO UNRESOLVED ISSUES, THE INJUNCTION ISSUE AND THEN DAMAGES THAT HAVE ACCRUED SINCE THE JUDGMENT.
*MR. CHU:* YES, EXACTLY. AND, GOOD MORNING. SAM BAXTER, MORGAN CHU AND ANDREI IANCU ON BEHALF OF PLAINTIFF TIVO. ON THE FIRST ISSUE, WHETHER THE INJUNCTION HAS BEEN VIOLATED, THERE ARE REALLY TWO PARTS TO IT. WE BELIEVE THAT WE COULD HAVE A HEARING AT THE EARLIEST POSSIBLE DATE CONVENIENT FOR THE COURT TO DETERMINE WHETHER ECHOSTAR OUGHT TO BE HELD IN CONTEMPT BECAUSE IT HAS VIOLATED THE INJUNCTION ON ITS FACE. THE INJUNCTION STATES PLAINLY --
*THE COURT:* WELL, LIKE I SAID, I DON'T WANT TO HEAR A BUNCH OF ARGUMENT. HOW LONG DO YOU THINK THAT NEEDS TO BE, WHAT TIME PERIOD, AND WHAT DISCOVERY, IF ANY, IS NEEDED?
*MR. CHU:* FOR THE QUESTION OF WHETHER THERE IS A VIOLATION ON ITS FACE, WE DON'T NEED ANY DISCOVERY BECAUSE THE ONLY THING PERTINENT IS THE INJUNCTION ITSELF, THE TERMS OF THE INJUNCTION, AND WHETHER THEY IN FACT VIOLATED IT OR NOT. DID THEY DISABLE THE DVR FUNCTIONALITY?
..THE SECOND PART OF THE INJUNCTION QUESTION IS THIS: IF THE COURT SOMEHOW DECIDED THAT THAT WAS NOT A VIOLATION OF THE INJUNCTION, THEN WE WOULD NEED SOME LIMITED DISCOVERY ABOUT THEIR POSITION ON WHY THEIR SUPPOSED DESIGN-AROUND DOES OR DOESN'T WORK; AND WE COULD TAKE THAT DISCOVERY, AT THE SAME TIME, GOING TO THE SECOND ISSUE, WE WOULD BE TAKING DISCOVERY WITH RESPECT TO DAMAGES.
..WE SERVED UPON THEM A STATEMENT OF WHAT DISCOVERY WE WANTED. WE WANT IT TO BE LIMITED DISCOVERY, AND WE ARE REQUESTING THE COURT'S PERMISSION TO GO FORWARD WITH THAT DISCOVERY. WE ARE HOPEFUL THAT WE WILL BE ABLE TO WORK OUT DIFFERENCES OF OPINION IN DISCOVERY ALONG THE WAY.
..IF WE ARE GOING DOWN THE DISCOVERY ROUTE, AND WE NEED TO AT LEAST FOR DAMAGES, EVEN IF IT'S NOT FOR THE INJUNCTION, WE
WOULD THINK THAT ALL OF THAT OUGHT TO BE COMPLETED IN FORTYFIVE
DAYS, IN THAT TIME PERIOD.
*THE COURT:* BUT ARE YOU SAYING THAT NEED NOT BE TAKEN UP UNTIL I HAVE THE INITIAL HEARING AND A RULING ON THE INITIAL PHASE OF THE INJUNCTION?
*MR. CHU:* YES, AND IN PARALLEL, DAMAGES' DISCOVERY COULD GO ON WHILE WE ARE AWAITING THE HEARING AND RULING ON THE INITIAL INJUNCTION CONTEMPT ISSUE. AND I THINK THAT'S BASICALLY IT.
*THE COURT:* IS YOUR MOTION IN PLACE THAT TEES UP THE FIRST ISSUE CONCERNING THE INJUNCTION?
*MR. CHU:* NO. WE WERE AWAITING THIS HEARING, YOUR HONOR, AND, AS I SAID, THAT IS SOMETHING THAT WE COULD BE HERE IN TWO WEEKS. WE COULD HAVE AN ACCELERATED BRIEFING SCHEDULE, WHATEVER IS CONVENIENT.
*THE COURT:* I ASSURE YOU MY SCHEDULE DOESN'T ALLOW TWO WEEKS. PROBABLY MORE LIKE TWO OR THREE MONTHS.
*MR. CHU:* WHATEVER THE EARLIEST POSSIBLE DATE IS, YOUR HONOR.
*THE COURT:* SO HOW LONG WOULD YOU NEED TO FILE THAT MOTION, A WEEK, TEN DAYS?
*MR. CHU:* TEN DAYS, YOUR HONOR.
*THE COURT:* VERY WELL. LET'S HEAR FROM MR. MCELHINNY ON BEHALF OF ECHOSTAR.

The first question is if DISH is violating the injunction ... if the court rules against TIVO they would like to do the discovery on whatever issue led to their loss ... and the damage issue.

*MR. MCELHINNY:* GOOD MORNING, YOUR HONOR. HAROLD MCELHINNY, DAMON YOUNG, JOHN PICKETT AND MY PARTNER, JOE PATINO, WHO I THINK IS NEW TO THE COURT.
..WITHOUT REPEATING ANY OF THE ARGUMENT IN OUR LETTER, OUR POSITION IS THAT THIS CASE, FOR ALL PRACTICAL PURPOSES, IS CONCLUDED AND SHOULD BE CONCLUDED RELATIVELY QUICKLY. OBVIOUSLY, WE ARE NOT PARTICULARLY INTERESTED IN A ROLLING SERIES OF CONTEMPT HEARINGS DETERMINING ON IF THEY LOSE THE FIRST ONE, THEN WE ROLL INTO THE SECOND. AND WE THINK THAT THE FEDERAL CIRCUIT HAS MADE IT CLEAR THAT A PERSON WHO IN GOOD FAITH IS ATTEMPTING TO DESIGN AROUND A PATENT SHOULDN'T BE HELD TO A SERIES OF CONTEMPT HEARINGS, THAT THAT'S NOT THE APPROPRIATE WAY.
..SO OUR VIEW IS THAT JUST ON THE CONTEMPT PROCEEDING, OUR VIEW IS THAT CONTEMPT IS NOT THE WAY. OBVIOUSLY THEY CAN FILE WHATEVER MOTION THEY WANT. THE COURT IS NOT GOING TO PRECLUDE THEM. BUT THE CASES ARE QUITE CLEAR THAT THE COURT AT A VERY
INITIAL STAGE MAKES A DETERMINATION ABOUT WHETHER CONTEMPT IS OR IS NOT THE CORRECT PROCEDURE, BECAUSE IF DISCOVERY IS GOING TO BE REQUIRED, IF THERE ARE AFFIDAVITS THAT ARE COMING IN, IF THERE ARE EXPERTS, IF THERE IS A GOOD FAITH ATTEMPT TO DESIGN AROUND, THEN CONTEMPT IS NOT THE CORRECT PROCEDURE TO GO FORWARD.
*THE COURT:* WHAT DO YOU THINK THE CORRECT PROCEDURE IS?
*MR. MCELHINNY:* THE CASES ARE QUITE CLEAR THAT THE CORRECT PROCEDURE IS THAT TIVO FILES A NEW SUIT ACCUSING THE NEXT PRODUCT OF INFRINGEMENT. THAT'S THE WAY THE QUESTIONS ABOUT WHETHER PRODUCTS THAT HAVE NOT PREVIOUSLY BEEN BEFORE THE COURT ARE RESOLVED.
..SO ANSWERING DIRECTLY YOUR HONOR'S QUESTION, IF THEY INTEND TO PROCEED THROUGH CONTEMPT, WE THINK IT WOULD BE VERY HELPFUL FOR THEM TO FILE A MOTION. I THINK WE MADE CLEAR THAT WE ARE NOT REALLY CLEAR -- IT'S NOT CLEAR TO US WHAT THEIR SUMMARY CONTEMPT ARGUMENTS ARE. THE FIRST ONE SEEMS TO BE THAT WE ARE IN -- WELL --
*THE COURT:* WELL, THEN OBVIOUSLY THE FILING OF A MOTION MIGHT CLARIFY THAT.
*MR. MCELHINNY:* AND DECLARATIONS AND WHATEVER THEIR SHOWING IS FOR WHY CONTEMPT IS APPROPRIATE WOULD BE HELPFUL. IF WE ARE GOING TO GO DOWN THE CONTEMPT ROAD TO DETERMINE WHERE THE CONTEMPT IS, WE WOULD PREFER TO DO IT IN ONE, YOU KNOW, FELL SWOOP. I MEAN, IF THEY THINK THEY CAN GET CONTEMPT ON THE DESIGN-AROUND RATHER THAN DOING, YOU KNOW, A FIRST HEARING TO DETERMINE WHETHER OR NOT THERE IS A, YOU KNOW, A PRIMA FACIE VIOLATION, THEN A SECOND HEARING, IF THE DISCOVERY IS GOING TO BE GOING ON IN THE SAME TIME AND IF THE COURT IS NOT GOING TO MOVE US IN FRONT OF EVERYTHING ELSE ON YOUR SCHEDULE, THEN IT MAKES SENSE TO ME TO HAVE THEM HAVE ONE CONTEMPT MOTION AND THEN THE COURT CAN DETERMINE --
*THE COURT:* AND DO THE DISCOVERY ON THAT ISSUE AND DETERMINE THAT ISSUE IN ONE --
*MR. MCELHINNY:* IF THAT'S THE WAY IT'S GOING TO GO, THEN THAT'S FINE. OUR, JUST SO THAT IT'S CLEAR FOR THE RECORD, WE THINK -- WE THINK IT'S CERTAINLY IN OUR BEST INTEREST, BUT WE THINK IT'S THE WAY THE COURT SHOULD PROCEED IN TERMS OF ITS TIME, THAT THE COURT, BASED ON WHATEVER THEY DO FILE, BASED ON, YOU KNOW, WHAT IS NOW IN THE RECORD IN TERMS OF OUR LETTERS, THE OPINIONS OF COUNSEL, THE COURT CAN MAKE A VERY PRELIMINARY DETERMINATION THAT THE NATURE OF THE ISSUES THAT ARE GOING TO BE DISPUTED ARE NOT APPROPRIATE UNDER THE FEDERAL CIRCUIT GUIDELINES FOR A SUMMARY HEARING, AND THAT THEY SHOULD BE RESOLVED IN A MORE TRADITIONAL FASHION.

DISH objects to serial motions.

*THE COURT:* WHAT ABOUT THE DAMAGE ISSUE?
*MR. MCELHINNY:* THE DAMAGES ISSUE IS VERY INTERESTING. AGAIN, THE MANDATE FROM THE COURT OF APPEALS TELLS THIS COURT TO DETERMINE THE DAMAGES, IF ANY, WHILE THE INJUNCTION WAS STAYED. IF THE COURT WERE TO DETERMINE, AS FRANKLY I THINK THE LIKELY OUTCOME IS GOING TO BE, THAT, YOU KNOW, THE RIGHT WAY TO DO THIS IS TO APPLY THE ROYALTY RATE THAT THE JURY HAD DETERMINED --
*THE COURT:* AND, AGAIN, WE ARE NOT GOING TO RESOLVE THAT ISSUE TODAY. I HAVE READ THE MICROSOFT CASE, AND OBVIOUSLY THE PARTIES ARE GOING TO BE IN DISAGREEMENT ABOUT THAT ISSUE. BUT WHAT ABOUT WHAT DISCOVERY, IF ANY, DO YOU THINK IS APPROPRIATE, THAT NEEDS TO BE DONE, AND --
*MR. MCELHINNY:* WELL, IF WE ARE GOING TO HAVE A MINITRIAL BEFORE YOUR HONOR ABOUT WHAT THE APPROPRIATE MEASURE OF DAMAGES IS, THEN WE WOULD LIKE TO TAKE, YOU KNOW, THE SAME, YOU KNOW, SORT OF THE SAME KINDS OF DISCOVERY BECAUSE WE WOULD LIKE TO GO INTO THE CHANGED CIRCUMSTANCES AND THE LICENSES THAT THEY HAVE ENTERED INTO, AND THE VALUE OF -- YOU KNOW, WE HAVE TO RETRY THE ROYALTY ISSUE.
*THE COURT:* HAVE YOU GENTLEMEN HAD A CHANCE TO READ THE ORDER I ENTERED IN _PAICE_, AT LEAST THE SCHEDULING ORDER? YOU KNOW, MUCH THE SAME ISSUE, WHERE MR. BAXTER IS OBVIOUSLY INVOLVED IN THAT CASE, WHERE I WENT FORWARD IN A PROCESS WHERE A MOTION IS FILED WITH DECLARATIONS, AND A RESPONSE WITH DECLARATION, AND EACH PARTY IS GIVEN THE OPPORTUNITY, IF YOU DESIRE, TO DEPOSE THE PERSON WHO EXECUTED THE DECLARATION, AND LIMIT IT TO ABOUT THREE HOURS. DO YOU THINK THAT SORT OF ARRANGEMENT WOULD BE APPROPRIATE ON THIS ISSUE?
*MR. MCELHINNY:* I AM FAMILIAR WITH THE ORDER, AND WE THINK THAT THAT WOULD BE EXACTLY APPROPRIATE FOR THIS, YOUR HONOR.
*THE COURT:* MR. CHU?
*MR. CHU:* YES, WE AGREE. WE THINK IT WOULD BE APPROPRIATE.

They agree on PAICE for damages.


----------



## James Long

*MR. MCELHINNY:* YOUR HONOR, THIS IS EXACTLY WHAT WE DON'T WANT. THIS IS WE WOULD LIKE TO FILE CONTEMPT MOTION ONE, AND WHILE WE ARE DOING THAT, WE WOULD LIKE TO DO DISCOVERY, THAT THERE IS ABSOLUTELY NO LEGAL RIGHT FOR AT ALL, TO SEE IF WE HAVE CONTEMPT MOTION TWO. THE FACTS ARE COMPLETELY DIFFERENT. I MEAN, THE ACCURATE FACTS ARE SET OUT IN THE LETTERS. THEY ARE NOT SET OUT IN WHAT WAS JUST TOLD TO THE COURT.
...WE ARE DEALING WITH REDESIGNED SOFTWARE WHICH, AS YOUR HONOR KNOWS, WAS DOWNLOADED TO THE BOXES, AND TIVO BEFORE, IN OUR LIFETIME, TIVO INTENDS TO CHALLENGE THAT SOFTWARE; AND WHAT THEY ARE TRYING TO DO IS START THAT CASE NOW BY TAKING DISCOVERY WITHOUT EVER FILING A MOTION ON IT OR DOING ANYTHING. THAT'S WHAT THIS SECOND MOTION IS ALL ABOUT. AND OUR POSITION ON THAT IS THEY SHOULDN'T BE ABLE TO DO IT AT ALL.

It is all about the serial motions ... Tivo filing a motion while wanting discovery for the next motion (and the next motion, and the next motion). The "fireworks" seem to be TIVO losing and DISH winning ... Tivo wanting to jump the gun on a contempt motion and do discovery and DISH getting to hold off on that discovery. Tivo didn't get the discovery.

If I had to pick a winner, it wouldn't be Tivo ...


----------



## James Long

Transcript unlocked.


----------



## jacmyoung

DISH pointed out some mistakes Tivo made in the procedures allowed. Meanly Tivo can not do parts 1, 2 and 3 at the same time. And Tivo then said they actually only was asking for part 1. So it seems this is what will happen on 09/04, only part 1, "disabling of DVR functions on the listed DVRs."

All else are trivial.

As predicted Tivo wants to discuss the face of the injunction, DISH wants to point out the workaround aspect. DISH also reminded the judge he was aware of the new software download. The judge seemed not to disagree, so whether DISH needed the judge's permission will not likely be an issue in this.

I must tell you Judge Folsom was very good at not showing his card at all, even though we can probably all agree he already knew the answer.


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## peak_reception

Greg Bimson said:


> The fireworks did fly!


I wouldn't say so. They might have but the judge didn't want any part of it.

Judge Folsom: "SO SAVE ME THE ARGUMENT TODAY. YOU KNOW, IF THIS CASE HOLDS TRUE FROM PAST ENCOUNTERS, YOU CAN AGREE UPON NOTHING."

And then a bit later, again:

"WELL, LIKE I SAID, I DON'T WANT TO HEAR A BUNCH OF ARGUMENT."

The judge just wanted to set basic parameters and then schedule.

Surprising to me is the fact that TiVo lawyers did not have their contempt motion in hand ready to go forward:

Judge Folsom: "IS YOUR MOTION IN PLACE THAT TEES UP THE FIRST ISSUE CONCERNING THE INJUNCTION?" i.e. the contempt motion.

Mr. Chu: "NO. WE WERE AWAITING THIS HEARING, YOUR HONOR, AND, AS I SAID, THAT IS SOMETHING WE COULD BE HERE IN TWO WEEKS" (sic)

Once again, surprising to me that TiVo wasn't champing at the bit to have the contempt motion in hand, eager to go on May 30. Apparently those who say that TiVo is now confident of victory, and in no hurry to wrap up, are correct.

I don't think that either side won anything too big on May 30. It more or less just froze the status quo until September. True, we did find out that the new software won't be considered before the contempt hearing on the injunction. But has EchoStar made an end around that issue by filing in DE? Only time will tell, as usual, in this case seemingly without end.


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## jacmyoung

peak_reception said:


> ...Once again, surprising to me that TiVo wasn't champing at the bit to have the contempt motion in hand, eager to go on May 30. Apparently those who say that TiVo is now confident of victory, and in no hurry to wrap up, are correct. ...


The way I look at it is this, Tivo made a good choice not to have the motion in hand, because they themselves did not know if they could ask for motion after motion after motion, remember they had three parts in there initial filing on the contempt issue, and after this meeting they pretty much agreed only to discuss part 1 in the next meeting.

Tivo decided to wait for the 5/30 meeting to see what they might be allowed to do, they made a good decision to hold off the motion, else they would have wasted a lot of time.


----------



## peak_reception

jacmyoung said:


> The way I look at it is this, Tivo made a good choice not to have the motion in hand, because they themselves did not know if they could ask for motion after motion after motion, remember they had three parts in there initial filing on the contempt issue, and after this meeting they pretty much agreed only to discuss part 1 in the next meeting.
> 
> Tivo decided to wait for the 5/30 meeting to see what they might be allowed to do, they made a good decision to hold off the motion, else they would have wasted a lot of time.


You might be right. Seems overly cautious to me though. Why not tell the judge exactly what they want and request permission to pursue it? Their agenda from May 16 seemed similarly cautious and out-of-joint.

I'm getting the sense that Judge Folsom is an intimidating presence and the lawyers are walking on eggshells before him.


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## James Long

It seems that DISH did do a better job of presenting their side and didn't get harshly cut off as Tivo did. Tivo was in full speach mode ... the judge didn't want to spend the time. It almost like showing up in class the day a project is due and asking the teacher for more instruction and time to complete the homework.

1) Tivo didn't have a motion ready. They wanted to file a first motion on the plain language and a follow up motion on the more complicated issues IF they lost on the plain language. Yet they didn't bother to have the first motion ready. (Not hard, they had a month to write it ... they could have written multiple versions for any contingency and pulled out the one that fit the judge's mood ... they just didn't do their homework.)
Tivo LACKED CONFIDENCE that they will win on the first motion. No second motion is needed if they win the first - yet they are heading into the first with a loser attitude.
2) Tivo wanted to file the motion on the injunction and get a quick hearing. The judge's schedule is packed. Tivo wanted a hearing in a couple of weeks, they got one three months out.
3) Tivo wanted discovery ... lots of details on how DISH runs their business. They got shot down. No discovery unless the court approves.

Basically what Tivo walked out with is the opportunity to file ONE motion on whether or not DISH is violating the injunction ... and a three month delay.

The damages issue was a draw ... DISH agreed to using _PAICE_ quickly, before Tivo was asked. If _PAICE_ wasn't good for DISH the agreement would not have been so quick.


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## phrelin

It's very hard to get a sense from a transcript - without inflections, without facial expressions.

All I see is that this is not going to move rapidly enough. Every day that goes by is to Charlie's advantage as Echostar and Dish make money including sufficient money to cover a total loss here, while TiVo will continue to bleed cash, IMHO.

Technology has made this case meaningless. I'll probably build a new computer before September, quad with 64-bit OS. As I noted before, I've already upgraded twice since this case started. And I guess I'm going to have to pay to have my 508's upgraded to a 722 or maybe a ViP box (unlisted number) with a Slingbox function built in. (I guess the infringement issue on that box could get decided in Delaware in 2012 - I may be dead by then so I don't worry about it.)

One thing seems clear to me from the transcript. Charlie's decided on how much he's willing to pay the legal community and its support sydtem to drag this out - alot. What can you do?:shrug:


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## peak_reception

On re-reading the May 30th transcript i have to agree that TiVo *erred* by not having their contempt motion ready to go.

I disagree with the notion that preparing for any/all eventualities with respect to how the judge may rule on motion #1 somehow reveals a lack of confidence in that motion. Having Plan B and C doesn't mean that you think Plan A will lose. Not having Plans B and C would be negligent _over_confidence.

I do, however, think that TiVo wanted to expedite the contempt hearing. But since they also wanted to feel everything out first, being reactive instead of seizing the initiative, they're now ending up having to wait 3+ months for it.

Not sure the extra time will benefit E* all too much either unless they can pull a rabbit out of their hat via Delaware in the meanwhile. If they manage that unlikely feat then it could affect how Judge Folsom conducts the TX proceedings come September. But they requested a jury trial in DE. Seems impossible that such a thing could be concluded in time to affect September. I think the DE filing is a strategy for appeal down the road, not the TX verdict come September which E* probably figures they will lose.

More surprises are likely to come.


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## man_rob

Here's an interesting article on the subject from Multichannel News.

http://www.multichannel.com/article/CA6566897.html


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## nobody99

phrelin said:


> All I see is that this is not going to move rapidly enough. Every day that goes by is to Charlie's advantage as Echostar and Dish make money including sufficient money to cover a total loss here, while TiVo will continue to bleed cash, IMHO.


Every day that goes by is to Charlie's advantage *only if* they aren't found in contempt. If in contempt, these days that are going by will have been very expensive, in retrospect.

Also, TiVo was profitable this quarter. That's hardly "bleeding cash." And in a few months, they'll have a bit north of $100 million dollars that's sitting in an escrow account for prior infringement.


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## dave1234

man_rob said:


> Here's an interesting article on the subject from Multichannel News.
> 
> http://www.multichannel.com/article/CA6566897.html


Interesting that no mention is made of the over 9% that TIVO dropped on Monday...


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## jacmyoung

man_rob said:


> Here's an interesting article on the subject from Multichannel News.
> 
> http://www.multichannel.com/article/CA6566897.html


That link was already posted by Curtis, and I have already pointed out the analyst's mistake by thinking DISH has to shut off all DVRs. Right now only the DVRs on the injunction list are discussed.

So long as we are in a spin mode, let me try mine.

I will first assume the judge already had some idea what the verdict would be in 09/08. Under usual circumstance, if a judge sees clear game playing or manipulation by the defendent, he/she will be impatient, reminding the defendent the consequences of continuing on such path.

In fact we talked about this before, in the Blackberry case the judge warned RIM right before he was to issue an injunction, to settle, in the DISH distants case the judge did similar things, in fact in this case, Judge Folsom did it too, before DISH's appeal, he passionately argued for Tivo why the injunction should not be stayed during the appeal.

Because when judges see the apparent bad behavior by the defendents, they do not tolerate it.

I did not sense judge's impatience in the 5/30 meeting with DISH, he was a little impatient with Tivo but not with DISH. Despite the fact he said at the very beginning he did not want to hear any argument, he patiently listened to DISH's repeated arguments on two things, the workaround point, and the point that the judge should be aware of DISH's new software download.

Although I admit DISH was also very discrete about making those arguments, knowing what the judge said in the beginning, but nevertheless the judge listened.

Had the judge thought DISH was in contempt, meaning DISH was simply playing with him, he would not have been so relaxed, he would have told DISH look pal, I already wanted this over two years ago, and had hoped you would stop bothering me and settle with Tivo already, why are you still playing with me? I am telling you you better stop it and do the right thing!

The only reason he did not say that was because the card in his sleeve is in fact in favor of DISH, not Tivo.

But in such case he is not in any rush to declare victory for DISH. Tivo deserves another chance to make a better and more focused arguement before he makes his decision final. And Tivo should have that chance, afterall DISH did do Tivo a great deal of harm.

Tivo was not organized in its initial filing, they were all over the map, but now all parties have the same understanding what are we going to discuss in the 9/04 meeting, the judge is only right to give Tivo that chance to make a better case for themselves.

And it was precisely that hint DISH took away from the meeting that enboldened them to file a new suit in DE to seize the initiative and to address the new software infringemnet issue. DISH hopes DE accept the suit before the next meeting so when and if the judge rules in favor of DISH, the case will be practically over for Tivo because Tivo will not be able to ask the judge to arrange an independent proceeding to address the new software infringement issue, because some judge somewhere else will be doing it, under DISH's request.

If DISH did not smell victory in that meeting, or if the judge was harsh on DISH, DISH would not have been so bold, had the judge told DISH to stop playing game with him, DISH would not have tried to play an even bigger game right in his face.


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## Greg Bimson

DISH/SATS was upset.

The conclusion of this status hearing was asking both parties "to look at the _Paice_ order, at least as a roadmap, and do a docket control order on both of these issues, the injunction, the damages, and then [Judge Folsom] will take a look at the other issue and give you guidance in that regard? (Pg 18, Ln 20)"

So it appears that Judge Folsom is addressing every issue TiVo wanted, while DISH/SATS was arguing for one contempt hearing for both the _prima facie_ violation as well as the issue if the new software is colorably different. Within hours, DISH/SATS files suit in Delaware to put the new software on the docket, for a declaratory judgment of non-infringement.

I'm not sure where this is coming from:


James Long said:


> Tivo LACKED CONFIDENCE that they will win on the first motion. No second motion is needed if they win the first - yet they are heading into the first with a loser attitude.





jacmyoung said:


> Except Tivo did not think what you proposed was necessary nor possible, if they did agree with you, they would have asked for the discovery even if DISH is in contempt, did it not?


TiVo did ask for a contempt hearing on the _prima facie_ violation of the injunction, as well as discovery on both the damages and the new software. The damages discovery was granted; the new software discovery will be determined along with the briefs to be filed with the court over the next month or so.

And TiVo did ask for discovery even if DISH is in contempt of the _prima facie_ violation of the injunction, courtesy of TiVo counsel Chu (Pg 16, Ln 7):

The reason is this, Your Honor. We do know, because they have stated it, that they are claiming that certain boxes, for example, that have been installed since the end of the trial are not infringing for one reason or another. And we have a disagreement on whether they are within the scope of the injunction or not, and *therefore at some point in time we are going to need discovery on it.* And rather than have that delayed in terms of beginning the discovery until some date in September, we think we ought to proceed with obtaining that limited discovery now.

And let's realize what DISH/SATS has also done here...

The argument is that the didn't violate the injunction on its face. Why is that the argument? Because they've changed the software. Where is discussion about the new software being held? In Delaware. So...

If DISH/SATS wants to argue that they aren't in violation of the injunction because of the new software, then the case in Delaware will be closed up.

If DISH/SATS does not want to argue about the new software at all, then they automatically lose the _prima facie_ violation, because they aren't discussing the new software as a defense.


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## Greg Bimson

jacmyoung said:


> I did not sense judge's impatience in the 5/30 meeting with DISH, he was a little impatient with Tivo but not with DISH. Despite the fact he said at the very beginning he did not want to hear any argument, he patiently listened to DISH's repeated arguments on two things, the workaround point, and the point that the judge should be aware of DISH's new software download.


You know, that is a pretty good point.

But this now become the question. Judge Folsom listened to DISH/SATS repeated arguments regarding the workaround and the new software. Both of these DISH/SATS is trying to move out of Judge Folsom's court.

What does DISH/SATS do in front of Judge Folsom now?


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## jacmyoung

Greg Bimson said:


> You know, that is a pretty good point.
> 
> But this now become the question. Judge Folsom listened to DISH/SATS repeated arguments regarding the workaround and the new software. Both of these DISH/SATS is trying to move out of Judge Folsom's court.
> 
> What does DISH/SATS do in front of Judge Folsom now?


If your argument is winning, then you stick to it. The judge was right to give Tivo another chance to make its argument. Had the judge thought DISH's argument was wrong, he would not have waited to let DISH know, why let DISH continue to violate his order for another 3 months? He wanted DISH to stop two years ago.


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## Greg Bimson

I'll bring this excerpt up, from DISH/SATS opening statement, Page 6, Line 19:


> McElhinny: Good morning, Your Honor. Harold McElhinny, Damon Young, John Pickett and my partner, Joe Patino, who I think is new to the court.
> ..Without repeating any of the argument in our letter, our position is that this case, for all practical purposes, is concluded and should be concluded relatively quickly. Obviously, we are not particularly interested in a rolling series of contempt hearings determining on if they lose the first one, then we roll into the second. And we think that the federal circuit has made it clear that a person who in good faith is attempting to design around a patent shouldn't be held to a series of contempt hearings, that that's not the appropriate way.
> ..So our view is that just on the contempt proceeding, our view is that contempt is not the way. Obviously they can file whatever motion they want. The court is not going to preclude them. But the cases are quite clear that the court at a very initial stage makes a determination about whether contempt is or is not the correct procedure, because if discovery is going to be required, if there are affidavits that are coming in, if there are experts, if there is a good faith attempt to design around, then contempt is not the correct procedure to go forward.


DISH/SATS position is that the original case is over and contempt is not the way to go. In other words, DISH/SATS position is that they are now doing nothing wrong, let's get the original case to the Supreme Court, we'll pay the damages, and we are fine.

The problem here (to me) is that they've interpreted a standing injunction as if it were a piece of trash. The issue is that TiVo does get to file whatever motion they want, because the court will not preclude them from doing so.

And later, that is why TiVo counsel Chu brought up the fact that there were 4 million DVR's that are supposed to be disabled according to the injunction order.

So it appears that there will be a lot of information going on between now and 4 September.


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## Greg Bimson

jacmyoung said:


> If your argument is winning, then you stick to it. The judge was right to give Tivo another chance to make its argument. Had the judge thought DISH's argument was wrong, he would not have waited to let DISH know, why let DISH continue to violate his order for another 3 months? He wanted DISH to stop two years ago.


It's procedure. Judge Folsom cannot rule on contempt because TiVo did not have a motion for the _prima facie_ violation filed with the court.


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## James Long

peak_reception said:


> I disagree with the notion that preparing for any/all eventualities with respect to how the judge may rule on motion #1 somehow reveals a lack of confidence in that motion. Having Plan B and C doesn't mean that you think Plan A will lose. Not having Plans B and C would be negligent _over_confidence.


The lack of confidence comes from them openly asking for motion 2 before motion 1 is filed. Not preparing for all eventualities comes from not walking in to court with a motion ready to file based on the judge's decision. Do these lawyers not THINK what would be the possible outcomes? If they need help, they can read this thread. 

Don't combine the two problems ... it isn't a lack of confidence because of a failure to prepare ... it is two separate problems.

Tivo should have had a motion ready for the possibility that the injunction was all they could fight at this time. They should have also had a motion ready for the possibility that the judge would allow preemptive discovery for motion 2 (to be filed when motion 1 is lost). Then in the descusion they could have said "YES, we have a motion ready to file." Not "give us time".



Greg Bimson said:


> jacmyoung said:
> 
> 
> 
> Except Tivo did not think what you proposed was necessary nor possible, if they did agree with you, they would have asked for the discovery even if DISH is in contempt, did it not?
> 
> 
> 
> TiVo did ask for a contempt hearing on the _prima facie_ violation of the injunction, as well as discovery on both the damages and the new software. The damages discovery was granted; the new software discovery will be determined along with the briefs to be filed with the court over the next month or so.
Click to expand...

They seemed to ask discovery on everything ... a fishing expidition to see if DISH was violating something somewhere. No solid allegations.


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## Greg Bimson

James Long said:


> They seemed to ask discovery on everything ... a fishing expidition to see if DISH was violating something somewhere. No solid allegations.


Well, it isn't like DISH didn't give them cannon fodder. TiVo has that letter that DISH/SATS sent to their retailers, explaining nothing was shut down and it is business as usual.

TiVo's fishing expedition is asking for all documentation from DISH's determination that it is "business as usual".

Although procedurally, I believe TiVo has to file a motion in order to receive discovery on that point.


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## nobody99

Here's some interesting case law by an appeals court (I just googled "more than colorably different" 65(d))

http://www.ll.georgetown.edu/federal/judicial/fed/opinions/04opinions/04-1014.html

I draw your attention to this section, with my emphasis added:



> The actual scope of the injunction cannot be that expansive, however, because this court has held that "contempt proceedings . . . are available only with respect to *devices previously admitted or adjudged to infringe*, and to other devices which are no more than colorably different therefrom and which clearly are infringements of the patent." KSM, 776 F.2d at 1526. Therefore, the only acts the injunction may prohibit are infringement of the patent *by the adjudicated devices *and infringement by devices not more than colorably different from the adjudicated devices. In order to comply with Rule 65(d), the injunction should explicitly proscribe only those specific acts.


The 4 million or so DVRs were adjudicated devices. Any new derivations of those devices that are sold after the injunction are subject to the "more than colorably different." I mean, seriously, the law is pretty crystal clear that once a device has been identified as infringing, it's infringing until a court says otherwise.

Am I missing something here? Is there some reason that only three or four people here can see this?


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## space86

TVPredictions said today that E* might have to turn off are DVR's is this true ?


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## TexasAg

Just posting a response to nobody99, and to confirm to Greg that jacmyoung and I are in fact different people (Greg and I have been having this same discussion on a different forum).



nobody99 said:


> Am I missing something here?


Yes. A software update cannot change the structure of a MOSFET transistor, which was at issue in the case you cited.

Also, Arbek Mfg. is a 1995 case, which said an infringer is "entitled" to design around a patent. That case also counseled against contempt proceedings against an infringer "who has made a good-faith effort to modify a previously adjudged or admitted infringing device to remain in the marketplace"
__________________
My personal opinions are just that. Don't rely on them - I could be Charlie Ergen's pool boy.


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## nobody99

TexasAg said:


> Yes. A software update cannot change the structure of a MOSFET transistor, which was at issue in the case you cited.
> 
> Also, Arbek Mfg. is a 1995 case, which said an infringer is "entitled" to design around a patent. That case also counseled against contempt proceedings against an infringer "who has made a good-faith effort to modify a previously adjudged or admitted infringing device to remain in the marketplace"


An in both cases, those were for new products for sale. Not existing infringing products.

And just because the case I referenced deals with a widget and not a DVR is not the point I was trying to make. If you read the quote carefully, note it says that "this court has held that "contempt proceedings . . . are available only with respect to devices previously admitted or adjudged to infringe, and to other devices which are no more than colorably different"

In other words, the standard that some seem to be implying (that "more than colorably different is a _standard_ that the court uses to determine if infringing is occuring) is wrong. The standard is adjudicated devices + new devices not more than colorably different.

Why bother with injunctions otherwise?


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## nobody99

TexasAg said:


> Also, Arbek Mfg. is a 1995 case, which said an infringer is "entitled" to design around a patent. That case also counseled against contempt proceedings against an infringer "who has made a good-faith effort to modify a previously adjudged or admitted infringing device to remain in the marketplace"


Quick google search - maybe a different case?


> Based on this standard, an infringer who has made a good-faith
> effort to modify an infringing device should not be punished by contempt charges resulting from
> a permanent injunction on other, non-adjudged devices. Arbek Mfg., Inc. v. Moazzam


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## nobody99

TexasAg said:


> Just posting a response to nobody99, and to confirm to Greg that jacmyoung and I are in fact different people (Greg and I have been having this same discussion on a different forum).


Yeah, I got kicked off that forum. What a bunch of power-hungry asshats moderators on that forum.


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## TexasAg

nobody99 said:


> Why bother with injunctions otherwise?


Because Echo is prohibited from using the old software on its DVRs. That is the value of the injunction.

Echo is "entitled" to use new "more than colorably different" software. Tivo does not currently have a valid infringement finding regarding Echo's hardware, just Echo's software. If Echo can show that the modified software it is using now is "more than colorably different" compared to the original infringing software, Echo should not be cited for contempt.



nobody99 said:


> Quick google search - maybe a different case?


No, same case. My description came from a later case that was talking about Arbek (since I couldn't find the actual text of Arbek).

I assume you got your language from the Black & Decker case. That case quoted KSM from the appeals court, which stated:

Where the alteration in the device is "merely colorable" and obviously was made for the purpose of evading the decree without essential change in the nature of the device, the courts will try the question of infringement by the new device in proceedings for contempt for violation of the injunction. But where infringement by the new device is not clear on the face of the matter, and there are substantial issues for the determination of the court, the plaintiff may not have them determined in contempt proceedings, but must bring a supplemental bill for an injunction covering the new device, or institute a wholly new suit for such an injunction.
__________________
My personal opinions are just that. Don't rely on them - I could be Charlie Ergen's pool boy.


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## space86

I have a 622, could that be shut off or only earlier models ?


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## Curtis0620

TexasAg said:


> Because Echo is prohibited from using the old software on its DVRs. That is the value of the injunction.
> 
> Echo is "entitled" to use new "more than colorably different" software. Tivo does not currently have a valid infringement finding regarding Echo's hardware, just Echo's software. If Echo can show that the modified software it is using now is "more than colorably different" compared to the original infringing software, Echo should not be cited for contempt.
> 
> No, same case. My description came from a later case that was talking about Arbek (since I couldn't find the actual text of Arbek).
> 
> I assume you got your language from the Black & Decker case. That case quoted KSM from the appeals court, which stated:
> 
> Where the alteration in the device is "merely colorable" and obviously was made for the purpose of evading the decree without essential change in the nature of the device, the courts will try the question of infringement by the new device in proceedings for contempt for violation of the injunction. But where infringement by the new device is not clear on the face of the matter, and there are substantial issues for the determination of the court, the plaintiff may not have them determined in contempt proceedings, but must bring a supplemental bill for an injunction covering the new device, or institute a wholly new suit for such an injunction.


No where in the injunction does it say anything about software. It just states what DVR's must be shut off.


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## Greg Bimson

TexasAg said:


> Echo is "entitled" to use new "more than colorably different" software. Tivo does not currently have a valid infringement finding regarding Echo's hardware, just Echo's software.


Ah, but it is the point that is always ignored in this discussion:

Although "TiVo does not currently have a valid infringement finding regarding Echo's hardware, just Echo's software," TiVo most certainly has an injunction against "Infringing Products." The two arguments are completely separate issues.


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## TexasAg

space86 said:


> I have a 622, could that be shut off or only earlier models ?


Not currently.

The disagreements between Greg, jacmyoung, I, and others is whether Echo can be held in contempt regardless of the software on the listed DVRs in the injunction. Greg and others (and Tivo) say yes, the DVR functionality must be shut down regardless of the software and Echo is in contempt. jacmyoung and I (and Echo) say no, as long as the new software is "more than colorably different" Echo cannot be held in contempt.

In either case, if a model (like the 622 or 722) is not listed in the injunction, Echo does not currently need to shut them off. If Tivo later moves to add the 622, 722, and other models that are not "more than colorably different" to the injunction, that might become an issue if you follow Greg's line of reasoning. And Echo could be held in contempt if the 622, 722, and other models are not "more than colorably different."



Greg Bimson said:


> Although "TiVo does not currently have a valid infringement finding regarding Echo's hardware, just Echo's software," TiVo most certainly has an injunction against "Infringing Products." The two arguments are completely separate issues.


Says you, because you believe this case is different from all the others that say (i) an infringer is entitled to design around a patent and (ii) "more than colorably different" means no contempt.



Curtis0620 said:


> No where in the injunction does it say anything about software. It just states what DVR's must be shut off.


Echo infringed Tivo's software claims. If new software modifies the previously-infringing products and makes them "more than colorably different," the cases say no contempt (at least, the way some read the cases, others find reasons to ignore the cases).
__________________
My personal opinions are just that. Don't rely on them - I could be Charlie Ergen's pool boy.


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## jacmyoung

Greg Bimson said:


> It's procedure. Judge Folsom cannot rule on contempt because TiVo did not have a motion for the _prima facie_ violation filed with the court.


Yes it was procedural. But it is also customary to offer stern warning before a serious court ruling is going to be slapped on the defendant, especially when opportunity for reform (settlement) still exists, it is only fair, not just for the defendant, but fair for the winning party and fair to the court system, if such warning can produce positive results and reduce the dependency on the court to resolve the issues for the parties.

In the Blackberry case the judge did produce such warning prior to issuing his injunction, and that warning did produce some good results, though I thought RIM ended up not paying much of the $600M settlement after all.

The reason in this case the judge did not warn DISH in any way shape and form the possibility he might slap a big and ugly contempt charge on DISH, was likely because there will not be one.

That said however, nothing is certain. This much I have learned from all the time spent here for the last few months, there is always chance for surprise.


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## TexasAg

I'll also note that the case nobody99 cited says this:

If a trial court is faced with an overly broad injunction during a contempt proceeding, the court should interpret it according to the rule of law quoted from KSM above. Although this court stated in KSM that such a rule alleviates the unreasonableness of broad prohibitions against “infringement” of a “patent,” 776 F.2d at 1526, the court in KSM was not reviewing the propriety of an injunction under Rule 65(d). Additive Controls, 986 F.2d at 480. Here, as in Additive Controls, this court has been asked to enforce Rule 65(d). This rule, by requiring specificity in the wording of injunctions, protects enjoined parties from unwarranted contempt proceedings. Id. 

Note how the court is saying here that an "overly broad injunction" would be interpreted in line with KSM. This would seem to imply that Echo did not, in fact, need to request modification of the injunction if it thought the injunction was overly broad.
__________________
My personal opinions are just that. Don't rely on them - I could be Charlie Ergen's pool boy.


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## Curtis0620

Specifically listing the infringing DVR's is not very broad.


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## TexasAg

Curtis0620 said:


> Specifically listing the infringing DVR's is not very broad.


Tivo only has a valid infringement finding for the software. If Echo cannot take steps to remove the infringing software and replace it with "more than colorably different" (possibly even non-infringing) software, the injunction is overly broad. An infringer is "entitled to design around the claims of a patent without the threat of contempt proceedings with respect to every modified device."
__________________
My personal opinions are just that. Don't rely on them - I could be Charlie Ergen's pool boy.


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## Greg Bimson

jacmyoung said:


> In the Blackberry case the judge did produce such warning prior to issuing his injunction, and that warning did produce some good results, though I thought RIM ended up not paying much of the $600M settlement after all.
> 
> The reason in this case the judge did not warn DISH in any way shape and form the possibility he might slap a big and ugly contempt charge on DISH, was likely because there will not be one.


Then you've misread the transcript.

The judge in this case cannot issue a stern warning about letting the courts decide this issue is because the parties are now in front of the judge discussing contempt proceedings. In the Blackberry case, the injunction was never in full force and effect.


TexasAg said:


> If new software modifies the previously-infringing products and makes them "more than colorably different," the cases say no contempt (at least, the way some read the cases, others find reasons to ignore the cases).


That would be because some find reasons to ignore parts of the case law that doesn't suit their purpose. Just because new software was enabled in a 501 doesn't negate the fact the injunction plainly stated to disable that receiver or the other "Infringing Products". Anyone, if they'd like, can claim that a 501 with new software is a new receiver and should have the "more than colorably different" standard apply. Just realize that it is an "Infringing Product", new software does not change the status of the "Infringing Product", and should be disabled.


jacmyoung said:


> Yes it was procedural. But it is also customary to offer stern warning before a serious court ruling is going to be slapped on the defendant, especially when opportunity for reform (settlement) still exists, it is only fair, not just for the defendant, but fair for the winning party and fair to the court system, if such warning can produce positive results and reduce the dependency on the court to resolve the issues for the parties.


Of course, I tend to agree with this. But when lead counsel for DISH/SATS, Harold McElhinny, opens with, "our position is that this case, for all practical purposes, is concluded and should be concluded relatively quickly," even though there are a load of outstanding issues to be resolved, leaves almost no hope for a settlement.


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## TexasAg

Greg Bimson said:


> Just realize that it is an "Infringing Product", new software does not change the status of the "Infringing Product"


Even if Echo only infringed the software claims? New software wouldn't change the DVRs' status? Ever?
__________________
My personal opinions are just that. Don't rely on them - I could be Charlie Ergen's pool boy.


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## Greg Bimson

TexasAg said:


> Tivo only has a valid infringement finding for the software. If Echo cannot take steps to remove the infringing software and replace it with "more than colorably different" (possibly even non-infringing) software, the injunction is overly broad.


The time to attack an injunction is upon appeal. It didn't happen; the injunction stands as written.

If DISH/SATS wanted to attack the wording of the injunction, it should have happened already.

If DISH/SATS wanted to modify the software on their infringing products, they should have explained what they were doing to the judge, so that there could be a way out of an injunction. That didn't happen, either.


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## Greg Bimson

TexasAg said:


> Even if Echo only infringed the software claims? New software wouldn't change the DVRs' status?


Not according to the injunction.


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## TexasAg

Greg Bimson said:


> The time to attack an injunction is upon appeal. It didn't happen; the injunction stands as written.


This is from the Federal Circuit court of appeals (the court that gets to decide what the law is for patents):

_If a trial court is faced with an overly broad injunction during a contempt proceeding, the court should interpret it according to the rule of law quoted from KSM above._

The "rule of law" from KSM is that "more than colorably different" equals no contempt.
__________________
My personal opinions are just that. Don't rely on them - I could be Charlie Ergen's pool boy.


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## phrelin

space86 said:


> TVPredictions said today that E* might have to turn off are DVR's is this true ?


Oh, boy... Now we see the real problem Dish faces - not having the foggiest idea about marketing.

We saw it as DirecTV looked at the future and noticed its in marketing, stupid. DirecTV figured out that the general public thinks the iPod is unique and cool because of marketing. So DirecTV marketed itself as the provider of the most channels in the new cool high def (ignoring the fact that most of the programming is still in SD). Now, when you think of high def TV you think of them.

But Charlie still has the better boxes. Or does he? What? He's going to have to turn them off? Golly....

To effectively counter that issue, somebody at E* said let's send out a news release to the unaware financial analysts and media bloggers calling attention to the situation as follows:


> "Today, DISH Network and EchoStar filed a lawsuit against Tivo asking a Delaware court to find that our new DVR software does not infringe Tivo's '389 patent. The lawsuit is in response to Tivo's continued public statements that our new DVR software infringes.
> 
> "This action is independent of Tivo's anticipated motion for contempt in the Eastern District of Texas. We believe any contempt motion by Tivo should be denied because we are in full compliance with the injunction."


This way we can get everyone talking about the risk.

Or Charlie (and I mean in Charlie's name, not Dish or Echostar) could send out a news release offering any new or existing Dish HD subscriber an HDDVR for $49 installation + lease with contract with a provision that in the "unlikely event TiVo wins on this box" you'll get well refund the $49 and void the contract. That's how confident I - Charlie - am.


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## nobody99

TexasAg said:


> The "rule of law" from KSM is that "more than colorably different" equals no contempt.


No, it's not. The rule of law is "adjudicated devices and other devices not more than colorably different." The "more than colorably different" concept only applies to non-adjudicated devices. Period.

And since you aren't budging, and since I'm not budging, there's no point continuing to argue the point.


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## TexasAg

nobody99 said:


> No, it's not. The rule of law is "adjudicated devices and other devices not more than colorably different." The "more than colorably different" concept only applies to non-adjudicated devices. Period.


What was "adjudicated" to infringe? Answer - Echo has only infringed the software claims. The hardware claims have not yet been validly adjudicated to be infringed. The new software is not the same (even Tivo calls it modified software). The new software has not been adjudicated to infringe. So by your own standard, the "more than colorably different" concept applies to new software.
__________________
My personal opinions are just that. Don't rely on them - I could be Charlie Ergen's pool boy.


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## bobcamp1

Greg Bimson said:


> Just because new software was enabled in a 501 doesn't negate the fact the injunction plainly stated to disable that receiver or the other "Infringing Products".


Yes it does. Most of case law sides with Dish on this issue. I'm sure you can find a few instances where this is not the case, but in general if the injunction is dealing with *software only* (which this one is NOW) then a "substantially different" software update satisfies the injunction. The injunction forced Dish to update the software. They did. As a result, trick play features do not work as well. That, plus damages from prior infringement (~$110 million), is their punishment. The end. (P.S. -- software IPR isn't nearly as valuable as hardware IPR).

If Tivo wants to sue E* over the NEW software, they can. E* is going with "a best defense is a good offense" by suing Tivo in Delaware. That may mean Tivo can't sue Dish in Texas again, where the rate for finding for the plaintiffs is abnormally high. As far as the timing -- well, no sense in starting a new case the day BEFORE you meet the judge of the existing case.

On May 30, Tivo was of course trying to get all this done via the back door instead of a separate lawsuit (you can't blame them). This is what E* didn't want. And the judge was having none of it.

And if Dish doesn't get their way, the decision can most certainly be appealed. There is plenty of case law to support their argument.


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## spear61

Greg Bimson said:


> If DISH/SATS wanted to modify the software on their infringing products, they should have explained what they were doing to the judge, so that there could be a way out of an injunction. That didn't happen, either.


And that is the core of Dish's problem. Once you walk thru the courthouse door, you are no longer your own master and are required to keep the court fully informed. That injuction was stayed but was lurking around out there while on appeal. Dish knew very well that they should keep the court fully informed about any mods that might affect the courts decisions. Dish chose not to do that and will likely pay a stiff price for their royal attitude.


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## dgordo

I have a challenge for all of you, try to find case law dealing with the following facts:

A sues B for infringement.
A wins.
B has the ability to and does alter the infringing product while it is still with the end user.
The court makes a ruling on B's alteration.


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## TexasAg

dgordo said:


> I have a challenge for all of you, try to find case law dealing with the following facts:
> 
> A sues B for infringement.
> A wins.
> B has the ability to and does alter the infringing product while it is still with the end user.
> The court makes a ruling on B's alteration.


RIM gets you 1-3, but not 4 (there was never a ruling on the alteration). I haven't looked a lot, but I couldn't find anything with the exact same fact pattern.
__________________
My personal opinions are just that. Don't rely on them - I could be Charlie Ergen's pool boy.


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## dgordo

TexasAg said:


> RIM gets you 1-3, but not 4 (there was never a ruling on the alteration). I haven't looked a lot, but I couldn't find anything with the exact same fact pattern.


I have looked a lot and could not find anything either.

Makes me curious how either side can be so sure what the outcome will be.


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## nobody99

TexasAg said:


> What was "adjudicated" to infringe? Answer - Echo has only infringed the software claims.


Actually, no, that's not true. The injunction doesn't say "the software on" the eight models of DVRs. It says the DVRs.


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## jacmyoung

dgordo said:


> ...B has the ability to and does alter the infringing product while it is still with the end user...


And if the modified products are more than colorably different they are not in contempt.


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## Greg Bimson

BobCamp1 said:


> The injunction forced Dish to update the software. They did.


The injunction did no such thing.

DISH/SATS updated the software to attempt to work around ALL claims of TiVo's Time Warp patent. After implementing that software, the Court of Appeals let stand the software verdict and placed the injunction into full force and effect by removing the stay.

Simply changing software does not nullify an injunction that states DISH/SATS is to disable eight models of their DVR's.


BobCamp1 said:


> On May 30, Tivo was of course trying to get all this done via the back door instead of a separate lawsuit (you can't blame them). This is what E* didn't want. And the judge was having none of it.


So riddle me this...

TiVo files a motion for a contempt hearing on a _prima facie_ violation of the injunction. The injunction states to disable eight DVR models, so they need to be disabled.

DISH/SATS reply states they aren't in violation of the injunction. They have new software.

Judge Folsom now has to understand why DISH/SATS filed suit in Delaware on the new software. So there are really only two options:

1) DISH/SATS cannot use the new software as a defense since there is a separate proceeding that was started in Delaware, and that will cause DISH/SATS to be in contempt.
2) DISH/SATS can use the new software as a defense, but then TiVo gets to ask for discovery on it, and the Delaware suit is thrown out.

The Delaware filing is just plain stupid. It literally doesn't help DISH/SATS one bit, unless they are sabotaging their own contempt hearing, and hoping the new suit does something to alleviate the injunction (which I doubt can happen).


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## jacmyoung

spear61 said:


> And that is the core of Dish's problem. Once you walk thru the courthouse door, you are no longer your own master and are required to keep the court fully informed. That injuction was stayed but was lurking around out there while on appeal. Dish knew very well that they should keep the court fully informed about any mods that might affect the courts decisions. Dish chose not to do that and will likely pay a stiff price for their royal attitude.


Except you can not find any prior cases where the infringers were required to seek permission before modifying products.


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## dgordo

jacmyoung said:


> And if the modified products are more than colorably different they are not in contempt.


That may be true, but dont even worry about that for now, just try to find case law dealing with the 4 issues.


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## TexasAg

nobody99 said:


> Actually, no, that's not true. The injunction doesn't say "the software on" the eight models of DVRs. It says the DVRs.


You can't look at the language of the injunction and say the new software has been "adjudged." The injunction is based on the original trial decision, which found both hardware and software claims infringed. The appeals court reversed on the hardware claims. The only valid finding of infringement relates to the software claims. Echo's software is new and has not been "adjudged."



Greg Bimson said:


> Judge Folsom now has to understand why DISH/SATS filed suit in Delaware on the new software. So there are really only two options:
> 
> 1) DISH/SATS cannot use the new software as a defense since there is a separate proceeding that was started in Delaware, and that will cause DISH/SATS to be in contempt.
> 2) DISH/SATS can use the new software as a defense, but then TiVo gets to ask for discovery on it, and the Delaware suit is thrown out.
> 
> The Delaware filing is just plain stupid. It literally doesn't help DISH/SATS one bit, unless they are sabotaging their own contempt hearing, and hoping the new suit does something to alleviate the injunction (which I doubt can happen).


The judge, if he follows the "more than colorably different" standard, has to decide whether the new software is "more than colorably different" compared to the old software. Only if he finds that the new software is not "more than colorably different" does he need to decide if the new software is infringing (and if it is, Echo is in contempt).

Echo is likely assuming that since the new software is quite different from the old software (I am assuming this since they know what the software is and have released some details about it), the "more than colorably different" standard is satisfied. At that point, Tivo would need to file a new lawsuit for the new software. Echo is trying to prevent that since they filed first in Delaware on the new software. If Delaware takes the case, Tivo can't file the new lawsuit in Texas (it would be transferred to Delaware since Echo filed first on the new software).
__________________
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## jacmyoung

Again, this much we agree, the judge can explain his injunction in several ways:

1) My intent is to stop DISH from infringement on the hardware, why I said DVR501...
2) My intent is to stop DISH from infringement on the software, why I said disable the DVR functions...
3) My intent is to stop DISH from using those DVRs period, no modifications may be made on those products to make any difference.

The judge can pick any one of the three, or 1 and 2.

If he picks 1 and/or 2, DISH will not be in contempt, and the judge is well explained, no one can refute him.

But for the judge to pick 3 as the Tivo fans have hoped, he will be faced with serious question about why his decision is in contrast to all others in the past, where the law specifically states that legitimate modification of an infringing product is allowed.

Now put yourself in the judge's shoes, ask yourself this question, which one would you likely pick? The one that easily gets him off the hook, and conforms to the intent of the law and all past cases, or would you rather stick your neck out and make history, pick 3 and be left to answer the tough question?

The only way you'd pick 3 will be if you have a vast interest in Tivo to win, and you are willing to be subject to such questioning by the appeals court, with no prior cases at your side to support you.

Do you think the judge should have a vast interest in one party to win?


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## Greg Bimson

Again, an injunction isn't only issued to stop infringement. The four part test for issuing an injunction doesn't even list ongoing infringement as an issue.

And this was left off of number three:
3) My intent is to stop DISH from using those DVRs *found to be infringing*, period, no modifications may be made on those products to make any difference.


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## jacmyoung

Greg Bimson said:


> Again, an injunction isn't only issued to stop infringement. The four part test for issuing an injunction doesn't even list ongoing infringement as an issue.
> 
> And this was left off of number three:
> 3) My intent is to stop DISH from using those DVRs *found to be infringing*, period, no modifications may be made on those products to make any difference.


But you do understand he will be left to answer the exact same question, why? The law states in plain back and white, an infringing product can be modified, as long as the modification is legit, and the difference made is more than colorable.


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## TexasAg

jacmyoung said:


> But you do understand he will be left to answer the exact same question, why? The law states in plain back and white, an infringing product can be modified, as long as the modification is legit, and the difference made is more than colorable.


In fact, the cases specifically say there cannot be a finding of contempt when the difference made is more than colorable, and any contempt proceeding must end when the difference made is more than colorable.
__________________
My personal opinions are just that. Don't rely on them - I could be Charlie Ergen's pool boy.


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## jacmyoung

dgordo said:


> That may be true, but dont even worry about that for now,


What did you mean, what else is to be worried about now?



> just try to find case law dealing with the 4 issues.


Were you asking me to find case law or are you trying to find them yourself? What 4 issues?


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## TexasAg

Greg Bimson said:


> Again, an injunction isn't only issued to stop infringement. The four part test for issuing an injunction doesn't even list ongoing infringement as an issue.


The four-part test might not list ongoing infringement as a requirement, but the patent laws controlling patents do.

According to 35 USC 283, courts may "grant injunctions in accordance with the principles of equity to prevent the violation of any right secured by patent, on such terms as the court deems reasonable."

The court is free to grant an injunction to prevent future infringement of the patent. The court cannot grant an injunction to prevent lawful "design-arounds" that would potentially avoid infringement, namely those that are "more than colorably different."
__________________
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## peak_reception

James Long said:


> The lack of confidence comes from them openly asking for motion 2 before motion 1 is filed.


 Here is what they said: "THE SECOND PART OF THE INJUNCTION QUESTION IS THIS: IF
THE COURT SOMEHOW DECIDED THAT THAT WAS NOT A VIOLATION OF THE INJUNCTION (underlining by peak), THEN WE WOULD NEED SOME LIMITED DISCOVERY ABOUTTHEIR POSITION ON WHY THEIR SUPPOSED DESIGN-AROUND DOES OR DOESN'T WORK; AND WE COULD TAKE THAT DISCOVERY." -- Page 5, 6-10. So they weren't asking for motion 2, as you say, but rather just maintaining their right to respond (with discovery) if "somehow" the court decided that the injunction was not violated by the "supposed design-around" that Echo wants validated. So they're pretty dismissive about the possibility but have Plan B just in case. No lack of confidence there.



> Not preparing for all eventualities comes from not walking in to court with a motion ready to file based on the judge's decision. Do these lawyers not THINK what would be the possible outcomes? If they need help, they can read this thread.


 They only needed to bring the motion they wanted, imo. A sharp, focused, pithy motion to hold Echo in contempt for violating the injunction as written. *Set the agenda and go after it!* Instead they are overly cautious and now pay for it with a big delay and have to react to Echo initiatives [like the suit in DE]. It's true that the judge said he had a very busy schedule coming up but I wonder if he might have squeezed in a laser beam motion (*focused!*) on contempt sometime before August if it had been so presented (as I suggest above) with urgency on May 30.

woulda, coulda, shoulda. If TiVo IS in a hurry they're blowing opportunities.


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## dgordo

jacmyoung said:


> What did you mean, what else is to be worried about now?
> 
> Were you asking me to find case law or are you trying to find them yourself? What 4 issues?


I'm saying that unless we can find case law dealing with the first four (now 5) issues we don't even need to get to that point. I was asking everyone to look for them but as we already discussed neither of us could find any cases on point.

A sues B for infringement.
A wins.
An injunction is entered against B's product. (not on my original list)
B has the ability to and does alter the infringing product while it is still with the end user.
The court makes a ruling on B's alteration.


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## jacmyoung

TexasAg said:


> In fact, the cases specifically say there cannot be a finding of contempt when the difference made is more than colorable, and any contempt proceeding must end when the difference made is more than colorable.


I knew that, but apparently the other side continues to ignore that, so what I did was to give them some ground, assume we don't even have to address the above, just pretend as a normal person, given the choises, some easy and logical, some tough and leave alot to explain.

And assume one does not have a vast interest for one party to win (which I thought what the judge is suposed to be but I could be wrong all this time), honestly what path would you rather take?

If you are a betting person, which choice, 1, 2, 1&2, or 3, would you bet on the judge to pick?


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## Greg Bimson

jacmyoung said:


> The law states in plain back and white, an infringing product can be modified, as long as the modification is legit, and the difference made is more than colorable.





TexasAg said:


> In fact, the cases specifically say there cannot be a finding of contempt when the difference made is more than colorable, and any contempt proceeding must end when the difference made is more than colorable.


Go back and take a look at those case laws again. Any "*new* modified product". As I recall, the "Infringing Products" are not new, as they have been in service for at least two years.

I do concede there may be new software on them. That does not avoid the present-tense language of the injunction.

Edit: *The problem here is that no one can find case law that supports a design around on a listed, enjoined model.*


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## TexasAg

Greg Bimson said:


> I do concede there may be new software on them.


Thank you. And since the software claims were the ones that were infringed, I think perhaps new software would be considered a "new modified product".
__________________
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## Greg Bimson

TexasAg said:


> Thank you. And since the software claims were the ones that were infringed, I think perhaps new software would be considered a "new modified product.


Not according to the injunction.


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## TexasAg

Greg Bimson said:


> Not according to the injunction.


The injunction that doesn't need to be based on preventing future infringement, right?



Greg Bimson said:


> Edit: *The problem here is that no one can find case law that supports a design around on a listed, enjoined model.*


Yet there is ample case law saying that a modified product can be released and no contempt is warranted if the modified product is "more than colorably different" than the infringing product.

So now you're a judge. So see ample law saying an infringer is "entitled" to design around a patent, and no contempt is warranted if the modified product is "more than colorably different" than the infringing product. You also know that many cases refer to the new modified products as "modified devices" (and not "new modified devices," as opposed to "merely modified devices"). What to do...
__________________
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## peak_reception

Question #1: So *exactly* when did Echo download their workaround software to the listed infringing devices?

Question #2: Whom did they inform? Was Judge Folsom among the informed?


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## jacmyoung

dgordo said:


> I'm saying that unless we can find case law dealing with the first four issues we don't even need to get to that point. I was asking everyone to look for them but as we already discussed neither of us could find any cases on point.
> 
> A sues B for infringement.
> A wins.
> An injunction is entered against B's product. (not on my original list)
> B has the ability to and does alter the infringing product while it is still with the end user.
> The court makes a ruling on B's alteration.


I missed that one and I agree it is a very good one. The key here is "still with the end users."

While it may be difficult to find a case the dealt with "still with the end users" situation, the law and past cases never said products still with the end users may not be legitmately modified. In fact the case law I quoted before was clear in what is the condition to be considered here:

"The question arises when the infringer modifies the infringing products and continue as before..."

No conditions as where the products are, how the modifications may be made.

Now I have also again tried to take one step back, to give the other side the benefit, to talk about the "end user" issue.

Both sides had agreed if the judge in the normal situation decided to punish the infringer by insisting the infringer to disable all products with the end users, and to do so the infringer must "recall" all infringing products, because in the past this would be the only way to "disable" infringing prodcuts with the end users. And then after the infringer receives all the products, they then modifiy them and send them back out.

According to the other side this would be ok, as long as the modified products no longer infringe.

But realize one thing, the above is not too different than what we have here. The only difference is now we have a very easy way to disable the infringing products, it does not require anything above, just a software download. And the same easy way to disable the products, can also be used to modify the products "and continue as before".

What the other side basically is saying, the infringer must use such very easy way to disable, but he is not allowed to use the same easy way to modify and continue.

Is this fair? Is this really what the law had intent it to be?


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## Greg Bimson

The injunction states to disable the 501, 508, 510, 522, 625, 721, 941 and 942 (the "Infringing Products"). The new software didn't change those models to something else. New software product XXYXX does not change the injunction order to disable the "Infringing Products".

And let me be blunt about something else, which may be a bit surprising. Even if the hardware claims were not reversed and remanded, we would still be at this point. I finally read the Fish and whatever letter that basically told DISH/SATS how to work around the patent. If the entire verdict was in TiVo's favor, DISH/SATS would be doing exactly as they are now.

That is why TiVo never went after the hardware claims. It isn't worth it. It doesn't add any money and it doesn't add any additional help to fight the contempt claim.


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## TexasAg

Greg Bimson said:


> The injunction states to disable the 501, 508, 510, 522, 625, 721, 941 and 942 (the "Infringing Products"). The new software didn't change those models to something else. New software product XXYXX does not change the injunction order to disable the "Infringing Products".


Would you agree that Echo could have released a new product with the new software (say model FUJ1) and not violated the injunction (assuming the new software is "more than colorably different)?

Edit: Actually, I like jacmyoung's example better. If Echo had recalled all of the listed DVRs, put new software on them, slapped a new model number on them, and sent them back out, would that violate the injunction (assuming the new software is "more than colorably different)?
__________________
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## Greg Bimson

TexasAg said:


> Would you agree that Echo could have released a new product with the new software (say model FUJ1) and not violated the injunction?


Of course. What is one of those new ones, the 211? I don't think it ever had the old software. That one would require a new suit, unless the new software is not more than colorably different.


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## TexasAg

Greg Bimson said:


> Of course. What is one of those new ones, the 211? I don't think it ever had the old software. That one would require a new suit, unless the new software is not more than colorably different.


How about jacmyoung's example?
__________________
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## Herdfan

TexasAg said:


> Actually, I like jacmyoung's example better. If Echo had recalled all of the listed DVRs, put new software on them, slapped a new model number on them, and sent them back out, would that violate the injunction (assuming the new software is "more than colorably different)?


It depends on the judge's intent. If he intended only to remove the infringement, the it probably would. But if his intent was to punish DISH for the infringement and that punishment was to turn 4M-192K DVR's into bricks, then no.


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## spear61

I recall Microsoft being mentioned in the transcript. Apparantly, that has become the reference for post injunction infringement damages.

http://www.law.washington.edu/casrip/newsletter/vol15/newsv15i1amado.html


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## TexasAg

Herdfan said:


> It depends on the judge's intent. If he intended only to remove the infringement, the it probably would. But if his intent was to punish DISH for the infringement and that punishment was to turn 4M-192K DVR's into bricks, then no.


35 USC 283: Courts may "grant injunctions in accordance with the principles of equity to prevent the violation of any right secured by patent, on such terms as the court deems reasonable."

Can anyone provide a link to a case where an injunction was issued solely to punish an infringing party in a patent lawsuit without any regard for preventing future infringement?
__________________
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## peak_reception

Notwithstanding the merits of whether Echo's new software still infringes or not, the fact remains that all Infringing Products listed in the injunction continue to legally infringe unless or until proven otherwise. Echo will get their day(s) in court, in either TX or DE, but TiVo will probably get their day first in September. It might be that the first one to cross the finish line wins.


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## TexasAg

peak_reception said:


> Notwithstanding he merits of whether Echo's new software still infringes or not, the fact remains that all Infringing Products listed in the injunction continue to legally infringe unless or until proven otherwise.


Are they still "infringing" products, though? Echo made sure "infringing" appeared multiple times in the injunction.
__________________
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## Curtis0620

TexasAg said:


> Are they still "infringing" products, though? Echo made sure "infringing" appeared multiple times in the injunction.


Yes, they are.


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## peak_reception

TexasAg said:


> Are they still "infringing" products, though? Echo made sure "infringing" appeared multiple times in the injunction.


 Aren't they legally infringing until proven otherwise? You're the patent lawyer (and by the way I respect your opinion and straight talk quite a bit from what I've read on the TiVo community thread. Welcome to this discussion).


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## TexasAg

peak_reception said:


> Aren't they legally infringing until proven otherwise? You're the patent lawyer (and by the way I respect your opinion and straight talk quite a bit from what I've read on the TiVo community thread. Welcome to this discussion).


Well, there really isn't a doctrine of "infringing until proven noninfringing" when it comes to contempt proceedings in patent cases (I've used that language before on the other forum since some folks were using similar language and seemed to like it).

The standard for contempt in a patent case can be expressed like this:

IF (new product is "more than colorably different" than old infringing product) 
THEN no contempt
ELSE IF (new product infringes claims)
THEN contempt
ELSE no contempt

There isn't really an assumption that the new product infringes. I guess you could say there is the presumption that it might infringe unless it can be shown that the new product is "more than colorably different." If the new product is "more than colorably different," you really can't assume it still infringes, which is why contempt is not appropriate in this situation. You could also probably say that if the new product is not "more than colorably different," there is a high likelihood that the new product infringes. And obviously the same original product is presumed infringing forever (and no, Echo's current DVRs are not the same original products found to infringe because of the new software).

I am not saying that Echo's new software is non-infringing. It might very well be infringing. The issue, though, is does the new software make the listed DVRs "non-adjudicated devices" in the context of this case? I say it does, since the only claims those DVRs have infringed were Tivo's software claims and Echo appears to have an argument that the new software is "more than colorably different."
__________________
My personal opinions are just that. Don't rely on them - I could be Charlie Ergen's pool boy.


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## peak_reception

I understand what you are saying about "colorable difference" and contempt hearings in patent law. 

However, isn't meeting a "more than colorably different" threshhold in software ridiculously easy to do? And therefore isn't that low standard open to perpetual abuse by an infringer who can make some changes every time a contempt hearing looms, and claim -- with legal justification -- that they are once again not subject to contempt because of it, even if the changes are such that the modified software is found to still infringe every time after protracted litigation?


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## TexasAg

peak_reception said:


> However, isn't meeting a "more than colorably different" threshhold in software ridiculously easy to do?


Now you know why someone said earlier that hardware IP is more valuable than software IP.



peak_reception said:


> And therefore isn't that standard open to perpetual abuse by an infringer who can make some changes every time a contempt hearing looms, and claim -- with legal justification -- that they are once again not subject to contempt because of it, even if the changes are such that the modified software is found to still infringe every time after protracted litigation?


Well, you can't just change something unrelated to why the software was found infringing - for example, if Echo's procedures A-E infringed Tivo's software claim, Echo couldn't modify procedure F and say it was "more than colorably different." That would be equivalent to saying that while Ford infringed someone's patent for their convertible tops, Ford changed the color of the cars. You'd expect Ford to have to change the convertible tops to have any argument that there is "more than colorable difference." I'd imagine any court would say Echo needed to modify the actual procedures that infringed the software claim to have any shot of showing a "more than colorable difference."
__________________
My personal opinions are just that. Don't rely on them - I could be Charlie Ergen's pool boy.


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## jacmyoung

Greg Bimson said:


> The injunction states to disable the 501, 508, 510, 522, 625, 721, 941 and 942 (the "Infringing Products"). ...QUOTE]
> 
> Once again I have taken a step back before to give you the benefit of the argument, and in response, I said yes those DVRs were in fact disabled, when the new software was downloaded, during and after the download, the DVRs were not functional, they were indeed disabled, after the re-boot, they became the modified DVRs and continued as before.
> 
> Can you agree with the above statement? If so, then the quesiton becomes, how long after the "disabling" may the modified DVRs continue as before? According to you never, am I right?
> 
> So now you have injected an additional meaning into the injunction that is not there, the injunction never said if or when the DVRs on the list may be modified and then continue as before, only that the DVR functions be disabled, no where did it say the DVR functions may not be brought back, did it?
> 
> Remember be specific, that is what the injunction should be, if the judge anticipated the DVR functions could be brought back later, he would have added a sentence to prevent it from happening, if he truely intended to disable the DVRs forever, regardless. In fact the judge was fully aware of such unique way to reinstate DVR functions, because he required the use of the same method to disable. And when DISH reminded the judge he was aware of such download, the judge did not say no. So the judge was fully aware of the situation.
> 
> The question is then why he failed to add a follow up to say DISH may not reactivate the disabled DVR functions after the disabling? Maybe, just maybe, it was never his intent to do so?


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## peak_reception

Directed to TexasAg: 

So the modified software is more than colorable or merely colorable with big consequences to follow. Will judge Folsom decide the issue? 

If so, how can he do so without a technical advisor? And why did TiVo and Echo both agree that an adivsor wasn't necessary for the contempt hearing? 

I will check back later tonight.


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## TexasAg

peak_reception said:


> So the modified software is more than colorable or merely colorable with big consequences to follow.


Yes.



peak_reception said:


> Will judge Folsom decide the issue?


Yes, the judge will decide the issue, one way or the other, and someone will appeal.



peak_reception said:


> If so, how can he do so without a technical advisor? And why did TiVo and Echo both agree that an adivsor wasn't necessary for the contempt hearing?


I think everyone will have to wait until we actually see Tivo's motion, Echo's response, and how the court responds. I expect Tivo to file a limited motion like they said, Echo to oppose, and the court to either grant Tivo discovery for the new software (indicating it is relevant) or deny Tivo discovery for the new software (indicating it is not relevant). Tivo said they might need discovery depending on the issues that Echo raises, which I suspect is their way of saying they want discovery if Echo raises the new software in their defense to the contempt motion. And the court will likely decide this long before 9/4 - Tivo needs discovery if the new software will be an issue on 9/4, and Tivo can't wait until the week before to try and get it. I'd expect someone to raise the issue of a technical advisor at some point, like if and when the court grants discovery for the new software.

Tivo clearly wants the 9/4 hearing only to focus on whether the DVRs have been shut down and want no mention of the new software. Echo is clearly prepared to argue that the new software is central to avoiding contempt and must be considered, even in light of Tivo's limited contempt motion. Echo's lawyer actually said Tivo can file whatever motion it wants, but the court still needs to decide whether contempt is the right way to go (presumably by applying the more than colorably different standard).
__________________
My personal opinions are just that. Don't rely on them - I could be Charlie Ergen's pool boy.


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## Greg Bimson

jacmyoung said:


> Can you agree with the above statement? If so, then the quesiton becomes, how long after the "disabling" may the modified DVRs continue as before? According to you never, am I right?


Until the expiration of the Time Warp patent. Or at least that is what the injunction says.


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## Grandude

Wow, I'm glad you guys have figured out what is going to happen. I am so relieved.
1261 guesses and counting.........................


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## TexasAg

Greg Bimson said:


> Until the expiration of the Time Warp patent. Or at least that is what the injunction says.


How about what we asked earlier: If Echo had recalled all of the listed DVRs, put new software on them, slapped a new model number on them, and sent them back out, would that violate the injunction (assuming the new software is "more than colorably different)?



Grandude said:


> Wow, I'm glad you guys have figured out what is going to happen. I am so relieved.
> 1261 guesses and counting.........................


In all fairness, it is more like 15-20 guesses repeated a lot.
__________________
My personal opinions are just that. Don't rely on them - I could be Charlie Ergen's pool boy.


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## jacmyoung

peak_reception said:


> I understand what you are saying about "colorable difference" and contempt hearings in patent law.
> 
> However, isn't meeting a "more than colorably different" threshhold in software ridiculously easy to do? And therefore isn't that low standard open to perpetual abuse by an infringer who can make some changes every time a contempt hearing looms, and claim -- with legal justification -- that they are once again not subject to contempt because of it, even if the changes are such that the modified software is found to still infringe every time after protracted litigation?


Realize that Tivo can seek new proceeding to find the new software still infringing, if so DISH will still have to pay the demages while using the new software, and be subject to new injunctive relief, and may be some fine.

While it may seem a perpetual event, as long as the harm done to Tivo be paid, one way or the other, so who cares?

What the law says, one must not be prevented from using innovation and workround, for the sake of protecting the patentee. If so it discourages legitimate advances and improvement of our society.


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## jacmyoung

peak_reception said:


> Directed to TexasAg:
> 
> So the modified software is more than colorable or merely colorable with big consequences to follow. Will judge Folsom decide the issue?
> 
> If so, how can he do so without a technical advisor? And why did TiVo and Echo both agree that an adivsor wasn't necessary for the contempt hearing?
> 
> I will check back later tonight.


The "technical adviser" reference had nothing to do with the new software colorable difference discussion, it had to do with how to determine if a DVR, among the 192,000 units allowed to continue to infringe, needed repair or swapping, can another infringing DVR take its place as long as the 192,000 quota is not exceeded.

DISH says yes, Tivo says no, because according to Tivo, once replaced, the replacement shall be judged by the "only colorable difference" test, and if the answer is yes, the replacement may not take place. The "technical adviser" suggested by the judge was to help resolve the difference between DISH and Tivo on this issue only, and both DISH and Tivo said it was not necessary, the above is only a legal issue, not a technical one.

Like TexasAg said, Tivo only wants to discuss the contempt issue based on the face value of the injunction, nothing else, just like many Tivo people insisted here. DISH on the other hand insists all past case law, and the law itself to be used to determine the contempt issue.

Because DISH is saying arguing on the face of the injunction is not helpful, because it does not address the intent of the injunction with regard to the law that governs how the injunctions should be administered, that is an injunction is to reflect the spirit of the law.

Tivo in fact is not arguing much at all, only asking the judge to give his interpretation what the face of his injunction means. Whether he meant something that was not the usual intended purpose of an injunction according to the law, whether it means something unique, say just shut them off and never to turn them back on, just throw them away, kind of meaning.

If you read carefully between the lines, you may realize even Tivo was not sure of the answer, they just asked the judge to clarify, which was why they wanted continued motion for limited discovery on the new software infringement issue in case the judge found DISH not in contempt solely on the face of the injunction. But such additional request was not appropriate because a contempt proceeding is not the right forum to address the new software infringement issue.

The judge will of course clarify the face of his injunction issue in the next hearing, and like I said, he can offer any one of the three explanations above. Any one of them will be good enough to fit the face o the injunction.

If he chooses 1, or 2 or 1&2, he is to likely found DISH not in contempt, and he will also be home free. No need to be subject to any more scrutiny.

But if he insists 3, while he can found DISH in contempt, on appeal, the appeals court will still be faced with the same questions, except the appeals court will try to interpret the judge's injunction for him, and the same issue about why there is not prior cases to go by in support of the #3 interpretation, why it seems against what the law said, and the intent of the injunction and workaround issue. Why all the sudden in this case somehow workaround is not allowed, what is so special about it that makes it able to defy the conventional wisdom, and is such action appropriate?

I have read enough cases to bet on that it will be very likely the appeals court will come to DISH's side. Because when in doubt, the defendant gets the benefit of it.

There is a case I read about two drug companies (don't remember the names), which I have used some time before. A sued B for patent infringement on the make, sell and use of drug C, A won the lawsuit, and an injunction was ordered on B to stop the making, selling and using&#8230;drug C. B later filed a patent application for the same drug C, despite the fact drug C was already patented by A. This act of B was clearly only to disrupt, because there was no chance B would ever get a patent on drug C, because A had the patent.

A sought a contempt charge from the same judge, the judge agreed, issued a contempt ruling against B for filing such nonsense patent application. On appeal, the ruling was overturned, because the appeals court could not find in the language of the injunction that said B could not file a patent application, on anything, for any reason. B was allowed to file a patent application on anything, including on drug C, no matter how meaningless or disruptive it was, because the injunction did not say B could not file a patent application on drug C.

Now one can argue the same here when it comes down to it, DISH can say to the appeals court, look we did disable the DVR functions, if only for just a few minutes, and after that time a modified DVR continued as before. We shall not be prevented from reinstalling DVR functions after the modification, because nowhere in the injunction did it say we cannot do that.

DISH's act may appear despicable to the Tivo users, it may appear DISH is trying to get away with murder by a clever procedure to defeat the judge's injunction, but as long as such act is not within the scope of the injunction, it can not be stopped by the court.


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## James Long

Greg Bimson said:


> If DISH/SATS wanted to modify the software on their infringing products, they should have explained what they were doing to the judge, so that there could be a way out of an injunction. That didn't happen, either.


Per Tivo's filing for the May 30th meeting it DID happen ... but the judge shot them down. Of course at that time the hardware was also in violation ... hard to fix hardware with software. It made sense to just label the receivers themselves "infringing" without considering the software separately.


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## James Long

peak_reception said:


> James Long said:
> 
> 
> 
> The lack of confidence comes from them openly asking for motion 2 before motion 1 is filed.
> 
> 
> 
> Here is what they said: "THE SECOND PART OF THE INJUNCTION QUESTION IS THIS: IF THE COURT SOMEHOW DECIDED THAT THAT WAS NOT A VIOLATION OF THE INJUNCTION (underlining by peak), THEN WE WOULD NEED SOME LIMITED DISCOVERY ABOUTTHEIR POSITION ON WHY THEIR SUPPOSED DESIGN-AROUND DOES OR DOESN'T WORK; AND WE COULD TAKE THAT DISCOVERY." -- Page 5, 6-10. So they weren't asking for motion 2, as you say, but rather just maintaining their right to respond (with discovery) if "somehow" the court decided that the injunction was not violated by the "supposed design-around" that Echo wants validated. So they're pretty dismissive about the possibility but have Plan B just in case. No lack of confidence there.
Click to expand...

If they were confident that motion 1 would be won why ask the court to help them with what would be motion two? Yes, there was a motion two. That's why they wanted the discovery ... so they could file motion two.


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## James Long

Greg Bimson said:


> The injunction states to disable the 501, 508, 510, 522, 625, 721, 941 and 942 (the "Infringing Products"). The new software didn't change those models to something else.


That is for a court to decide. DISH obviously disagrees with you ... Tivo isn't even confident that they would win on that clear cut argument.


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## James Long

TexasAg said:


> IF (new product is "more than colorably different" than old infringing product)
> THEN no contempt
> ELSE IF (new product infringes claims)
> THEN contempt
> ELSE no contempt


Following that, a product that is ONLY COLORABLY DIFFERENT does not have to lead to a ruling of contempt ... it has to infringe as well as be only colorably different.


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## TexasAg

James Long said:


> Following that, a product that is ONLY COLORABLY DIFFERENT does not have to lead to a ruling of contempt ... it has to infringe as well as be only colorably different.


I know. In addition to devices that are already adjudged infringing, contempt is appropriate for "other devices which are no more than colorably different therefrom and which clearly are infringements of the patent." Chances are very high, though, that an only colorably different product does infringe. Imagine trying to argue that an only colorably different product doesn't infringe, while the original product that is only colorably different does infringe. You could probably remove the 2nd IF statement and just say if it isn't more than colorably different then there is contempt.
__________________
My personal opinions are just that. Don't rely on them - I could be Charlie Ergen's pool boy.


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## James Long

TexasAg said:


> I know. In addition to devices that are already adjudged infringing, contempt is appropriate for "other devices which are no more than colorably different therefrom and which clearly are infringements of the patent." Chances are very high, though, that an only colorably different product does infringe. Imagine trying to argue that an only colorably different product doesn't infringe, while the original product that is only colorably different does infringe. You could probably remove the 2nd IF statement and just say if it isn't more than colorably different then there is contempt.


That may be what DISH is banking on ...
The current 501 isn't more than colorably different than the 501 ruled infringing.
But the current 501 has new software and it itself is not infringing.
The 501 could be a product "only colorably different" and non infringing.

How can a court rule that offering a product is in contempt if the product doesn't infringe?


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## TexasAg

James Long said:


> That may be what DISH is banking on ...
> The current 501 isn't more than colorably different than the 501 ruled infringing.
> But the current 501 has new software and it itself is not infringing.
> The 501 could be a product "only colorably different" and non infringing.


I would argue that the current 501 is more than colorably different due to the new software (and Echo only infringed Tivo's software claims up to this point).
__________________
My personal opinions are just that. Don't rely on them - I could be Charlie Ergen's pool boy.


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## jacmyoung

If the judge goes beyond the “face of the injunction” against Tivo's wish, then he will have to look at the colorable difference issue between the old DVR501 and the modified DVR501, and of course the only difference will be the software, and of course he will have to determined if the new software is more than, or only, colorably different, compared to the old software. He cannot even discuss the new software infringement issue in the contempt hearing.

A modified device more than colorably different can still infringe, but that does not matter, DISH will not be in contempt. A modified device only colorably different will cause DISH be in contempt, and at that point there is no need to even consider if the modified device still infringes or not, the question will be moot. They will not be able to use the modified device period, even if by some unlikely force it later can somehow be proven non-infringing.

To find the new software more than colorably different, compared to he old software, will be very easy. I have done software coding, almost no two codes are mere colorably different, they almost always are more than, even if they do the exact same things.


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## peak_reception

jacmyoung said:


> Realize that Tivo can seek new proceeding to find the new software still infringing, if so DISH will still have to pay the demages while using the new software, and be subject to new injunctive relief, and may be some fine.
> 
> While it may seem a perpetual event, as long as the harm done to Tivo be paid, one way or the other, so who cares?


 That's a fair point, that damages would still accrue, but in this case TiVo is a company which is desperately short on cash and may not make it through many more cycles of such cat and mouse litigation. It's very expensive and they haven't received a penny yet in damages that I know of.



> What the law says, one must not be prevented from using innovation and workround, for the sake of protecting the patentee. If so it discourages legitimate advances and improvement of our society.


 At the same time it may encourage and abet determined infringers with deep pockets.


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## TexasAg

peak_reception said:


> At the same time it may encourage and abet determined infringers with deep pockets.


Which is what triple damages and attorneys' fees are for. That gets awfully expensive real quick.
__________________
My personal opinions are just that. Don't rely on them - I could be Charlie Ergen's pool boy.


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## sbiller1

peak_reception said:


> That's a fair point, that damages would still accrue, but in this case TiVo is a company which is desperately short on cash and may not make it through many more cycles of such cat and mouse litigation. It's very expensive and they haven't received a penny yet in damages that I know of.


They should have the money released out of escrow after their appeal to SCOTUS (I've read that its due July 18) is rejected. That would give them a large infusion of cash. Of course, they may have better things to do than spend it on lawyers.

One question, if TiVo loses the contempt ruling based on colorably different, what is their next course of action? Do they pursue the hardware claims again? Do they pursue multiple avenues (i.e., HW and SW) simultaneously?


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## scooper

Dish/Echo has already filed in Delaware on their new version of software, so that's taken care of. It's up to Tivo whether they still want to pursue the H/W claims.


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## peak_reception

jacmyoung said:


> The "technical adviser" reference had nothing to do with the new software colorable difference discussion, it had to do with how to determine if a DVR, among the 192,000 units allowed to continue to infringe, needed repair or swapping, can another infringing DVR take its place as long as the 192,000 quota is not exceeded.


I'm not sure you're right about this. After the repair/swapping discussion came this on page 20, 20-25:

THE COURT: ANY *OTHER* MATTERS? ((my emphasis))
MR. MCELHINNY: NOTHING, YOUR HONOR.
MR. CHU: THANK YOU.
THE COURT: VERY WELL. I APPRECIATE EVERYONE -- OH,
THE COURT DID NOT HAVE A TECHNICAL ADVISOR INITIALLY. WHAT ARE
THE PARTIES' THOUGHTS ON PERHAPS A TECHNICAL ADVISOR FOR THIS
*PHASE* OF THE CASE? ((my emphasis; phase, meaning the contempt phase I assume))



> Like TexasAg said, Tivo only wants to discuss the contempt issue based on the face value of the injunction, nothing else, just like many Tivo people insisted here. DISH on the other hand insists all past case law, and the law itself to be used to determine the contempt issue.


 At least we can all agree on this. TiVo wants the injunction enforced as written. Echo views the injunction as no longer reflecting the real world situation due to the modified software they downloaded, and therefore now inapplicable as written.



> Now one can argue the same here when it comes down to it, DISH can say to the appeals court, look we did disable the DVR functions, if only for just a few minutes, and after that time a modified DVR continued as before. We shall not be prevented from reinstalling DVR functions after the modification, because nowhere in the injunction did it say we cannot do that.


Didn't Echo try to get language into the injunction (before it was finalized) to the point that they should have opportunity to design around infringement issues? And wasn't that language rejected by the court? If so (I never saw the source of that claim) why would the judge reject that possibility if it is indeed an important pillar of patent law?



> DISH's act may appear despicable to the Tivo users, it may appear DISH is trying to get away with murder by a clever procedure to defeat the judge's injunction, but as long as such act is not within the scope of the injunction, it can not be stopped by the court.


Same question in reply as above. Thx.


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## peak_reception

James Long said:


> If they were confident that motion 1 would be won why ask the court to help them with what would be motion two? Yes, there was a motion two. That's why they wanted the discovery ... so they could file motion two.


 The key word is IF. A contingency.



> *IF* THE COURT SOMEHOW DECIDED THAT THAT WAS NOT A VIOLATION OF THE INJUNCTION (underlining by peak), THEN WE WOULD NEED SOME LIMITED DISCOVERY ABOUTTHEIR POSITION ON WHY THEIR SUPPOSED DESIGN-AROUND DOES OR DOESN'T WORK; AND WE COULD TAKE THAT DISCOVERY." -- Page 5, 6-10.


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## James Long

Sitting in an office an preparing filings for a contingency is good. Asking the court for preemptive discovery ... going fishing for information you don't need unless you're wrong ... isn't good.


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## peak_reception

Judge Folsom is sick and tired of this TiVo v Echo litigation. Even more so than James Long  

Let's say he wants to be over and done with it. What's his most direct route to putting a stop to it short of convincing the parties involved that they should settle? 

Let's say the parties won't settle (not hard to imagine). 

Isn't judge Folsom's biggest club the injunction as written? 

If he wields that over Echo and finds them in contempt they can and will appeal of course but then they risk the possibility that the injunction may not be stayed in the interim, don't they? And isn't that a risk they cannot take? 

So he can put a stop to all of this by that most direct method, no? 

The alternative: Many more months or even years of further litigation and argument and clogging up the courts with more of the same. (not to mention clogging up dbstalk.com with more of the same for many more months or years to come)


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## jacmyoung

peak_reception said:


> Judge Folsom is sick and tired of this TiVo v Echo litigation. Even more so than James Long
> 
> Let's say he wants to be over and done with it. What's his most direct route to putting a stop to it short of convincing the parties involved that they should settle?
> 
> Let's say the parties won't settle (not hard to imagine).
> 
> Isn't judge Folsom's biggest club the injunction as written?
> 
> If he wields that over Echo and finds them in contempt they can and will appeal of course but then they risk the possibility that the injunction may not be stayed in the interim, don't they? And isn't that a risk they cannot take?
> 
> So he can put a stop to all of this by that most direct method, no?
> 
> The alternative: Many more months or even years of further litigation and argument and clogging up the courts with more of the same. (not to mention clogging up dbstalk.com with more of the same for many more months or years to come)


If he truely wants to wash his hands on this one, he will just found in favor of DISH (again no one can refute him on his interpretation of his own injunction as #1 and #2 I stated above), and if DISH succeeds in DE accepting its new software suit, Judge Folsom will indeed be done with this one. But a judge should not do so just because he dose not want to continue, but he could.

As far as when DISH proposed to modify the software to avoid the injunction back then, it was to avoid the injunction, and the judge said no for good reasons. We are now in a different phase, in contempt of court discussion, not about the use of the software to avoid the injunction, but to avoid a contempt charge.

BTW, there is no stay of the injunction anymore, it is a matter of whether DISH is in contempt or not. Even if the judge finds DISH in contempt, as long as DISH prevails on appeal to have the ruling overturned, they can continue to use the DVRs with no consequences, that is because the DVRs now are modified, not the *same* as the ones described in the injunction, despite what most Tivo fans think otherwise. But if DISH fails on all appeals, they are done with. The appeal can take a long time to complete too.


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## jacmyoung

TexasAg said:


> Which is what triple damages and attorneys' fees are for. That gets awfully expensive real quick.


While this is true, unfortunately in many situations the law does not protect the little guys, if you are a small inventor, you will have little chance against a big corporation if they decide to infringe on your patent. There is simply not enough resources to fight a lengthy legal battle.

This is one of the minority cases where the company that brought up the suit is able to stick to it to the end.


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## peak_reception

jacmyoung said:


> As far as when DISH proposed to modify the software to avoid the injunction back then, it was to avoid the injunction, and the judge said no for good reasons. We are now in a different phase, in contempt of court discussion, not about the use of the software to avoid the injunction, but to avoid a contempt charge.


 What were those "good reasons" given? Seems to me that if they were good then that they would be even better now given how late in the legal game things are with a final and permanent injunction in place and -- presumably -- in force.



> BTW, there is no stay of the injunction anymore, it is a matter of whether DISH is in contempt or not.


 Yes that's right. Not sure what I was thinking. brain freeze.



> But if DISH fails on all appeals, they are done with. The appeal can take a long time to complete too.


 And if TiVo loses on contempt they can still challenge that the new software still infringes, plus they can revisit hardware. This could still be a long way from being over. Or they could settle tomorrow. Probably the former given what's happened so far.

p.s. I didn't express my last post well. i meant Judge Folsom being sick and tired -- professionally -- of the case dragging on so long, not that he is keen to put an end to it for personal reasons (though that's what i intimated). i doubt that he has his own emotions tied up in it too much other than perhaps frustration.


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## sbiller1

Probably a stupid question so I apologize in advance but,

Can Dish guarantee that the new software has been downloaded to *all *infringing DVRs?


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## TexasAg

sbiller1 said:


> Can Dish guarantee that the new software has been downloaded to *all *infringing DVRs?


I would imagine they could ensure that any box currently in service would receive the software download. They could probably not ensure that every single box ever made received the software download (such as boxes not in service), but in that case they couldn't have deactivated the DVR functionality anyway.



sbiller1 said:


> Probably a stupid question so I apologize in advance


I read someone's tag line not too long ago that said something like "There are no stupid questions, but there sure are lots of ignorant people asking questions."

Not talking about you, sbiller1, I just thought the line was funny, and your post reminded me of it.
__________________
My personal opinions are just that. Don't rely on them - I could be Charlie Ergen's pool boy.


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## Curtis0620

The nail in the coffin for DISH is when they find that their "new software" still infringes (which it probably does).

They will have to shut of all their DVR's, because TiVo will say screw you in any licensing agreement. That time has long passed.


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## TexasAg

Curtis0620 said:


> The nail in the coffin for DISH is when they find that their "new software" still infringes (which it probably does).


Here is Tivo's "software" process claim:

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

Care to explain for us how this claim is "probably" infringed by Echo's new software? Keep in mind, every single part of this claim must be present in Echo's new software in order for the claim to be infringed.

Let me give you an example of how Echo could easily get around this. Element [10] says "wherein said control object sends flow command events to said source, transform, and sink objects." Echo could copy the entire claim but let its control object only send flow command events to the source object. No infringement.
__________________
My personal opinions are just that. Don't rely on them - I could be Charlie Ergen's pool boy.


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## Curtis0620

TexasAg said:


> Here is Tivo's "software" process claim:
> 
> A process for the simultaneous storage and play back of multimedia data, comprising the steps of:
> [1] providing a physical data source, wherein said physical data source accepts broadcast data from an input device, parses video and audio data from said broadcast data, and temporarily stores said video and audio data;
> [2] providing a source object, wherein said source object extracts video and audio data from said physical data source;
> [3] providing a transform object, wherein said transform object stores and retrieves data streams onto a storage device;
> [4] wherein said source object obtains a buffer from said transform object, said source object converts video data into data streams and fills said buffer with said streams;
> [5] wherein said source object is automatically flow controlled by said transform object;
> [6] providing a sink object, wherein said sink object obtains data stream buffers from said transform object and outputs said streams to a video and audio decoder;
> [7] wherein said decoder converts said streams into display signals and sends said signals to a display;
> [8] wherein said sink object is automatically flow controlled by said transform object;
> [9] providing a control object, wherein said control object receives commands from a user, said commands control the flow of the broadcast data through the system; and
> [10] wherein said control object sends flow command events to said source, transform, and sink objects.
> 
> Care to explain for us how this claim is "probably" infringed by Echo's new software? Keep in mind, every single part of this claim must be present in Echo's new software in order for the claim to be infringed.
> 
> Let me give you an example of how Echo could easily get around this. Element [10] says "wherein said control object sends flow command events to said source, transform, and sink objects." Echo could copy the entire claim but let its control object only send flow command events to the source object. No infringement.


DISH's is not colorably different. Please show me where it is so.

How could you possibly know this unless you work for DISH. Which I beleive you do, hence your bias.


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## TexasAg

Curtis0620 said:


> DISH's is not colorably different.


And you know that how, exactly? You're the one declaring Echo's software infringing. I'm only asking you to back that up with, you know, FACTS!



Curtis0620 said:


> Please show me where it is so.


I can only go by what I've read about Echo's new software. From what they've said, they write all data to the hard drive and then perform statistical or probabilitistic analysis to do other operations. Given the numerous elements contained in Tivo's software claims, it wouldn't be hard for someone to modify the Echo software to possibly get around the claim and to at least make it different from what was found to infringe.

Also, the court won't go by what Echo says. Both sides should have the opportunity to show whether the new software is or is not "more than colorably different." But Echo at least deserves the chance to try and avoid being held in contempt.



Curtis0620 said:


> How could you possibly know this unless you work for DISH. Which I beleive you do, hence your bias.


Hee, hee. The last cry of a desparate man.

In reality, I have several Tivos, and I haven't had Dish service for about 7-8 years. I also have never worked for Tivo, Dish, or any other company even remotely related to DVRs.

My "bias" is that I have researched the law in this area and think Echo should not be held in contempt. I'm not sure what your knowledge of the law is, but I think I can safely say you're biased in Tivo's favor.
__________________
My personal opinions are just that. Don't rely on them - I could be Charlie Ergen's pool boy.


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## TexasAg

I thought up an example that I think is similar to this case. Anyone have any thoughts?

Suppose Dell sells computers with a Dell-developed program (maybe an email program). Dells sells computer models ABC1 and XYZ2 with the Dell-developed email program on them. Dell gets sued by Microsoft and loses, because Microsoft has a patent on an email program that covers one function performed by the Dell-developed email program.

The court orders Dell to stop selling the "infringing computers: models ABC1 and XYZ2." So, Dell removes the Dell-developed email program on them, installs a completely different Dell-developed email program on them (one that doesn't perform Microsoft's patented function), and continues to sell models ABC1 and XYZ2.

Could Dell be held in contempt? I don't think so. The injunction only applies to "infringing" computers.

Or what if the injunction ordered Dell to shut down all "infringing computers: models ABC1 and XYZ2." So, Dell removes the Dell-developed email program on them remotely (assume this is possible) and does not shut them down. Could Dell be held in contempt? Again, I don't think so. The injunction only applies to "infringing" computers.

Here is why I think this is important: If you agree that Dell isn't in contempt because it modified the software on its computers, you pretty much have to say Echo can modify the software on its DVRs and not be held in contempt. If you say Dell is in contempt, you are basically reading the "infringing" word out of the injunction, and you're reading the injunction as if it said "computers: models ABC1 and XYZ2" instead of what it really says ("infringing computers: models ABC1 and XYZ2").
__________________
My personal opinions are just that. Don't rely on them - I could be Charlie Ergen's pool boy.


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## Richard King

Curtis0620 said:


> The nail in the coffin for DISH is when they find that their "new software" still infringes (which it probably does).
> 
> TiVo will say screw you in any licensing agreement.


And Tivo would be speeding up the last nail in their coffin by taking this position. The board, if they did this would be opening themselves up to MASSIVE class action shareholder suits (and, I am not a fan of such suits, but this would be totally 100% justified and a slam dunk). Making such comments really strains your credibility in the rest of the thread.


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## jacmyoung

peak_reception said:


> What were those "good reasons" given? Seems to me that if they were good then that they would be even better now given how late in the legal game things are with a final and permanent injunction in place and -- presumably -- in force. ...


I am curious myself the justifications, but what I learned is what applies in one phase of the lawsuit may not apply in another phase. I don't think the judge had to allow any proposal to get DISH out of being subject to the injunction, because DISH was found to infringe.

The law however is very clear what DISH can or can not do to avoid being in contempt of an injunction, any injunction. The law says an infringer must be allowed to workaround the patent and if he did so legitimately, he shall not be in contempt, period, regardless what the injunction says, he shall not be in contempt.

If for some reason you believe the above is not possible according to your interpretation of the injunction, then your interpretation is likely wrong. Because the only other explanation will be the law shall not apply.


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## nobody99

TexasAg said:


> Here is why I think this is important: If you agree that Dell isn't in contempt because it modified the software on its computers, you pretty much have to say Echo can modify the software on its DVRs and not be held in contempt. If you say Dell is in contempt, you are basically reading the "infringing" word out of the injunction, and you're reading the injunction as if it said "computers: models ABC1 and XYZ2" instead of what it really says ("infringing computers: models ABC1 and XYZ2").


Because they are selling *new* computers.

If the injunction said to shut the program down on existing ABC1 and XYZ2 computers, and they remote installed the fix on those computers, then we'd have something.

But the "more than colorably different" standard only applies to new products.


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## TexasAg

nobody99 said:


> But the "more than colorably different" standard only applies to new products.


Link to the case that says the standard is limited to "new" products, please. Preferrably the case that says there is a difference between "new modified products" and "merely modified products."

Almost all of the cases I've read say "modified device" or "modified product."

EDIT: And how about the example that jacmyoung brought up yesterday. Greg agreed that Echo could sell new DVRs with the new software without violating the injunction. What if Echo recalled all of the listed DVRs, put the new software on them, put a new model number on them, and shipped them back. Would that violate the injunction in this case?
__________________
My personal opinions are just that. Don't rely on them - I could be Charlie Ergen's pool boy.


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## nobody99

TexasAg said:


> 35 USC 283: Courts may "grant injunctions in accordance with the principles of equity to prevent the violation of any right secured by patent, on such terms as the court deems reasonable."
> 
> Can anyone provide a link to a case where an injunction was issued solely to punish an infringing party in a patent lawsuit without any regard for preventing future infringement?


Furthermore, Rule 65(d) "requires an injunction to prohibit only those acts sought to be restrained," namely, "infringement of the patent by the devices adjudged to infringe *and infringement by devices no more than colorably different therefrom.*" International Rectifier, 383 F.3d at 1317

http://209.85.215.104/search?q=cach...+standard+injunction&hl=en&ct=clnk&cd=1&gl=us

That link is wierd - it just happens to be what came up.

I have also posted other similar text. Do a google search for "colorably different" in each and every case you find, you'll find it in this form:

"products xyz, abc or other products not more than colorably different." As I said in a previous post, which you must have missed, the injunction doesn't say

"products xyz, abc unless modified to be more than colorably different, or other products not more than colorably different."


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## TexasAg

nobody99 said:


> namely, "infringement of the patent by the devices adjudged to infringe *and infringement by devices no more than colorably different therefrom.*


But you must agree that the new software in Echo's boxes has not been "adjudged to infringe" Tivo's software claims, right?

And I editted my post above. How about the example that jacmyoung brought up yesterday. Greg agreed that Echo could sell new DVRs with the new software without violating the injunction. What if Echo recalled all of the listed DVRs, put the new software on them, put a new model number on them, and shipped them back. Would that violate the injunction in this case?

EDIT: I asked if anyone could provide a case where the patent owner was given an injunction to punish the infringer, apart from preventing future infringement. That case isn't it. And while that case talks about "new devices," it doesn't say anything about being limited to "new devices" and not "modified devices".
__________________
My personal opinions are just that. Don't rely on them - I could be Charlie Ergen's pool boy.


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## scooper

nobody99 said:


> Because they are selling *new* computers.
> 
> If the injunction said to shut the program down on existing ABC1 and XYZ2 computers, and they remote installed the fix on those computers, then we'd have something.
> 
> But the "more than colorably different" standard only applies to new products.


What's the diference between "New Computers" and "Computers already deployed" ? If you have the ability to "shutdown" or "change the software of the deployed unit", it's all the same.

What is a DVR - a computer. With Dish (and DirectTv) DVRs, you have the relatively unique ability for the vender to be able to update the software on them without the permission of the end user.

Under any other patent infringement, said deployed devices CANNOT be modified. I think the judge's penalty was out-of bounds for the deployed devices, if you go by that standard. Contrary - if you insist that the court has the power to "disable" the infringing product, you MUST also allow said infringing products to be changed "in the field" to non-infringing. At the very least - this should make them "more than colorably different", and the infringment of the different software has to be determined in it's own trial.


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## TexasAg

I'll just throw this into the mix, as well. From a 2007 case:

The grant of a contempt order for violation, by a modified device, of an injunction against infringement requires that the modified device infringes the patent, either literally or by application of the doctrine of equivalents.

This is from the Federal Circuit court of appeals.
__________________
My personal opinions are just that. Don't rely on them - I could be Charlie Ergen's pool boy.


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## nobody99

TexasAg said:


> But you must agree that the new software in Echo's boxes has not been "adjudged to infringe" Tivo's software claims, right?
> 
> And I editted my post above. How about the example that jacmyoung brought up yesterday. Greg agreed that Echo could sell new DVRs with the new software without violating the injunction. What if Echo recalled all of the listed DVRs, put the new software on them, put a new model number on them, and shipped them back. Would that violate the injunction in this case?


Sorry, I've got jacmyoung on ignore. I find talking to brick walls somewhat meaningless.

Simple hypothetical case:

I have an restraining order against jacmyoung to stay more than 500 yards away from me because I have shown that every time he comes near me, he calls me a jerk.

jacmyoung decides that he won't call me a jerk any more. Does that mean jacmyoung no longer has to follow the restraining order?

Another hypothetical case:

I work my butt of riding my bike delivering newspapers. I earn enough to buy a car. The first day of my new car ownership, I decide to start delivering illegal drugs. I get busted, my car confiscated. Fair? Did my car purchase have anything to do with drugs?

Let me back up and give you some reasoning why I think the existing products should be shut off.

Let's say, for the sake of argument, that DISH just flat-out ripped of TiVos patent. Suppose they reverse engineered the prototype box that TiVo left with them years ago. The go and build their own boxes using this knowledge, and dramatically cutting not only the cost of the boxes, but also the cost of development. That enables them to put much more money into ramping up production and marketing. As a result, they get four million customers to buy their boxes over the next four or five years. In the meantime, knowing full well that they've violated the patent, they start working on a workaround. Perhaps its legitimate, perhaps not, but they start working on it. At the mere suggestion of an injunction, they install the workaround.

When those boxes were first installed with customers, they contained infringing code. They were, in effect, stolen property. If TiVo could go back in time to the day there were installed, and disable DVR functionality, those customers would have chosen an alternative. But TiVo can't do that, but the courts can do the next-best thing -- turn them off now.

That's the difference between old and new.

New products have not yet been proven to be "stolen property." Existing, adjudicated, named products have. They are being euphemistically returned their rightful owner.


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## TexasAg

nobody99 said:


> I find talking to brick walls somewhat meaningless.


Too bad. He could just as easily have called you a brick wall. There are those of us with opinions we are sticking to on both sides here.



nobody99 said:


> Simple hypothetical case:


The law doesn't say someone under a restraining order is "entitled" to come within 500 yards of you. The law does say an infringer is "entited" to design around a patent and not be hauled into contempt proceedings for each design-around attempt.



nobody99 said:


> Existing, adjudicated, named products have. They are being euphemistically returned their rightful owner.


Again, you must admit that the infringing software, which violated the software claims, is not the same software currently running on the Echo DVRs. So the new software is not "adjudicated" to infringe, right?
__________________
My personal opinions are just that. Don't rely on them - I could be Charlie Ergen's pool boy.


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## jacmyoung

The only hypos you should use are the ones specific to patent infringement cases, because if you noticed in all case law the courts used to support their opinions, there was not a single case not strictly related to patent infringement cases, you NEVER will find a court citing a personal restraining order, or what the case Greg loves to cite, a reporter being restrained for violating a court order, very emotional and noteworthy hypos you have there, except they do not apply in a patent infringement case.

No, the "new" is rarely used, even in the above case you quoted, it never said a modified device did not count, it only referred to the question at hand, because that particular device in question was new, not modified.

But that in no way excludes modified products, in fact case after case the court has been very careful not to use the word "new" rather "modified" in general term, occasioanlly it may use "new" to describe a particular device if it is indeed new, but in general terms, the law specifies "modified products."


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## jacmyoung

I know many Tivo fans have the unshakable belief that DISH had committed the worst crime possible against Tivo, no punishment will be good enough, it is understandable the mere thought of allowing the DVRs to be modified and to continue is unthinkable, they wanted to shut DISH down period, so anyone who dares to even suggest there is a chance DISH is even allowed continue with the DVRs described as the "Infringing Products" in the injunction, must be some lowest lives on the face of the earth and must be kept away, at least 500 yards away


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## spear61

Judge wrote injunction when he thought both software and hardware were infringing, hardware gets kicked back, Dish acknowledges some infringing DVR's and stops selling, etc.. Then, they get legal opinion that new software is non infringing. Later, the injunction takes effect. The judge will say _contempt _is moot regarding the software modified dvr's - the infringing software identified in the jury trial and described in the injunction no longer existed when the injunction came into effect.


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## nobody99

Simple question:

Even though there was no injunction in effect for the RIM/NTP case, RIM "settled" for $650-ish million. 

They said they had a workaround, and service would not be stopped.

Why did they decide, on their own, to pay $650 million to NTP if they had a workaround, and this workaround would have meant the injunction were meaningless once issued?


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## TexasAg

nobody99 said:


> Why did they decide, on their own, to pay $650 million to NTP if they had a workaround, and this workaround would have meant the injunction were meaningless once issued?


You'll have to ask them. The judge never issued an injunction and warned RIM to settle, and RIM settled. They may have preferred the certainty of settlement as opposed to the beating they would have taken if they tried to fight any contempt hearing and/or contempt ruling (publicity/stock price-wise).

Do you honestly think the judge could have ordered RIM to shut down their service if they had installed new non-infringing software throughout their infrastructure?
__________________
My personal opinions are just that. Don't rely on them - I could be Charlie Ergen's pool boy.


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## Curtis0620

DISH DVR's software was found to be infringing on TiVo's patent. This is fact.

If DISH modified there software, wouldn't it still be based on the original infringing software? Would you not have to completely develop new software totally separate from the original infringing software to get around the injunction?

I think any modification to the infringing software would not be colorably different in the courts eyes. It would still have the basis of the infringing software.

Also, what if the judge meant the injuction to be a penalty for past infringement, thus, no software changes would change that.


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## nobody99

TexasAg said:


> You'll have to ask them. The judge never issued an injunction and warned RIM to settle, and RIM settled. They may have preferred the certainty of settlement as opposed to the beating they would have taken if they tried to fight any contempt hearing and/or contempt ruling (publicity/stock price-wise).
> 
> Do you honestly think the judge could have ordered RIM to shut down their service if they had installed new non-infringing software throughout their infrastructure?


Look, I think we're in new territory here. I have absolutely, positively no doubt in my mind that the "more than colorably different" standard applies *only* to devices that are not yet in the field.

Where we differ is how the court sees *installed* devices that are specifically named in the injunction.

This is a discussion forum, last time I checked, and I'm just trying to give a little reasoning behind my position. Yes, I completely agree with you that it's possible that devices that are in the field no longer infringe. I also agree that DISH should not be held in contempt for selling *new* "infringing products" (the eight named DVRS) if the software is "more than colorably different." DISH thinks it is, TiVo think it isn't. That's for the court to decide.

However, when it comes to installed, specifically adjudicated devices, I believe the standard will be different (as we all know, nobody has managed to find a case like this).

If DISH had never infringed, the device would not be in the field today. Some other device, developed at some other higher cost, would be, and there would almost certainly be fewer of them. So it *doesn't matter* if the software no longer infringes. The presumption must be that all benefit from these boxes belongs to TiVo, even if they are different today.

Imagine, if you will, that the court had a time machine. It could go back to some point in the past, and do one of two things at TiVo's choosing:

1) Give TiVo a reasonable license fee from the day that each infringing device was put in service through today (and continuing on until those particular machines are no longer in service)

2) remove the dvr functionality the day after each was installed.

If DISH had either licensed TiVo's software properly, or not cheated and stolen it, these are the two reasonable "pasts" that could have occurred.

When new boxes are sold, TiVo has every right to file a separate contempt motion against those new boxes under the assumption that they are not "more than colorably different." If the judge finds them more than colorably different, DISH can continue selling them. If the judge finds them only colorably different, they must stop selling them, and an injunction is slapped on the boxes that are already sold.

I just don't think I'm doing a very good job communicating my reasoning. DISH should not benefit from the ill-gotten gains of the existing DVRs, even today, even with new software. That's my point.


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## nobody99

Here's a few interesting cases...

http://www.nera.com/Publication.asp?p_ID=691

When a valid patent, copyright or trademark is infringed, its owner is entitled to relief. In many cases, that relief will include a monetary award. Depending upon the circumstances of the infringement, the award may include a "reasonable royalty" on an infringer's sales, any profits lost as a result of the infringement and-in some cases-the defendant's "ill-gotten" gains.

All contested patent-infringement judgments are reviewed in the Court of Appeals for the Federal Circuit (CAFC), which in recent years-as Dr. Stewart discusses below-has relied upon increasingly sophisticated economic analysis to support a "make-whole" standard for patent damages. Briefly stated, such a standard seeks to ensure that an infringer's monetary payment fully compensates a successful plaintiff for economic damages suffered as a result of the infringement. If evidence establishes that a patent holder would willingly have licensed its invention in arm's length negotiations, without using the invention itself, then an award equal to the lost royalty revenue, plus appropriate interest, will make the plaintiff whole. *If, instead, the plaintiff used (or would have used) the invention to increase its sales, lower its costs, or both, then it can be made whole only by an award that properly accounts for the profits lost as a result of the infringement.*

http://bulk.resource.org/courts.gov/c/F1/0203/001/00001000.txt

CARBORUNDUM C0. V. ELECTRIC SMELTING & ALUMINUM C0. 985
applicable to the use of a patent as well as of other property. To per-
mit one who holds a subsequent product patent to infringe a prior
process patent, without which process the product could not be cre-
ated, and then shield himself in whole or in part from liability for his
wrongdoing by setting up his product patent, would not accord with
the principles usually obtaining in courts of equity. Under such cir-
cumstances the least that equity demands is that the wrongdoer be
compelled to disgorge his ill-gotten gains. But it is not necessary that
we should in this case express an opinion upon the validity or in-
validity of the Acheson product patent or its re-issue. For whether
the defendant did or did not hold a valid patent for carborundum as a
product is, as has appeared, immaterial to the decision of the question
of profits; *for profits having been rendered possible only through the
infringement of patent No. 319,795 the whole amount under the doc-
trine of the authorities above cited must be awarded to the complain-
ant.*


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## TBoneit

Is it Even proven that Dish stole Tivos property? Or could it be that they took advantage of features in the hardware they used? IE the Broadcom chip. It is entirely possible that two different companies could arrive at the same method of doing things independently. Did Echostar infringe on the Tivo software? The courts said yes. Did they set out to do that so that they could end up in this situation? My guess is no. 

This sort of thing is why so many companies do not even open unsolicited Ideas/products etc.


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## TexasAg

Curtis0620 said:


> DISH DVR's software was found to be infringing on TiVo's patent. This is fact.


That is a fact for the original software, not the new software.



Curtis0620 said:


> If DISH modified there software, wouldn't it still be based on the original infringing software? Would you not have to completely develop new software totally separate from the original infringing software to get around the injunction?


I quoted Tivo's software claim earlier. Echo's new software must do everything in that claim to infringe Tivo's patent. Do you think Echo would need to complete redesign everything in its software just to avoid one part in that claim? I don't. Echo would only need to design around one single part of that claim in order to avoid infringement, so they could change part of their software without rewriting it completely.



nobody99 said:


> Yes, I completely agree with you that it's possible that devices that are in the field no longer infringe. I also agree that DISH should not be held in contempt for selling *new* "infringing products" (the eight named DVRS) if the software is "more than colorably different."


I'm glad we agree on that.

Now imagine you're in the judge's shoes. You've got cases that say Echo is entitled to design around Tivo's patent. You've got cases that say Echo is allowed to release "modified devices" that are "more than colorably different" without being held in contempt. You've got a law that specifically says injunctions are for preventing future infringement. You've got cases that say contempt requires infringement to exist in the modified devices. You've got apparently an acknowledgement (from people here) that Echo could have been selling new DVRs this whole time with the new software without violating the injunction. You've got no case (at least that we have found so far) that says existing devices cannot be modified or that says there is a difference between "new modified devices" and "old modified devices."

In this case, which are you more likely to do - break new ground by announcing a rule that there is a difference between "new modified devices" and "old modified devices", or simply say that the "more than coloarably different" standard applies to the modified devices.



nobody99 said:


> Here's a few interesting cases...


Those cases appear to be talking about lost profits, which are a part of the damages calculation. For damages, Tivo is entitled to either (i) its lost profits or (ii) not less than a reasonable royalty. I believe part of Tivo's damages were lost profits, and the rest were at the royalty rate (I haven't looked in a while at the damages breakdown, so don't hold me to that).
__________________
My personal opinions are just that. Don't rely on them - I could be Charlie Ergen's pool boy.


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## jacmyoung

Interestingly the cases above said NOTHING about compensation other than monetary means, no mentioning of injunction as part of the relief. Why do people continue to ignore the fact DISH's "check is in the mail" as said so by the judge in that meeting? What was that? Just a light-hearted joke?

Yes, an injunction is often used when other remedies at law are considered not enough. In that sense it is certainly proper to insist the Infrigining Products be shut off, the question is whether a possible non-infringing product must also be subject to the injunction.

The law is very clear on that, if there is doubt whether the modified product is still within the scope of an injunction, the infringer gets the benefit of such doubt, and can continue the modified products as before, until if later the court may decide the modified products still infringe, but until then, the infringer will be allowed to let the modified products to continue as before.

The standdard of which to determine whether such *doubt* exists or not is the use of the "colorable difference" test between the Infringing Products, and the modified products.


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## kmill14

TBoneit said:


> Is it Even proven that Dish stole Tivos property? Or could it be that they took advantage of features in the hardware they used? IE the Broadcom chip. It is entirely possible that two different companies could arrive at the same method of doing things independently. Did Echostar infringe on the Tivo software? The courts said yes. Did they set out to do that so that they could end up in this situation? My guess is no.
> 
> This sort of thing is why so many companies do not even open unsolicited Ideas/products etc.


TiVo gave a working model of their DVR to E* in hopes that they would work out some sort of agreement on a DVR that used TiVo's patented technology. E* said no, and then sometime thereafter came up with their own DVR, that has now been deemed to have infringed on that TiVo patented technology.


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## phrelin

I still can't understand why in this case the legal system can't deal with the concept of the system/software being "device independent".

Copyright infringement is clearly "device independent" or mp3s and mpegs downloaded from the shared file on my buddy's computer onto my "unlisted" model Sclopper 3000q cell phone wouldn't be "illegal" until my Sclopper 3000q cell phone is listed by some judge and/or jury.

Something is inherently wrong with conceptualizing that the code in memory (including the hard drive) is part of the device and that once infringing code is in the device's memory the device is forever damned.


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## spear61

nobody99 said:


> Simple question:
> 
> Even though there was no injunction in effect for the RIM/NTP case, RIM "settled" for $650-ish million.
> 
> They said they had a workaround, and service would not be stopped.
> 
> Why did they decide, on their own, to pay $650 million to NTP if they had a workaround, and this workaround would have meant the injunction were meaningless once issued?


Risk Analysis


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## nobody99

TexasAg said:


> In this case, which are you more likely to do - break new ground by announcing a rule that there is a difference between "new modified devices" and "old modified devices", or simply say that the "more than coloarably different" standard applies to the modified devices.


But you cannot, you can't, deny that the language in all prior cases is very clear along the lines of "adjudicated or not more than colorably different." Since no one seems to be able to find a case like this, it's breaking new ground *either way*. In other words, won't this set precedence of some sort if the judge finds that the "more than colorably different" standard applies to already-installed, already-adjudicated devices as well?

The idea that a company must be allowed to work around a patent is completely fair - but I believe that most people are misreading this. It doesn't mean you can modify a device that already infringed. It means you can try again. You get a do-over, but you pay the price for the past infringement.

That's my take on it, just my opinion.



TexasAg said:


> Those cases appear to be talking about lost profits, which are a part of the damages calculation. For damages, Tivo is entitled to either (i) its lost profits or (ii) not less than a reasonable royalty.


Yes, they are talking about lost profits, but I believe that the concept -- that ill-gotten gains belong fully to the patent holder -- applies here as well. Once the product infringes, it's over for that product. The presumption is -- and very well should be -- that the original patent has caused ongoing success, continued infringement or not.

This is actually an easy analogy. Let's say that there's a goose who lays golden eggs on the other side of a fast-moving river. I could wade through the river at great risk, or I could build a bridge from patent plans I stole from Bridgeco. I get across the bridge, grab the goose, come back across. I destroy the bridge and build a crappier tightrope so I can go back over and get goose food.

I'm found to have violated Bridgeco's patents, and lost on appeal.

Under the example cases I've cited, Bridgeco gets all the golden eggs that the goose lays from this point on. This despite the fact that the bridge is no longer being used.

In our beloved DISH/TiVo case, an injunction against using the goose was issued instead. I have very vague memories that the court couldn't adequately determine how much the golden eggs were worth.

Again, my opinion, and I think fairly well-reasoned. But you're obviously entitled to yours as well.


----------



## nobody99

phrelin said:


> I still can't understand why in this case the legal system can't deal with the concept of the system/software being "device independent".
> 
> Copyright infringement is clearly "device independent" or mp3s and mpegs downloaded from the shared file on my buddy's computer onto my "unlisted" model Sclopper 3000q cell phone wouldn't be "illegal" until my Sclopper 3000q cell phone is listed by some judge and/or jury.
> 
> Something is inherently wrong with conceptualizing that the code in memory (including the hard drive) is part of the device and that once infringing code is in the device's memory the device is forever damned.


But there are two _extremely_ important distinctions here.

I pretty much agree with everyone here that ongoing, new sales with DVRs that have the new software should be subject to the "more than colorably different" standard before contempt is found.

But for existing products, the presumption (since they were found infringing) is that all gains are ill-gotten and belong to TiVo.


----------



## TexasAg

nobody99 said:


> It doesn't mean you can modify a device that already infringed. It means you can try again. You get a do-over, but you pay the price for the past infringement.


Paying the price for past infringement occurs through damages. Injunctions are meant to prevent future infringement.



nobody99 said:


> Once the product infringes, it's over for that product. The presumption is -- and very well should be -- that the original patent has caused ongoing success, continued infringement or not.


No, that's not the presumption. The presumption is simply that the patent owner lost money because of the infringement, and lost profits are one way damages can be calculated. That most certainly does not justify assuming that a product that infringed because of its software is forevermore condemned as being infringing. Citing cases on lost profit calculations for damages does not mean an injunction can prevent an infringer for releasing a modified product.



nobody99 said:


> This is actually an easy analogy. Let's say that there's a goose who lays golden eggs on the other side of a fast-moving river. I could wade through the river at great risk, or I could build a bridge from patent plans I stole from Bridgeco. I get across the bridge, grab the gold, come back across. I destroy the bridge and build a crappier tightrope so I can go back over and get goose food.
> 
> I'm found to have violated Bridgeco's patents, and lost on appeal.
> 
> Under the example cases I've cited, Bridgeco gets all the golden eggs that the goose lays from this point on. This despite the fact that the bridge is no longer being used.


There is no "unjust enrichment" concept with patents. With patents, your damages are lost profits or reasonable royalty. If you're a sole inventor and Microsoft infringes your patent and makes billions in the process, you are not entitled to those billions. You are entitled to your lost profits (likely small if you are a sole inventor) or to a reasonable royalty (which might be big, but it probably won't be all of the billions Microsoft made). Bridgco may get an injunction preventing your future infringement of its bridge patent, but that doesn't mean they get everything that results from your infringement or your later non-infringement.



nobody99 said:


> But for existing products, the presumption (since they were found infringing) is that all gains are ill-gotten and belong to TiVo.


Again, this is not the standard, and it most certainly is not the standard for contempt of an injunction.
__________________
My personal opinions are just that. Don't rely on them - I could be Charlie Ergen's pool boy.


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## nobody99

TexasAg said:


> There is no "unjust enrichment" concept with patents. With patents, your damages are lost profits or reasonable royalty. If you're a sole inventor and Microsoft infringes your patent and makes billions in the process, you are not entitled to those billions. You are entitled to your lost profits (likely small if you are a sole inventor) or to a reasonable royalty (which might be big, but it probably won't be all of the billions Microsoft made). Bridgco may get an injunction preventing your future infringement of its bridge patent, but that doesn't mean they get everything that results from your infringement or your later non-infringement.


Really? I thought the case I found above with two minutes or so of google searching is pretty much _exactly_ "unjust enrichment."

It was at the bottom of my "interesting cases" so maybe you didn't get that far...



> for profits having been rendered possible only through the
> infringement of patent No. 319,795 the whole amount under the doc-
> trine of the authorities above cited must be awarded to the complain-
> ant


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## TexasAg

nobody99 said:


> Really? I thought the case I found above with two minutes or so of google searching is pretty much _exactly_ "unjust enrichment."
> 
> It was at the bottom of my "interesting cases" so maybe you didn't get that far...


You noticed that it deals with a patent issued in 1885, right?

Unjust enrichment is usually a state law claim I believe, and it wasn't raised in this case. In fact, I don't think I've ever seen a patent lawsuit where the patent owner requested unjust enrichment damages under federal law. I believe that most view state law unjust enrichment as being pre-empted by federal law.
__________________
My personal opinions are just that. Don't rely on them - I could be Charlie Ergen's pool boy.


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## nobody99

TexasAg said:


> You noticed that it deals with a patent issued in 1885, right?
> 
> Unjust enrichment is usually a state law claim I believe, and it wasn't raised in this case. In fact, I don't think I've ever seen a patent lawsuit where the patent owner requested unjust enrichment damages under federal law. I believe that most view state law unjust enrichment as being pre-empted by federal law.


Nope, didn't notice that. But the "more than colorably different" concept is from 1904 right? So my example is not that much older 

I hope you realize that I'm not trying to prove that I'm right. I'm only trying to raise the possibility that an existing product that has been adjudicated to infringe perhaps will be treated differently than a new product.

You can accept this possibility, yes?


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## TexasAg

nobody99 said:


> Nope, didn't notice that. But the "more than colorably different" concept is from 1904 right? So my example is not that much older


The courts still use the "more than colorably different" concept.

Seriously, the patent laws have been rewritten several times since 1885, and the laws/cases on damages have changed. I honestly don't think unjust enrichment is used any more - it's always lost profits or reasonable royalty. To get unjust enrichment, you have to make a state law claim, and you can't be seeking "patent-like protection" for something by making the state law claim (if you do, it is preempted by the federal patent laws). The "more than colorably different" standard is applied by courts all the time today.



nobody99 said:


> I hope you realize that I'm not trying to prove that I'm right. I'm only trying to raise the possibility that an existing product that has been adjudicated to infringe perhaps will be treated differently than a new product.
> 
> You can accept this possibility, yes?


Of course. We both agree that we could be wrong. If it was a clear-cut issue, Tivo or Echo would have folded long ago.
__________________
My personal opinions are just that. Don't rely on them - I could be Charlie Ergen's pool boy.


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## kmill14

Maybe it's time to look at the injunction itself in more detail, since people seem to have differing views of its meaning:

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

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

Nowhere in the injunction does it say that E* can alter the infringing DVRS to be "more than colorably different." It just says they need to be shut down.

And now the judge explains the reasoning for the injunction:

**************
Plaintiff's primary focus is on growing a customer base specifically around the product with which Defendants' infringing product competes. And, as Plaintiff is a relatively new company with only one primary product, loss of market share and of customer base as a result of infringement cause severe injury. *Thus, the
Court concludes that the full impact of Defendants' infringement cannot be remedied by monetary damages.*
**************

Clearly, the Judge feels that money alone will not solve the problem and the injunction (shutting off the DVRs) is part of the process that will allow TiVo to regain market share lost due to E*'s infringement. This is the most important part of why the Judge will continue to side with TiVo. E* gained an unfair advantage in TiVo's only market due to their infringing products. As such, part of the penalty E* must pay is to turn off those products that were identified as infringing, regardless of any future alterations to them.

Lastly, the Judge says this:

***************
Without a stronger showing that the jury's verdict will be overturned
in its entirety on appeal, however, allowing the ongoing infringement is not within the public's interest.
***************

Well, the verdict was not overturned in its entirety, and there is no reason for the Judge to feel differently about allowing infringing products to stay in circulation.


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## Herdfan

TBoneit said:


> Is it Even proven that Dish stole Tivos property? Or could it be that they took advantage of features in the hardware they used? IE the Broadcom chip. It is entirely possible that two different companies could arrive at the same method of doing things independently. Did Echostar infringe on the Tivo software? The courts said yes. Did they set out to do that so that they could end up in this situation? My guess is no.


Only because they thought they would not get caught. They started a "partnership" with TiVo, had TiVo code and boxes, then kicked TiVo to the curb. They did not come up with this infringing idea on their own.


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## Herdfan

kmill14 said:


> Lastly, the Judge says this:
> 
> ***************
> Without a stronger showing that the jury's verdict will be overturned
> in its entirety on appeal, however, allowing the *ongoing infringement *is not within the public's interest.


Is it ongoing with the new software?

At what point can TiVo ask for a retrial on the hardware claims? DISH does not look like it is going to blink, so TiVo needs the hardware verdict to make them.


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## TexasAg

kmill14 said:


> Each Defendant, its officers, agents, servants, employees and attorneys, and those persons in active concert or participation with them who receive actual notice hereof, are hereby restrained and enjoined, pursuant to 35 U.S.C. § 283 and Fed. R. Civ. P. 65(d), from making, using, offering to sell, selling, or importing in the Untied States, the *Infringing *Products, either alone or in combination with any other product and all other products that are only colorably different there from in the context of the Infringed Claims, whether individually or in combination with other products or as a part of another product, and from otherwise infringing or inducing others to infringe the Infringed Claims of the '389 patent.
> 
> Defendants are hereby FURTHER ORDERED to, within thirty (30) days of the issuance of this order, disable the DVR functionality (i.e., disable all storage to and playback from a hard disk drive of television data) in all but 192,708 units of the *Infringing *Products that have been placed with an end user or subscriber. The DVR functionality, i.e., disable all storage to and playback from a hard disk drive of television data) shall not be enabled in any new placements of the Infringing Products.


There's that pesky word. "Infringing" products. Most people want to read that word out and say that the Echo DVRs have to be turned off regardless of whether the current software infringes Tivo's software claims. But if Echo can argue that the DVRs are not infringing (and it isn't a clear cut issue, meaning the new software is more than colorably different), they should not be held in contempt.



kmill14 said:


> Lastly, the Judge says this:
> 
> Without a stronger showing that the jury's verdict will be overturned
> in its entirety on appeal, however, *allowing the ongoing infringement* is not within the public's interest.


There it is again - ongoing "infringement". And what if there is no "ongoing infringement"? And don't you think Echo should be able to show that there is no "ongoing infringement"?
__________________
My personal opinions are just that. Don't rely on them - I could be Charlie Ergen's pool boy.


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## kmill14

Herdfan said:


> Is it ongoing with the new software?
> 
> At what point can TiVo ask for a retrial on the hardware claims? DISH does not look like it is going to blink, so TiVo needs the hardware verdict to make them.


You are missing the point. The Infringing Products are ALWAYS the Infringing Products. They got into the customers' homes as Infringing Products, and made it impossible for TiVo to grow its own business.

Again, nowhere in the injunction does it say the Infringing Products can be altered and NOT be shut off. They just need to be shut off, for the reasons explained above.


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## TexasAg

kmill14 said:


> You are missing the point. The Infringing Products are ALWAYS the Infringing Products. They got into the customers' homes as Infringing Products, and made it impossible for TiVo to grow its own business.


No, you are missing the point. The Echo DVRs infringed the software claims only (as of this point). If Echo can replace the software appropriately, the products may no longer be "infringing."

Let me ask you this - could Echo sell new DVRs with the new software and not violate the injunction?
__________________
My personal opinions are just that. Don't rely on them - I could be Charlie Ergen's pool boy.


----------



## kmill14

TexasAg said:


> There's that pesky word. "Infringing" products. Most people want to read that word out and say that the Echo DVRs have to be turned off regardless of whether the current software infringes Tivo's software claims. But if Echo can argue that the DVRs are not infringing (and it isn't a clear cut issue, meaning the new software is more than colorably different), they should not be held in contempt.
> 
> There it is again - ongoing "infringement". And what if there is no "ongoing infringement"? And don't you think Echo should be able to show that there is no "ongoing infringement"?


The last sentence is not part of the actual injunction, but part of the Judge's reasoning for not granting a stay. I added it to the discussion to portray what I imagine the Judge is thinking.

The wording of the injunction is clear. E* can have a seperate trial if it wants to argue that these Infringing Products are no longer Infringing Products, but until that trial is complete, they are STILL Infringing Products.

The Infringing Products, for all intents and purposes, have been put in jail aftering having been found guilty, and having that guilt affirmed. They can certainly present new evidence or plead to the court that they deserve to have their sentence shortened, but until that order is granted, the products must remain in jail.


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## Herdfan

TexasAg said:


> If you're a sole inventor and Microsoft infringes your patent and makes billions in the process, you are not entitled to those billions.


But is Microsoft entitled to keep those billions? If the answer is yes, that seems to dilute the entire patent system. Large companies could do nothing but to "steal" the patents of small companies, use them to make billions, and if caught, pay a small royalty fee.

Somewhere that doesn't seem right.


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## TexasAg

kmill14 said:


> The Infringing Products, for all intents and purposes, have been put in jail aftering having been found guilty, and having that guilt affirmed. They can certainly present new evidence or plead to the court that they deserve to have their sentence shortened, but until that order is granted, the products must remain in jail.


And the case law saying that is where, exactly?

See, if have plenty of cases that say an infringer is entitled to design around a patent, an infringer is allowed to release modified products and not be held in contempt if the modified products are "more than colorably different," etc.

Referrals to bail jumping, violating protective orders, criminal trials, etc. do not apply. Echo does not need the court's permission to release a modified product that is "more than colorably different." Echo is entitled to do so and cannot be held in contempt for it.
__________________
My personal opinions are just that. Don't rely on them - I could be Charlie Ergen's pool boy.


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## jacmyoung

kmill14 said:


> ...Nowhere in the injunction does it say that E* can alter the infringing DVRS to be "more than colorably different." It just says they need to be shut down...


Adding to what TexasAg said, nowhere does it say DISH can not alter the *Infringing Products* into modified products and continue as before. Please go back to read a case law I cited where the infringing drug company decided to apply a patent for its drug under injunction, and when the judge ruled the infringer in contempt, the appeals court overturned the ruling, because nowhere in the injunction did it say the infringer could not apply a patent on the enjoined drug, which was already patented by the winning company, and what the patent the infringer was seeking was exactly the same already awarded to the winner, so the act of the infringer was clearly not in good faith, but nevertheless the court could not prevent it from such act because the injunction did not specifiy that the infringer could not apply a patent, any patent.

In this case, the injunction never said DISH may not modify the Infringing Products and continue as before, not to mention on the surface DISH's act of modification seems in good faith and is a legitimate effort to workaround the patent.

Again, some insisted that DISH *never* disabled the DVR functions as required by the injunction, but in fact they did, during the time when the new software was downloaded, the DVRs were totally disabled, and after the re-boot, they became modified procducts (no longer the "Infringing Products") and continued as before.

So long as we can agree on one thing, that the Infringing Products are different than the modified products today, no matter how little the difference, as long as such difference "gives rise to fair ground the doubt whether the modified products are still within the scope of the injunction", as long as such doubt exists, the infringer gets the benefit of the doubt.


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## kmill14

TexasAg said:


> No, you are missing the point. The Echo DVRs infringed the software claims only (as of this point). If Echo can replace the software appropriately, the products may no longer be "infringing."
> 
> Let me ask you this - could Echo sell new DVRs with the new software and not violate the injunction?


Sure they can. But if they want to put that software into the old, Infringing Products, they need to argue to the Court that their old products can be let out of jail. Thats part of the pentalty of infringement.

And as you know, this contempt hearing will be legal only, which I assume means they will digest the wording of the injunction, and the topic of colorably or more than regarding new software will not be discussed at all.


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## nobody99

TexasAg said:


> There's that pesky word. "Infringing" products. Most people want to read that word out and say that the Echo DVRs have to be turned off regardless of whether the current software infringes Tivo's software claims.


Oh, Puh-lease. You've made some good points in the past, but this is so far beyond stretch that you're going to start spraining muscles badly.

Here's the actual language of the injunction:



> Pursuant to Rule 58 of the Federal Rules of Civil Procedure and in accordance with the jury verdict delivered on April 13, 2006 and with the Court's contemporaneously filed orders, the Court thereby enters judgment for Plaintiff against Defendants for willful infringement of U.S. Patent No. 6,233,389 ("'389 patent"), claims 1, 5, 21, 23, 32, 36, 52, 31 and 61 ("the Infringed
> Claims") by Defendants' following DVR receivers (collectively the "Infringing Products"): DP-501; DP-508; DP-510; DP-522; DP-625; DP-721; DP-921; and the DP-942.


You are a lawyer (and for the record, I'm not) but whereever anyone says "Infringing Products" it does NOT mean "any product that is infringing." It means exactly - no more or no less - DP-501; DP-508; DP-510; DP-522; DP-625; DP-721; DP-921; and the DP-942. Rather than using the terminology [collectively the "Infringing Products"], they could have used "The Handlebar Mustaches". Then whenever we said that "The handlebar mustaches must have their DVR functionality turned off" that means that DVR functionality must be turned off for DP-501; DP-508; DP-510; DP-522; DP-625; DP-721; DP-921; and the DP-942.


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## TexasAg

Herdfan said:


> Somewhere that doesn't seem right.


Didn't say it was right, and for willful infringement you could get triple damages. If the royalty rate is high enough, you might get a billion. That'd make me happy!__________________
My personal opinions are just that. Don't rely on them - I could be Charlie Ergen's pool boy.


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## TexasAg

nobody99 said:


> Oh, Puh-lease. You've made some good points in the past, but this is so far beyond stretch that you're going to start spraining muscles badly..


I appreciate it, but the only muscles I've sprained were unrelated to this thread.



nobody99 said:


> Here's the actual language of the injunction


Yes, and I believe Echo actually insisted that the word "infringing" be used in the injunction to describe those models. Wonder why they did that?
__________________
My personal opinions are just that. Don't rely on them - I could be Charlie Ergen's pool boy.


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## kmill14

TexasAg said:


> And the case law saying that is where, exactly?
> 
> See, if have plenty of cases that say an infringer is entitled to design around a patent, an infringer is allowed to release modified products and not be held in contempt if the modified products are "more than colorably different," etc.
> 
> Referrals to bail jumping, violating protective orders, criminal trials, etc. do not apply. Echo does not need the court's permission to release a modified product that is "more than colorably different." Echo is entitled to do so and cannot be held in contempt for it.


Absolutely they do, because the Injunction said to turn off the DVR functionality on the Infringing Products, which are still infringing until they are proved otherwise. The Judge is proving that out by dealing with the contempt proceedings BEFORE any discussion about a "more than colorably different" software begins. You can argue that your DVRs no longer infringe, and as such get to be turned back on, but you first need to turn them off. We'll then have a nice trial to argue the merits of this new software of yours.


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## nobody99

TexasAg said:


> Yes, and I believe Echo actually insisted that the word "infringing" be used in the injunction to describe those models. Wonder why they did that?


My guess - to confuse things later. But seriously, you can't honestly think that any reasonable judge is going to be confused by the language are you?

"Infringing Products" doesn't mean "infringing today" or "was infringing last year" or anything else. It means one thing, and only one thing:

DP-501; DP-508; DP-510; DP-522; DP-625; DP-721; DP-921; and the DP-942

New software, old software, in the warehouse, at the customer's site. That's what "infringing products" means.


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## kmill14

jacmyoung said:


> In this case, the injunction never said DISH may not modify the Infringing Products and continue as before, not to mention on the surface DISH's act of modification seems in good faith and is a legitimate effort to workaround the patent.


Actually, it specifically said they cannot continue as before, because the order was to disable the DVR functionality and never be sold again. Well, they were sold again, and they are all still running.

I wonder if the Judge will go model by model, and ask if any of those model products are still in service. What will E*'s response be?


----------



## TexasAg

kmill14 said:


> which are still infringing until they are proved otherwise.


jacmyoung has raised this before, but I don't think anyone has answered. Where is Echo prevented from turning back on the DVR functionality once new software was installed?

See, this is what I imagine Echo's position is:

(i) The listed DVRs have been found to infringe (only due to the software at this point), and we are instructed to turn off the DVR functionality on the listed DVRs.

(ii) We turned off the DVR functionality for a little while.

(iii) We then installed new software on the "infringing products" and turned the DVR functionality back on in our "modified devices."

(iv) The "modified devices" are more than colorably different, so we don't violate the injunction.

The original "infringing products" no longer exist. There are currently (I assume) no Echo DVRs receiving Dish service with the old infringing software. There are only the new "modified" DVRs running the new software.

Can you say without any question that the DVRs currently running the new software are "infringing products" without only saying that the model numbers on the outside of the boxes are the same?



kmill14 said:


> Actually, it specifically said they cannot continue as before


You better hope not. The courts have said an infringer is "entitled" to modify a device and not be held in contempt.
__________________
My personal opinions are just that. Don't rely on them - I could be Charlie Ergen's pool boy.


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## TexasAg

kmill14 said:


> I wonder if the Judge will go model by model


Others have said Echo could sell new DVRs with the modified software and not violate the injunction. I get the feeling if Echo sold brand new DVRs with the same model numbers and the new software, you'd view that as a violation of the injunction, am I right? If Echo sold the DP-501 DVR with the new software, you'd find Echo in contempt, right?
__________________
My personal opinions are just that. Don't rely on them - I could be Charlie Ergen's pool boy.


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## kmill14

TexasAg said:


> jacmyoung has raised this before, but I don't think anyone has answered. Where is Echo prevented from turning back on the DVR functionality once new software was installed?


It says so right in the injunction:

********
This injunction shall run until the expiration of the '389 patent.
*This Court retains jurisdiction over Defendants to enforce any and all aspects of this Judgment and Permanent Injunction.*
********

As you can see, the JUDGE makes the decision on whether or not E* is no longer infringing, or can turn the DVRs back on. E* does not get to make that call.



TexasAg said:


> *The original "infringing products" no longer exist.* There are currently (I assume) no Echo DVRs receiving Dish service with the old infringing software. There is only the new "modified" DVRs running the new software.
> 
> Can you say without any question that the DVRs currently running the new software are "infringing products" without only saying that the model numbers n the outside of the boxes are the same?


So again, when the Judge asks how many of model 501 is in service, and then 508, and 510, etc...what will their response be? As far as saying "without any question" that the models infringe or not, I will assume they do until the Court/a Jury decides that they do not.

Innocent until proven guilty, and then you are guilty until proven innocent.


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## TexasAg

kmill14 said:


> So again, when the Judge asks how many of model 501 is in service, and then 508, and 510, etc...what will their response be? As far as saying "without any question" that the models infringe or not, I will assume they do until the Court/a Jury decides that they do not.
> 
> Innocent until proven guilty, and then you are guilty until proven innocent.


Answer what I just asked, and I'll respond to your question.

If Echo started selling the DP-501 DVR with the new software, you'd find Echo in contempt, right?
__________________
My personal opinions are just that. Don't rely on them - I could be Charlie Ergen's pool boy.


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## kmill14

TexasAg said:


> Others have said Echo could sell new DVRs with the modified software and not violate the injunction. I get the feeling if Echo sold brand new DVRs with the same model numbers and the new software, you'd view that as a violation of the injunction, am I right? If Echo sold the DP-501 DVR with the new software, you'd find Echo in contempt, right?


You'd certainly be dumb to do so, since the DP-501 has been proven to infringe on TiVo's patent. The Judge has no idea whether this new software is any different than the old software, and assumes it still infringes, and will ask that it be shut off.


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## TexasAg

kmill14 said:


> As you can see, the JUDGE makes the decision on whether or not E* is no longer infringing, or can turn the DVRs back on. E* does not get to make that call.


No kidding. Point to anyone here who has said "Echo's not in contempt since Echo said so."



kmill14 said:


> You'd certainly be dumb to do so, since the DP-501 has been proven to infringe on TiVo's patent. The Judge has no idea whether this new software is any different than the old software, and assumes it still infringes, and will ask that it be shut off.


It's as I thought, then. You are going only by the model numbers of the DVRs, as if the model numbers somehow control what is infringing and what isn't inside the DVRs.

As far as you're concerned, Echo could have built a new DVR with new electronics, written completely new non-infringing software, and you'd assume the new DVR infringes as long as the model number is the same. You'd find Echo in contempt based solely on the sticker on the outside of the box.

So should the judge even bother asking Echo if the new DVR with the new software and the same model number is any different, or just lock up Charlie and confiscate his house?
__________________
My personal opinions are just that. Don't rely on them - I could be Charlie Ergen's pool boy.


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## HobbyTalk

Don't forget when that injunction was written, both the software AND hardware was said to infringe. At this point the hardware no longer infringes. It is much harder (if not impossible) to modify the hardware on devices in the field where it is fairly easy to modify the software.

Since the basis for that injunction is based on both the software AND hardware infringing and those facts have changed, the injunction may no longer be the proper remedy.


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## nobody99

TexasAg said:


> jacmyoung has raised this before, but I don't think anyone has answered. Where is Echo prevented from turning back on the DVR functionality once new software was installed?
> 
> See, this is what I imagine Echo's position is:
> 
> (i) The listed DVRs have been found to infringe (only due to the software at this point), and we are instructed to turn off the DVR functionality on the listed DVRs.
> 
> (ii) We turned off the DVR functionality for a little while.
> 
> (iii) We then installed new software on the "infringing products" and turned the DVR functionality back on in our "modified devices."
> 
> (iv) The "modified devices" are more than colorably different, so we don't violate the injunction


Really? You think they are actually going to take this course with the judge? Because if I were judge, that would sure piss me off. Let's look at some of of DISH's arguments _against_ an injunction:



> According to Defendants, the injunction Plaintiff proposes "would immediately remove DVRs from three million families who are innocent of any wrongdoing&#8230; [depriving] those families of DVRs and force[ing] them to incur significant disruption and expense in order to replace them."


Why would three million families need to replace them if they were just turned off and then back on?



> However, Defendants argue, an injunction will cause them "severe and irremediable" harm.


Really? Turning off the DVRs would cause "severe and irremediable harm?" Oh, wait, they did that anyway? What was the harm again?

If you are suggesting that DISH _believed_ that it followed the intent of the injunction, you should re-read their arguments against an injunction. They knew _exactly_ what was intended. Turn off, and don't turn it back on.



TexasAg said:


> The original "infringing products" no longer exist. There are currently (I assume) no Echo DVRs receiving Dish service with the old infringing software. There are only the new "modified" DVRs running the new software.
> 
> Can you say without any question that the DVRs currently running the new software are "infringing products" without only saying that the model numbers on the outside of the boxes are the same?


Simple test:

At the time the injunction was issued, was it a model that was found to infringe? If it is, get out a sharpie and writing "Infringing Product" across the top. Go ahead and load new software. Does it still say "Infringing Product" on it in black magic marker? Yes, then it's infringing. Ok, let's send out a sticker with a new model number (and since we're already going to piss the judge off anyway, let's call it model #FOLSOMSUX). Instruct the customer to put the sticker over the old model #. Does it still say "Infringing Product" on it in black magic marker? Yes, then it's infringing.



TexasAg said:


> You better hope not. The courts have said an infringer is "entitled" to modify a device and not be held in contempt.


Absolutely correct. For new products.


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## kmill14

TexasAg said:


> As far as you're concerned, Echo could have built a new DVR with new electronics, written completely new non-infringing software, and you'd assume the new DVR infringes as long as the model number is the same. You'd find Echo in contempt based solely on the sticker on the outside of the box.


Help me out here. When a company makes a new "anything", they typically apply a new model number to it in order to differentiate it from older models, right?

The model #'s listed in the trial and deemed to have been infringed are always going to infringe, regardless of what new software patches get loaded into it. This will continue until such time that the Judge rules that one of these software patches achieves the purpose of allowing the product to stop infringing.


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## kmill14

HobbyTalk said:


> Don't forget when that injunction was written, both the software AND hardware was said to infringe. At this point the hardware no longer infringes. It is much harder (if not impossible) to modify the hardware on devices in the field where it is fairly easy to modify the software.
> 
> Since the basis for that injunction is based on both the software AND hardware infringing and those facts have changed, the injunction may no longer be the proper remedy.


The injunction was based on THE PRODUCTS infringing on a PATENT. As far as the court is concerned, the PRODUCTS still infringe on the PATENT.


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## TexasAg

nobody99 said:


> Let's look at some of of DISH's arguments _against_ an injunction:


You're citing arguments made, what, 12-18 months before the new software was even designed? I never said they only had to turn them off and then turn them back on. They turned them off, then modified the DVRs. The original DVRs found to infringe no longer exist. Where does it say Echo cannot modify the DVRs and then place them back in service?



nobody99 said:


> At the time the injunction was issued, was it a model that was found to infringe? If it is, get out a sharpie and writing "Infringing Product" across the top. Go ahead and load new software. Does it still say "Infringing Product" on it in black magic marker? Yes, then it's infringing. Ok, let's send out a sticker with a new model number (and since we're already going to piss the judge off anyway, let's call it model #FOLSOMSUX). Instruct the customer to put the sticker over the old model #. Does it still say "Infringing Product" on it in black magic marker? Yes, then it's infringing.


So do you agree then that Echo would infringe if they designed a completely new DVR and then released it with the same model number, say DP-501?
__________________
My personal opinions are just that. Don't rely on them - I could be Charlie Ergen's pool boy.


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## TexasAg

kmill14 said:


> The model #'s listed in the trial and deemed to have been infringed are always going to infringe, regardless of what new software patches get loaded into it.


Really, they will ALWAYS infringe REGARDLESS of the new software? What exactly about them infringed? Oh yeah, Tivo's software claims.



kmill14 said:


> This will continue until such time that the Judge rules that one of these software patches achieves the purpose of allowing the product to stop infringing.


And what do you know? The courts have a nice procedure for that: the "more than colorably different" standard applied during contempt proceedings.



kmill14 said:


> The injunction was based on THE PRODUCTS infringing on a PATENT. As far as the court is concerned, the PRODUCTS still infringe on the PATENT.


And the court needs to decide whether the products continue to infringe the patent, before holding Echo in contempt for violating an injunction designed to prevent future infringement, yes?
__________________
My personal opinions are just that. Don't rely on them - I could be Charlie Ergen's pool boy.


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## nobody99

TexasAg said:


> As far as you're concerned, Echo could have built a new DVR with new electronics, written completely new non-infringing software, and you'd assume the new DVR infringes as long as the model number is the same. You'd find Echo in contempt based solely on the sticker on the outside of the box.


At the time of the injunction, some number, call it 3,452,152 boxes were found to infringe.

If Dish comes out with a new box with new electronics with the same model number, TiVo can certainly request a contempt hearing to see if it is not more than colorably different than the existing box.

Hell, Dish may even continue to manufacture boxes with only new software and a different model number. TiVo can ask for a contempt hearing to see if it is not more than colorably different than the existing boxes.

But the 3,452,152 boxes that were in existence at the time of the injunction need to be shut off.


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## spear61

The judge's injunction is just like the "389" patent in that you need to "parse ( analyze per the patent)" every word. If he wanted all the models numerated to have their DVR's shut down, he would have said "Products; 5xx....". He didn't do that. He said "Infringing Products; 5xx....". When the order came into force in 2008 (not 2006 when there were indeed infringing products), the infringing products (software) no longer existed. A patent injuction is not used to provide monetary damages, but is used to prevent future damage to the patent holder caused by continued infringement. No current infringement - no contempt.


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## scooper

kmill14 said:


> You'd certainly be dumb to do so, since the DP-501 has been proven to infringe on TiVo's patent. The Judge has no idea whether this new software is any different than the old software, and assumes it still infringes, and will ask that it be shut off.


Wrong answer - he got a brief from Echostar that they have developed a workaround (described in detail) and Echostar has deployed this modified software to the "Infringing Products" so they are no longer "Infringing Products". At best, all you can say about the software is that it is "More than colorably different", which by previous case law means that Echostar can NOT be found in contempt UNTIL the modified software has been shown to infringe IN ITS OWN TRIAL. See you in Delaware.


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## TexasAg

nobody99 said:


> But the 3,452,152 boxes that were in existence at the time of the injunction need to be shut off.


Even though only the software infringed and the software has been replaced?

I think that it's pretty silly to say "Echo can sell a DVR with the modified software and not be in contempt," then argue "Echo cannot modify the existing DVRs to use the modified software or they are in contempt."

It's one or the other - either Echo can sell and use the new software, or they can't. If they can, they should not be held in contempt.



spear61 said:


> No current infringement - no contempt.


Amen, brother/sister spear61!
__________________
My personal opinions are just that. Don't rely on them - I could be Charlie Ergen's pool boy.


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## nobody99

spear61 said:


> The judge's injunction is just like the "389" patent in that you need to "parse ( analyze per the patent)" every word. If he wanted all the models numerated to have their DVR's shut down, he would have said "Products; 5xx....". He didn't do that. He said "Infringing Products; 5xx....". When the order came into force in 2008 (not 2006 when there were indeed infringing products), the infringing products (software) no longer existed.


From the injunction, again:



> 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.


If we can't agree that "infringing products" means those particular receivers that had already been manufactured...we aren't even going to be able to agree that we're both speaking English.



spear61 said:


> A patent injuction is not used to provide monetary damages, but is used to prevent future damage to the patent holder caused by continued infringement. No current infringement - no contempt.


Absolutely true with new products, not true in the case of existing products already in the field that are specifically adjudicated to have infringed.

From the injunction:



> And, as Plaintiff is a relatively new company with only one primary product, loss of market share and of customer base as a result of infringement cause severe injury. Thus, the Court concludes that the full impact of Defendants' infringement cannot be remedied by monetary damages.


It sure seems like the injunction is for more than continued infringement. It's in place of monetary damages.


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## nobody99

TexasAg said:


> I think that it's pretty silly to say "Echo can sell a DVR with the modified software and not be in contempt," then argue "Echo cannot modify the existing DVRs to use the modified software or they are in contempt."
> 
> It's one or the other - either Echo can sell and use the new software, or they can't. If they can, they should not be held in contempt.


Why is that silly? TiVo's just getting its stolen merchandise returned by the police. It doesn't matter if DISH modified it so TiVo could no longer identify it.

As far as new software goes - we'll see. If Folsom says that the new software is not more than colorably different, the whole "existing vs new" argument is moot anyway, and DISH is in a world of hurt.


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## bobcamp1

TexasAg said:


> Now you know why someone said earlier that hardware IP is more valuable than software IP.


That was me. From my experience. Having filed patents before and having easily worked-around software IP in the past. And even hardware IP, too.

If the judge finds the new software is substantially different in the code under dispute, he cannot find for contempt. And if he did, that decision would be overturned on appeal. The appeals court has whittled down the current injunction. They didn't change the text -- they didn't have to. There is plenty of case law and regular laws, plus their ruling, which already limit the injunction. I've been told that changing the injunction just to add the word "software" is perceived as stepping on another judge's toes to correct something trivial and obvious. So it's not done. Also, judges generally don't put software version numbers in their injunctions (some do) -- they just refer to the product it is in. It's assumed that he meant the code that was being discussed for the past three years.

Most case law needs a subscription, so I don't have access. And neither does Google, which is why you can't search for it. But here is one. A modified product does not automatically fall under the injunction.

http://www.fedcirc.us/case-reviews/bass-pro-trademarks-l.l.c.-v.-cabelas-inc.html

The big question is, is the new software different enough? We'll know in September. Or sometime next year, if you count the appeal.


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## TexasAg

nobody99 said:


> If we can't agree that "infringing products" means those particular receivers that had already been manufactured...we aren't even going to be able to agree that we're both speaking English.


Then why use the word "infringing" at all, why not just "products"?

You would agree that "Products: A, B, and C" and "Infringing Products: A, B, and C" should have different meanings.



nobody99 said:


> If Folsom says that the new software is not more than colorably different, the whole "existing vs new" argument is moot anyway, and DISH is in a world of hurt.


Agreed, certainly. But my point has been all along that Echo deserves at least the chance to show they are not in contempt since the new software might be "more than colorably different."
__________________
My personal opinions are just that. Don't rely on them - I could be Charlie Ergen's pool boy.


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## nobody99

A point to think about...

There are actually two parts to the injunction. The first part is sort of the traditional stuff that we've been talking about:



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


That prevents DISH from making or selling new products for customers unless the new products are more than colorably different.

There's a second part of the injunction, which has some terminology that I find interesting:



> Defendants are hereby *FURTHER ORDERED* to, within thirty (30) days of the issuance
> of this order, disable the DVR functionality (i.e., disable all storage to and playback from a hard
> disk drive of television data) in all but 192,708 units of the Infringing Products that have been
> placed with an end user or subscriber.


The "disable the DVR functionality" has no "colorably different" language. I think it's clear that it was, as kmill14 has pointed out, used _instead of_ monetary damages.

So the argument boils down to this as it relates to "placed with an end user or subscriber": Does the term "Infringing Products" mean "DP-501; DP-508; DP-510; DP-522; DP-625; DP-721; DP-921; and the DP-942." or does it mean "products that are still infringing today."

My position is straightforward: if, at the time of the injunction, a customer had one of the listed model #'s, DVR functions need to be turned off.

The fact that the injunction says "Infringing Products" in capital letters shortly after the text *collectively the "Infringing Products"* appears is pretty convincing evidence.


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## nobody99

TexasAg said:


> Then why use the word "infringing" at all, why not just "products"?
> 
> You would agree that "Products: A, B, and C" and "Infringing Products: A, B, and C" should have different meanings.


Here's a common thing in a contract:

XYZ Corp, ABC Corp, and Bob Johnson (collectively "The Defendants")

Why use the term "Defendants?"

Because it's shorthand.

Seriously, you really, honestly don't think that "Infringing Products" (upper case and everything, even after the text *collectively the "Infringing Products"* appears, is *not* shorthand?


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## bobcamp1

nobody99 said:


> From the injunction, again:
> 
> If we can't agree that "infringing products" means those particular receivers that had already been manufactured...we aren't even going to be able to agree that we're both speaking English.
> 
> It sure seems like the injunction is for more than continued infringement. It's in place of monetary damages.


We're not speaking English. We're speaking "legalese". What does "a" mean? It patent law, it usually means one or more than one! This was an item of contention during the trial. And the claims section of a patent, all of it, is typically one sentence!

An injunction CAN be used as an award for previous damages, but TYPICALLY the cash amount is for prior damages, while the injunction is used to prevent future damage. It depends on how the cash amount was calculated. It seems large in this case, so IMO this injunction is simply to prevent future damage. Once again, we'll find out in September then next year.


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## jims

One of the difficulties in saying the download removed the software is a question of if it only existed on the hard drive. It is possible that a trace of it could still be in the CMOS or whatever non-perishable medium the DVR's maintain. Another question arises as to whether the newer software could have still referenced legacy drivers that were still part of the original software. Without having an independent examination of the machines in question I am not sure how the court could make a determination of whether the legacy software is on there one way or another. By independent I refer to an examination that the court would have to sponsor instead of accepting Echostars or Tivos word.

This all becomes irrelevent based on which direction the court decides to go. The Appeals court chose to remand back the Hardware for retrial while determining not to modify / reduce the damages or injunction based on not seeing it as a seperable issue as presented to them. That could indicate some direction on which way the court could lean. I think the transcript shows it best in that they and this forum continues to disagree and I have yet to see where the courts are influenced by discussions going on in these forums.


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## kmill14

scooper said:


> Wrong answer - he got a brief from Echostar that they have developed a workaround (described in detail) and Echostar has deployed this modified software to the "Infringing Products" so they are no longer "Infringing Products". At best, all you can say about the software is that it is "More than colorably different", which by previous case law means that Echostar can NOT be found in contempt UNTIL the modified software has been shown to infringe IN ITS OWN TRIAL. See you in Delaware.


This was covered before. It is up to the Judge to determine whether the Infringing Products are no longer infringing. E* has not followed the letter of the injunction, since it has not been determined that a software patch (their products get many of these patches all the time) was able to alter the infringing product enough to be non-infringing.

Also, you guys keep bringing up this "more than colorably different" phrase, but the injunction only mentions that in terms of NEW products sold to customers. The existing products, DP-501, etc have all been clearly identified to be shut off. There is no clause in the injunction that says "unless they are more than colorably altered".

First things first. E* shuts off the DVRs, then presents a request to turn them back on based on this new software.


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## scooper

kmill14 said:


> This was covered before. It is up to the Judge to determine whether the Infringing Products are no longer infringing. E* has not followed the letter of the injunction, since it has not been determined that a software patch (their products get many of these patches all the time) was able to alter the infringing product enough to be non-infringing.
> 
> Also, you guys keep bringing up this "more than colorably different" phrase, but the injunction only mentions that in terms of NEW products sold to customers. The existing products, DP-501, etc have all been clearly identified to be shut off. There is no clause in the injunction that says "unless they are more than colorably altered".
> 
> First things first. E* shuts off the DVRs, then presents a request to turn them back on based on this new software.


To what point ? They already are RUNNING the new software.

To do what you're suggesting is in total contrast to every other Patent case law to date.


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## kmill14

TexasAg said:


> Then why use the word "infringing" at all, why not just "products"?
> 
> You would agree that "Products: A, B, and C" and "Infringing Products: A, B, and C" should have different meanings.
> 
> Agreed, certainly. But my point has been all along that Echo deserves at least the chance to show they are not in contempt since the new software might be "more than colorably different."


Texas, as you know, the contempt hearing will not have any technical arguments, only legal. How will they be able to argue whether the software altered products are more than colorably different if they won't be arguing about the technical merits of it or anything else?


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## Greg Bimson

Go back and take a look at the transcript for the status hearing.

Harold McElhinny (lead counsel for DISH/SATS) didn't mind a contempt hearing, as long as it was only one contempt hearing. That would mean addressing both the possible violations: the _prima facie_ and the ongoing infringement issues.

Because only the _prima facie_ violation will be adjudicated on 4 September, there is no argument over "colorably different". The "colorably different" language isn't anywhere on the "disable" section of the order.

Now you know why DISH/SATS filed suit in Delaware regarding the new software. However, if DISH/SATS presses the Delaware suit to include models already subject to the injunction, the suit will be handed over to Judge Folsom.


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## kmill14

scooper said:


> To what point ? They already are RUNNING the new software.
> 
> To do what you're suggesting is in total contrast to every other Patent case law to date.


And these products have received new software for years. Who's to say that this new software really makes the DVR act any different than it did before?

The injunction is clear. Turn off the DVR functionality. It didn't say turn off the functionality OR fix it (other injunctions HAVE said that mind you..but this one doesn't.)


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## TexasAg

kmill14 said:


> Texas, as you know, the contempt hearing will not have any technical arguments, only legal. How will they be able to argue whether the software altered products are more than colorably different if they won't be arguing about the technical merits of it or anything else?


Who's ever said that Echo can't go to the hearing and say judge, Tivo's legal arguments are wrong, you need to consider the new software? Why couldn't the judge say Tivo, you've argued the wrong standard, so your motion is denied at this point unless you file a correct motion and we use the correct standard?



Greg Bimson said:


> Because only the _prima facie_ violation will be adjudicated on 4 September, there is no argument over "colorably different". The "colorably different" language isn't anywhere on the "disable" section of the order.


Where did the judge say Echo couldn't raise the colorably different issue? Echo is clearly prepared to argue it in response to Tivo's motion, and even Tivo said they need discovery if Echo raises "certain issues." While Tivo wants no mention of the new software, Tivo doesn't get to decide whether the "more than colorably different" standard applies to the modified software.



nobody99 said:


> Here's a common thing in a contract:
> 
> XYZ Corp, ABC Corp, and Bob Johnson (collectively "The Defendants")
> 
> Why use the term "Defendants?"
> 
> Because it's shorthand.


And what if they had said "the corporate defendants"? Could you then argue that the injunction applies to individuals not associated with the corporation? Or if they had said "the New York residents"? Could you then argue that the injunction applies to individuals in California?



kmill14 said:


> And these products have received new software for years. Who's to say that this new software really makes the DVR act any different than it did before?


It doesn't matter if the DVRs in the end do not "act any differently" from the perspective of the end user. The issue is always whether the new software infringes the software claims, which are very specific and deal with various objects, buffers, and flow control.



kmill14 said:


> It didn't say turn off the functionality OR fix it (other injunctions HAVE said that mind you..but this one doesn't.)


Cite please (which injunctions ordered the infringer to fix it).
__________________
My personal opinions are just that. Don't rely on them - I could be Charlie Ergen's pool boy.


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## nobody99

TexasAg said:


> And what if they had said "the corporate defendants"? Could you then argue that the injunction applies to individuals?


I noticed you didn't capitalize "The Corporate Defendants" - was that an intentional slip?

Let me give you an example that should be really clear. Suppose we have an contract with three men:

This agreement is between John, David, and Pete (collectively known as "The Girls")

At that point, any reference to "The Girls" has extremely specific meaning -- it means John, David, and Pete. And it means those specific people, not other John, David or Petes. It doesn't turn John, David, or Pete into girls, either.

This whole line of discussion is pretty laughable. I've pretty much no doubt that I'm right about what "Infringing Products" means.


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## TexasAg

nobody99 said:


> This agreement is between John, David, and Pete (collectively known as "The Girls")


You keep omitting the adjective. The injunction said "infringing products", not "products". If the judge had wanted the products shut down no matter what, he would have said "products".

Tell me, if you said "blonde girls", does it apply to brunettes?



nobody99 said:


> I've pretty much no doubt that I'm right about what "Infringing Products" means.


But the question is whether your interpretation is the only one possible. If there is more than one reasonable interpretation of the injunction, there won't be contempt. And if the judge tries to enforce an injunction that does not give Echo leeway to design around the patent or prevents Echo from using non-infringing software, that's just more grounds for appeal.
__________________
My personal opinions are just that. Don't rely on them - I could be Charlie Ergen's pool boy.


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## nobody99

TexasAg said:


> You keep omitting the adjective. The injunction said "infringing products", not "products". If the judge had wanted the products shut down no matter what, he would have said "products".
> 
> If you said "blonde girls", does it apply to brunettes?


Reworded...

Let me give you an example that should be really clear. Suppose we have an contract with three men, a blonde, a brunette, and a bald guy:

This agreement is between John, David, and Pete (collectively known as "The Blonde Girls")

At that point, any reference to "The Blonde Girls" has extremely specific meaning -- it means John, David, and Pete. And it means those specific people, not other John, David or Petes. It doesn't turn John, David, or Pete into girls, either. It does not give David hair, nor color Pete's blonde.

Let me ask you, do you think Keith Richards was an actual rock?


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## nobody99

TexasAg said:


> But the question is whether your interpretation is the only one possible. If there is more than one reasonable interpretation of the injunction, there won't be contempt. And if the judge tries to enforce an injunction that does not give Echo leeway to design around the patent or prevents Echo from using non-infringing software, that's just more grounds for appeal.


If that's what DISH is counting on, I've got four aces and DISH seven-high. And they've decided to go all-in. :lol:


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## James Long

nobody99 said:


> Here's a common thing in a contract:
> 
> XYZ Corp, ABC Corp, and Bob Johnson (collectively "The Defendants")


When you refer to a party in a contract as "defendants" it doesn't bode well. Contracts usually have the shorthand "buyer"/"seller" or "provider"/"carrier" or "licensor"/"licensee" or "leasor"/"leasee".

Jumping to "defendants" in a contract? Not good at all!


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## kmill14

TexasAg said:


> Who's ever said that Echo can't go to the hearing and say judge, Tivo's legal arguments are wrong, you need to consider the new software? Why couldn't the judge say Tivo, you've argued the wrong standard, so your motion is denied at this point unless you file a correct motion and we use the correct standard?


TiVo's legal argument will undoubtedly be that the Judge should enforce the injunction that the Judge himself ordered. They'll keep it pretty short, and say something to the effect that the only technical ruling at this point is one that says the Dish products in question are infringing and need to be shut off. They may add that while they spent years arguing for this very verdict, E* continued to expand its user base with those infringing DVRs.

E* will get to have their day in court to argue the merits of this new software, but until that happens, they must follow the existing order in hand.



TexasAg said:


> Cite please (which injunctions ordered the infringer to fix it).


I'll find it later tonight...I came across it weeks ago, but didn't save it.


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## jacmyoung

From a book I had trouble providing a link due to secured content:

"The Federal Circuit declines the opportunities to tell district courts how to frame injunctions in patent cases, and allows wide latitude. As was noted earlier, it is uniformity in decisions on contempt, rather than on framing injunctions, that is the primary goal. Although in most cases a broad injunction against violation of a statute does not satisfy the specificity requirement, patent injunctions are frequently drafted broadly to prohibit 'further infringement.'&#8230;"

From the above, one can understand the injunction can be indeed broad so to cover all bases to prevent "further infringement". The appeals court was correct in not changing the language of the injucntion for the judge, but the appeals court, if needed, will have to uphold the "uniformity in decisions on contempt" if the judge finds DISH in contempt on the "face of the injunction" as suggested by Tivo.

That *uniformity* has been clearly stated in my previous cases and links, I will not waste anymore time here, we know by now exactly what that *uniformity* is.


----------



## TexasAg

nobody99 said:


> Let me ask you, do you think Keith Richards was an actual rock?


If you described him as a rock in an injunction, he better be. 

Look, you feel the injunction, unlike others issued in patent cases, can prevent Echo from designing around a patent. I say you're wrong, esp. since infringement of the hardware claims was reversed. If the hardware claims were upheld, the order to shut off the DVRs would be much more difficult to overcome since Echo couldn't modify the hardware by a software update.

That's not the case here. I still have a hard time believing that some folks think it's OK for Echo to sell a DVR with the same hardware and the modified software without being in contempt but Echo can't modify the existing DVRs. It was only the software that infringed (at this point). The infringing software isn't on the DVRs any more.

Tivo will try to limit the 9/4 hearing, Echo will oppose that and bring up the new software. We'll see what happens.



kmill14 said:


> E* will get to have their day in court to argue the merits of this new software, but until that happens, they must follow the existing order in hand.


And the court couldn't say on 9/4 that Tivo is trying to use the wrong standard, so it's motion for contempt is denied? You seem to think Tivo gets to pick the legal standard for the contempt hearing based on the way it phrases its contempt motion. Doesn't work that way.
__________________
My personal opinions are just that. Don't rely on them - I could be Charlie Ergen's pool boy.


----------



## Greg Bimson

TexasAg said:


> Where did the judge say Echo couldn't raise the colorably different issue? Echo is clearly prepared to argue it in response to Tivo's motion, and even Tivo said they need discovery if Echo raises "certain issues." While Tivo wants no mention of the new software, Tivo doesn't get to decide whether the "more than colorably different" standard applies to the modified software.


On a _prima facie_ hearing, it is only a legal issue regarding the wording of the injunction. There isn't any language in the injunction to get DISH/SATS away from disabling the "Infringing Products".

A _prima facie_ contempt hearing is used to find a reporter in contempt when the court orders the reporter to divulge their sources name(s), and that order is ignored.

The injunction order is clear, concise and easy to understand. Disable the "Infringing Products".

So, to make this easier on everyone, which is fact?

A) TiVo's argument that DISH/SATS has not shut down a single "Infringing Product", defined as the eight products in the injunction.
B) DISH/SATS argument that the injunction no longer applies since they no longer have any infringing products because the software has been changed.

A is true. B might be true, if it weren't for the fact that someone has to judge whether or not the injunction no longer applies. DISH/SATS has not filed a motion to rescind the injunction. So the injunction stands.


----------



## TexasAg

Greg Bimson said:


> On a _prima facie_ hearing, it is only a legal issue regarding the wording of the injunction. There isn't any language in the injunction to get DISH/SATS away from disabling the "Infringing Products".
> 
> A _prima facie_ contempt hearing is used to find a reporter in contempt when the court orders the reporter to divulge their sources name(s), and that order is ignored.
> 
> The injunction order is clear, concise and easy to understand. Disable the "Infringing Products".


And where exactly in the transcript of the 5/30 hearing did the judge say that Echo couldn't bring up the new software. I saw the judge letting Echo makes it argument about the new software, then saying they'd wait to see Tivo's motion. I saw Tivo saying they wanted to limit it, but I didn't see anyone rule that the new software couldn't come in.

EDIT: And stop using the reporter example. It doesn't apply.
__________________
My personal opinions are just that. Don't rely on them - I could be Charlie Ergen's pool boy.


----------



## Greg Bimson

TexasAg said:


> You seem to think Tivo gets to pick the legal standard for the contempt hearing based on the way it phrases its contempt motion. Doesn't work that way.


Your Honor, we feel that there is a violation on the face of the injunction, and would like to argue contempt, so here is our motion.

And you think that would be somehow denied? Or better yet, somehow switched into a contempt against ongoing infringement?


----------



## Greg Bimson

TexasAg said:


> EDIT: And stop using the reporter example. It doesn't apply.


"Colorably different" regarding the disable order doesn't apply, but you don't see me telling you to shut up.


----------



## James Long

kmill14 said:


> TiVo's legal argument will undoubtedly be that the Judge should enforce the injunction that the Judge himself ordered. They'll keep it pretty short, and say something to the effect that the only technical ruling at this point is one that says the Dish products in question are infringing and need to be shut off.


Tivo has a problem. They have an injunction that names several receivers as "Infringing Products". That list is several years old.

If they took the simple approach ... DISH _must_ turn off these receivers ... it would not prevent DISH from operating various other DVRs that may or may not be based on those named receivers.

So Tivo is forced into opening a can of worms. If they want any unnamed receiver included in the injunction they have to raise the issue of colorably different and argue that the new receivers (ViP models and anything else not listed) are "only colorably different" from the named receivers.

That opens the door to debate what receivers are covered by the injunction ... including if a named receiver no longer violate's Tivo's patent. If one can add to the list one can subtract from the list. (Tivo has already filed a list of receivers they wanted discovery on to figure out if they should be on the list.)

Or they can take the other route ... focus solely on the named receivers and file separate claims against DISH for the new receivers. Or just leave the new receivers alone. Either way, it would protect their claim on getting the named receivers shut down. But the more THEY want the injunction changed or redefined the more the door is open for redefinition in DISH's favor.


----------



## nobody99

James Long said:


> That opens the door to debate what receivers are covered by the injunction ... including if a named receiver no longer violate's Tivo's patent. If one can add to the list one can subtract from the list. (Tivo has already filed a list of receivers they wanted discovery on to figure out if they should be on the list.)


That's your opinion.

The language to shut off the Handlebar Mustaches already in the hands of customers doesn't mention colorably different.

And who says that there can only be one contempt hearing? In fact, during the status meeting, DISH was worried about multiple contempt hearings.

So during the September 4 hearing, they address _only_ the Infringing Products (the eight named DVRs that were placed with customers at the time of the injunction).

The minute that hearing is over -- win or lose -- they ask for a new contempt hearing against whichever DVR they choose that's not already on the list. At that point, the "more than colorable difference" comes into play.

And if a new model comes out, they file a new contempt hearing. And so on, and so on.


----------



## James Long

nobody99 said:


> That's your opinion.


You are only posting your own opinion.

Personally, I think more of my opinion than yours. Serial contempt hearings isn't good.


----------



## kmill14

James Long said:


> Tivo has a problem. They have an injunction that names several receivers as "Infringing Products". That list is several years old.
> 
> If they took the simple approach ... DISH _must_ turn off these receivers ... it would not prevent DISH from operating various other DVRs that may or may not be based on those named receivers.
> 
> .
> .
> .
> 
> Or they can take the other route ... focus solely on the named receivers and file separate claims against DISH for the new receivers. Or just leave the new receivers alone. Either way, it would protect their claim on getting the named receivers shut down. But the more THEY want the injunction changed or redefined the more the door is open for redefinition in DISH's favor.


Strange, you would think E*, facing a contempt hearing without being able to bring up the new software from a technical standpoint, is the one with a problem.

They can address new DVRs seperately, and not negate the letter of the injunction, which does not state the old, infringing products can just be "more than colorably different" than before and get turned back on. I guess the Judge will eventually need to address that, after they get turned off.


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## scooper

On September 4 - we shall see...


----------



## scooper

nobody99 said:


> There's a second part of the injunction, which has some terminology that I find interesting:
> 
> So the argument boils down to this as it relates to "placed with an end user or subscriber": Does the term "Infringing Products" mean "DP-501; DP-508; DP-510; DP-522; DP-625; DP-721; DP-921; and the DP-942." or does it mean "products that are still infringing today."
> 
> My position is straightforward: if, at the time of the injunction, a customer had one of the listed model #'s, DVR functions need to be turned off.
> 
> The fact that the injunction says "Infringing Products" in capital letters shortly after the text *collectively the "Infringing Products"* appears is pretty convincing evidence.


And that most of us arguing Dish's side are saying the injunction applies to "products that are still infringing today."

I still maintain that having this apply to units "placed with an end user or subscriber" is going WAY out of bounds so far as "DVR functions need to be turned off." There has never been anything like that.


----------



## kmill14

scooper said:


> And that most of us arguing Dish's side are saying the injunction applies to "products that are still infringing today."
> 
> I still maintain that having this apply to units "placed with an end user or subscriber" is going WAY out of bounds so far as "DVR functions need to be turned off." There has never been anything like that.


As we should all know full well by now, the injunction doesn't say anything at all about "still infringing today". Even it it did, there is no technical ruling in hand stating that they are not infringing. There is only a ruling stating that they are.

As far as being out of bounds with the "turning DVR functions off, the Judge was quite clear in the decision for issuing this injunction. It is based mainly on the fact the Dish gained an unfair advantage in capturing a big percentage of TiVo's only customer base with a product that infringed on TiVo's own patent. The Judge was clear in his summation that monetary damages alone would not be sufficient.


----------



## kmill14

Just out today from the court regarding the Sep 4th hearing:

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

***********
Pursuant to the Court's April 23, 2008 Order, Plaintiff TiVo Inc. submitted topics for discussion at the status conference on May 30, 2008. One of the topics discussed at the status conference was enforcement of the Court's Permanent Injunction. Specifically, TiVo requests a hearing at the earliest possible date to determine the following: (1) whether Defendant EchoStar Communications Corporation should be held in contempt for its failure to disable the DVR
functionality in the Infringing Products and for its placement of new infringing DVRs; and (2) with respect to EchoStar's modified software, whether TiVo should be allowed permission to serve 1 limited discovery to obtain additional technical information before bringing a motion for an order to show cause why EchoStar is not in contempt for the continuing use of the Infringing Products, changed only by downloading modified software.

The Court has set for hearing September 4, 2008 the first issue of whether EchoStar has disabled the DVR functionality with respect to the Infringing Products as required by the Court's Permanent Injunction. The second issue outlined above, namely TiVo's request to take limited discovery regarding EchoStar's allegedly new software, is denied at this time.

In the interest of judicial economy, the Court will determine first whether EchoStar should be held in contempt for its failure to disable the DVR functionality in the Infringing Products and for its placement of new infringing DVRs as urged by TiVo or whether, as urged by EchoStar, the language of the Court's Permanent Injunction allows EchoStar to comply with the spirit of the injunction by changing the software so that the products no longer infringe. TiVo may renew its request to serve limited discovery regarding EchoStar's modified software after the Court's decision on the first issue.
***********


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## spear61

kmill14 said:


> Just out today from the court regarding the Sep 4th hearing:
> 
> http://www.southernme.com/DAVY_v_GOLIATH/Tivo%20v%20Echostar/06-05ORDER.pdf
> 
> ***********
> 
> In the interest of judicial economy, the Court will determine first whether EchoStar should be held in contempt for its failure to disable the DVR functionality in the Infringing Products and for its placement of new infringing DVRs as urged by TiVo or whether, as urged by EchoStar, the language of the Court's Permanent Injunction allows EchoStar to comply with the spirit of the injunction by changing the software so that the products no longer infringe. _TiVo may renew its request to serve limited discovery regarding EchoStar's modified software after the Court's decision on the first issue._***********


Looks like Texas is not in the mood to give this to Delaware.


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## kmill14

That case will definitely get pushed back to Texas, if not complete thrown out.


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## scooper

Don't see where you're getting that from.


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## TexasAg

kmill14 said:


> JIn the interest of judicial economy, the Court will determine first whether EchoStar should be held in contempt for its failure to disable the DVR functionality in the Infringing Products and for its placement of new infringing DVRs as urged by TiVo or whether, as urged by EchoStar, the language of the Court's Permanent Injunction allows EchoStar to comply with the spirit of the injunction by changing the software so that the products no longer infringe. TiVo may renew its request to serve limited discovery regarding EchoStar's modified software after the Court's decision on the first issue.


So the first hearing will be completely legal, including deciding whether Echo can get the "more than colorably different" standard applied. So much for the "completely legal" hearing eliminating the possibility of Echo getting around the injunction. Bad news for Tivo, since they wanted the hearing limited just to the first issue. Good news for Tivo, contempt on its face is still an option. Bad news for Echo in that the court didn't just flat out say the "more than colorably different" standard applies. Good news is that the court will consider it.



kmill14 said:


> That case will definitely get pushed back to Texas, if not complete thrown out.


Not necessarily. The Texas court is just going to decide whether the new software gets around the injunction. The Texas court won't necessarily decide whether the new software infringes any time soon (esp. if the new software is more than colorably different, since that would require a new infringement trial somewhere).
__________________
My personal opinions are just that. Don't rely on them - I could be Charlie Ergen's pool boy.


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## space86

Question will the DVR's if they are turned off, they will not be turned off until
September ?


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## jacmyoung

If anyone has read the paragraph I quoted above, two things come to light:

1) The primary goal of the district court's injunction is to prohibit further infringement, and in doing so the judge is given wide latitude, including making his injunction broad to achieve such goal.

2) The primary goal of the circuit court is that in the event the contempt issue surfaces, it must maintain uniformity when determining if the contempt is appropriate or not.

Therefore the judge may very well find DISH in contempt based on the "face of the injucntion", even though such face of the injunction, as we all agree, is unique and somewhat unprecedented.

But since the appeals court's job is different, its job is to ensure uniformity, and to do so it must not allow unique and unprecedented contempt ruling to disrupt such uniformity.

The uniformity is, an infringer should be allowed to modify the infringing products and continue as before, as long as the workaround is legitimate.

Now Tivo has asked the judge to look at the contempt issue on the face of the injunction, and the judge might as well give it to them, but according to the above reading, it will be almost certain the appeals court will overturn such ruling, because not doing so will mean one thing and one thing only, the uniformity will be broken.

In that sense, it really did not matter if the judge had added the term "Infinging Products" or not, even if he had used "DVR501..." in each and every turn, while he could certainly rule DISH in contempt, the appeals court would have no choice but to overturn the ruling, because the ruling would have been in contrast to the *uniform* standard that an infringer should be allowed to modify the infringing products and continue as before, as long as the workaround is legitimate.


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## kmill14

"or whether, as urged by EchoStar, the language of the Court’s Permanent Injunction allows EchoStar to comply with the spirit of the injunction by changing the software so that the products no longer infringe."

Texas, nowhere does it say that the court is ruling on "more than colorably different", but stating straight out that the products must no longer infringe. 

Given that the court spelled out that E* will argue that the products no longer infringe (which as jacmyoung pointed out is different than a ruling of "more than colorably different"), one would assume this could result in a new trial. 

It would be quite something for the Judge to issue an injunction, and have it in essence be ignored because the infringing company uploaded software it claims does not infringe. If this software is ruled as infringing, would E* then be able to upload another software patch stating that IT is not infringing?


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## TexasAg

kmill14 said:


> "or whether, as urged by EchoStar, the language of the Court's Permanent Injunction allows EchoStar to comply with the spirit of the injunction by changing the software so that the products no longer infringe."
> 
> Texas, nowhere does it say that the court is ruling on "more than colorably different", but stating straight out that the products must no longer infringe.


We'll see what the parties argue. Echo has already brought up the colorably different standard in a round-about way, which I'm sure they'll emphasize.

As far as Echo is concerned, they want a trial on whether the new software infringes (they'd prefer in Delaware, but I'm sure they'll take it wherever they can get it). That is absolutely what Tivo doesn't want - more time, money, etc. for yet another trial.



kmill14 said:


> It would be quite something for the Judge to issue an injunction, and have it in essence be ignored because the infringing company uploaded software it claims does not infringe. If this software is ruled as infringing, would E* then be able to upload another software patch stating that IT is not infringing?


That's what the "more than colorably different" standard is for. If the new software is not, then Echo could be held in contempt. If the new software is, then Echo cannot be held in contempt, and a new trial is needed. Every time Echo tries and infringes, they'll likely be looking at triple damages and attorney's fees each time.
__________________
My personal opinions are just that. Don't rely on them - I could be Charlie Ergen's pool boy.


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## scooper

kmill14 said:


> It would be quite something for the Judge to issue an injunction, and have it in essence be ignored because the infringing company uploaded software it claims does not infringe. If this software is ruled as infringing, would E* then be able to upload another software patch stating that IT is not infringing?


And ad infinitum, until Tivo is broke and can't do it any more. Because Tivo would have to take each "different" version to a separate trial to get the "infringing" ruling.


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## BobaBird

nobody99 said:


> The language to shut off the Handlebar Mustaches already in the hands of customers doesn't mention colorably different.


Why would it need to? The case law jacmyoung has turned up says the court needs to consider it for a finding of contempt, and that not considering it is grounds for appeal. Also, the Products would have to be more than colorably different to make them no longer Infringing. It's a given.

(opinion formed only from reading this thread)


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## dgordo

View attachment 14093


IN THE UNITED STATES DISTRICT COURT OF THE EASTERN DISTRICT OF TEXAS MARSHALL DIVISION
TIVO INC., a Delaware Corporation

V.

ECHOSTAR COMMUNICATIONS CORPORATION, a Nevada Corporation, ET AL.

ORDER

Pursuant to the Court's April 23, 2008 Order, Plaintiff TiVo Inc. submitted topics for
discussion at the status conference on May 30, 2008. One of the topics discussed at the status
conference was enforcement of the Court's Permanent Injunction. Specifically, TiVo requests a
hearing at the earliest possible date to determine the following: (1) whether Defendant EchoStar
Communications Corporation should be held in contempt for its failure to disable the DVR
functionality in the Infringing Products and for its placement of new infringing DVRs; and (2) with
respect to EchoStar's modified software,1 whether TiVo should be allowed permission to serve
limited discovery to obtain additional technical information before bringing a motion for an order
to show cause why EchoStar is not in contempt for the continuing use of the Infringing Products,
changed only by downloading modified software.

The Court has set for hearing September 4, 2008 the first issue of whether EchoStar has
disabled the DVR functionality with respect to the Infringing Products as required by the Court's
Permanent Injunction.2 The second issue outlined above, namely TiVo's request to take limited
discovery regarding EchoStar's allegedly new software, is denied at this time. In the interest of
judicial economy, the Court will determine first whether EchoStar should be held in contempt for
its failure to disable the DVR functionality in the Infringing Products and for its placement of new
infringing DVRs as urged by TiVo or whether, as urged by EchoStar, the language of the Court's
Permanent Injunction allows EchoStar to comply with the spirit of the injunction by changing the
software so that the products no longer infringe. TiVo may renew its request to serve limited
discovery regarding EchoStar's modified software after the Court's decision on the first issue.

IT IS SO ORDERED.


----------



## jacmyoung

TexasAg said:


> ... I say you're wrong, esp. since infringement of the hardware claims was reversed. If the hardware claims were upheld, the order to shut off the DVRs would be much more difficult to overcome since Echo couldn't modify the hardware by a software update....


As hard to believe as it may be, even if the hardware verdict was upheld, the software update would still be good enough because the hardware claims were actually dependent on the software claim. Tivo does not hold a patent on the hardware DISH DVRs are using.

Most DVR hardware used by all companies at the time had the Broadcom design to accomodate Tivo's DVR software, but DISH was not violating Broadcom hardware design, only that when DISH infringed on Tivo's software, the same software also caused the hardware to infringe.

Notice in DISH's filing they went into length to explain how the new software no longer uses the Broadcom chips and "switches"? That was to hammer away the idea that the hardware claims needed not to be brought back ever, because it became a foregone issue once the new software was downloaded.


----------



## James Long

Since Tivo pretty much ignored the hardware claims I've followed suit ... but the thought that Broadcom chips contain Tivo patented circuits/functions that are OK to use with Tivo licensed software but not OK to use with non-Tivo software crosses my mind.

DISH not using the circuits/functions of the chip that would require Tivo's patent would be a hardware workaround. Just as effective as saying that DISH can continue using DVRs as receivers as long as the offending hardware in the receiver is not active.


I am encouraged by the judge's order. There seems to be a window there. The pre-judgement that we have seen far too much of in this thread isn't coming from the court (or either party in this case). All possibilities are still open.


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## nobody99

BobaBird said:


> Why would it need to? The case law jacmyoung has turned up says the court needs to consider it for a finding of contempt, and that not considering it is grounds for appeal. Also, the Products would have to be more than colorably different to make them no longer Infringing. It's a given.
> 
> (opinion formed only from reading this thread)


The main issue is that none of us can find any cases where _existing_ products were ordered to be shut off. The "more than colorably" different standard seems to always have been used to allow a company to "try again" and not be punished too severely when trying to design around a patent.

Read the injunction language again. It pretty clearly states the eight models (collectively the "Infringing Products") and other models not more than colorably different.

Since there haven't been any cases that anyone can find where an injunction against existing, installed products, we're sort of in new territory. But anyone claiming that the "more than colorably different" standard applies to existing products is doing no more than the rest of us: speculating.


----------



## jacmyoung

kmill14 said:


> "or whether, as urged by EchoStar, the language of the Court's Permanent Injunction allows EchoStar to comply with the spirit of the injunction by changing the software so that the products no longer infringe."
> 
> Texas, nowhere does it say that the court is ruling on "more than colorably different", but stating straight out that the products must no longer infringe.
> 
> Given that the court spelled out that E* will argue that the products no longer infringe (which as jacmyoung pointed out is different than a ruling of "more than colorably different"), one would assume this could result in a new trial.
> 
> It would be quite something for the Judge to issue an injunction, and have it in essence be ignored because the infringing company uploaded software it claims does not infringe. If this software is ruled as infringing, would E* then be able to upload another software patch stating that IT is not infringing?


We have a few issues here.

First one, Tivo wants the judge to clarify and rule on the "face of the injunction", meaning nothing like the uniformly agreed upon "colorable difference" test. Because the language of the injunction does land credibility to the "face of the injunction" argument. Tivo believes, like all Tivo fans, on such basis DISH is in contempt, but Tivo understands the judge must first offer his interpretation of his own injunction, so in the event the judge does not agree with the "face of the injunction" approach, Tivo asked to allow them to then seek limited discovery on the new software claims.

DISH on the other hand obviously sticks to one thing only, the uniform "colorable difference" test applies to all contempt discussion. If the judge agrees with Tivo, he can (he has wide latitude) ignore the uniform "colorable difference" approach and find DISH in contempt merely based on the "face of the injunction". In that case, DISH will appeal, and during the appeal, DISH will be again sticking to the exact same approach, the "colorable difference" test, because it is the uniform standard in determining the contempt issue.

At that time however, the appeals court will be on DISH's side, because as explained in the above text I quoted, while the district court's job is to "prohibit further infringement", the circuit court's job is to ensure uniformity during a contempt proceeding. Since the judge's contempt ruling would be unusual and not conforming to the uniform standard, the contempt ruling should be overturned.

As far as DISH "ignoring" the injunction, if DISH did nothing, simply sat there and allowed the old software to continue, yes they would have had ignored the injunction. But they did do something, they did design a new software, BTW they spent over a year doing that, and downloaded it onto the DVRs, before the injunction went in full force. Therefore the argument can be made that DISH did not ignore the injunction.

If the new software is again ruled to infringe at a later time, first off DISH will have to pay all the damages during the use of the new software, and be again faced with another injunction on the new software. DISH should still be able to try to workaround the Tivo patent. But notice that the justice will not be unserved, DISH will have to pay, damages plus interest, and at that time probably even Tivo's legal fees too, depending on the circumstances.


----------



## jacmyoung

nobody99 said:


> ...Since there haven't been any cases that anyone can find where an injunction against existing, installed products, we're sort of in new territory. But anyone claiming that the "more than colorably different" standard applies to existing products is doing no more than the rest of us: speculating.


Since nobody99 has put me on his ignore list, he could not hear my newly discovered court procedural clarification. The mere fact to rule DISH in contempt on the face of the injunction, will be the first in the history (or something close to that), this ruling by definition moves away from uniformity, while the judge does not have to care for such uniformity, the appeals court must care, for it is the appeals court's job to ensure uniformity on contempt issues.

The uniform approach on the contempt issue is the colorable difference test, because such test has been always used in ALL such contempt proceedings in the past.

The natural deduction from it is the unprecedented contempt ruling will be overturned to maintain uniformity. I hope someone can quote me on this one so nobody99 can see it.


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## phrelin

nobody99 said:


> But there are two _extremely_ important distinctions here.
> 
> I pretty much agree with everyone here that ongoing, new sales with DVRs that have the new software should be subject to the "more than colorably different" standard before contempt is found.
> 
> But for existing products, the presumption (since they were found infringing) is that all gains are ill-gotten and belong to TiVo.


Hmmm. Well, I had to leave for a bit today. So 12 hours and 90+ posts have transpired since my last one on this thread.

But my point is that while maybe some or all of the gains are ill-gotten and belong to TiVo, that is because the system/software/code "belonged" to TiVo. The boxes don't belong to TiVo and they don't inherently infringe. So why would anyone determine that "turning off the boxes" is the legally correct way to resolve the matter? Simply, the order should have been to remove the infringing code and send a check to TiVo. Since Dish says they replaced the infringing code, in that scenario the only decisions left to be made are (1) how much should the check be made out for and (2) does the replacement code infringe? Whether the boxes are on or off would be irrelevant.

The problem with the current situation is that in the real world outside the courtroom, whether the boxes are on or off is irrelevant even if the current system/software/code is determined to be infringing. The infringing code can be removed and checks can be written.


----------



## peak_reception

At first I was thinking that this order was simply a re-cap of the May 30th Status Meeting. It is, but there is some wording in there which could signal trouble for Echo. See in bold below: 



dgordo said:


> View attachment 14093
> 
> 
> IN THE UNITED STATES DISTRICT COURT OF THE EASTERN DISTRICT OF TEXAS MARSHALL DIVISION
> TIVO INC., a Delaware Corporation
> 
> V.
> 
> ECHOSTAR COMMUNICATIONS CORPORATION, a Nevada Corporation, ET AL.
> 
> ORDER
> 
> Pursuant to the Court's April 23, 2008 Order, Plaintiff TiVo Inc. submitted topics for
> discussion at the status conference on May 30, 2008. One of the topics discussed at the status
> conference was enforcement of the Court's Permanent Injunction. Specifically, TiVo requests a
> hearing at the earliest possible date to determine the following: (1) whether Defendant EchoStar
> Communications Corporation should be held in contempt for its failure to disable the DVR
> functionality in the Infringing Products and for its placement of new infringing DVRs; and (2) with
> respect to EchoStar's modified software,1 whether TiVo should be allowed permission to serve
> limited discovery to obtain additional technical information before bringing a motion for an order
> to show cause why EchoStar is not in contempt for the continuing use of the Infringing Products,
> changed only by downloading modified software.
> 
> The Court has set for hearing September 4, 2008 the first issue of whether EchoStar has
> disabled the DVR functionality with respect to the Infringing Products as required by the Court's
> Permanent Injunction.2 The second issue outlined above, namely TiVo's request to take limited
> discovery regarding EchoStar's allegedly new software, is denied at this time. In the interest of
> judicial economy, the Court will determine first whether EchoStar should be held in contempt for
> its failure to disable the DVR functionality in the Infringing Products and for its placement of new
> infringing DVRs as urged by TiVo *or* whether, *as urged by EchoStar, the language of the Court's
> Permanent Injunction allows EchoStar to comply with the spirit of the injunction by changing the
> software so that the products no longer infringe.* TiVo may renew its request to serve limited
> discovery regarding EchoStar's modified software after the Court's decision on the first issue.
> 
> IT IS SO ORDERED.


 I doubt very much this (what I've highlighted in bold) is how Echo would like the issue framed. The language of the Permanent Injunction has nothing in it which encourages or allows Echo to comply with the spirit of the injunction by changing the software. In fact, the language is quite strict and explicit. There is nothing in there which says Echo can or should find a way to alter its infringing products so that they no longer infringe.

Now, I know there are other good arguments made for why Echo _should_ be allowed to do this. But the way Judge Folsom has framed things does not bode well for Echo. The language of the injunction works against Echo in every way possible. If that's the gold standard for this hearing then Echo is in serious trouble.


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## kmill14

jacmyoung said:


> We have a few issues here.
> 
> If the new software is again ruled to infringe at a later time, first off DISH will have to pay all the damages during the use of the new software, and be again faced with another injunction on the new software. DISH should still be able to try to workaround the Tivo patent. But notice that the justice will not be unserved, DISH will have to pay, damages plus interest, and at that time probably even Tivo's legal fees too, depending on the circumstances.


jacmyoung, you are ignoring the Judge's main reasoning for the injunction, which focused on the fact that monetary damages alone would not compensate TiVo. They lost significant revenue opportunities to E* because E* infringed on TiVo's own patent. They can't get those revenue opportunities back unless E* turns off all the products specified in the injunction.

Why would the judge suddenly go against his own reasoning and allow for E* to repeatedly avoid this key issue?


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## BobaBird

Read the order that came out of the 5/30 meeting, especially the part highlighted in post #1407. You will probably agree with peak_reception that that spells Trouble, but why would the judge entertain the possibility of complying with the spirit of his injunction if the full shut-down was the only remedy he would allow?

The problem I see for Dish is that the injunction specifically said (paraphrasing) to shut down the reading/writing of TV data to the hard drive, period. Dish says they have shut down the infringing method, but the reading/writing otherwise continues same as before.

It comes down to whether the judge intended to use the injunction to assess damages (which is already at least partly being handled separately) or to prevent further infringement. If the modified software truly is non-infringing, Dish has gone to a level of compliance maybe not seen before by altering existing product in the field.


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## kmill14

FYI, here is a case that specifically spells out that "design-arounds" are OK.

http://www.broadcom.com/docs/press/12-31-07_Permanent_Injunction_Order.pdf


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## TexasAg

kmill14 said:


> FYI, here is a case that specifically spells out that "design-arounds" are OK.


That's interesting, I hadn't seen one like that. But it doesn't really help here. The lack of a "permissive design around" section in Tivo's injunction doesn't mean Echo can't implement a design around. If the court wanted to enjoin design-arounds, it would have specifically enjoined them, such as by specifically saying Echo couldn't download new software to the DVRs (and the court was aware of that possibility).

As a general rule, whatever is not specifically enjoined can be done by Echo. The case jacmyoung posted earlier is a good example. An infringer couldn't be found in contempt for filing a patent application on a drug because the injunction never said they couldn't (even if the infringer acted in bad faith).



kmill14 said:


> jacmyoung, you are ignoring the Judge's main reasoning for the injunction, which focused on the fact that monetary damages alone would not compensate TiVo. They lost significant revenue opportunities to E* because E* infringed on TiVo's own patent. They can't get those revenue opportunities back unless E* turns off all the products specified in the injunction.
> 
> Why would the judge suddenly go against his own reasoning and allow for E* to repeatedly avoid this key issue?


When discussing whether to issue the injunction, the judge refers to the "availability of the infringing products" as harming Tivo. He refers to the "Defendants' continued infringement" and says that Tivo "faces ongoing irreparable injury as Defendants' infringement continues." He noted how "every day of Defendants' infringement affects Plaintiff's business." He noted how the public does not have a greater interest in allowing "Defendants' customers to continue to use their infringing DVRs." He said "allowing the ongoing infringement is not within the public's interest."

Practically at every point in discussing the 4-point standard for injunctions, the judge says Tivo deserves the injunction because of continuing infringement by Echo.

Something else for Echo to hang their hat on from the judge: "Defendants' authorized retailers will still be able to sell and service Defendants' non-infringing products."

I'll also correct something I said yesterday - the court's order does not prevent them from applying the "more than colorably different" standard to Echo's new software. While the court referred to infringement, I'd expect Tivo to file its motion and Echo to respond and say the "more than colorably different" standard applies. The court is free at that point to say what the standard is. I had hoped that the court would do this before the 9/4 hearing, but it said it would do that at the 9/4 hearing. So basically, Tivo and Echo could either be looking at a quick resolution if the judge agrees with Tivo (likely followed by a lengthy appeal) or a lengthy resolution with discovery and a new mini-trial if the judge agrees with Echo (likely followed by a lengthy appeal) .

Anyway, I have to go back to work today, so I'll have to check in less frequently.
__________________
My personal opinions are just that. Don't rely on them - I could be Charlie Ergen's pool boy.


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## jacmyoung

kmill14 said:


> jacmyoung, you are ignoring the Judge's main reasoning for the injunction, which focused on the fact that monetary damages alone would not compensate TiVo. They lost significant revenue opportunities to E* because E* infringed on TiVo's own patent. They can't get those revenue opportunities back unless E* turns off all the products specified in the injunction.
> 
> Why would the judge suddenly go against his own reasoning and allow for E* to repeatedly avoid this key issue?


Like TexasAg said, your interpretation of the judge's statement is incorrect, money alone will not be enough a remedy if the infringer is allowed to continue to infringe. Therefore there is a need for measure outside of monetary remedy to "prohibit further infringement."

Which is also why the court has always allowed the infringer to modify the infringing products and continue as before, as long as the workaround is legitimate, the assumption is through legitimate workaround, continued infringement will stop, the goal of the injunction will have been achieved.


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## jacmyoung

kmill14 said:


> FYI, here is a case that specifically spells out that "design-arounds" are OK.
> 
> http://www.broadcom.com/docs/press/12-31-07_Permanent_Injunction_Order.pdf


It all depends on how you want to look at it, as TexasAg said just because the injunction does not specify the design around is ok, which for the vast majority of the injunctions they do not anyway, does not mean it can not be done, in fact the law is clear, the infringer can not be prevented from doing something the injunction does not prohibit.

But even if for argument sake you are correct, in this case the judge meant (even though he did not say so) not to allow design-around by DISH, it is clearly not conforming to the uniform standard that legitimate design-around is ok. And if you agree with the earlier paragraph I posted, that the appeals court's job is to ensure uniformity in contempt proceedings, the contempt ruling, if the judge should issue one, will have to be overturned, because it goes against the uniformed standard.

Many of you believe the judge can make history, can go against uniformed trend, yes he can, nowhere in the law says he can not, because the judge is given wide latitude to ensure no *further infringement* may occur.

But on appeal, the appeals court has a different job, its primary goal is to ensure uniformity, to ensure design-around is ok. Therefore a ruling that prohibits design-around should be overturned.


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## Curtis52

BobaBird said:


> why would the judge entertain the possibility of complying with the spirit of his injunction if the full shut-down was the only remedy he would allow?


It makes judges look bad if they don't listen to both sides before making a ruling.


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## TBoneit

kmill14 said:


> Help me out here. When a company makes a new "anything", they typically apply a new model number to it in order to differentiate it from older models, right?
> 
> The model #'s listed in the trial and deemed to have been infringed are always going to infringe, regardless of what new software patches get loaded into it. This will continue until such time that the Judge rules that one of these software patches achieves the purpose of allowing the product to stop infringing.


As an example, Many times In the computer field I've seen computer Motherboards that have the same model number. These same model numbers may require different bios upgrades. These same Motherboards with the same models have different hardware revisions. The different hardware revisions oftern determine what processor (CPU) can be used with them.

I believe that echostar has used many different hardware configurations within the same model number DVR. There have been threads here in the past with regard to the VIP622 and different h/w revisions for example.


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## TBoneit

kmill14 said:


> TiVo gave a working model of their DVR to E* in hopes that they would work out some sort of agreement on a DVR that used TiVo's patented technology. E* said no, and then sometime thereafter came up with their own DVR, that has now been deemed to have infringed on that TiVo patented technology.


If E* took apart the Tivo and had their software code as another message stated, Then they sure didn't use much of it did they. There is no resemblence between the User Interfaces or usage of other Tivo features such as the way they search, Guide, Suggestions and so on.


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## clyde sauls

I am just wondering if Dish loses instead of turning off all the dvr function. Couldnt they reach agreement with tivo to download the tivo software into all the dish dvrs . Does anyone know whether that would work on not. Even tho replaytv doesnt manufacture hardware any longer. Couldnt DIsh reach agreement to download their software also. Would using replaytv software would it violate any tivo software?


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## TBoneit

kmill14 said:


> As we should all know full well by now, the injunction doesn't say anything at all about "still infringing today". Even it it did, there is no technical ruling in hand stating that they are not infringing. There is only a ruling stating that they are.
> 
> As far as being out of bounds with the "turning DVR functions off, the Judge was quite clear in the decision for issuing this injunction. It is based mainly on the fact the Dish gained an unfair advantage in capturing a big percentage of TiVo's only customer base with a product that infringed on TiVo's own patent. The Judge was clear in his summation that monetary damages alone would not be sufficient.


Does anyone except Tivo and maybe the Judge think a user would Buy a Tivo and pay for a lifetime sub or pay monthly fees as well as having to have two boxes to equal one DVR?

Or to put it another way..... If E* hadn't had the Dishplayer 7x00 models and D* hadn't had a DVR also then a DVR desiring customer would have done as I did gotten a receiver and a Tivo. As soon as a DVR where it was all integrated into one box and had better quality became available I was all over it. if E* hadn't had its DVR then I'd have gotten a DVR from D* when they came available. I wouldn't have kept buying More Tivos and paying those fees. The next point is if I'd had to go to D* I would have gotten the MS DVR from them not a DirecTivo as I didn't and still don't like the Tivo interface when comparing it to the Dishplayer (1st gen Ultimate Tv) or the 5xx or 721 or VIP622 DVRs. When it was all I had I liked it, as soon as I saw better then ....

First thing I did with the Tivo was turn off those annoying noises and suggestions.

Biottom line Satellite users would have not bought Tivos once there was a better alternative. Better meaning the D* & E* boxes not needed to re-encode the video like a Tivo Stand Alone has to do.

AFAIK it gets worse for Tivo with HD taking over. Their HD Tivos with the cable card are being rendered useless. They have no way to record the HD signal form a HD Box from E* or D* and thus will only appeal to OTA only users that can also afford the monthly fees. At which point if Cable goes past their door they may as well sub to basic and a DVR.

Bottom line Tivo appears to me to be a company whose time has come and gone as far as Tivo hardware is concerned. They need to start thinking reasonable License fees to every provider since the main value is really the name Tivo that could be put on the box as brand recognition. The actual patents have been rendered, IMHO, Near valueless by the workarounds developed by other companies.

Bottom Line the only Harm I see to Tivo is loss of licensing fees in the past. I do not see much harm in the future as they are being rendered irrelevent by the switch to HD.

kmill14 said " They lost significant revenue opportunities to E* because E* infringed on TiVo's own patent. They can't get those revenue opportunities back unless E* turns off all the products specified in the injunction.

Why would the judge suddenly go against his own reasoning and allow for E* to repeatedly avoid this key issue?"

The revenue opportunities are not there as anyone could see. Between the D* DVRs, E*'s newer DVRs and the Cable companies DVRs, all of which will provide a better integrated DVR with no pain in the neck setup as needed by a Tivo to make it control somebody elses Box and a better quality picture their time is past except for the minmal worth of their IP. I say again minmal worth beyond the Tivo brand name recognition as there are workarounds that can and are being used.

IMHO Tivo should have started with someone that would not defend to the end and built up some decisions in their favor before going after E*


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## James Long

peak_reception said:


> At first I was thinking that this order was simply a re-cap of the May 30th Status Meeting. It is, but there is some wording in there which could signal trouble for Echo.


I'm not surprised you would have a negative interpretation ... but that quote actually SUPPORTS Echostar. The door is open for the court to rule that "*the language of the Court's Permanent Injunction allows EchoStar to comply with the spirit of the injunction by changing the software so that the products no longer infringe.*"

Raising the question is the first step in getting the answer you want!

BTW: Keep the text sizes down. It makes you look arrogant to make your text bigger than others.


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## nobody99

TBoneit said:


> Their HD Tivos with the cable card are being rendered useless. They have no way to record the HD signal form a HD Box from E* or D* and thus will only appeal to OTA only users that can also afford the monthly fees.


Uh, you do know what a "cable card" is, right? You know what OTA is right?


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## scooper

Amen - I would never consider a standalone Tivo just because of the extra fees. If my DishDVR functionality goes away - well, I have 2 PCs with tuner cards that I can do all that with (it's just not as convienent) - just have to setup tuners on any sat receivers as well as on the computers.

As a matter of fact - let's do the worst case - Dish has to turn off the DVR on my 625. Dish had better stop charging the DVR fee right then and there, or I'll tell them to come get their (now non DVR functioning) box and I'll go get another combination of receivers / LNBs to match the 2 tuner capability (probably the 322 if I did this today), just to make sure I don't pay for "not-functioning" features. I can still setup VCR/auto-tuning timers, and setup the timers on the PC, so I'm not any worse off.

And then all those cable companies better get ready to pay for their DVRs as well. 

I'll predict Tivo will go down in history as one of those companies that shot themselves in the foot with their "patent". And when their "patent" expires - they will also expire...


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## nobody99

scooper said:


> Amen - I would never consider a standalone Tivo just because of the extra fees. If my DishDVR functionality goes away - well, I have 2 PCs with tuner cards that I can do all that with (it's just not as convienent) - just have to setup tuners on any sat receivers as well as on the computers.
> 
> As a matter of fact - let's do the worst case - Dish has to turn off the DVR on my 625. Dish had better stop charging the DVR fee right then and there, or I'll tell them to come get their (now non DVR functioning) box and I'll go get another combination of receivers / LNBs to match the 2 tuner capability (probably the 322 if I did this today), just to make sure I don't pay for "not-functioning" features. I can still setup VCR/auto-tuning timers, and setup the timers on the PC, so I'm not any worse off.
> 
> And then all those cable companies better get ready to pay for their DVRs as well.
> 
> I'll predict Tivo will go down in history as one of those companies that shot themselves in the foot with their "patent". And when their "patent" expires - they will also expire...


I hate to burst your bubble, but thanks to DISH, TiVo's going to be around for a long time. That $100+ million sitting in escrow will see to that. :hurah:


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## nobody99

James Long said:


> I'm not surprised you would have a negative interpretation ... but that quote actually SUPPORTS Echostar. The door is open for the court to rule that "*the language of the Court's Permanent Injunction allows EchoStar to comply with the spirit of the injunction by changing the software so that the products no longer infringe.*"


touche on the spin. Let's quote the actual full text.



> *as urged by EchoStar*, the language of the Court's Permanent Injunction allows EchoStar to comply with the spirit of the injunction by changing the software so that the products no longer infringe.


Of course DISH is going to "urge" this. It's the only way they can get out of contempt! How else would they say it?


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## nobody99

scooper said:


> Amen - I would never consider a standalone Tivo just because of the extra fees. If my DishDVR functionality goes away - well, I have 2 PCs with tuner cards that I can do all that with (it's just not as convienent) - just have to setup tuners on any sat receivers as well as on the computers.


It's fine if you don't like TiVo - I fully understand. They are taking money away from your provider. But either your dislike of TiVo has blinded you to reality, or you are just intentionally being misleading.

You can buy a TiVo HD for $199 today with a lifetime subscription for $399 ($299 if you are already a subscriber). So for $600, you have a box with *no fees*. That is certainly cheaper than a PC with tuner cards, AND it can record encrypted HD channels which a PC cannot do.


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## scooper

I'll just wait until Echostar brings out the TR50 and cuts the knees out from under Tivo...


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## nobody99

scooper said:


> I'll just wait until Echostar brings out the TR50 and cuts the knees out from under Tivo...


Why, does it have a $100+ million suction blade? :lol:

I forgot about how huge the market is for people with HDTV sets that _only_ have OTA. Did you forget that the TR50 only works OTA and does not work with cable?

So is DISH going to sell, what, a couple hundred of these?

Yeah, that's a TiVo-killer alright.


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## Curtis0620

scooper said:


> I'll just wait until Echostar brings out the TR50 and cuts the knees out from under Tivo...


And will be subject to the injunction also.


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## TBoneit

nobody99 said:


> Uh, you do know what a "cable card" is, right? You know what OTA is right?


I do know what a cable card is and from what I've read it may not work well if at all with a cable company the implements switched cable service. If I'm remembering the terminology right.

And a Cable card will not work with D* or E* and thus their DVRs will provide a better picture than Tivos DVR will provide.

The majority of TV watchers watch OTA?


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## kmill14

James Long said:


> I'm not surprised you would have a negative interpretation ... but that quote actually SUPPORTS Echostar. The door is open for the court to rule that "*the language of the Court's Permanent Injunction allows EchoStar to comply with the spirit of the injunction by changing the software so that the products no longer infringe.*"
> 
> Raising the question is the first step in getting the answer you want!
> 
> BTW: Keep the text sizes down. It makes you look arrogant to make your text bigger than others.


Again, the only order in hand is that all these DVR models infringe. E* is now claiming that they do not infringe, but that is just their claim. The argument on the table right now is whether they adherred to the injunction that went into affect in April. Since they did not terminate the functionality of the DVRs in April, they did not adhere to the letter, or spirit, of the injunction.

There is no proof anywhere that the boxes no longer infringe, but there is proof that they do. Before the April 2006 ruling, and the appeals court affirmation, the burden of proof was on TiVo to show that E* infringed. They did their job, and the Court set down the penalty(s).

Now E* can certainly create a "design around"...but the first order of business is to adhere to the penalties, and then argue the merits of the "design around", and of course the burden of proof is now on E*.


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## TBoneit

nobody99 said:


> It's fine if you don't like TiVo - I fully understand. They are taking money away from your provider. But either your dislike of TiVo has blinded you to reality, or you are just intentionally being misleading.
> 
> You can buy a TiVo HD for $199 today with a lifetime subscription for $399 ($299 if you are already a subscriber). So for $600, you have a box with *no fees*. That is certainly cheaper than a PC with tuner cards, AND it can record encrypted HD channels which a PC cannot do.


Not to mention that would require going back to cable. I think most would go to D* before cable. No gain for Tivo subscriptions there.

Most of us have a PC and Tuner cards are cheap. Many of us as do I have DVD recorders too. a few of us have Dishplayers that are not subject to this court case as the DVR s/w was a Microsoft design. Some of us have as do I a Tivo stand alone unit.

So lets see I have a DVD recorder that wouldn't be touched. I have a Dishplayer that wouldn't be touched. I have a Tivo, Ditto. I also have a 721 that is most likely one of the 190,000+ that should be OK. My S-VHS recorder should also be OK. My USB tuner for the computer should be OK. I'm guessing that without a Trial the 622 would be OK.

My guess is that the VIP612 model being new are designed with different hardware / Software and should be OK.

I'm thinking of picking up a QAM capable USB Tuner for the computer for locals via my basic cable subscription. They're not to expensive



Curtis0620 said:



> And will be subject to the injunction also.


Not without a trial.


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## kmill14

TBoneit said:


> kmill14 said " They lost significant revenue opportunities to E* because E* infringed on TiVo's own patent. They can't get those revenue opportunities back unless E* turns off all the products specified in the injunction.
> 
> Why would the judge suddenly go against his own reasoning and allow for E* to repeatedly avoid this key issue?"
> 
> *The revenue opportunities are not there as anyone could see*. Between the D* DVRs, E*'s newer DVRs and the Cable companies DVRs, all of which will provide a better integrated DVR with no pain in the neck setup as needed by a Tivo to make it control somebody elses Box and a better quality picture their time is past except for the minmal worth of their IP. I say again minmal worth beyond the Tivo brand name recognition as there are workarounds that can and are being used.
> 
> IMHO Tivo should have started with someone that would not defend to the end and built up some decisions in their favor before going after E*


Even more reason for the Judge to enforce the injunction based on his initial reasoning. TiVo was irreperably harmed, as you are proving out. Tivo was not able to build its user base over the last x number of years to remain competitive because of the infringing products of companies like E*.


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## TBoneit

kmill14 said:


> Even more reason for the Judge to enforce the injunction based on his initial reasoning. TiVo was irreperably harmed, as you are proving out. Tivo was not able to build its user base over the last x number of years to remain competitive because of the infringing products of companies like E*.


They're being harmed by being stuck in the past and not offering affordable license fees to every provider. If E* were the only provider offering a DVR than you would be right. However if E* did not have a DVR the DVR users would just have gone to Cable or D*. I would have done thate before getting another Tivo. No harm by E*, Harm to E* if they didn't have one is true.

Lets not forget that what you are saying is because you felt Tivo was harmed then E* should also be harmed against the public interest. By Public interest I mean where rates would be for TV if E* wasn't there providing rates that they do.

Tivo is harmed by their inaction in going to E* and saying we'd like to cross license with you. You license to us so we can build a DishnetworkTivo with integrated dual tuner and Tivo DVR and we'll license our patent portfolio. I know there are Diehard Tivo fans that would jump on a MPEG4 works with E* Tivo. They'd switch from D* to E* since the DirecTivo is a dying thing of the past.

They have the lowest priced HD package for the HD channels in it. The HD only package.


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## jacmyoung

kmill14 said:


> ... Since they did not terminate the functionality of the DVRs in April, they did not adhere to the letter, or spirit, of the injunction. ...


Except they did, when the new software was downloaded, the DVRs were "terminated", disabled, totally inoperable. Then the DVRs rebooted, and the modified DVRs continued as before.

The Tivo folks continue to ignore the above facts, but notice when DISH reminded the judge more than once in that 5/30 meeting, that he was fully aware of such new software download, what did the judge say? "Very well." He did not say WOW, this was new to me, since when did you downloaded the new software to the DVRs, ever? How come I did not know that? He said: "very well," because it was a known fact. And after being hearing this thing for the last four years, the judge must also be aware that everytime a new software is downloaded, the receivers are "disabled", 100% not functioning, and only to restart after a successful download.

Except the Tivo fans refuse to acknowledge such fact.

Then again, the Circuit Court has said clearly, the district courts and the judges are given wide latitude to make their injunction broad to ensure no future infringement. And it is up to the Circuit Court (appeals court) to uphold the uniformity in contempt proceedings.

Each court has its unique duty. While the district court may broaden its injunction to ensure no further infringement, the Circuit Court must ensure such contempt ruling does not disrupt the uniform standards reqruired by law in rendering contempt charges.

If Judge Folsom finds DISH in contempt, and he has the power to do so, he will be basically telling DISH they may not workaround the patent by modifying the infringing products and continue as before.

On appeal, the Circuit Court in DC will have to say, well since our job is to make sure the infringers are allowed to have legitimate workarounds, I am sorry the contempt ruling will have to be overturned, else we will not be doing our job, will we?


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## kmill14

TBoneit said:


> They're being harmed be being stuck in the past and not offering affordable license fees to every provider. If E* were the only provider offering a DVR than you would be right. However if E* did not have a DVR the DVR users would just have gone Cable or D*. I would have done thate before getting another Tivo. No harm by E*, Harm to E* if they didn't have one is true.


At the time, D* was offering TiVo-branded DVRs, so there is a direct connection to lost revenue for TiVo. Cable was just starting to get into the DVR market, and it is still on the table for TiVo to go after some of those companies (like TWC). Other cable companies have since signed deals with TiVo. Also, if E* didn't put out that infringing DVR, and those users went to Cable, TiVo could have been an option for them as well, since they have always worked with cable companies.



TBoneit said:


> Tivo is harmed by their inaction in going to E* and saying we'd like to cross license with you. You license to us so we can build aDushnetworkTivo with integrated dual tuner and Tivo DVR and we'll license our patent portfolio. I know there are Diehard Tivo fans that would jump on a MPEG4 works with E* Tivo. They'd switch from D* to E* since the DirecTivo is a dying thing of the past.


TiVo DID go to E* to create a licensing agreement. E* declined, and then built their own infringing model.


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## kmill14

jacmyoung said:


> Except they did, when the new software was downloaded, the DVRs were "terminated", disabled, totally inoperable. Then the DVRs rebooted, and the modified DVRs continued as before.


And nowhere in the injunction does it say the DVR functionality can be disabled, modified, then turned back on. Again, even if E* feels the DVRs no longer infringe, it is up to the Judge to determine that. He is quite clear in his order on who makes that call:

*****
*This Court retains jurisdiction over Defendants to enforce any and all aspects of this Judgment and Permanent Injunction.*
*****

So in essence, E* ignored the Court's jurisdiction by turning the DVRs back on themselves, without approval from the Court.



jacmyoung said:


> The Tivo folks continue to ignore the above facts, but notice when DISH reminded the judge more than once in that 5/30 meeting, that he was fully aware of such new software download, what did the judge say? "Very well." He did not say WOW, this was new to me, since when did you downloaded the new software to the DVRs, ever? How come I did not know that? He said: "very well," because it was a known fact.


The May 30th meeting was just that... a meeting...a status conference. The Judge was quite clear at the beginning that no arguments would be made, and no decisions on new software would be made. With that in mind, E* still has not asked for permission to turn their DVRs back on, and are still not adherring to the injunction, because the Judge has not told them to turn them back on.

E* presumes that they can make a decision that obviously they cannot. The contempt hearing will no doubt cover this point, and I wonder what E*'s response will be.


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## nobody99

kmill14 said:


> TiVo DID go to E* to create a licensing agreement. E* declined, and then built their own infringing model.


It's even more blatant than that. TiVO went to E* _with a prototype_ that E* asked if they could keep for a little while. Presumably after they reverse-engineered it, they called TiVo and said "uh, no thanks."

The only way that TiVo would have shown up at E*'s door with a prototype is if E* had asked them to. It's a pathetically blatant theft by a company that's pretty well known to be underhanded.

I can't imagine that Folsom isn't well aware of some of DISH's past antics from before this case.


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## peak_reception

James Long said:


> I'm not surprised you would have a negative interpretation ... but that quote actually SUPPORTS Echostar. The door is open for the court to rule that "*the language of the Court's Permanent Injunction allows EchoStar to comply with the spirit of the injunction by changing the software so that the products no longer infringe.*"


 I'm not surprised you would try to read something positive into that sentence for Echo. Please cite a passage in the injunction which says anything about encouraging or allowing Echo to comply with the "spirit" by downloading new software or otherwise designing around TiVo's patent. There is none.



> BTW: Keep the text sizes down. It makes you look arrogant to make your text bigger than others.


 You're good at subtle insults but you assume a false motive for the ever so _slightly_ larger text I gave that one and only post. Of course you seize the chance to cast the worst light possible on it. In that post I quoted the entire court order. When I previewed it the quote popped out in white and I wondered where the part I had written had gone. Then I realized that it was there at the top shaded in grey, but in such a slim line that I hadn't even noticed it. Since I had also written more after the quote I thought maybe others would only see the after lines too, without the opening, so I simply upped the text 1 font size and that took care of it. There was nothing arrogant about it despite your insinuation that others would read the worst into it like you did. Thanks, as usual.


----------



## jacmyoung

kmill14 said:


> ...So in essence, E* ignored the Court's jurisdiction by turning the DVRs back on themselves, without approval from the Court.
> ...


The problem is this is your own words not of the judge's, because there is no word in the injunction that said DISH may not turn the DVRs back on, therefore DISH cannot "ignore" a prohibition that does not exist.

Where did you get the idea that DISH needed an "approval"? Did you find any hint in the injunction that said so, did you find any prior case law that said so? Or is it just in your own head?


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## TexasAg

kmill14 said:


> Since they did not terminate the functionality of the DVRs in April, they did not adhere to the letter, or spirit, of the injunction.


Really? How many times did the judge refer to continuing or ongoing infringement when he agreed to issue a permanent injunction? I cited at least 5 or 6 times where he specifically discussed enjoining ongoing infringement of the patent. You apparently feel that at least the spirit of the injunction was more than that. Could you show us where the judge said that (meaning show us where he didn't refer to ongoing infringement)?



kmill14 said:


> And nowhere in the injunction does it say the DVR functionality can be disabled, modified, then turned back on.


But even you have to admit that the Echo DVRs that came back online after the new software download were different. You cannot deny that. They may have had the same hardware and the same model number, but they were different devices. They had different software that caused the DVRs to operate differently, regardless of whether the different operations were apparent to end users (and it appears it was, since some have complained about the new software).

Even Tivo refers to the new software as "modified." If Tivo admits that the software is modified, then you need to also (since Tivo has actually seen the new software). If the software is modified, the device itself is modified (meaning different).

So the issue then becomes, did the injunction prohibit modification of the DVRs and then bringing them back online with possibly non-infringing software?



kmill14 said:


> Again, even if E* feels the DVRs no longer infringe, it is up to the Judge to determine that.


No one is saying "Echo gets to decide." What I and others have been saying is that Echo is entitled to work around Tivo's patent. As long as the modified software is more than colorably different, Echo cannot be held in contempt.

And yes, the judge gets to decide whether something is more than colorably different. Our point is that if the judge doesn't do that and just says that the modified products are in contempt without any regard for the actual modifications, it is probably reversible error.
__________________
My personal opinions are just that. Don't rely on them - I could be Charlie Ergen's pool boy.


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## kmill14

jacmyoung said:


> The problem is this is your own words not of the judge's, because there is no word in the injunction that said DISH may not turn the DVRs back on, therefore DISH cannot "ignore" a prohibition that does not exist.
> 
> Where did you get the idea that DISH needed an "approval"? Did you find any hint in the injunction that said so, did you find any prior case law that said so? Or is it just in your own head?


Oh, I sure hope E* takes this route on 9/4. The only order in the Injunction is to turn the DVRs OFF. Please tell me you are not a lawyer, because if you go before a Judge who tells you to specifically do a certain action, and you argue the merits of doing the exact OPPOSITE after doing the exact OPPOSITE, that will be the easiest contempt ruling ever.

I'll even use simple math so that you can follow along:

1 does NOT = 2
as
YES does NOT = NO
and 
ON does not = OFF

The only order issued by the judge at this point is that the DVRs must be turned OFF...not ON. And since you cannot argue that E* has jurisdiction to change this order, how can you possibly argue that E* is in the right?


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## TexasAg

peak_reception said:


> Actually, Echo never raised the question in that way. That was Judge Folsom's framing of the issue as he sees it. Not good for Echo imo. We'll see who is right come September... or whenever it's decided.


From Echo's May 23 letter:

_EchoStar has gone to great lengths to comply fully with both the letter and the spirit of the Court's injunction, and it is confident that it is in full compliance._

The "spirit of the injunction" language came from Echo.



kmill14 said:


> Oh, I sure hope E* takes this route on 9/4. The only order in the Injunction is to turn the DVRs OFF. Please tell me you are not a lawyer, because if you go before a Judge who tells you to specifically do a certain action, and you argue the merits of doing the exact OPPOSITE after doing the exact OPPOSITE, that will be the easiest contempt ruling ever.
> 
> And since you cannot argue that E* has jurisdiction to change this order, how can you possibly argue that E* is in the right?


This is not a bail jumping issue, or a stalking restraining order case, or anything other than a contempt proceeding in a patent case. There are laws and cases dealing with contempt in patent cases. The same types of rules in patent cases may not apply to other cases.

The cases allows Echo to design around Tivo's patent and not be held in contempt if the modified product is more than colorably different.

And again, Echo does not need court permission to design a workaround of Tivo's patent. If the workaround is more than colorably different, Echo cannot be held in contempt since the product now in use is "modified" from what was found to infringe. The court is supposed to decide if the modified product is more than colorably different. If it is, there is no contempt, and any contempt proceeding should stop.
__________________
My personal opinions are just that. Don't rely on them - I could be Charlie Ergen's pool boy.


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## Curtis0620

If anyone is interested in the original Jury Verdict form. Here they are:

http://www.daledietrich.com/imedia/decisions/TiVo_v_Echostar_(Verdict_Form_April_13_2006)_Part_1.pdf

http://www.daledietrich.com/imedia/decisions/TiVo_v_Echostar_(Verdict_Form_April_13_2006)_Part_2.pdf


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## bobcamp1

kmill14 said:


> jacmyoung, you are ignoring the Judge's main reasoning for the injunction, which focused on the fact that monetary damages alone would not compensate TiVo. They lost significant revenue opportunities to E* because E* infringed on TiVo's own patent. They can't get those revenue opportunities back unless E* turns off all the products specified in the injunction.
> 
> Why would the judge suddenly go against his own reasoning and allow for E* to repeatedly avoid this key issue?


Maybe that's not his reasoning. Curtis posted the award amounts in the other forum: "TiVo was granted $32.66 million lost profits on 192,708 units. No royalties accrue on these units. TiVo was [also] granted royalty damages on the remaining 4,179,253 units."

The wording the judge used in the injunction before the order meant (and typically means) that forcing payment of royalty fees wasn't enough to allow E* to continue using the infringing product. Normally, when you pay a royalty fee, you are allowed to continue making the infringing product. The judge said that even after E* pays royalty fees -- they still can't make or use the product. The judge then justifies this additional punishment (Tivo is so small).

The judge has it right -- E* complied with the spirit of the injunction, while Tivo says they didn't comply with the letter of it. In the past, most discrepancies in injunctions have gone to the defendant. But we'll see. The judge has lots of options.


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## TexasAg

bobcamp1 said:


> Normally, when you pay a royalty fee, you are allowed to continue making the infringing product. The judge said that even after E* pays royalty fees -- they still can't make or use the product. The judge then justifies this additional punishment (Tivo is so small).


Exactly - it used to be assumed that a permanent injunction was always issued in patent cases until the Supreme Court said no, you still have to follow the 4-step standard. The judge's decision granting the permanent injunction constantly refers to Echo's continuing or ongoing infringement as a reason why Tivo needed the injunction. Money was not enough to compensate Tivo for that.

If there is no more infringement, Echo shouldn't be held in contempt in my humble yet very strong opinion.
__________________
My personal opinions are just that. Don't rely on them - I could be Charlie Ergen's pool boy.


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## kmill14

TexasAg said:


> But even you have to admit that the Echo DVRs that came back online after the new software download were different. You cannot deny that. They *may have had the same hardware and the same model number, but they were different devices. * They had different software that caused the DVRs to operate differently, regardless of whether the different operations were apparent to end users (and it appears it was, since some have complained about the new software).


Actually, they are the same devices with altered software. Its hardly been decided whether that altered software is more than colorably different.



TexasAg said:


> So the issue then becomes, did the injunction prohibit modification of the DVRs and then bringing them back online with *possibly* non-infringing software?


Well, the only thing the injunction said was to disable the DVR functionality. This goes back to a simple math/logic equation:

1 does NOT = 2 
as
ON does NOT = OFF

If it is ON, it can't possibly be OFF.

Guess who gets to change that determination...thats right...the Judge.



TexasAg said:


> No one is saying "Echo gets to decide."


But they did try to decide! They sent out letters to whoever specifically claiming to be in complete compliance with the injunction, even though it is clear that the injunction ONLY said to turn off the DVRs. They stepped out of bounds and into the Judge's chair and completely altered the injunction to fit their needs.

As far as creating a design around goes....thats all well and good. They'll get to convince the court to give them a favorable ruling, after they follow the initial ruling.

TiVo was forced to continue suffering irreparable harm at the hands of E* throughout the last 3+ years, because the burden of proof was on them.

Now E* has the burden of proof to show that they should be able to use their jailed DVRs again, but until that happens, the DVRs must remain in jail.

It may not be bail-jumping as you call it, but it is theft and causing direct harm to a competitor.


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## peak_reception

I do keep coming back to the bottom line that TiVo has a strong position in this litigation. TexasAg in particular though keeps me from locking in too comfortably because of his expertise in the field and his very concise, well-reasoned, well-supported arguments on behalf of Echo's position. Only a fool would easily dismiss such formidable substance and presentation. 

Others are consistently pro-TiVo or pro-Echo. I respect that but I am swayed by strong arguments no matter which side they come from. 

Am I a TiVo booster? I doubt the die-hard TiVo supporters would say so. I was the one who wrote at some length about how disjointed, unfocused, and even "clumsy" I thought their May 16 agenda was. And then questioning why they didn't even mention the hardware issue(s) at all. And then again after May 30 questioning why they weren't ready with contempt motion in hand to give the judge and push for the soonest possible hearing. Of course I could be wrong on any or all three of those critiques but no die-hard tiVo booster would go after his own team, so-to-speak, in that way. 

I'm an equal opportunity participant/observer in this thread. At times I'm sure I irritate both sides but that's not my intention. I'm fascinated by this case, though occasionally fed up with it too (particularly all the delays!), and am interested in all the twists and turns. Who could've foreseen Echo filing in DE just after May 30? No one did, at least on any of the TiVo v. Echo forum threads I've looked at. Not even the experts. 

I think there are more surprises to come too. It's a real challenge to grapple with all the issues involved and try to anticipate what comes next. And of course the stakes are very high which makes it all the more compelling. Ultimately I would like to see justice done which means I hope TiVo is well-compensated for the wrong done to them these recent years. If that makes me "biased" in favor of TiVo then so be it but I have no conflicts of interest or personal stake in the outcome. 

Speaking of TexasAg, I see he has replied to what I posted earlier about Judge Folsom's framing of the issue in his order, so I need to go grapple with what he says in reply.


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## TexasAg

kmill14 said:


> Actually, they are the same devices with altered software.


That's good to know. The next time I look at two computers, one running Windows XP and the other running Mac OS X, I'll just tell myself they are the same device, since the software apparently doesn't make them different devices.



kmill14 said:


> Its hardly been decided whether that altered software is more than colorably different.


Agreed. I feel Echo should have that chance to avoid contempt. You apparently don't.



kmill14 said:


> But they did try to decide! They sent out letters to whoever specifically claiming to be in complete compliance with the injunction


So what? The letter doesn't make them non-infringing or more than colorably different. But if they are, they should not be held in contempt.



peak_reception said:


> TexasAg in particular though keeps me from locking in too comfortably because of his expertise in the field and his very concise, well-reasoned, well-supported arguments on behalf of Echo's position.


I appreciate it, peak_reception. I also find this case very interesting for all of the issues it brings up.
__________________
My personal opinions are just that. Don't rely on them - I could be Charlie Ergen's pool boy.


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## peak_reception

TexasAg said:


> From Echo's May 23 letter:
> 
> _EchoStar has gone to great lengths to comply fully with both the letter and the spirit of the Court's injunction, and it is confident that it is in full compliance._
> 
> The "spirit of the injunction" language came from Echo.


 Good find and a good point. But even there I think it's wishful thinking on Echo's part because that language came from Echo, *not* from the injunction.

Judge Folsom is saying that Echo is arguing that they are in full compliance with the spirit and language of the injunction. I'll concede that using "language" instead of "letter" is probably not a big difference. An interesting difference perhaps, but probably not significant.

However, nothing in the language of the injunction allows for any of what Echo wants to do unless the court accepts that "infringing" software is no longer infringing (and that issue is apparently not going to be dealt with in the contempt hearing). There's nothing about "spirit of" or "may modify" or anything else in the language of the injunction to encourage Echo in their "confident" stance of having complied now.

As I said before, other meritorous arguments do seem to support what they've done, but nothing explicitly sanctioned in the language of the injunction. "Spirit of" the injunction, yes they'll try to make that argument. "Language of" the injunction is a *much* tougher sell, imho.


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## TexasAg

peak_reception said:


> Judge Folsom is saying that Echo is arguing that they are in full compliance with the spirit and language of injunction. And the judge emphasizes this latter half of the equation when he adds in his order "...the *language* of the Court's Permanent Injunction...."


Well, Tivo's position is pretty much that Echo has not complied with the letter of the injunction. And in all fairness, the judge did say "as urged by TiVo" and "as urged by Echo" in its order.



peak_reception said:


> (and that issue is apparently not going to be dealt with in the contempt hearing).


After the hearing, though, at least we'll know whether Echo is allowed to argue it.
__________________
My personal opinions are just that. Don't rely on them - I could be Charlie Ergen's pool boy.


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## phrelin

nobody99 said:


> I hate to burst your bubble, but thanks to DISH, TiVo's going to be around for a long time. That $100+ million sitting in escrow will see to that. :hurah:


I don't know about his bubble, but a couple of hundred million is not going to keep TiVo around for a long time. But they are shifting they're focus to ad revenue which would really help. Of course, the subscribers would have to accept having to watch ads....


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## peak_reception

I know the judge was paraphrasing Echo's position. But the way he put it, that Echo feels they are in compliance *because* the language of the injunction allows it, seems on its face *not* Echo's main or strongest argument.

The injunction language doesn't allow much of anything so that could spell trouble for Echo. Then again, you do point out where Echo themselves used mostly that wording themselves (with the substitution of "letter" instead of "language") in their May 23 reply. And expressed utmost confidence in their compliance no less(!) So maybe they are banking on the "infringing" language providing an out since in their view they are no longer infringing. But that's not going to be an issue first thing in September. What else in the language of the injunction could possibly give comfort or confidence to Echo?

I don't know, maybe I'm reading tea leaves. We'll all know more after the contempt motion and reply.


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## kmill14

Since the 9/4 hearing is completely legal, the only thing he can rule for in E*'s favor is that the new software should be examined and ruled on before the injunction is enforced. 

Of course E* could then create v2 of its "novel" software, wait for v1 to get shot down, and then upload it, claiming non-infringement again...rinse/repeat...rinse/repeat. 

Of course the Court didn't award TiVo the benefit of the doubt in the original trial, and give them the money from E* before the trial went through all its hoops...hell...TiVo still hasn't gotten that money. 

But somehow, the rules should change when E* is in the hot seat and needing to provide burden of proof.


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## jacmyoung

The reason DISH seems to be confident is not because what they believe the judge will buy their “spirit of the injunction” argument, rather the law itself. The law is abundantly clear, and even the Tivo fans do not deny it, that the infringer must be allowed to use legitimate workaround of the patent to modify the infringing products and continue as before, until such time and only if, the workaround is again to be found to still infringe in a later time.

I hope no one here disputes that, if so please provide a single case to support your theory otherwise, please don’t tell me what this judge is saying as proof, unless you have not noticed this judge has yet said anything.

Now the question at hand is the unique language in this injunction gives rise to some to interpret that for the DVRs on the list, the above uniform standard does not apply, because the judge’s injunction can trump the uniform standard as stated above.

And according to my readings, such belief is bound to failure. Now we can argue till the cows come home, but one simply cannot in his reasonable logical mind believe the district judge can issue an injunction that can cause the uniform standard governing the contempt issue in a patent infringement case to be defeated.

DISH should be very confident in that they have done exactly what the law allows them to do, maybe not what the judge wanted them to do (though we don’t know, only Tivo fans say so), but nevertheless they did what the law allows them to do, period.

So in the end one must ask this question, should the judge trump the law, or is it the other way around? Because if the judge thinks he trumps the law, I am confident the appeals court will say no you do not. And I am not even saying that is what the judge thinks, I for one have said many times, I give Judge Folsom a lot more credit than most Tivo fans are willing to give him.

The Tivo fans obviously want one outcome only, for DISH to shut off ALL the DVRs. At one point in the past, they believed DISH was guilty on all accounts, after the hardware verdict was overturned, they said it was nothing, Tivo only needed to ask for it the judge would give the verdict right back to them. When Tivo failed to ask for such, their story changed to well Tivo just wanted to save the best for the last.

The Tivo fans also were very confident ALL DISH DVRs would be in the contempt discussion to be shut off, and DISH was going to have to pay through the nose, because just look at Tivo’s 5/16 filing, that was all the proof they needed to nail this DISH SOB once and for all. It turned out the only thing Tivo may discuss are the DVRs on the list, and to be discussed three months from now. No other DVRs are under discussion, not even the enhanced damages during the stay of the injunction are under discussion.

The fact is the Tivo fans’ predictions did not have a very good track record. Why? Because they are not based on the law, only based on their wishful thinking.


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## spear61

peak_reception said:


> Good find and a good point. But even there I think it's wishful thinking on Echo's part because that language came from Echo, *not* from the injunction.
> 
> .


Judges asks for written opinions from each side of the arguement for that exact reason. The job of the opposing attorneys is to frame the issues for the judge in a manner that he/she can use them freely to summarize what he believes the legal issue(s) to be. The judge has done that in this case. He understands each sides positon " infringing boxes" vs " new non-infringing software". He's reduced the argeument down to a simple two sided issue and come September will decide which side shall prevail.


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## James Long

nobody99 said:


> touche on the spin. Let's quote the actual full text.


OK ... then do so:
In the interest of judicial economy, *the Court will determine first whether* EchoStar should be held in contempt for its failure to disable the DVR functionality in the Infringing Products and for its placement of new infringing DVRs as urged by TiVo or whether, as urged by EchoStar, *the language of the Court's
Permanent Injunction allows EchoStar to comply with the spirit of the injunction by changing the software so that the products no longer infringe.*​That's the second option highlighted. The first answer is DISH is in contempt, the second answer is DISH is complying with the spirit and is not in contempt. The door is open to the court deciding contempt _*or not*_.


----------



## James Long

Curtis0620 said:


> And will be subject to the injunction also.


No. The TR-50 is more than just colorably different. It is an OTA receiver, not a satellite receiver. And it certainly isn't one of the named "Infringing Products." If Tivo thinks it infringes they will have to sue SATS over the new product ... the injunction will NEVER apply to the TR-50.


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## jacmyoung

James Long said:


> OK ... then do so:
> In the interest of judicial economy, *the Court will determine first whether* EchoStar should be held in contempt for its failure to disable the DVR functionality in the Infringing Products and for its placement of new infringing DVRs as urged by TiVo or whether, as urged by EchoStar, *the language of the Court's
> Permanent Injunction allows EchoStar to comply with the spirit of the injunction by changing the software so that the products no longer infringe.*​That's the second option highlighted. The first answer is DISH is in contempt, the second answer is DISH is complying with the spirit and is not in contempt. The door is open to the court deciding contempt _*or not*_.


I just noticed some thing, the first one includes: disabling of DVR functionalities of the *Infringing Products* (DVRs 501, 625&#8230 AND the placement of *new infringing products* (DVR 622, DVR722?). Notice the difference in capital letters.

Am I correct to believe Tivo actually is asking to have *all* DISH DVRs to be considered in the contempt discussion, or was it just a request, not yet granted by the judge?

Obviously "disabling of DVR functions on the list" is separate from "the placement of new DVRs not on the list". I thought from the meeting it was clear only the "disabling of the DVR functions on the list" would be on Tivo's agenda, though DISH did say Tivo could submit any motion request, and the judge agreed to provide guidelines for the next meeting after reviewing the details of the motion.

Now if the judge grants Tivo's motion as is, how will he lump the two in one discussion? Seems to me (and I think even Tivo folks agree) the first part requires no discussion of colorable difference according to Tivo's interpretation of the injunction (which I disagree), but the second part does require discussion of colorable difference. By requesting the two parts discussed as one, wouldn't that force the judge to consider colorable difference regardless?

In another word, if Tivo gets its wish, the judge will have to address the colorable difference after all. Can't avoid that. And if the colorable difference will have to be discussed, it will have to be applied to all DVRs, won't it? Because it is a single discussion. I don't know, just asking.


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## nobody99

James Long said:


> No. The TR-50 is more than just colorably different. It is an OTA receiver, not a satellite receiver. And it certainly isn't one of the named "Infringing Products." If Tivo thinks it infringes they will have to sue SATS over the new product ... the injunction will NEVER apply to the TR-50.


No they don't. If they believe the software is not more than colorably different, they can simply bring ask for a contempt hearing. If the software is more than colorably different, they will have to file a new suit.

Wow, seriously, are you misunderstanding the injunction that completely?


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## James Long

nobody99 said:


> No they don't. If they believe the software is less not more than colorably different, they can simply bring ask for a contempt hearing.
> 
> Wow, seriously, are you misunderstanding the injunction that completely?


Do you even know what a TR-50 is?
It is a product that is certainly more than colorably different than anything SATS has ever released.


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## nobody99

James Long said:


> Do you even know what a TR-50 is?
> It is a product that is certainly more than colorably different than anything SATS has ever released.


And that will be for the court to decide. The knife cuts both ways.


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## scooper

I THOUGHT we had more than few posters from the Church of Tivo, but I didn't think even they were THAT deranged....

The TR-50 hasn't even been released yet, and you're saying that it can be put into this suit. Wow . Simply. Amazing....


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## jacmyoung

After rereading the lastest court order, I believe starting at the 9/4/08 meeting, the colorable difference issue should be addressed, regardless our disagreement on the "face of the injunction", because not only the order includes the "disabling the DVR functions" but also the placement of new DVRs such as 622s and 722s.

I have read a few cases where colorable difference determination was described in relative detail, and it involved expert testimonies which often took awhile to complete. The next contempt hearing may not be a quick one. Since the court has ordered to view the colorable difference, the hearing will conform to the standard contempt procedure, which said, during a summary contempt proceeding, the judge should *first* determine the colorable difference issue between the enjoined products, and the modified products.

Therefore the above court order implies the application of the uniform contempt proceeding standard during the planned meeting, not as the Tivo folks insisted it will be a unique simple interpretation on the "face of the injunction".

Of course I do not pretend to know for certain this is the direction of the court, but the order seems to steer us in such direction.


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## peak_reception

jacmyoung, the points I'm making are only applicable to the contempt hearing coming in September. Whether or not that ruling -- if it goes against Echo -- stands on appeal is a whole 'nother story. That's why I keep saying that Echo is arguing _past_ Judge Folsom with eyes squarely forward on appeal.

I do believe that Echo has confidence that its design-around is both lawful and no longer infringing. I don't believe that they have any confidence at all that Judge Folsom will agree with them or that the language of the injunction agrees with them. Why else would they have that other lawsuit teed up, ready to go, in DE. I think they expect to lose the contempt hearing now.

But if they are found in contempt it's an enormous gamble to risk everything on appeal. Even a small chance of losing that appeal -- and there's always such chance -- would be a huge risk to the company. TiVo is at risk too of course, and maybe that's part of the equation too, i.e. that TiVo can't hold out as long as Echo can.

p.s. not written in reply to the post directly above this one.


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## nobody99

scooper said:


> I THOUGHT we had more than few posters from the Church of Tivo, but I didn't think even they were THAT deranged....
> 
> The TR-50 hasn't even been released yet, and you're saying that it can be put into this suit. Wow . Simply. Amazing....


Read jacmyoung's thousands of posts regarding "more than colorably different." The injunction prevents DISH from selling DVRs whose software is "not more than colorably different" than the eight named models that were found to infringe.

If DISH releases a new DVR five years from now that still has software "not more than colorably different" it too will be subject to injunction.

All TiVo has to do is file for a hearing.

None of us know what software its running, so we have no way of knowing if it's different.

As I said, the knife cuts both ways.


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## James Long

nobody99 said:


> None of us know what software its running, so we have no way of knowing if it's different.


So in your mind it is all in the software even if the product is a totally different offering? That bodes well for Echostar when they prove their new software is non infringing.

The TR-50 is not a satellite receiver with a DVR.


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## jacmyoung

nobody99 said:


> ...None of us know what software its running, so we have no way of knowing if it's different....


And we will learn in the hearing why the new software is different, not only different, but also more than colorably different, the first order of a contempt hearing anyway. Just remember, it will be discussed in that meeting, the judge's order already made it a foregone conclusion that the colorable difference will be discussed.


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## nobody99

James Long said:


> So in your mind it is all in the software even if the product is a totally different offering? That bodes well for Echostar when they prove their new software is non infringing.


Holy cow. You are suggesting that the outcome of the trial depends on an anonymous poster's opinion of the case? Wow.

By the way, just so there's no misunderstanding, it's not "all in the software." It's not some user interface that's DISH wrote. It's a very particular method of doing something in software. For all I know, Windows Media Center is infringing on the patent, but Microsoft just hasn't been tried yet.

I have no heavenly idea of the TR50's software infringes. All that I know is that the permanent injunction, which survives for the duration of TiVo's '389 patent, specifically prevents any new devices that "are not more than colorably different" than the Infringing Products.

For the sake of argument, let's say that the current version (let's call it version 2.000) of DISH's software is found to be "more than colorably different" (which, by the way, is far from a foregone conclusion). What happens when they release version 2.001? Or 3.000? TiVo can ask for a ruling again.

I'm not suggesting they will, and I'm not suggesting the court will have much patience with it, but even in the best case scenario for DISH, each and every change to their software opens them up again to the "more than colorably different" standard.

So have fun with that.


----------



## jacmyoung

You know I can give credit to those argue about the different interpretaion of the "face of the injunction", at least it is an honest debate. But for this person trying to have it both ways, insisting software will be the only thing that matters when he sees fit (in the case of TR-50), yet all the sudden in the DVR501, DVR526...the software shall not be bothered.

Then take this one step further, somehow without even figuring out how the colorable difference is even discussed and applied in the legal proceedings, have the audacity to insist even when the new software is found non-infringing, DISH will still be subject to Tivo's constant harrassment anytime it updates its software.

It is no surprise to me now how some of the Tivo fans have their minds framed into a perpetual litigation mode, because how else Tivo could ever succeed? I hope the good reasonable minded Tivo fans can see the grim future such mentality may bring to Tivo.

It is not too late to look for a new direction, and bring back the innovative spirit once so synonymous to Tivo's name.


----------



## James Long

nobody99 said:


> Holy cow. You are suggesting that the outcome of the trial depends on an anonymous poster's opinion of the case? Wow.


So that's what you are. From the way you present you opinions I thought you knew what you were talking about. Obviously you don't, so there is no reason for me to continue to read your responses.

Find out what a TR-50 is and stop posting BS. There isn't any way that a TR-50 is covered by an injunction on satellite receivers.



jacmyoung said:


> It is no surprise to me now how some of the Tivo fans have their minds framed into a perpetual litigation mode, because how else Tivo could ever succeed?


Perpetual litigation is all Tivo has left, but the worst of the fan posts are the ones that try to take Tivo's one victory - the software on the named models that was ruled infringing - and make that the final decision on all other Tivo complaints.


----------



## Grandude

nobody99 said:


> I have no heavenly idea of the TR50's software infringes. All that I know is that the permanent injunction, which survives for the duration of TiVo's '389 patent, specifically prevents any new devices that "are not more than colorably different" than the Infringing Products.
> 
> So have fun with that.


I suspect a lot of us will have fun with the fact that you are totally ignorant of what a TR50 is.


----------



## Greg Bimson

James Long said:


> Find out what a TR-50 is and stop posting BS. There isn't any way that a TR-50 is covered by an injunction on satellite receivers.





> IT IS FURTHER ORDERED THAT
> Each Defendant, its officers, agents, servants, employees and attorneys, and those persons in active concert or participation with them who receive actual notice hereof, are hereby restrained and enjoined, pursuant to 35 U.S.C. § 283 and Fed. R. Civ. P. 65(d), from making, using, offering to sell 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.


If the TR-50 used the software that is currently in the 721, tell me why the injunction wouldn't apply?

I'll be the first to admit the TR-50 will most likely use the new software, and if it is colorably different, it won't be subject to the injunction. But if the new software is subject to the injunction and the TR-50 uses it, then the TR-50 will be subject to the injunction. Echostar is making all of the DISH DVR's as well as the TR-50, and the injunction is not limited to satellite receivers.


jacmyoung said:


> You know I can give credit to those argue about the different interpretaion of the "face of the injunction", at least it is an honest debate. But for this person trying to have it both ways, insisting software will be the only thing that matters when he sees fit (in the case of TR-50), yet all the sudden in the DVR501, DVR526...the software shall not be bothered.


Because it is a two-violation issue: one is the face of the injunction, and the other is the interpretation of "colorably different" as it relates to the injunction.

Most of what you call the "TiVo fans" know that the software IS the issue on the receivers not listed as "Infringing Products". The issue the "TiVo fans" have is that most of the "DISH fans" simply ignore the "prima facie" violations of the "Infringing Products", by somehow making a strange twist of logic that they aren't "Infringing Products".


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## TexasAg

Greg Bimson said:


> Most of what you call the "TiVo fans" know that the software IS the issue on the receivers not listed as "Infringing Products".


And the rest of us know that the software on the "Infringing Products" is also the issue, since only the software has been found to infringe (so far).
__________________
My personal opinions are just that. Don't rely on them - I could be Charlie Ergen's pool boy.


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## jacmyoung

TexasAg said:


> And the rest of us know that the software on the "Infringing Products" is also the issue, since only the software has been found to infringe (so far).


And I suspect so do the rest of the Tivo fans think too, if one only looks at Tivo's stock performance after the 5/30 meeting.


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## jacmyoung

Greg Bimson said:


> ...Because it is a two-violation issue: one is the face of the injunction, and the other is the interpretation of "colorably different" as it relates to the injunction...


As noted, the face of the injunction not only can be interpreted in several ways, the majority of them happen to lead to DISH not in contempt, but this first issue, which is part of the wide latitude given to the judge to ensure no further infringement, can not trump the second issue, which is the law.

Let me quote again:

""The Federal Circuit declines the opportunities to tell district courts how to frame injunctions in patent cases, and allows wide latitude. As was noted earlier, it is uniformity in decisions on contempt, rather than on framing injunctions, that is the primary goal. Although in most cases a broad injunction against violation of a statute does not satisfy the specificity requirement, patent injunctions are frequently drafted broadly to prohibit 'further infringement.'&#8230;"

This injunction was drafted broadly to prohibit "further infringement" which is frequently done and proper way to do it, although in most cases a broad injunction against violation of a statute does not satisfy the specificity requirement. It is the Circuit Court's primary goal to ensure uniformity in decisions on contempt.

You and the others did not disagree that the face of the injunction, according to your interpretation, does not conform to the uniform rule the infringer is allowed to workaround the patent, modify the infringing products and continue as before.

The Circuit Court, if needed, will have to ensure it conforms to that uniform standard.


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## nobody99

Grandude said:


> I suspect a lot of us will have fun with the fact that you are totally ignorant of what a TR50 is.


Description of the TR50


> Dual tuner action means you can watch (and record) one live channel while simultaneously recording a second--or record two channels while playing back a previously recorded show. There's also full control over live TV, including rewind, pause, slow motion, 10-second "instant replay," and--for recordings--30-second skip.


I immediately planned on buying one when initial word came out about them. I've known about the TR50 for a while now. In fact, I was pretty much hoping the convert box coupons would apply to them (but they don't). But I hope you aren't assuming that just because it's not a satellite receiver means it's "more than colorably different." That standard applies just to the infringement, i.e., claims 31 and 61 of the '389 patent (the software).

Let's revisit Folsom's reasoning for the injunction:



> The availability of the infringing products leads tol oss of market share for plaintiff's products. Loss of market share in this nascent market is a key consideration in finding that Plaintiff suffers irreparable harm - Plaintiff is losing market share at a critical time in the market's development, market share that it will not have the same opportunity to capture once the market matures. One thing the parties agree on is that DVR customers are "sticky customers," that is they tend to remain customers of the company from which they obtain their first DVR. Dkt. No. 737 at 30 (EchoStar); Dkt. No. 747 at 1 (Tivo). Thus, the impact of Defendants' continued infringement is shaping the market to Plaintiff's disadvantage and results in long-term customer loss. *This is particularly key where, as is the case here, Plaintiff's primary focus is on growing a customer base specifically around the product with which Defendants' infringing product competes.* And, as Plaintiff is a relatively new company with only one primary product, loss of market share and of customer base as a result of infringement cause severe injury. Thus, the Court concludes that the full impact of Defendants' infringement cannot be remedied by monetary damages.


The very fact that this box is going to, according to Scooper, "cut the knees out from TiVo" sure sounds like it's a competing product.

Language of the injunction


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


I'm sorry, where in all of this did it say it was a satellite-based receiver? Can I draw your attention to "in the context of the Infringed Claims" again? Read up on the software infringement. It doesn't matter if it's sat, cable, or OTA.


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## James Long

nobody99 said:


> The very fact that this box is going to, according to Scooper, "cut the knees out from TiVo" sure sounds like it's a competing product.


Sure it competes ... but it doesn't make a TR50 into a DP501 or any other of the named products - or anything similar to the named satellite receivers. It is a new product that will require it's own new lawsuit if Tivo wants to compete in the courts instead of on the street.

PS: I own a PVR that isn't a Tivo ... it does a decent job of recording live TV and allowing playback while recording and trick modes. Tivo isn't the only company out there offering PVR/DVRs.

If you can't see more than a colorable difference between the TR50 and a satellite receiver you need to take of the Tivo rose colored glasses.


----------



## phrelin

Wow. Since my last presence here about 24 hours ago, someone's decided the unreleased TR50 OTA receiver/DVR is infringing based on its description.:nono2:


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## nobody99

phrelin said:


> Wow. Since my last presence here about 24 hours ago, someone's decided the unreleased TR50 OTA receiver/DVR is infringing based on its description.:nono2:


Where did I "decide" that the TR50 is "infringing based on its description?"

I simply said that TiVo can ask for a contempt hearing based on the language of the injunction. If it is not more than colorably different, it will require a new trial. I never suggest what the outcome of that request might be. Maybe they get the hearing, maybe they don't. But as much as it may bother you, that injunction can be used by TiVo to stop sales of the TR50 if the method of playback and storage is not "more than colorably different" than the method used by the Infringing Products.

And maybe there's something you non-programmers are missing. TiVo doesn't have a patent on specific lines of software code. They have a patent on the method the software uses to accomplish a goal.

With the reaction that the DISH apologists are giving, I seem to have hit a nerve :lol:


----------



## nobody99

James Long said:


> PS: I own a PVR that isn't a Tivo ... it does a decent job of recording live TV and allowing playback while recording and trick modes. Tivo isn't the only company out there offering PVR/DVRs.


And TiVo has decided not to go after them yet. Maybe they do later. Maybe they are a cable company that TiVo hopes to license in the future and doesn't want to piss off now? Maybe it's a company with scruples who has a TiVo prototype and hasn't blatantly ripped it off yet. But I have no doubt that TiVo knows which other companies have software that are likely infringing. And I have no doubt that, at some point, they will go after them.



James Long said:


> If you can't see more than a colorable difference between the TR50 and a satellite receiver you need to take of the Tivo rose colored glasses.


If you can't see that it doesn't require a "more than colorable difference" between devices, it just requires a difference between the software inside them, then maybe I'm not wearing TiVo rose colored glasses.


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## HobbyTalk

I would suspect that if the new software is found to be not infringing that TiVo would not go "after" any new E* products. To do so would only burn what little money they will have left and lower their chances of licensing their IP to others each time they lose the contempt hearing. I also suspect that shareholders would not be too happy with their stock price dropping like a rock with each loss.


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## dgordo

HobbyTalk said:


> I would suspect that if the new software is found to be not infringing that TiVo would not go "after" any new E* products. To do so would only burn what little money they will have left and lower their chances of licensing their IP to others each time they lose the contempt hearing. I also suspect that shareholders would not be too happy with their stock price dropping like a rock with each loss.


More than colorably different doesn't mean that it doesn't infringe.


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## James Long

nobody99 said:


> If it is not more than colorably different, it will require a new trial.


Perhaps you should proofread your posts?



> And maybe there's something you non-programmers are missing. TiVo doesn't have a patent on specific lines of software code. They have a patent on the method the software uses to accomplish a goal.


And SATS has a patent pending on a new method that specifically avoids Tivo's method. 

In any case, the injunction is against the product. DISH hopes to convince the court that the product isn't the product because the product has changed software. Tivo hopes to convince the court that additional satellite DVRs (a provided list NOT including the TR-50) should also be investigated to see _if_ they happen to infringe.

The TR-50 infringing is fan fiction dreamt up by those with nothing better to do.


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## nobody99

James Long said:


> Perhaps you should proofread your posts?


My bad. Sorry about that.



James Long said:


> And SATS has a patent pending on a new method that specifically avoids Tivo's method.


Patent pending means nothing more than they've filed a request with the patent office to get it patented. I'll also remind you that DISH had legal opinion that their software didn't infringe the first time around. Turns out they were wrong. We won't know if the new software is either "more than colorably different" (which will require a new trial for new products) or "merely colorably different" which means that they are still subject to being shut down -- and if the TR50 uses the same software, it will become subject to this injunction once TiVo requests a contempt hearing.



James Long said:


> In any case, the injunction is against the product. DISH hopes to convince the court that the product isn't the product because the product has changed software. Tivo hopes to convince the court that additional satellite DVRs (a provided list NOT including the TR-50) should also be investigated to see _if_ they happen to infringe.


Honest to God, I am not trying to be a pain, but there are two separate groups of products that are infringing. There are the eight models specifically named in the injunction (collectively known as the "Infringing Products"), and any other devices not more than colorably different from the Infringing Products.

I know I can't make you read it, hell, I can't even ask you to read it, but if you read the language of the injunction, it's pretty clear that the "not more than colorably different" standard applies to not-yet named devices.

Here's some interesing reading from another board:



> Rule 65(d) "requires an injunction to prohibit only those acts sought to be restrained," namely, "infringement of the patent by the devices adjudged to infringe and infringement by devices no more than colorably different therefrom."


Anyway, we're rehashing the same old things over and over again.


----------



## HobbyTalk

> I would suspect that if the new software is found to be not infringing that TiVo would not go "after" any new E* products. To do so would only burn what little money they will have left and lower their chances of licensing their IP to others each time they lose the contempt hearing. I also suspect that shareholders would not be too happy with their stock price dropping like a rock with each loss.





dgordo said:


> More than colorably different doesn't mean that it doesn't infringe.


Where did I say anything about colorably different ?!?!?!?! :eek2:


----------



## scooper

dgordo said:


> More than colorably different doesn't mean that it doesn't infringe.


Exactly - but it does mean it needs its own trial to determine if it does.


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## dgordo

HobbyTalk said:


> Where did I say anything about colorably different ?!?!?!?! :eek2:


Sorry, I didnt mean to imply that you did, you said "I would suspect that if the new software is found to be not infringing that TiVo would not go "after" any new E* products."

My point was that how would Tivo know if the software was or was not infringing with out going after DISH?


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## dgordo

scooper said:


> Exactly - but it does mean it needs its own trial to determine if it does.


Thats what I was trying to get at, how would Tivo know if the software was or was not infringing with out going after DISH?


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## HobbyTalk

dgordo said:


> I didnt mean to imply that you did, you said "I would suspect that if the new software is found to be not infringing that TiVo would not go "after" any new E* products."
> 
> My point was that how would Tivo know if the software was or was not infringing with out going after DISH?


Isn't that what this whole process will find out in the end? If the new software is infringing? They have already "gone after" E*, if the new software is found not to infringe I doubt that will go after any additional product.... hope that is a clear enough statement.


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## dgordo

HobbyTalk said:


> Isn't that what this whole process will find out in the end? If the new software is infringing? They have already "gone after" E*, if the new software is found not to infringe I doubt that will go after any additional product.... hope that is a clear enough statement.


I see what you are saying.

This is what I was saying; Lets just say for arguments sake, Judge Folsom rules that the "modified software" is more that colorably different. I doubt Tivo would give up at this point.


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## jacmyoung

dgordo said:


> I see what you are saying.
> 
> This is what I was saying; Lets just say for arguments sake, Judge Folsom rules that the "modified software" is more that colorably different. I doubt Tivo would give up at this point.


Tivo will not give up we already knew that, because Tivo asked for a limited discovery on the new software, while such request was denied at this time, I have no doubt if DISH is not in contempt, Tivo will follow up with the motion for the limited discovery, and the judge will grant it.

Now a limited discovery as I interpret it is not a full infringement trial. What that means is Tivo wants to first assess the likelihood of finding the new software infringing or not, before deciding if they will go ahead with another costly and time consuming full trial. Just my guess.

DISH has spent over a year to develop a workaround, and the new software has been reviewed by a patent firm to be non-infringing. It will be a difficult trial to prove the new software is still infringing, it is the right thing for Tivo to seek a limited discovery first.

Of course what do I know, maybe a limited discovery is the norm before a full trial.


----------



## HobbyTalk

dgordo said:


> I see what you are saying.
> 
> This is what I was saying; Lets just say for arguments sake, Judge Folsom rules that the "modified software" is more that colorably different. I doubt Tivo would give up at this point.


I agree, and they shouldn't. It needs to be answered once and for all so everyone can move on.


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## James Long

nobody99 said:


> I know I can't make you read it, hell, I can't even ask you to read it, but if you read the language of the injunction, it's pretty clear that the "not more than colorably different" standard applies to not-yet named devices.


I've read the injunction ... I've posted the injunction ... and no matter what you say your words will not change the injunction.

I wish it were not THREE MONTHS until a court rules on this. If this kind of garbage is what we have to look forward to for the next three months perhaps we should just close the thread until something real happens.


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## Greg Bimson

I would like to point out something that may not have been touched on before...

Why does the injunction language contain the disable the "Infringing Products" language? After all, we are only talking about the watching while recording functionality of a DVR, i.e., the Time Warp patent. Seems as though the disable language is a bit harsh for simply infringing upon a single function of the DVR.

With that in mind, why wasn't the injunction to simply remove the Time Warp function, instead of the disabling of DVR's?

And why wasn't that argued during DISH/SATS' appeal?

I hadn't been able to spell it out that well before. That is why I am believing that the injunction is "airtight". The injunction should have been written to disable the infringing technology, but instead of cutting off the finger, the injunction cuts off the whole arm.


----------



## Greg Bimson

dgordo said:


> My point was that how would Tivo know if the software was or was not infringing with out going after DISH?





HobbyTalk said:


> Isn't that what this whole process will find out in the end? If the new software is infringing? They have already "gone after" E*, if the new software is found not to infringe I doubt that will go after any additional product.... hope that is a clear enough statement.


Well, let's make this a bit easier.

TiVo is trying to force DISH/SATS to the bargaining table. Asking for contempt for a "prima facie" violation is also another road to travel along with the new software. If TiVo can successfully argue that the "Infringing Products" need to be disabled, then DISH/SATS faces an awful lot of pain if they lose and also lose upon appeal.

I'm simply guessing there are avenues we haven't thought of, which could also be travelled.


----------



## James Long

Greg Bimson said:


> I would like to point out something that may not have been touched on before...
> 
> Why does the injunction language contain the disable the "Infringing Products" language? After all, we are only talking about the watching while recording functionality of a DVR, i.e., the Time Warp patent. Seems as though the disable language is a bit harsh for simply infringing upon a single function of the DVR.
> 
> With that in mind, why wasn't the injunction to simply remove the Time Warp function, instead of the disabling of DVR's?
> 
> And why wasn't that argued during DISH/SATS' appeal?
> 
> I hadn't been able to spell it out that well before. That is why I am believing that the injunction is "airtight". The injunction should have been written to disable the infringing technology, but instead of cutting off the finger, the injunction cuts off the whole arm.


And it is the same reason why others believe the injunction is overreaching ... yes, DISH should have complained about the wording of the injunction when they appealed (even though their main goal in the appeal was to get the entire verdict reversed - not just change the injunction). But perhaps the judge will see the error of his ways when it comes to enforcement.

If the judge decides to enforce the injunction in a way that makes it impossible for DISH to ever have a DVR of any kind again (as some have suggested he should) it doesn't leave DISH with a way out other than ceasing business as a DVR provider. That isn't right. Tivo doesn't hold a patent on every possible method of DVR operation ... they hold a patent on a specific process. That needs to be taken into account and not give Tivo more than they are due.


----------



## phrelin

James Long said:


> I've read the injunction ... I've posted the injunction ... and no matter what you say your words will not change the injunction.
> 
> I wish it were not THREE MONTHS until a court rules on this. If this kind of garbage is what we have to look forward to for the next three months perhaps we should just close the thread until something real happens.


Don't close it before the 1500th post, perhaps one speculating on whether a device not yet thought of by anyone at Dish or anywhere else should be included in the shut off order.


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## jclewter79

Maybe Charlie should go ahead and buy TIVO and then he could sue everybody for infringing.  I don't know if Charlie has scruples or not but I bet he has enough brains not to leave a prototype of a product with a company without finalizing the patent first.


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## Curtis52

jclewter79 said:


> I don't know if Charlie has scruples or not but I bet he has enough brains not to leave a prototype of a product with a company without finalizing the patent first.


Please cite a source for TiVo leaving the prototype before filing for a patent.


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## HobbyTalk

Greg Bimson said:


> Why does the injunction language contain the disable the "Infringing Products" language? After all, we are only talking about the watching while recording functionality of a DVR, i.e., the Time Warp patent. Seems as though the disable language is a bit harsh for simply infringing upon a single function of the DVR..


Because the injunction was written when the hardware was found to infringe.... that is no longer the case. I would guess it was thought the only real way to eliminate further "hardware" infringment was to disable it's use.


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## dave1234

HobbyTalk said:


> Because the injunction was written when the hardware was found to infringe.... that is no longer the case. I would guess it was thought the only real way to eliminate further "hardware" infringment was to disable it's use.


This is what baffles me most about the appeals court ruling: leaving the injunction intact as is. To me it's not at all clear what must be disabled. Both Dish and Tivo have ample arguments to make their cases either way as this thread illustrates...


----------



## jacmyoung

HobbyTalk said:


> Because the injunction was written when the hardware was found to infringe.... that is no longer the case. I would guess it was thought the only real way to eliminate further "hardware" infringment was to disable it's use.


More importantly, the district court judge's main goal is to prohibit "further infringement", not to worry about if his injunciton is fair, solid in its legal interpretation, but to porhibit future infringement from happening.

Therefore it is normal that the injuunctions are often broad to cover all basis. Let's say if the judge only mentioned to turn off the so called "time warp" thing in the receivers, and DISH said later we did, well we thought we did, look we had the more than colorable different code to show you, DISH would not even have to make a legitimate non-infringing software, just change the version of the old code, and Tivo would have to go through a whole new trial to prove DISH did not turn off this thing called "time warp", which by all account was never even mentioned in the entire trial, the concept of "time warp" wasn't even the discussion of this trial, rather the specific methods in the claims.

It was perfectly ok for the judge to put the languge in his injunction to disable the DVR functions to prohibit future infringement, and it was perfectly ok even if it over-reached.

Because over-reaching at the district court level ensures the successful patentee's right not to have its patent infringed upon in the future, and also does not expose the infringer to unfair treatment, because the infringer has the Circuit Court ready to protect him from any possible unfair, over-reaching effect of the injunction. The appeals court's job is to ensure an junction does not over-reach, and the uniform standard of allowing legitimate workaround by the infringer is unheld.


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## jacmyoung

dave1234 said:


> This is what baffles me most about the appeals court ruling: leaving the injunction intact as is. To me it's not at all clear what must be disabled. Both Dish and Tivo have ample arguments to make their cases either way as this thread illustrates...


And if you have read the text I posted before, and the reasoning in my above post, it was not the appeals court's job to dictate how the judge wrote his injunction, the district court judges are given "wide latitude" to do their job.

It will be the appeals court's job to ensure the uniform standard is maintained in a later time, if necessary.

The whole idea of an injunction is to prevent further infringement, the judge may make it broader (harsher) than necessary to encourage settlement, and often times parties do settle as a result, but sometimes they do not. I have posted many prior cases when the latter happened.

And when that happens, the appeals court will be put to the task to ensure the standards are met, and over-reaching contempt decisions are overturned. It happens all the time. It is no one's fault, it is how the process works.


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## jacmyoung

I know I have quoted this more than once already, but since it is very compact and to the point, let's do it again:

""The Federal Circuit declines the opportunities to tell district courts how to frame injunctions in patent cases, and allows wide latitude. As was noted earlier, it is uniformity in decisions on contempt, rather than on framing injunctions, that is the primary goal. Although in most cases a broad injunction against violation of a statute does not satisfy the specificity requirement, patent injunctions are frequently drafted broadly to prohibit ‘further infringement.’…"


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## HobbyTalk

That explains it a bit, thanks.


----------



## Curtis52

jacmyoung said:


> I know I have quoted this more than once already, but since it is very compact and to the point, let's do it again:
> 
> ""The Federal Circuit declines the opportunities to tell district courts how to frame injunctions in patent cases, and allows wide latitude. As was noted earlier, it is uniformity in decisions on contempt, rather than on framing injunctions, that is the primary goal. Although in most cases a broad injunction against violation of a statute does not satisfy the specificity requirement, patent injunctions are frequently drafted broadly to prohibit 'further infringement.'&#8230;"


You are quoting one person's opinion, not case law.


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## scooper

One person who happens to be a Federal Circuit Judge - whose opinion in this type of arena holds a bit more weight than your's and Tivo's...


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## Curtis52

Curtis52 said:


> You are quoting one person's opinion, not case law.





scooper said:


> One person who happens to be a Federal Circuit Judge


Really? Got a link?


----------



## Greg Bimson

James Long said:


> And it is the same reason why others believe the injunction is overreaching ... yes, DISH should have complained about the wording of the injunction when they appealed (even though their main goal in the appeal was to get the entire verdict reversed - not just change the injunction).





HobbyTalk said:


> Because the injunction was written when the hardware was found to infringe.... that is no longer the case. I would guess it was thought the only real way to eliminate further "hardware" infringment was to disable it's use.


I'm not normally one to talk in scenarios, but it directly applies in this case...

So let's say the Court of Appeals allowed the entire verdict from the jury to stand.

We would be at exactly the same point as we are today. TiVo would have had an injunction in hand for both software and hardware, and DISH/SATS would have rewritten their software and received a legal opinion that the "workaround" does not infringe.

We can discuss uniformity all we'd like. Because the above scenario is hardly any different than where we are today, DISH/SATS would have tried to workaround the Time Warp patent, even though there are specific products that must be disabled.

So now we are back to the injunction, which may be a bit overbroad. However, how does one argue against a "prima facie" violation of an injunction? I don't think it works quite like this...


jacmyoung said:


> DISH/SATS has spent over a year to develop a workaround, and the new software has been reviewed by a patent firm to be non-infringing.


DISH spent years developing their in-house DVR's and had presented a review by a patent firm regarding non-infringement of the Time Warp patent for this trial, yet they were found guilty of patent infringement. How can one simply ignore an injunction based upon "opinion"? I do realize that DISH/SATS is trying to get the "opinion" changed into a fact that can materially change the interpretation of the injunction, but does anyone know how risky that is?


----------



## James Long

Curtis52 said:


> jclewter79 said:
> 
> 
> 
> I don't know if Charlie has scruples or not but I bet he has enough brains not to leave a prototype of a product with a company without finalizing the patent first.
> 
> 
> 
> Please cite a source for TiVo leaving the prototype before filing for a patent.
Click to expand...

You misread. jclewter79 said "without *finalizing* the patent". The patent was not final and Tivo's earliest devices were not properly marked. It's all in the court documents.


HobbyTalk said:


> Because the injunction was written when the hardware was found to infringe.... that is no longer the case. I would guess it was thought the only real way to eliminate further "hardware" infringment was to disable it's use.


It is harder to work around a hardware problem than a software problem. It appears that DISH has found a way to not use the questionable hardware in their receivers as well as replace the infringing code. The court was short sighted in these matters. DISH wanted the court to write the injunction more specifically but the court chose a different route.

Now the court has to deal with their short sightedness. They have a product that is the target of an injunction that may no longer apply to that product. Disabling the DVR functions is irrelevant if the DVR functions do not infringe.


----------



## James Long

Greg Bimson said:


> How can one simply ignore an injunction based upon "opinion"? I do realize that DISH/SATS is trying to get the "opinion" changed into a fact that can materially change the interpretation of the injunction, but does anyone know how risky that is?


It is easier to act on opinion when one runs a multi-billion dollar operation and is certain in their opinion of their products. The expert opinions help defend ... their decisions were informed.

It would be like a volunteer fire fighter speeding and running red lights in their private vehicles to get to a fire. That isn't legal where I live (and a few years ago a nearby town started stopping volunteers and ticketing them for speeding). The "I thought it was OK" defense works better when it comes from a source ... such as a national group of volunteer fire fighters or legal counsel that shows from previous cases why the action should be allowed.

There are two paths when you're faced with a law or ruling that you believe is incorrect. One is to obey the rule and try to get it changed via some complicated process the other is to disobey the decision, get caught, and argue the validity of the rule. It is a great risk ... but most of the great decisions in our legal history have come from someone taking that risk ... violating a law/rule and taking it to court, often all the way to the supreme court, to get the rule changed.

It takes courage.


----------



## jclewter79

James Long said:


> You misread. jclewter79 said "without *finalizing* the patent". The patent was not final and Tivo's earliest devices were not properly marked. It's all in the court documents.


Thank you James, that is the point I was trying to make. I did not stay on long enough to defend my statement because the way it was worded it was common knowledge that this happened. I don't deny that Dish might have took liberties that they should not have but, I do think that some of the blame falls on the shoulders of Tivo for not waiting a little longer to show their technology until the patent was FINAL and properly marked. That is just smart business.


----------



## James Long

"Final _or_ properly marked" would work for me ... but the allegation that DISH simply stole the technology from the missing Tivo - making it the seed for every DVR DISH could ever design is an unproven?

DISH has designed a DVR that used a patented process. That much we know. The "theft" has never been proven.


----------



## Curtis52

jclewter79 said:


> Thank you James, that is the point I was trying to make. I did not stay on long enough to defend my statement because the way it was worded it was common knowledge that this happened. I don't deny that Dish might have took liberties that they should not have but, I do think that some of the blame falls on the shoulders of Tivo for not waiting a little longer to show their technology until the patent was FINAL and properly marked. That is just smart business.


If by "final" you mean approved, I've got to ask what difference it makes? Dish's patent hasn't been approved yet but it's allegedly on millions of boxes. As for patent marking, it didn't stop Dish from infringing.


----------



## jacmyoung

Curtis52 said:


> Really? Got a link?


I knew I should have done that earlier, I should have anyway:

http://books.google.com/books?id=ZK0ublrxJfEC

Author's brief bio:

"Robert L. Harmon
www.harmon-on-patents.com
Email [email protected] or [email protected]
Voicemail 312-943-3475
Cell 312-405-9526
Chicago Wisconsin
415 E North Water St - #2206 P.O. Box 342 (for mail)
Chicago, IL 60611 N4160 Fern Lane (for courier)
312-943-3475 Oxford, WI 53952
Fax 312-670-2256 608-586-4217
Please confirm current location before sending material by mail, courier, or fax.
Education & Legal Employment
Born January 27, 1938, Saginaw, Michigan
B.S.E.(EE) 1960 - University of Michigan
J.D.(with distinction) 1963 - University of Michigan
1963-65: Law Clerk to Judge Arthur M. Smith of the U.S. Court of Customs and Patent Appeals
1965-97: Associate & partner, Brinks Hofer Gilson & Lione
Publications
Author: Patents and the Federal Circuit (BNA 8th ed. 2007) with annual updates
Harmon on Patents: Black Letter Law and Commentary (BNA 2007)
Co-author (with Judge Smith) Patent Law (Overbeck 1964)
Various articles on patent law and flyfishing
Bar Admissions
United States Patent and Trademark Office
District of Columbia, Illinois and Wisconsin state bars; Northern District of Illinois trial bar
United States Supreme Court, Federal Circuit, Court of Federal Claims, various federal district and
regional circuit courts
Practice
Service as special master and expert witness in patent infringement litigation; ADR and neutral evaluation
of IP disputes; consultation on litigation strategy; mock hearings. Special master work has included trial
of issues, Markman hearings, and resolution of complex motions, including numerous summary judgment
motions. Patent experience has involved a wide variety of technologies, including machine tools,
electronics, communications systems, computer and software technology, cryptology, robotics,
automotive and agricultural equipment, genetic engineering, plastics machinery, laser applications,
imaging (ultrasonic, MRI, xray), firearms, ballistics, various medical technologies, well drilling, and
materials processing. Past practice includes litigation, opinions, counseling, and consulting on patent
infringement and validity, reissues, reexaminations, interferences, and complex patent prosecution; also,
litigation and counseling in other areas, such as unfair competition, trade secrets, antitrust, and licensing"


----------



## James Long

Curtis52 said:


> If by "final" you mean approved, I've got to ask what difference it makes? Dish's patent hasn't been approved yet but it's allegedly on millions of boxes. As for patent marking, it didn't stop Dish from infringing.


DISH isn't handing out their patent pending code to others as a sales tool. They have provided some code to Tivo, along with opinions of experts who have seen the full code. But they are not sharing all of their secrets with another company.


----------



## jclewter79

Curtis52 said:


> If by "final" you mean approved, I've got to ask what difference it makes? Dish's patent hasn't been approved yet but it's allegedly on millions of boxes. As for patent marking, it didn't stop Dish from infringing.


We don't know that, the marking could not be proven to not stop anyone if it is not there. Tivo is a relic, nobody wants to add another box to their setup for DVR functionalty. Tivo knew this when they invented their box otherwise they would not be leaving inventions with possible competitors to consider incorporating into their setup. Expecially before they were sure they had a patent on the technology, or at least had enough confidence in their ability to obtain one that they marked the box "patent pending". Tivo needs this win without it they are on their way to being out of business. Win lose or draw, Dish survives this deal with functioning DVR's one way or another.


----------



## Presence

Hey, I have an idea: how about everyone stop pounding their keys and actually wait and see what actually happens? OMG, what a cutting-edge idea!


----------



## TexasAg

Curtis52 said:


> As for patent marking, it didn't stop Dish from infringing.


Whether or not Tivo's prototype was marked doesn't matter for the infringement issue - either Echo's products infringe the patent claims, or they don't. The marking doesn't affect that.

Marking is an issue that relates to damages and willfulness. If you are the patent owner, you cannot get any damages for infringement during times that you were actually selling a product if the product isn't marked (something on the product like "Protected by U.S. Patent 1,234,567"). You either mark your products, or you can't get any damages until you start. Also, if a product is marked, an infringer is assumed to have notice of the patent, which can be used to prove the infringer's willfulness.

If Echo really stole Tivo's software from the prototype, Tivo would also have been able to sue under some type of state law claim, like violation of a nondisclosure agreement (assuming Tivo was smart and had Echo sign one). Tivo apparently didn't have a whole lot of evidence about this, since the judge eventually ruled that this case did not justify the award of attorney's fees (and you would expect the judge to have said it was justified if the evidence of "theft" was strong).
__________________
My personal opinions are just that. Don't rely on them - I could be Charlie Ergen's pool boy.


----------



## jacmyoung

Curtis52 said:


> If by "final" you mean approved, I've got to ask what difference it makes? Dish's patent hasn't been approved yet but it's allegedly on millions of boxes. As for patent marking, it didn't stop Dish from infringing.


Since we are now discuss business strategy, one can definitely argue that Tivo's business strategy at that time was less than brialliant. You don't give a prototype of your to be patented product to someone without some kind of agreement first. DISH took the advantage of it without careful consideration of course.

Imagine at the time, had Tivo done it the right way, there was a good chance DISH would have been forced to work with Tivo, and both could have developed the DVRs and dominated the market today, and DISH and Tivo could have been one major player, not two. DISH would have a clear edge on the DVRs, Tivo would have a major service platform as home to anchor its technologies.

We would not have been arguing, rather hugging and kissing (ok I will stop there). So whose fault is it really? DISH being careless and lazy, or Tivo being stupid?


----------



## Curtis52

TexasAg said:


> If Echo really stole Tivo's software from the prototype, Tivo would also have been able to sue under some type of state law claim, like violation of a nondisclosure agreement (assuming Tivo was smart and had Echo sign one).


I can't figure out where people are getting this "copying" theory.



> "*As Plaintiff admits, this is not a copying case*. 6/28/06 Hr. Tr. at 9:7-8; see also Dkt. No. 739 at 7. Defendants worked to develop their own DVR device for a number of years even before Plaintiff's company had been formed. Id. at 6. "


----------



## dgordo

jacmyoung said:


> I knew I should have done that earlier, I should have anyway:
> 
> http://books.google.com/books?id=ZK0ublrxJfEC
> 
> Author's brief bio:
> 
> "Robert L. Harmon


I love that you are citing Bob Harmon, I know him well.


----------



## jacmyoung

dgordo said:


> I love that you are citing Bob Harmon, I know him well.


How well? Flyfishing buddy well?


----------



## Herdfan

jacmyoung said:


> Since we are now discuss business strategy, one can definitely argue that Tivo's business strategy at that time was less than brialliant. You don't give a prototype of your to be patented product to someone without some kind of agreement first. DISH took the advantage of it without careful consideration of course.


One thing we don't know, but can possibly surmise is that TiVo did the same thing with DirecTV. Out of which came the DirecTiVo and that worked out pretty well for TiVo for a while. And had DirecTV not been bought by RM who had his own DVR maker, who knows what would have happened. TiVo and DirecTV could have that relationship you referenced.


----------



## dgordo

jacmyoung said:


> How well? Flyfishing buddy well?


He was a guest speaker in my patent law class in law school. He was/is good friends with my professor and helped me get an internship during school and we stayed in touch for a few years after. I havent actually spoken to him for probably over 5 years now.


----------



## nobody99

Let's look at one single issue: the existing named DVRs. After eBay Inc. v. MercExchange, the ability for a patentee to get an injunction was made more difficult. If monetary damages through lost profits or reasonable royalty could be determined, and injunction wouldn't be allowed.

A couple paragraphs from this pdf

http://www.google.com/url?sa=t&ct=r...sb0cK0rSYxc9i7MJg&sig2=pTlm71DikFMB1wVOnuB-yw



> Patent infringement remedies in the United States generally take two forms: monetary damages and injunctive relief. Determining the amount of any monetary damage award can be a difficult task for both the parties and the court. *The courts have wide discretion in tailoring a monetary award to the specific facts of the case in an attempt to put the patentee in as good a position as he would have been "but for" the infringement.*
> 
> 35 U.S.C. § 284 states "the court shall award the claimant damages adequate to compensate for the infringement but in no event less than a reasonable royalty for the use made of the invention by the infringer." The courts have regarded this statute as "expansive rather than limiting" and recognized that the
> statute requires only that damages must be adequate "while providing only a lower limit and no other limitation." From this broad statutory language, two primary theories of damages have emerged: lost profits and a reasonable royalty. *Lost profits generally refers to "any and all damages that proceed from the act of patent infringement."* This form of damages requires proof that the patent owner would have been in a better financial position had the infringement not occurred.


In fact, DISH even argues that monetary relief would be adqequate to TiVo



> According to Defendants, Plaintiff faces no hardship if an injunction does not issue because monetary relief provides an adequate remedy at law


But the court disagrees:



> Plaintiff has demonstrated both that it continues to suffer irreparable harm in the absence of an injunction and that there is no adequate remedy at law
> 
> Thus, the Court concludes that the full impact of Defendants' infringement cannot be remedied by monetary damages.


From Wikipedia



> a court will not grant an injunction unless monetary damages are an insufficient remedy for the injury in question.


This injunction was a penalty for DISH's infringement, *in addition to* a means to prevent *future* infringement. Disabling the DVR functions, as required by the injunction, was ordered because *monetary damages alone could not remedy the injury done by the infringement*.

Yes, DISH is allowed to try to design around the patent *in future devices which are more than colorably different*, but the 4+ million DVRs in the field today are given a lobotomy *as punishment for having infringed in the past*. If DISH chooses not to work something out with TiVo, *TiVo will have the opportunity to recruit these customers*. DISH can also certainly send out a free non-infringing DVR if that's what they want to do. But TiVo gets a chance to get them back as a customer.

I don't know how much more clear it can be that the "disable the DVR functionality" is punishment.


----------



## TexasAg

nobody99 said:


> This injunction was a penalty for DISH's infringement, *in addition to* a means to prevent *future* infringement. Disabling the DVR functions, as required by the injunction, was ordered because *monetary damages alone could not remedy the injury done by the infringement*.


Incorrect. You omitted the remainder of the court's paragraph from the order granting the injunction:

_Plaintiff has demonstrated both that it continues to suffer irreparable harm in the absence of an injunction and that there is no adequate remedy at law. Defendants compete directly with Plaintiff - Defendants market their infringing products to potential DVR customers as an alternative to purchasing Plaintiff's DVRs. The availability of the infringing products leads to loss of market share for Plaintiff's products. Loss of market share in this nascent market is a key consideration in finding that Plaintiff suffers irreparable harm - Plaintiff is losing market share at a critical time in the market's development, market share that it will not have the same opportunity to capture once the market matures. _

It was the "availability of the infringing products" (meaning Echo's continuing infringement) that would have caused irreparable harm to Tivo. The injunction wasn't granted as a punishment for past infringement, but because of the harm of continuing or ongoing infringement.

The court re-emphasized that in the very next paragraph of the order granting the injunction:
_
Thus, the impact of Defendants' continued infringement is shaping the market to Plaintiff's disadvantage and results in long-term customer 
loss. _

And again later:

_The public does not have a greater interest in allowing Defendants' customers' to continue to use their infringing DVRs. 
_
__________________
My personal opinions are just that. Don't rely on them - I could be Charlie Ergen's pool boy.


----------



## nobody99

TexasAg said:


> Incorrect. You omitted the remainder of the court's paragraph from the order granting the injunction:
> 
> _Plaintiff has demonstrated both that it continues to suffer irreparable harm in the absence of an injunction and that there is no adequate remedy at law. Defendants compete directly with Plaintiff - Defendants *market* their infringing products to potential DVR customers as an *alternative to purchasing* Plaintiff's DVRs. The availability of the infringing products leads to *loss of market share* for Plaintiff's products. Loss of market share in this nascent market is a key consideration in finding that Plaintiff suffers irreparable harm - *Plaintiff is losing market share* at a critical time in the market's development, *market share that it will not have the same opportunity to capture once the market matures.* _


I've added bold emphasis to your quote from the injunction language. Every one of those quotes deals with _future_ sales. They aren't losing market share unless they lose a sale. You don't "market" a DVR that you've already sold to a customer.



> It was the "availability of the infringing products" (meaning Echo's continuing infringement) that would have caused irreparable harm to Tivo. The injunction wasn't granted as a punishment for past infringement, but because of the harm of continuing or ongoing infringement.


I'm seriously trying. Why can't you accept that it could be for both?



> The court re-emphasized that in the very next paragraph of the order granting the injunction:
> _
> Thus, the impact of Defendants' continued infringement is shaping the market to Plaintiff's disadvantage and results in long-term customer
> loss. _


For future sales.



> And again later:
> 
> _The public does not have a greater interest in allowing Defendants' customers' to continue to use their infringing DVRs.
> _


I have no idea why you are bringing this up. DISH was simply trying to use this as a defense against an injunction being issued.

Seriously, how do you explain

_Thus, the Court concludes that the full impact of Defendants' infringement cannot be remedied by monetary damages._


----------



## jacmyoung

Herdfan said:


> One thing we don't know, but can possibly surmise is that TiVo did the same thing with DirecTV. Out of which came the DirecTiVo and that worked out pretty well for TiVo for a while. And had DirecTV not been bought by RM who had his own DVR maker, who knows what would have happened. TiVo and DirecTV could have that relationship you referenced.


Not knowing the facts, I'd like to bet Tivo learned the lesson and probably did not give DirecTV any ideas before they inked some agreement.

The fact Tivo is still without a solid anchor underscores the lost opportunity, by the time DirecTV was on the boat with Tivo, DVRs had already been widely manufactured by different vendors and used everywhere under so many brands.

Had Tivo did it the right way with DISH, and with DISH's money putting ReplayTV out and/or into their own camp, like what DirecTV did recently, DISH/Tivo could have both laughed all the way to the bank with the DVR dominance, instead they fought while bled along the way.

Sometimes one stupid move can have long lasting consequences.


----------



## nobody99

TexasAG,

I seriously do appreciate having this conversation with you. 

From my earlier quote, there were two monetary damage types: lost profit and reasonable royalty.

If, as you state, the injunction is only for future infringement, why is it that TiVo was not given lost profit or reasonable royalty -- even at DISH's urging?

You can't say there was no punishment for past infringement when there were two types of monetary remedies available - and the court deemed that neither was adequate.


----------



## Curtis52

Is the damage irreparable or not? You can't have it both ways. If it's irreparable, it can't be repaired. It can only be prevented.


----------



## TexasAg

nobody99 said:


> I've added bold emphasis to your quote from the injunction language. Every one of those quotes deals with _future_ sales. They aren't losing market share unless they lose a sale. You don't "market" a DVR that you've already sold to a customer.


The comments on future marketing/sales deal with the fact that Tivo would be harmed if Echo were allowed to continue infringing. It didn't deal with punishment for past infringement.



nobody99 said:


> From my earlier quote, there were two monetary damage types: lost profit and reasonable royalty.
> 
> If, as you state, the injunction is only for future infringement, why is it that TiVo was not given lost profit or reasonable royalty -- even at DISH's urging?


Tivo got lost profits/royalties for all prior infringement. Echo wanted no injunction to issue (and instead would have paid a continuing royalty if the infringement continued). The court said no, the damage to Tivo for allowing the infringement to continue could not be made up by simple damages. This doesn't help Tivo in the contempt hearing since, if the infringement has stopped, the injunction shouldn't apply to the new software (again, I don't make that call, the court will).



jacmyoung said:


> I don't think continuing with nobody99 is helpful, he obviously has no interest in understanding the law and the intent of an injunction, I think it is ok to let him have his last say. Who knows he could prevail in the end and thus reshape our legal system with respect to the patent issues. Never say never


I think it's helpful. Folks have raised difficult issues on both sides. If this was a clear-cut issue, Tivo or Echo would have settled a long time ago.
__________________
My personal opinions are just that. Don't rely on them - I could be Charlie Ergen's pool boy.


----------



## phrelin

nobody99 and jacmyoung. You put me to shame. I just did a search on each name and discovered just how unfocused I really am, post spread out all over. But I realize just how drawn into this curious discussion going on here I have become. Think from now on I'll just check it out after the court does something.


----------



## jacmyoung

nobody99 said:


> I wish the message board's software hid quotes from you (since I had you on ignore). But when TexasAG quoted you, I saw your response.
> 
> If you don't like my replies, put me on ignore. Obviously, if you haven't put me on ignore, you must find something I'm saying worthwhile.


I wish someone can quote me again. I do not ever put anyone on ignore, even my toughest rival offers value I do not want to ignore, and you are far from that one. You have yet offerred much and by ignoring the new information I have provided you are only unnecessarily prolonging the debate on the goal of the injunctions without effective counter evidence.

TexasAg, I did not mean he offerred no value, and I even admitted he could prevail, anything is possible in life. But I think we can all agree by blinding oneself to useful information is not the best way to ensure one's success rate, not one will always fail by sticking one's head in the sand, just more likely one will fail.

The law is clear, so are the opinions of those respected in the legal profession, the goal of the injunction is to prohibit further infringement. Some Tivo fans have shown consistent capacity to ignore the law, and cling on a few words of this particular injunction, and trying to shape the judge's words into something that fits their wish, now most of them hopefully can understand why they should not take a broad injunction at it's face value and ignore the law.

Injunctions are often made to be broad to ensure their goal, the goal of prohibiting further infringement, are met. That is all. Once the goal is met, the goal of an injunction is not to continue marching on to break the law and the uniform standard established by the law.

The only reason people continue to think that way is because they wish it that way. Occassionally their wishes may come true while ignoring facts and logic, but such occassions should never deter reasonable people from continued use of facts and logic. Because more often than not, logic, not wishful thinking, prevails.


----------



## Richard King

> The law is clear


Actually, if the law were clear this discussion would have ended at about post number 10 or so and this would not be post #1535.  Everyone's input on the subject is valuable. I have been glancing through this from day one, not reading every post, but getting the gist of the whole thing, and I have to say that I think it has been interesting to read the various opinions. I would like to recommend that EVERYONE try to keep the discussion on a civil level though. Please.


----------



## jacmyoung

Richard King said:


> Actually, if the law were clear this discussion would have ended at about post number 10 or so and this would not be post #1535.  Everyone's input on the subject is valuable. I have been glancing through this from day one, not reading every post, but getting the gist of the whole thing, and I have to say that I think it has been interesting to read the various opinions. I would like to recommend that EVERYONE try to keep the discussion on a civil level though. Please.


Of course "the law is clear" was my opinion. I have talked to many lawyers, mostly related to my work, and have yet one of them offerred 100% prediction on outcome on any subject. The discussions had little to do with how clear the law is, rather how everyone of us wants to believe he is correct, and I am included.

I think I got a little steamed when some people believe a judge can be above the law, because that is the only explanation I have for them clinging onto the judge's words, in fact not even the judge's words, rather what they think the judge's words are, instead of at least reading what the law is, since there are ample opportunities to do so, in today's Google age. I guess I just had a hard time accepting it. Their opinions are of course of equal value to the discussion as mine, which is why I never ignore them.

Again, the judge has wide latitude to do what he sees fit, it will not be a shock to me if he finds DISH in contempt. The appeals court however has a different job to do, they did it once already by staying the injunction, after the judge's above passionate argument against the stay during appeal. Some say well it is routine for the appeals court to stay an injunction during appeal, then can you at least imagine it may also be routine for the appeals court to uphold the uniform standards on contempt?


----------



## kmill14

jacmyoung said:


> *the goal of the injunction is to prohibit further infringement*. Some Tivo fans have shown consistent capacity to ignore the law, and *cling on a few words of this particular injunction*, and *trying to shape the judge's words into something that fits their wish*, now most of them hopefully can understand why they should not take a broad injunction at it's face value and ignore the law.
> 
> Injunctions are often made to be broad to ensure their goal, the goal of prohibiting further infringement, are met. That is all. Once the goal is met, the goal of an injunction is not to continue marching on to break the law and the uniform standard established by the law.


Well, it was nice to take a break from this board for the weekend, but here we go again on Monday.

jacmyoung, I find it interesting that you point out the goal of the injunction is to prohibit further infringement, but you fail to acknowledge that the only legal ruling in place on the DP-501 etc is that they infringed and were ordered to be shut down. While you may THINK the new software patch voids the infringement, and thus the injunction, that is just your (and E*'s and their lawyers') opinion.

It is also quite amusing that you mention TiVo fans "clinging to a few words of the injunction", when it is TiVo that will be defending the literal meaning of the injunction, and E* trying to defend the "spirit" of it. E* seems to be the ones clinging to a few words to fit their needs, and avoiding the part about the Judge having jurisdiction and ordering E* to shut down their DVRs.

Does it say anywhere in the injunction that E* gets to decide to turn their DVRs back on, or is that in fact the Judge's decision?


----------



## space86

Does anybody think E* is going to be turning off are DVR's ?


----------



## scooper

Not until the next hearing, at least.

And even at that - I'd expect ONLY the DVR functions on the named units. The tuners should still remain functional.


----------



## Herdfan

space86 said:


> Does anybody think E* is going to be turning off are DVR's ?


I don't. They will write a big check before they allow that to happen.


----------



## jacmyoung

scooper said:


> Not until the next hearing, at least.
> 
> And even at that - I'd expect ONLY the DVR functions on the named units. The tuners should still remain functional.


Though there is always a chance a settlement may be reached, but short of that DISH will not shut off the DVRs, unless not only if they fail in the next meeting, but also fail on all appeals.

There lies my argument why those Tivo fans should not cling on the words of the injunction, even the words of the judge, because the judge does not have the last say, the Federal Circuit does. The prime example of it has been clearly demonstrated by the Tivo fans themselves:

They keep quoting the judge's passionate plea against the stay of the injunction during DISH's appeal, and use that as their guiding principle, but failed to mention the Federal Circuit wasted no time to deny the judge's request and stayed the injunction.

This time an even more serious issue is at stake, if DISH is found in contempt, such ruling would have defeated the long held uniform standard on contempt, that is the infringer should be allowed to legitimately workaround the patent and modify the infringing products and continue as before.

The appeals court denied the judge's passionate plea against the stay, even though the plea was very forceful and logical in my view, guess what is the likely outcome when this time around, if the judge finds DISH in contempt, the Circuit Court's long held uniform standard would be broken?


----------



## Greg Bimson

jacmyoung said:


> They keep quoting the judge's passionate plea against the stay of the injunction during DISH's appeal, and use that as their guiding principle, but failed to mention the Federal Circuit wasted no time to deny the judge's request and stayed the injunction.


Because staying an injunction is usually standard operating procedure. And somehow, procedure is interpreted as a plus for DISH/SATS.


jacmyoung said:


> This time an even more serious issue is at stake, if DISH is found in contempt, such ruling would have defeated the long held uniform standard on contempt, that is the infringer should be allowed to legitimately workaround the patent and modify the infringing products and continue as before.


Maybe. Maybe not. The above is your interpretation, while claim of a simple "prima facie" violation of an injunction is one of our arguments.


jacmyoung said:


> The appeals court denied the judge's passionate plea against the stay, even though the plea was very forceful and logical in my view, guess what is the likely outcome when this time around, if the judge finds DISH in contempt, the Circuit Court's long held uniform standard would be broken?


Passionate plea? Judge Folsom simply denied DISH/SATS plea to stay the injunction. That request was denied.

Upon appeal, most injunction orders are stayed. Heck, most of those orders are stayed by the District Court judge, but not in this case. Judge Folsom felt that the violations were egregious enough to warrant simply letting the injunction go active, since he felt there was no way for DISH/SATS to win a complete reversal. In that sense, Judge Folsom was correct.

In any case, the interpretation regarding "uniformity" could be held on a "prima facie" violation, but I notice any time this is discussed, the first rebuttal is new software. It might be considered, and it might not be.

It's for the judge to decide, and you can bet there will be an appeal, so it is also for the Court of Appeals to decide.


----------



## kmill14

jacmyoung certainly likes to embellish at times. :lol:

I don't recall him posting the three elements that are required to
prevail on a motion for civil contempt:

(1) the alleged contemnor had knowledge of the order which he is said to
have violated;
(2) the alleged contemnor did in fact violate the order; and
(3) the order violated must have been specific and definite.

Now, can they be held in contempt:

1) Did E* know about the order? *YES*
2) Did E* violate the order? Since the order was to disable the hard-drives and recording capabilities on the DVRs, the answer would be *YES*.

3) Was the order specific and definite? It was quite clear in stating that E* must disable the DVRs, and E* did not contend the wording of the injunction, so again, the answer is *YES*.


----------



## jacmyoung

Greg Bimson said:


> ...It's for the judge to decide, and you can bet there will be an appeal, so it is also for the Court of Appeals to decide.


We have a winner then!


----------



## jacmyoung

kmill14 said:


> and edited by jacmyoung:
> 
> 1) Did E* know about the order? *YES*
> 2) Did E* violate the order? Since the order was to disable the hard-drives and recording capabilities on the *Infringing* DVR *Products*, the answer would be *No*.
> 
> 3) Was the order specific and definite? It was quite clear in stating that E* must disable the *Infringing* DVR *Products*, and E* did not contend the wording of the injunction, so again, the answer is *No*.


Another interpretation that has the equal weight.

But I am not even arguing that, I assume you are correct in your interpretation, it is my belief such broad injunction will be limited by the appeals court on contempt, for reasons I will not repeat, the difference is I have all the case law and prior court opinions to support my notion.

You have none.


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## kmill14

jacmyoung said:


> Another interpretation that has the equal weight.
> 
> But I am not even arguing that, I assume you are correct in your interpretation, it is my belief such broad injunction will be limited by the appeals court on contempt, for reasons I will not repeat, the difference is I have all the case law and prior court opinions to support my notion.
> 
> You have none.


Wasn't it up to E* to appeal the wording/specifics of the injunction itself if they thought it was too broad? The Judge has clear jurisdiction in enforcing their injunctions.

However, if the Judge determines that it is not as simple as applying those three elements, TiVo will then request a ruling that the modified Infringing Products still call within the "adjudicated scope of the claims".

*******
Although the Court must look to the patent itself to determine whether the modified product infringes, previous findings of infringement can elucidate the scope of the subject claim(s). Id. at 1529. The Federal Circuit has stated that: 
* t may, in some cases, only be necessary to determine that the modified device has not been changed from the adjudged device in a way which affects an element of a claim. In such case the new device, though modified, may be treated the same as the device which was admitted or adjudged to infringe.*_
Id. That rule exists because contempt is predicated upon a finding that the modified device falls within the "adjudicated scope of the claims".
*******

http://rds.yahoo.com/_ylt=A0geu78db...ame=gorton/pdf/brine+v+stx+contempt+order.pdf_


----------



## Greg Bimson

jacmyoung said:


> But I am not even arguing that, I assume you are correct in your interpretation, it is my belief such broad injunction will be limited by the appeals court on contempt, for reasons I will not repeat, the difference is I have all the case law and prior court opinions to support my notion.


But you only have case law for newer, modified products. You don't have any case law for arguing against a "prima facie" violation.

And just so you don't think I am picking on you, the argument that DISH/SATS used in their brief to the court didn't, either. TiVo argued the "prima facie" violation, and the only case law that DISH/SATS came up with regards "modified products", and in that case the modified products were not adjudicated at that time.


----------



## kmill14

Also, it is your opinion that the injunction is broad, but it is my opinion that the injunction is quite specific in its order: DP-501, etc must have their DVR functionality disabled. 

Clearly E* is not in compliance with that order.


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## Curtis0620

Greg Bimson said:


> But you only have case law for newer, modified products. You don't have any case law for arguing against a "prima facie" violation.
> 
> And just so you don't think I am picking on you, the argument that DISH/SATS used in their brief to the court didn't, either. TiVo argued the "prima facie" violation, and the only case law that DISH/SATS came up with regards "modified products", and in that case the modified products were not adjudicated at that time.


Because, if it doesn't fit their argument, they ignore it.


----------



## Greg Bimson

But we will have an idea the way this whole contempt process will work itself out...

All we need to do is follow the Paice order. If TiVo is not given discovery on the new software after DISH/SATS addresses it in their response, then this most certainly will go in TiVo's favor.

First, TiVo will argue that DISH/SATS has violated the order on its face, by a) ignoring the disable order on the Infringing Products, b) continuing sales of prohibited DVR's (both the Infringing Products and those not colorably different) and c) placing Infringing Products to end users without disabling the DVR's.

DISH/SATS will then reply that they don't have to a) shut down Infringing Products, b) cease sales of Infringing Products and those not colorably different, and c) stop placing Infringing Products to end users without disabling the DVR's because their DVR's no longer infringe.

At that point, TiVo will need discovery to evaluate the claims DISH has made, if the court goes down that road. If the request for discovery is denied by Judge Folsom, then Judge Folsom has already made the determination, as TiVo will not have to argue the new software.


----------



## James Long

Phrase corrected:


Greg Bimson said:


> But we will have an idea the way this whole contempt process will work itself out...
> 
> All we need to do is follow the Paice order. If TiVo is not given discovery on the new software after DISH/SATS addresses it in their response, then this most certainly will go in TiVo's favor.
> 
> First, TiVo will argue that DISH/SATS has violated the order on its face, by a) ignoring the disable order on the Infringing Products, b) continuing sales of prohibited DVR's (both the Infringing Products and those not _*more than*_ colorably different) and c) placing Infringing Products to end users without disabling the DVR's.
> 
> DISH/SATS will then reply that they don't have to a) shut down Infringing Products, b) cease sales of Infringing Products and those not _*more than*_ colorably different, and c) stop placing Infringing Products to end users without disabling the DVR's because their DVR's no longer infringe.
> 
> At that point, TiVo will need discovery to evaluate the claims DISH has made, if the court goes down that road. If the request for discovery is denied by Judge Folsom, then Judge Folsom has already made the determination, as TiVo will not have to argue the new software.


If a product _*is*_ more than colorably different than the "Infringing Products" it is safe from this injunction.

The argument will be which receivers are different and which are not more than colorably different. Tivo will need discovery to add all of the receivers they want added to the list ... that discovery will open the door for DISH to prove their current receivers are more than colorably different than the infringing ones that the injunction names.

And we'll all be here in December, wishing each other a Merry Christmas and discussing the January hearing.


----------



## rocatman

I have read quite of bit of this thread and I think I have a good understanding of the arguments being made but I have a few questions whose answers might clarify the issues at hand. 

1) There have been several posts about how broad the wording of the injunction is but corrct me if I am wrong but wasn't the injuction written prior to the Appeals Court ruling which essentially remanded or overturned the verdict on the hardware claims? 

2) If the answer to question 1) is yes has Dish/SATS had an opportunity to appeal or object to the wording of the injuction since the Appeals Court ruling on the hardware claims? 

3) If the jury had not found Dish/SATS guilty of infringement on the hardware claims do you think the injunction would have been written more specifically i.e., only discussed the software and the associated DVR functions provided by that software?


----------



## Curtis0620

James Long said:


> Phrase corrected:If a product _*is*_ more than colorably different than the "Infringing Products" it is safe from this injunction.
> 
> The argument will be which receivers are different and which are not more than colorably different. Tivo will need discovery to add all of the receivers they want added to the list ... that discovery will open the door for DISH to prove their current receivers are more than colorably different than the infringing ones that the injunction names.
> 
> And we'll all be here in December, wishing each other a Merry Christmas and discussing the January hearing.


Don't forget the hardware isn't free and clear yet. They is that "Doctrine of Equivalents" hanging out there.


----------



## TexasAg

Greg Bimson said:


> If TiVo is not given discovery on the new software after DISH/SATS addresses it in their response, then this most certainly will go in TiVo's favor.


I at one time said the same thing. Unfortunately, the judge seems more than willing to stretch this out. The court said in its recent order that in the interests of "judicial economy" it will not grant Tivo discovery until after the first issue is decided on Sept. 4.

Honestly, I think the judge may be trying to force the two sides to settle. By keeping things uncertain, he increases the chances of a settlement (after all, if you are Tivo or Echo, you settle when things are uncertain).



Greg Bimson said:


> But you only have case law for newer, modified products. You don't have any case law for arguing against a "prima facie" violation.
> 
> And just so you don't think I am picking on you, the argument that DISH/SATS used in their brief to the court didn't, either. TiVo argued the "prima facie" violation, and the only case law that DISH/SATS came up with regards "modified products", and in that case the modified products were not adjudicated at that time.


Echo's new software has not been adjudicated to be infringing. And since only Tivo's software claims have been found to be infringed, I think Echo has a pretty good argument that the new software is a "new modified product."

And where exactly is the case that says new modified products are different than old modified products?



Curtis0620 said:


> Because, if it doesn't fit their argument, they ignore it.


See above. I've said the same thing before. And of the two sides, I personally believe it's the Tivo supporters that are ignoring more of the law, not the other way around (JMHO).



Curtis0620 said:


> Don't forget the hardware isn't free and clear yet. They is that "Doctrine of Equivalents" hanging out there.


Tivo would need to request a new trial for this, and they won't get any more damages even if they win (you don't get "extra" damages if someone infringes multiple claims in the same patent). At most, they could get an injunction.
__________________
My personal opinions are just that. Don't rely on them - I could be Charlie Ergen's pool boy.


----------



## spear61

TexasAg said:


> I at one time said the same thing. Unfortunately, the judge seems more than willing to stretch this out. The court said in its recent order that in the interests of "judicial economy" it will not grant Tivo discovery until after the first issue is decided on Sept. 4.
> 
> Honestly, I think the judge may be trying to force the two sides to settle. By keeping things uncertain, he increases the chances of a settlement (after all, if you are Tivo or Echo, you settle when things are uncertain).
> ......
> QUOTE]
> 
> You got it right. He hints of economy with no discovery for TIVO (for now), which could be implied to say that "economy" is to swing with TIVO ( no extra court time for discovery, etc). He may well be trying to get them to drink out of the same trough and he's a good judge if he can do that.


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## James Long

spear61 said:


> He hints of economy ...


The economy he seeks is HIS time. He apparently could not care less about either party in the case at this point ... his docket is full and he's not going to move stuff around to suit Tivo (or DISH). Perhaps the parties will work something out before they darken his doorstep, er, appear again. That probably would make him happy. Spending time on this case with virtually no agreement between parties? The judge has better things to do.


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## scooper

I believe he made note of that (how the two parties weren't agreeing on anything but a relatively small attorney's fees).


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## jacmyoung

spear61 said:


> ...You got it right. He hints of economy with no discovery for TIVO (for now), which could be implied to say that "economy" is to swing with TIVO ( no extra court time for discovery, etc). He may well be trying to get them to drink out of the same trough and he's a good judge if he can do that.


I disagree, the judge said in the 5/30 meeting several times Tivo and DISH both just could not agree at all, he even jokingly mentioned that little "good news" Tivo brought up about splitting the $300k difference as the only easy thing they managed to agree on.

Judge Folsom at that time appeared without any illusion that DISH and Tivo could ever agree on anything, and it would be up to him to determine for them.

In the latest order, the judge granted Tivo's wish to look at two contempt issues, the disabling of the DVR functions, and the placement of the new infringing DVRs. These two items will be discussed together in the 9/4 hearing. The earlier part does not need any discovery (if Tivo's fans prevail in their interpretation), the latter part does, because the discussion of any new DVRs require the assessment of the colorable difference issue. With my interpretation both parts require discovery of colorable difference issue.

Therefore he will have to grant Tivo the discovery after the hearing, even if he finds DISH in contempt of the part 1, because the part 2 still requires discovery on the new software colorable difference issue.

The only time the judge will not have to grant Tivo's discovery, is if the judge finds the DISH new software mere colorably different, based on just the evidence available so far. But that is almost impossible. Colorable difference evaluation usually requires more than what we just have so far to rule against the infringer.

With only one exception, that is if the judge finds the new software more than colorably different, he can make such decision based on just the current evidence, and then the discovery he will grant Tivo will be for the new software infringement discussion (not colorable difference), which will mean a new trial he will be granting.

I just don't think at this point the judge is still trying to have both parties to settle, he likely thought the time had passed once he saw their filings before the 5/30 meeting.


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## James Long

The placing new that Tivo was complaining about was replacing old receivers when they die. DISH wanted to keep a pool of receivers for immediate replacement when people have an issue with old receivers and do exchanges instead of repairing the "placed" receivers. Tivo considered that "new placements". This question is not one discovery is needed for.


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## kmill14

jacmyoung/TexasAG,

This was brought up on another board, and I am curious as to your argument against it:

Lets say E*'s new software is ruled on and is deemed as only colorably different and/or still infringing. The injunction goes back in effect, right? What happens if E* issues another software patch and says THIS software isn't infringing...its ruled on...deemed only colorably different, and/or still infringing...the injunction is turned back on...and E* issues another software patch and says THIS software isn't infringing...

Given that E* stipulates that it can change the processes of a product itself, what stops this potentially endless cycle?


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## scooper

Nothing -

Except maybe the judge.


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## James Long

The ruling Tivo needs is that the DVRs must be shut off regardless of software. That doesn't help them with newer receivers, which must be ruled "not more than colorably different" by the judge. (That decision is unlikely to come in September due to it being a complicated question.)

The ruling DISH needs is that changing software makes a non-infringing DVR out of an infringing one. Which could be accepted in principle with DISH given time to prove that the new software doesn't really infringe. The principle needs to be accepted first.


----------



## TexasAg

kmill14 said:


> jacmyoung/TexasAG,
> 
> This was brought up on another board, and I am curious as to your argument against it:
> 
> Lets say E*'s new software is ruled on and is deemed as only colorably different and/or still infringing. The injunction goes back in effect, right? What happens if E* issues another software patch and says THIS software isn't infringing...its ruled on...deemed only colorably different, and/or still infringing...the injunction is turned back on...and E* issues another software patch and says THIS software isn't infringing...
> 
> Given that E* stipulates that it can change the processes of a product itself, what stops this potentially endless cycle?


The injunction is always in effect. Echo will be subject to the injunction until Tivo's patent expires. That said, each time Echo issues new software that is not "more than colorably different," they can be held in contempt. They also have to pay Tivo for the continued infringement (likely tripled due to willful infringement and attorney's fees added). The law on this is pretty clear - Echo is entitled to try and design around Tivo's patent and not be held in contempt for each attempt.
__________________
My personal opinions are just that. Don't rely on them - I could be Charlie Ergen's pool boy.


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## Curtis52

TexasAg said:


> The law on this is pretty clear - Echo is entitled to try and design around Tivo's patent and not be held in contempt for each attempt.





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


.
.


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## TexasAg

Curtis52 said:


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


Echo cannot be held in contempt for each and every attempted design-around - only those that are not "more than colorably different." The law on that is quite clear.
__________________
My personal opinions are just that. Don't rely on them - I could be Charlie Ergen's pool boy.


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## kmill14

TexasAg said:


> Echo cannot be held in contempt for each and every attempted design-around - only those that are not "more than colorably different." The law on that is quite clear.


Is there a standard for "more than colorably different?"

Does being more than colorably different = non-infringing, or can it be more than colorably different and still infringe?

Can this new software be more than colorably different and then later be determined to infringe?


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## dave1234

From tonights Charlie Chat: "By the end of the summer, MPEG2's going to be turned off."

Does this mean Dish will be disabling all the receivers named in the injunction anyway? So what if at the next hearing Dish tells the judge they've disabled all the devices named in the injunction(and Tivo doesn't disagree). Where does that leave Tivo going forward? Dish still owes some damages I assume.


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## James Long

They were referring to MPEG2 HD ... there will still be MPEG2 SD for a while longer.


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## scooper

That makes more sense...


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## peak_reception

kmill14 said:


> Is there a standard for "more than colorably different?"


 This is a key question imo. Taking the words literally, *any* change beyond changing colors (i.e. no change at all) meets the threshhold. So just the fact that Echo has modified the software at all meets the (non)standard. I don't think that was the _intent_, but that is the standard as written.



> Does being more than colorably different = non-infringing, or can it be more than colorably different and still infringe?


 Of course it can be more than colorably different and still infringe.



> Can this new software be more than colorably different and then later be determined to infringe?


 Yes.


----------



## dave1234

James Long said:


> They were referring to MPEG2 HD ... there will still be MPEG2 SD for a while longer.


Thanks for the clarification.


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## dgordo

Colorably different standard-
If two devices do the same work in substantially the same way, and accomplish substantially the same result, they are the same, even though they differ in name, form, or shape.

Graver Tank & Mfg. Co. v. Linde Air Products Co., 339 U.S. 605, 608, 70 S.Ct. 854, 856, 94 L.Ed. 1097 (1950)


----------



## Greg Bimson

kmill14 said:


> Is there a standard for "more than colorably different?"
> 
> Does being more than colorably different = non-infringing, or can it be more than colorably different and still infringe?
> 
> Can this new software be more than colorably different and then later be determined to infringe?


But if I am not mistaken, so someone correct me if I am wrong, it is colorably different from the claims which were infringed.

The one case I remember about colorably different while researching some backup material is the manufacturing and sales of a screw to hold skull fragments together. The first screw was short and found to infringe, so an injunction was issued. A second screw was longer, and had a different task, so the product was colorably different than the original screw. That required a trial and, yes, that product was also found to infringe.

Part of the "colorably different" issue is that the product in question here contains the Time Warp patent. What DISH/SATS old software does and what the new software does may be colorably different, since the new software also does what the hardware used to do. However, it is still a method for manipulating playback and recording, the claim that was infringed, so I don't honestly know if it is "more than colorably different".

Onto a different track:


rocatman said:


> I have read quite of bit of this thread and I think I have a good understanding of the arguments being made but I have a few questions whose answers might clarify the issues at hand.
> 
> 1) There have been several posts about how broad the wording of the injunction is but corrct me if I am wrong but wasn't the injuction written prior to the Appeals Court ruling which essentially remanded or overturned the verdict on the hardware claims?
> 
> 2) If the answer to question 1) is yes has Dish/SATS had an opportunity to appeal or object to the wording of the injuction since the Appeals Court ruling on the hardware claims?
> 
> 3) If the jury had not found Dish/SATS guilty of infringement on the hardware claims do you think the injunction would have been written more specifically i.e., only discussed the software and the associated DVR functions provided by that software?


1) Yes.

2) The time to ask for a review of the injunction was upon judgment and appeal, not after the injunction is in effect. In other words, DISH/SATS needed to address the Court of Appeals with the possible outcomes, and ask for specific remedies before the ruling would have come down. Now, DISH/SATS cannot argue a change to an active injunction.

3) The _models_ were found to infringe, not the software. It is difficult to tell in what manner the injunction would have been written if only the software was found to infringe.


----------



## peak_reception

dgordo said:


> Colorably different standard-
> If two devices do the same work in substantially the same way, and accomplish substantially the same result, they are the same, even though they differ in name, form, or shape.
> 
> Graver Tank & Mfg. Co. v. Linde Air Products Co., 339 U.S. 605, 608, 70 S.Ct. 854, 856, 94 L.Ed. 1097 (1950)


 Thank you dgordo. I stand corrected and appreciate it. I wasn't aware that it had been defined as such. We still have the problem of what constitutes "substantially the same" but it's more substantive than 'merely or more than' simply changing colors.


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## jacmyoung

kmill14 said:


> Is there a standard for "more than colorably different?"
> 
> Does being more than colorably different = non-infringing, or can it be more than colorably different and still infringe?
> 
> Can this new software be more than colorably different and then later be determined to infringe?


The standard for more than colorably different is quite low, according to the latest case law DISH cited, two devices must be "essentially the same" to be only colorably different.

Others already answered your next questions. DISH in theory can always make changes to the software, as long as the changes are more than colorable, they may not be in contempt, but if the changes are later found to still infringe, DISH will be liable for damages and fines while doing those changes and be faced with new injunctions.

James has corrected my interpretation of the "new products" to be discussed in the next hearing, if true the next meeting will be quick and dirty, a simple interpretation of what the "disabling the DVR functions of the Infringing Products" mean.

The quickest way for the judge to "wash his hands off" will be to not find DISH in contempt, then he can even deny Tivo's motion for a limited discovery and suggest Tivo to file a new lawsuit. And he will just have to take care of the last remaining enchanced damages item during the stay of the injunction and be done with it in time for Christmas.

Anything other than that will mean long delay and hearing more arguments from DISH and Tivo.


----------



## jacmyoung

Greg Bimson said:


> But if I am not mistaken, so someone correct me if I am wrong, it is colorably different from the claims which were infringed...
> 
> Part of the "colorably different" issue is that the product in question here contains the Time Warp patent. What DISH/SATS old software does and what the new software does may be colorably different, since the new software also does what the hardware used to do. However, it is still a method for manipulating playback and recording, the claim that was infringed, so I don't honestly know if it is "more than colorably different"...


The mistake you have is the use of the term "colorably different", this term is almost never used, rather the terms "more than colorably different," "only colorably different," or "mere colorably different" are used.

Using your example of the screws, the short screw infringed, the longer screw was "more than colorably different" because it was longer, so the infringer was not in contempt. But later the longer screw was found to infringe, therefore the infringer infringed again. He was never in contempt, just continued to infringe and was liable as a result.

The new software will almost certainly be more than colorably different than the old software, because they have entirely different codes. The new software may still infringe on the Tivo patent, that will have to be answered in a new suit.


----------



## phrelin

But the screws were Phillips head. So they've listed for disabling all Phillips head screwdrivers.


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## peak_reception

phrelin said:


> But the screws were Phillips head. So they've listed for disabling all Phillips head screwdrivers.


 In that case, at the contempt hearing, the judge could simply state to the contemnor, "You're Screwed!" :sure: sorry, couldn't resist.


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## phrelin

peak_reception said:


> In that case, at the contempt hearing, the judge could simply state to the contemnor, "You're Screwed!" :sure: sorry, couldn't resist.


!rolling


----------



## jacmyoung

peak_reception said:


> In that case, at the contempt hearing, the judge could simply state to the contemnor, "You're Screwed!" :sure: sorry, couldn't resist.


Or the judge can say to the patentee, sorry, his screwdriver is bigger than yours, he gets to keep it, go screw yourself


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## kmill14

jacmyoung said:


> The mistake you have is the use of the term "colorably different", this term is almost never used, rather the terms "more than colorably different," "only colorably different," or "mere colorably different" are used.
> 
> The new software will almost certainly be more than colorably different than the old software, because they have entirely different codes. The new software may still infringe on the Tivo patent, that will have to be answered in a new suit.


But the injunction is not on the software inside the DVR per say, it is on the DVR itself for infringing on the SW claims within time-warp patent, hence the time-warp patent itself.

Dish had asked for the wording in the injunction to be specific to the "infringing software", TiVo argued against it (for fear that Dish would just download "new" software...heh) and the Judge agreed with TiVo.

The SW claims though describe a process for recording and manipulating audio and video...at least in my layman's mind. The colorably different standard will be judged on whether the process created by this new software is more than colorably different than the original process.


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## nobody99

On thing that some of you may be misunderstanding is that there is no "standard" that says that Judge Folsom must follow when deciding contempt on a previously-adjudged and previously-sold device. There is no law to support the idea that he has to apply the "more than colorably different" standard to the "turn off DVR functions." The "standard" is when determining if a non-adjudged device should be covered by the injunction. The law is clear on this point.

http://www.ll.georgetown.edu/federal/judicial/fed/opinions/04opinions/04-1014.html



> Indeed, by its terms the injunction applies to "any device" made or sold by IXYS that is within the scope of the patent claims. The actual scope of the injunction cannot be that expansive, however, because this court has held that "*contempt proceedings . . . are available only with respect to devices previously admitted or adjudged to infringe*, and to *other devices which are no more than colorably different therefrom* and which clearly are infringements of the patent." KSM, 776 F.2d at 1526.


Virtually every injunction issued after the KSM case seems to include the "not more than colorably different" language -- but only with respect to "other devices not more than colorably different." The TiVo injunction is no different.

Later,



> IXYS contends that as a matter of fairness contempt proceedings should be unavailable *with respect to pre-judgment devices not accused of infringement* in the underlying action, and thus such devices should be affirmatively excluded from the scope of an injunction. This court has never so held, and we decline to do so now. If in the future IR chooses to bring a contempt action against IXYS's modified products, *the district court at that time must determine whether contempt proceedings are appropriate by applying the standard established by this court in KSM.*


So there are two competing issues here that it all boils down to:

1) Does "modified products" include automatically, without any say of the court and without any language in the injunction allowing it, remove those products as devices "previously adjudged to ifringe" when new software is loaded? (as DISH fans propose)

2) Or does "modified products" mean that a company has every right to redesign a product and offer it for sale again without the undue burden of contempt hearings? (As TiVo fans propose)

Whether or not this case sets precedence of some sort, or whatever happens in this case, it would seem to me that it's going to happen more and more frequently where a field-modifiable device is subject to an injunction. Since both sides have valid arguments, it's hard to argue against either side.

But I would think that a fair compromise would be that the court should make the "more than colorably different" determination before removing a device from a list of infringing devices. If DISH had made a motion at the moment the injunction issued saying "please rule on this new software" the judge could do so. If it was not more than colorably different, the injunction stands. If it is, DISH loads it on the devices, and TiVo can decide to pursue it in another trial.

By the way, jacmyoung, I have taken you off ignore. I don't think you realize how presumptious you come across sometimes.


----------



## Greg Bimson

I'm guessing the best example of this is...

Is a 501 with old software more than colorably different from a 501 with new software? They both do exactly the same thing, store programs for later viewing as well as the ability to pause and "trick play" TV.

So the fact that new software may be "colorably" different doesn't necessarily make the product "more than colorably different". The models still do pretty much the same things as they did before, just with updated software.


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## nobody99

Greg Bimson said:


> I'm guessing the best example of this is...
> 
> Is a 501 with old software more than colorably different from a 501 with new software? They both do exactly the same thing, store programs for later viewing as well as the ability to pause and "trick play" TV.
> 
> So the fact that new software may be "colorably" different doesn't necessarily make the product "more than colorably different". The models still do pretty much the same things as they did before, just with updated software.


I'm not sure that's all that great an example. From the court's perspective, I would think that a named, infringing device is still infringing until the court says otherwise (i.e., those in the field).

But a device newly offered for sale, with a different model number and different software was not explicitly named in the injunction would get past the injunction if it were "more than colorably different."

Let's say I'm found guilty of theft. Somebody comes forward with a video tape that _clearly_ shows that it was, in fact, some other guy, who is later caught and confesses. Once he has confessed, do the guards just let me out of jail or do they have to wait for an order from the court?


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## James Long

Same function but different process. Perhaps the judge will be more open minded about the issue and see that permanently barring DISH from offering any DVR at all would be an unfair decision. Perhaps not.

In the recent communications it doesn't appear he has a favorite "side" ... one side cooperating more than the other with the court. Both sides could do more to make Judge Folsom happy.


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## James Long

nobody99 said:


> Let's say I'm found guilty of theft. Somebody comes forward with a video tape that _clearly_ shows that it was, in fact, some other guy, who is later caught and confesses. Once he has confessed, do the guards just let me out of jail or do they have to wait for an order from the court?


They wait for the court ... but if perchance you escape before the official release you may get credit for time served off of your escape conviction. 

In other words, if the "Infringing Product" is found to be non-infringing as of a new software date (or "more than colorably different" forcing a new trial) there could be forgiveness for DISH continuing to operate the now non infringing DVRs on their system.


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## TexasAg

Greg Bimson said:


> I'm guessing the best example of this is...
> 
> Is a 501 with old software more than colorably different from a 501 with new software? They both do exactly the same thing, store programs for later viewing as well as the ability to pause and "trick play" TV.
> 
> So the fact that new software may be "colorably" different doesn't necessarily make the product "more than colorably different". The models still do pretty much the same things as they did before, just with updated software.


The "more than colorably different" standard is used to compare the new or modified product with the original product found to infringe. In order to be "more than colorably different," the differences between the two products must relate to the claims found to be infringed. I mentioned before how if Echo's software procedures A-E infringed Tivo's software claims, Echo couldn't change procedure F and say the new software is more than colorably different. The changes must relate to the claims in Tivo's patent.

That said, you can't look at the end functionality here (the functionality visible to the end user). You have to look at Tivo's claims and see if the new software does something more than colorably different with respect to those claims, compared to the old software.

Tivo's software claims talk about a lot of things not actually visible to a user. The claim actually requires 4 different objects (source, transform, sink, and control objects). The claim requires the source, transform, and sink objects to receive "flow command events". The claim requires the source object to obtain a buffer from the transform object. The claim says that the transform object is used to flow control the sink object or the source object.

In Echo's press release about the new software, they say that they eliminated flow control (I believe). If that's true, I would expect the new software is more than colorably different since (i) the old software performed flow control (it had to in order to infringe) and (ii) the flow control is related to Tivo's software claim.
__________________
My personal opinions are just that. Don't rely on them - I could be Charlie Ergen's pool boy.


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## kmill14

TexasAg said:


> The "more than colorably different" standard is used to compare the new or modified product with the original product found to infringe.


Yes, but in all prior cases cited in this thread, "modified products" (which are allowed to have the "colorably different" comparison) were not ALSO the "original products" already in the hands of the consumer/purchaser.

The assumption in all prior court cases is that "modified" or "new" products were not products already distributed to consumers/purchasers at the time of the original verdict. The "original products" are and always will be the "original products", and those were ordered to be shut off.


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## Curtis52

nobody99 said:


> I'm not sure that's all that great an example. From the court's perspective, I would think that a named, infringing device is still infringing until the court says otherwise (i.e., those in the field).


The modified DVRs were never enjoined in the first place if they are more than colorably different from the adjudicated DVRs.



> "devices which could not be enjoined as infringements on a separate complaint cannot possibly be deemed enjoined as infringements under an existing injunction in contempt proceedings. Accord MAC Corp. of America, 767 F.2d at 886, 226 USPQ at 518"


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## kmill14

Curtis52 said:


> The modified DVRs were never enjoined in the first place if they are more than colorably different.


What is a "modified DVR"? Certainly you don't claim that a *software patch *to products: DP-501; DP-508; DP-510; DP-522; DP-625; DP-721; DP-921; and the DP-942 *"that have been placed with an end user or subscriber*"

suddenly makes it "modified" and not subject to an injunction, do you? Please cite something in the injunction or another court case that allows for that. Until you can, only order in hand is that these products are to be shut down.

The only person who gets to make that determination by the way is Judge Folsom, not E*, which is reason enough to find them in contempt. You don't get to walk out of jail before the court says you can.


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## jacmyoung

nobody99 said:


> ...By the way, jacmyoung, I have taken you off ignore. I don't think you realize how presumptious you come across sometimes.


While you continue to judge me, you probably will not find anything I said about you been judgmental, rather stating the facts and your words as what they were.

You made a very good point. Traditionally infringing products in the end users' hands were almost never the scope of the injunctions, simply because including them in the injunction will constitute unreasonable burden on the public (this is only my opinion BTW), because the products would have been recalled, and the method of which would be impractical to enforce. The courts had decided to seek reasonable ways to prohibit further infringement, such as not allowing the infringer to continue to distribute the same infringing products, something manageable without exposing end users to unfair consequences. At the same time, the infringers have always been allowed to use the rather less-than-convenient way to again modify the infringing products and continue as before.

In this case, as well as similar ones, there is a unique and simple method to disable the infringing products in the end users hands, the reason such method was considered reasonable by the court, was because it does not pose unreasonable burden on the infringer and on the end users as in the conventional ways, so the benefit of such method goes to the winning patentee. The question is, if a simple method is allowed to disable an infringing product for the benefit of the patentee, is it fair not to allow the infringer to use the same simple method to modify the infringing product and continue as before?

Thank about it, traditionally, the courts have always given the infringers/public the benefit of not having to be burdened by the more difficult methods when it came to infringing products in the field, yet allowed the infringers to use such more difficult methods to modify and continue as before.

Does it make sense to you now the court decided the simple method may be used to disable the infringing products, yet such same simple method will not be afforded to the infringer to modify and continue as before? Can you not see the lack of equity in the two approaches?

Let's not keep bringing all the arguments made before the injunction was in full force, such as DISH proposed the modification method to avoid the injunction, and the judge argued passionately against the stay of the injunction during the appeal.

That phase has passed. We are now in the contempt phase, an entirely different phase, during which the appeals court, not the judge, will determine the outcome on contempt. It will be up to the appeals court to decide on all the issues from now on, on contempt, if DISH is found in contempt.

So my point is, our focus must now shift to the Federal Circuit, and find out what this court has done in the past and what standards they must uphold, not what the district court's standards and approach.

While it may appear to many of you DISH is arguing in front of the district court judge, they in fact are arguing in front of the Circuit Court, at least setting the stage for such audience to come. IMHO, DISH should be very confident that they can prevail at the Circuit Court level, if the District Court finds them in contempt.

The evidence at the Circuit Court level are plenty, what the Federal Circuit has done in the past was exactly what the expert in this field had concluded, that the primary goal of the Circuit Court is to ensure the uniform standards on contempt are met. The Circuit Court is not in the business to tell the district judges what they should or should not do, the Circuit Court is only interested in upholding the uniform standards applied in such cases, and one of which is that the infringer must be allowed to workaround the infringed patent and continue as before without the threat of contempt. There is no limitation as far as how, when and on what infringing products the infringer may modify, the infringer can modify anything and to continue as before, as long as the modified products are more than colorably different than the infringing products, the infringer shall not be in contempt.


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## nobody99

Let's revisit this whole concept of the "standard" that is supposedly used that jacmyoung and TexasAG say is the law. The language of "more than colorably different" is important when writing the injunction, not when deciding contempt. There seems to be the idea that the language of the injunction doesn't matter, and the only thing that matters is that the devices are different. Well, not according to INTERNATIONAL RECTIFIER CORPORATION v. IXYS, which I quoted earlier.



> IR asserts that it is unnecessary to expressly limit an injunction to devices found to infringe and those not more than colorably different therefrom because, regardless of the precise language used, a district court, applying Federal Circuit law, will interpret an injunction to be so limited in a contempt proceeding. That argument misses the point. *The question before us is not how to deal with enforcement of an overly broad injunction that has previously issued, but how to insure that overly broad injunctions do not issue in the first instance.*


Judge Folsom wrote the injunction. He'll be the one that decides contempt. I don't think he's confused about his own intent.

However, what is open to interpretation is if an appeals court will decide that the original injunction was overly broad if contempt is found. It will also be important to see if the injunction will be stayed during an appeal. I just don't see any way that Folsom doesn't find DISH in contempt for the eight named DVRs.


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## nobody99

jacmyoung said:


> While you continue to judge me, you probably will not find anything I said about you been judgmental, rather stating the facts and your words as what they were.


Yeah, ok. Whatever.



jacmyoung said:


> I don't think continuing with nobody99 is helpful, he obviously has no interest in understanding the law and the intent of an injunction


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## nobody99

jacmyoung said:


> While it may appear to many of you DISH is arguing in front of the district court judge, they in fact are arguing in front of the Circuit Court, at least setting the stage for such audience to come. IMHO, DISH should be very confident that they can prevail at the Circuit Court level, if the District Court finds them in contempt.


Wow, you have an interesting way of admitting defeat. Up until now, you didn't think that DISH would be held in contempt. But now you seem all but certain that they will be helpd in contempt.

Why did you change your mind?


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## kmill14

jacmyoung said:


> .
> 
> the Circuit Court is only interested in upholding the uniform standards applied in such cases, and one of which is that the infringer must be allowed to workaround the infringed patent and continue as before without the threat of contempt. There is no limitation as far as how, when and on what infringing products the infringer may modify, the infringer can modify anything and to continue as before, as long as the modified products are more than colorably different than the infringing products, the infringer shall not be in contempt.


Talk about word diarrhea!

Anyway, you say that the CC is only interested in upholding uniform standards...is it your opinion that one such uniform standard is that the infringer can modify a product already deemed to have been infringed and been placed in the hands of the end user and "continue on??"

Please cite something that shows this uniform standard.

I've cited rules on contempt procedures that state three elements must be met:

(1) the alleged contemnor had knowledge of the order which he is said to have violated;
(2) the alleged contemnor did in fact violate the order; and
(3) the order violated must have been specific and definite.

I can argue that all 3 of these elements have been met.

I don't think you have cited anything that supports your feeling that a distributed product deemed to have infringed and ordered disabled can be altered and the order to disable ignored.


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## TexasAg

nobody99 said:


> Wow, you have an interesting way of admitting defeat.


Let's not get ahead of ourselves. Assuming we make it to Sept. 4 without a settlement, the trial judge's decision likely won't be the final word. The losing side (whichever side it is) can appeal and, among other things, argue that the trial judge used the wrong standard in the contempt hearing on Sept. 4. So in other words, unless a settlement occurs, be prepared for a lengthy wait before we know the final answer on this.
__________________
My personal opinions are just that. Don't rely on them - I could be Charlie Ergen's pool boy.


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## James Long

Word diarrhea? This is post 1596 of at least the fourth or fifth thread on the matter.
Being wordy is par for the course! 

Let's try to talk about the topic and keep the jabs out of the thread for a while. OK?
(This applies to all ...)

:backtotop


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## nobody99

TexasAg said:


> Let's not get ahead of ourselves. Assuming we make it to Sept. 4 without a settlement, the trial judge's decision likely won't be the final word. The losing side (whichever side it is) can appeal and, among other things, argue that the trial judge used the wrong standard in the contempt hearing on Sept. 4. So in other words, unless a settlement occurs, be prepared for a lengthy wait before we know the final answer on this.


Which is exactly what I said in a previously post. I'm just saying that jacmyoung sure has changed his tune about the chances of contempt


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## jacmyoung

nobody99 said:


> Wow, you have an interesting way of admitting defeat. Up until now, you didn't think that DISH would be held in contempt. But now you seem all but certain that they will be helpd in contempt.
> 
> Why did you change your mind?


I while I have changed my mind in the past when I admitted wrong, I did not this time. It is still my belief the judge likely will not find DISH in contempt, all I was saying is if I only give an inch and allow my opponents an upper hand, let's say you win on the district court level, I am confident DISH can prevail at the appeals court level.

The funny thing is you somehow believe as long as you get what you want at the district court level, you will win. As if there is no appeal process. If this is how the Tivo fans cling things on, then it is truly sticking one's head in the sand, for not recognizing the fact there is this thing called the Federal Circuit Court.

And this is not being judgmental, rather statement of fact.


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## jacmyoung

kmill14 said:


> Talk about word diarrhea!
> 
> ...I've cited rules on contempt procedures that state three elements must be met:
> 
> (1) the alleged contemnor had knowledge of the order which he is said to have *complied*;
> (2) the alleged contemnor did in fact violate the order; and
> (3) the order violated must have been specific and definite.
> 
> I can argue that all 3 of these elements have been met.
> 
> I don't think you have cited anything that supports your feeling that a distributed product deemed to have infringed and ordered disabled can be altered and the order to disable ignored.


And you simply ignored my response to your three pointers, in which based on our interpretation, the answers to your three items are (wth modification in bold): Yes, No, and Yes, not as you supposed. You simply framed your questions to lead to your favorable answers, assumed yours were the only possible answers, we are saying NOT.

And I don't think you have cited anything to support your notion that a distributed product deemed to have infringed and ordered disabled can NOT be modified and therefore kept out of the scope of the injunction.

In fact in almost all other cases, the infringing products under injunction are allowed to be modified, no matter in whose hands, that much is clear. The law never imposed limitation on the infringer as what infringing products he may or may not modify and continue as before. The infringer has never been asked to seek permission, ever, before modifying his products, any products.


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## jacmyoung

TexasAg said:


> ...So in other words, unless a settlement occurs, be prepared for a lengthy wait before we know the final answer on this.


It will actually not be a good scenario for Tivo if DISH is found in contempt and the appeal process drags out long and hard, because not only it will be almost certain the contempt will be overturned according to all past case law, but even if for argument sake the ruling is eventually upheld after appeals, it would likely be another 6 months even a year, by that time most of the old DVRs could possibly be all replaced anyway. The threat of the injunction will be gone at that point. DISH will have to pay more damages, but apparently paying damages is not going to kill DISH, it is the removal of the existing services DISH wants to avoid, or needs time to avoid.


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## nobody99

jacmyoung said:


> The funny thing is you somehow believe as long as you get what you want at the district court level, you will win. As if there is no appeal process. If this is how the Tivo fans cling things on, then it is truly sticking one's head in the sand, for not recognizing the fact there is this thing called the Federal Circuit Court.
> 
> And this is not being judgmental, rather statement of fact.


Really. Interesting "statement of fact." Here's a post from me earlier today:



nobody99 said:


> However, what is open to interpretation is if an appeals court will decide that the original injunction was overly broad if contempt is found. It will also be important to see if the injunction will be stayed during an appeal. I just don't see any way that Folsom doesn't find DISH in contempt for the eight named DVRs.


So if "there is no appeal process" what exactly is it that I am talking about?


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## nobody99

jacmyoung said:


> In fact in almost all other cases, the infringing products under injunction are allowed to be modified, *no matter in whose hands, that much is clear.*


I'm sorry, did you earlier say that TiVo users were burying their heads in the sand? :lol:


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## kmill14

jacmyoung said:


> *And I don't think you have cited anything to support your notion that a distributed product deemed to have infringed and ordered disabled can NOT be modified and therefore kept out of the scope of the injunction.*
> 
> In fact in almost all other cases, *the infringing products under injunction are allowed to be modified, no matter in whose hands, that much is clear*. The law never imposed limitation on the infringer as what infringing products he may or may not modify and continue as before. The infringer has never been asked to seek permission, ever, before modifying his products, any products.


I haven't cited anything, because this type of case has not been in the courts before. So again, it comes back to the Judge's wording of the injunction, which is quite clear (to disable the DVRs).

There is no law (or prior case history) that states infringing products distributed to the end user are allowed to be modified and usage continued. Again, it comes back to the order by the Judge of this case that stated they must all be disabled.

As far as the infringer seeking permission, well since the DVRs in question are in the Judge's jurisdiction, and he told E* to turn them off, not asking for permission before ignoring the order certainly makes it easier to find E* in contempt.

You seem to think the Judge's order was not violated:

*****
Defendants are hereby FURTHER ORDERED to, within thirty (30) days of the issuance of this order, disable the DVR functionality (i.e., disable all storage to and playback from a hard disk drive of television data) in all but 192,708 units of the [products DP-501; DP-508; DP-510; DP-522; DP-625; DP-721; DP-921; and the DP-942] that have been placed with an end user or subscriber.
*****

Please tell me how this order has NOT been violated.


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## kmill14

jacmyoung said:


> It will actually not be a good scenario for Tivo if DISH is found in contempt .....


Thats just strange...


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## kmill14

Why is it that E*, in their Delaware lawsuit, attached the TiVo "time-warp" patent, but did not attach their own "novel" software's "patent" filing (describing their patent in detail)? 

Even in their response in Texas court, they only included a set of company-hired lawyer opinions and not the complete description of the "novel" software as is in their patent filing. I wonder why...


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## TexasAg

kmill14 said:


> Why is it that E*, in their Delaware lawsuit, attached the TiVo "time-warp" patent, but did not attach their own "novel" software's "patent" filing (describing their patent in detail)?
> 
> Even in their response in Texas court, they only included a set of company-hired lawyer opinions and not the complete description of the "novel" software as is in their patent filing. I wonder why...


Because Echo doesn't want to disclose the details to its competition just yet.

I don't think the Echo patent application has been published, which means no random person or competitive company can go take a look at it. I would bet there were restrictions on who could see Echo's code at Tivo, and I would almost guarantee that Tivo was restricted from taking the code and using it competitively against Echo. There will likely be evidence introduced in a court describing the Echo software, but that won't happen soon. So at this point, Echo is simply making sure that the details of its code remain hidden from the competition for as long as possible.
__________________
My personal opinions are just that. Don't rely on them - I could be Charlie Ergen's pool boy.


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## kmill14

TexasAg said:


> Because Echo doesn't want to disclose the details to its competition just yet.
> 
> I don't think the Echo patent application has been published, which means no random person or competitive company can go take a look at it.


http://appft1.uspto.gov/netacgi/nph...&S1=20080056682&OS=20080056682&RS=20080056682

*****
Method and apparatus for receiving, storing, and presenting multimedia programming without indexing prior to storage

Abstract
A method and apparatus for improved digital recording and presentation of broadcast information is disclosed. Received broadcast data, which may include video, audio, private, or other data, relating to one or more particular content programs, is presented from an input section to a buffer and recorded directly onto a storage device without any intelligent parsing, such as indexing, and without any manipulation by intermediate hardware or software functions. Upon normal presentation, statistics are generated to determine the ideal number of frames to skip, the number of bytes to seek, and the size of data files to read from storage during time-shifted presentation. Algorithms and processes are provided to dynamically optimize time-shifted presentation. In this way, data may be captured to the storage device more efficiently and economically, and the time-shifted presentation operations can easily be performed in a smoother, more nuanced manner with the application of appropriate probabilistic algorithms.

*****


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## kmill14

It seems like they wrote this patent description specifically to avoid infringement on TiVo's patent...how funny.


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## scooper

Do you have a better way to get it ruled as "non-infringing - no prior art" ?


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## TexasAg

kmill14 said:


> http://appft1.uspto.gov/netacgi/nph...&S1=20080056682&OS=20080056682&RS=20080056682


Then no, I don't know why Echo didn't attach a copy. It's possible they either (i) currently do a subset of what's listed in the application or (ii) don't do exactly what is shown in the patent application.
__________________
My personal opinions are just that. Don't rely on them - I could be Charlie Ergen's pool boy.


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## jacmyoung

kmill14 said:


> ...*****
> Defendants are hereby FURTHER ORDERED to, within thirty (30) days of the issuance of this order, disable the DVR functionality (i.e., disable all storage to and playback from a hard disk drive of television data) in all but 192,708 units of the *Infringing* *P*roducts DP-501; DP-508; DP-510; DP-522; DP-625; DP-721; DP-921; and the DP-942] that have been placed with an end user or subscriber.
> *****
> 
> Please tell me how this order has NOT been violated.


You are the master of manipulation of even the judge's own words, see above omission.

Since the current DP-501... are no longer infringing, they are outside of the scope of the above injunction.


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## jacmyoung

kmill14 said:


> Thats just strange...


Only if you take it out of the context.


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## jacmyoung

kmill14 said:


> It seems like they wrote this patent description specifically to avoid infringement on TiVo's patent...how funny.


Not funny at all, that was precisely the reason, what else do you think is the purpose? Charlie suddenly wanted to spend a big pile of money on a bunch of engineers out of charity?


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## nobody99

jacmyoung said:


> because not only it will be almost certain the contempt will be overturned according to all past case law


Please cite one single case where an adjudicated, infringing device already in the hands of a customer was cited for contempt which was later overturned.

One case. It can't be that hard. I assume by "all past case law" you mean there are plenty of examples. But, for giggles, give me one example.


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## kmill14

jacmyoung said:


> You are the master of manipulation of even the judge's own words, see above omission.
> 
> Since the current DP-501... are no longer infringing, they are outside of the scope of the above injunction.


The title "Infringing Products" is just a title to lump the DP-501; DP-508; DP-510; DP-522; DP-625; DP-721; DP-921; and the DP-942 all together.

As has been argued here before, the Judge could have called them "Broke-the-Law Products", and it would have been just as accurate.

The point is, products DP-501; DP-508; DP-510; DP-522; DP-625; DP-721; DP-921; and the DP-942 placed with an end user have been ordered to be turned off, and E* is ignoring that order.

9/4 should be fun.


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## Greg Bimson

jacmyoung said:


> Since the current DP-501... are no longer infringing, they are outside of the scope of the above injunction.


Really?


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## Greg Bimson

TexasAg said:


> Then no, I don't know why Echo didn't attach a copy. It's possible they either (i) currently do a subset of what's listed in the application or (ii) don't do exactly what is shown in the patent application.


SATS has filed an application for a patent. That has no bearing on whether or not DISH/SATS is violating the Time Warp patent. Which means it has no bearing on DISH/SATS trying to get a declaratory judgment of non-infringement, since only the infringement of TiVo's Time Warp patent matters.

Imagine what happens if the PTO comes out and says that the DISH/SATS application is approved as an "improvement" patent.


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## kmill14

Greg Bimson said:


> Really?


I suppose since it doesn't say "Merely Colorably Different Products", that jacmyoung will now stop his argument regarding their ability to become "more than colorably different" Products.

And he says I am the master manipulator, but he along with E* chooses to put words in Judge Folsom's mouth by saying those products already in subscriber hands no longer infringe.


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## Herdfan

jacmyoung said:


> The Circuit Court is not in the business to tell the district judges what they should or should not do, the Circuit Court is only interested in upholding the uniform standards applied in such cases,


Yet, the CC in your state (9th Circus) seems to take pride in doing their own thing regardless of decisions made by other Circuits.


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## TexasAg

Greg Bimson said:


> SATS has filed an application for a patent. That has no bearing on whether or not DISH/SATS is violating the Time Warp patent. Which means it has no bearing on DISH/SATS trying to get a declaratory judgment of non-infringement, since only the infringement of TiVo's Time Warp patent matters.


Unless the patent application describes Echo's current approach, which is clearly relevant to whether they infringe Tivo's patent. And by the sounds of it, the Echo application attempts to distinguish itself from the Tivo patent, which is also clearly relevant to whether they infringe Tivo's patent.



Greg Bimson said:


> Imagine what happens if the PTO comes out and says that the DISH/SATS application is approved as an "improvement" patent.


They won't. They never say anything is an "improvement" patent over something else (unless Echo put that in the application, which I doubt).



Herdfan said:


> Yet, the CC in your state (9th Circus) seems to take pride in doing their own thing regardless of decisions made by other Circuits.


Let's not bring up that trainwreck.
__________________
My personal opinions are just that. Don't rely on them - I could be Charlie Ergen's pool boy.


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## TexasAg

nobody99 said:


> Please cite one single case where an adjudicated, infringing device already in the hands of a customer was cited for contempt which was later overturned.
> 
> One case. It can't be that hard. I assume by "all past case law" you mean there are plenty of examples. But, for giggles, give me one example.


I think everyone hear knows this exact situation has never come up before (in reported cases anyway). But again, there are certain things you can't disagree with:

(i) the law allows injunctions to be issued to prevent future violations of a patent

(ii) the judge repeatedly refers to continuing or ongoing infringement in the order granting the permanent injunction

(iii) Echo is entitled under the case law to design around Tivo's patent and not be held in contempt when the design-around is "more than colorably different"

(iv) Echo has only been found to have infringed Tivo's software claims (no legitimate hardware infringement finding has been made)

(v) Echo's new software has never been "adjudicated to infringe"

I could go on, but you get my point. This is not a clear-cut issue either way. I've argued strongly for my belief that Echo can't be held in contempt at this point, but we'll see on 9/4 and the probably-guaranteed appeal after that.
__________________
My personal opinions are just that. Don't rely on them - I could be Charlie Ergen's pool boy.


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## jacmyoung

kmill14 said:


> The title "Infringing Products" is just a title to lump the DP-501; DP-508; DP-510; DP-522; DP-625; DP-721; DP-921; and the DP-942 all together.
> 
> As has been argued here before, the Judge could have called them "Broke-the-Law Products", and it would have been just as accurate.
> 
> The point is, products DP-501; DP-508; DP-510; DP-522; DP-625; DP-721; DP-921; and the DP-942 placed with an end user have been ordered to be turned off, and E* is ignoring that order.
> 
> 9/4 should be fun.


You have every right to interprete as you wish, but when you try to cite the judge's words, please stop manipulating them, that is all I was saying. Do you think the judge added the *Infringing Products* just to fill space? He coud have said *Products* as you wished. Remember an injunction is very specific and concise, no single word is not thought after.


----------



## jacmyoung

Greg Bimson said:


> Really?


Yes that is how one side believes, and you believe otherwise. We can agree to disagree.


----------



## jacmyoung

kmill14 said:


> I suppose since it doesn't say "Merely Colorably Different Products", that jacmyoung will now stop his argument regarding their ability to become "more than colorably different" Products.
> 
> And he says I am the master manipulator, but he along with E* chooses to put words in Judge Folsom's mouth by saying those products already in subscriber hands no longer infringe.


I never tried to change the judge's words when I tried to quote him, you did.

We can certainly have our own interpretation all we want, but when it comes to quoting someone else's words, do not have a habit of changing them.


----------



## jacmyoung

Herdfan said:


> Yet, the CC in your state (9th Circus) seems to take pride in doing their own thing regardless of decisions made by other Circuits.


I am not familiar with my State CC, in fact when it comes to the contempt issue on patent cases, only the Washington DC CC is responsible on pretty much all appeals. That CC has the reputation of unifying various standards and upholding established uniform standards.


----------



## kmill14

TexasAg said:


> I think everyone hear knows this exact situation has never come up before (in reported cases anyway). But again, there are certain things you can't disagree with:
> 
> (i) the law allows injunctions to be issued to prevent future violations of a patent


Agree. As it stands now, the products listed in the injunction still only have one ruling assigned to them (infringing).



TexasAg said:


> (ii) the judge repeatedly refers to continuing or ongoing infringement in the order granting the permanent injunction


See above.



TexasAg said:


> (iii) Echo is entitled under the case law to design around Tivo's patent and not be held in contempt when the design-around is "more than colorably different"


I believe the entitlement refers specifically to other, new products, and the colorably different standards definitely refers to other products, not those that were already given to customers and deemed to have infringed.



TexasAg said:


> (iv) Echo has only been found to have infringed Tivo's software claims (no legitimate hardware infringement finding has been made)


This is not relevant to the case at all. The new software was designed after the initial verdict was issued, well before the appeals ruling was made on HW claims. I think its clear that E* intended for the new software to "design around" both the SW and HW claims. Also, the affirmed claims include one process and one apparatus claim. Lets not confuse "software" with what has been titled SW claims.



TexasAg said:


> (v) Echo's new software has never been "adjudicated to infringe"


And yet, the products DP-501; DP-508; DP-510; DP-522; DP-625; DP-721; DP-921; and the DP-942 HAVE been adjudicated to infringe. Until a Court Ruling says otherwise, those products still infringe.


----------



## kmill14

jacmyoung said:


> You have every right to interprete as you wish, but when you try to cite the judge's words, please stop manipulating them, that is all I was saying. Do you think the judge added the *Infringing Products* just to fill space? He coud have said *Products* as you wished. Remember an injunction is very specific and concise, no single word is not thought after.


Lets see if I understand you correctly. The injunction says this:

******
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.
******

And you don't think its legally correct to substitute anywhere it says "Infringing Products" with : DP-501; DP-508; DP-510; DP-522; DP-625; DP-721; DP-921; and the DP-942 ?????

Since we are quoting court rulings: can you quote the one that says the "Infringing Products" are no longer the "Infringing Products?"


----------



## nobody99

TexasAG, since you seem to know what you are talking about, can you bring to light this peculiarity.

The injunction has three specific paragraphs of interest which I have extremely abbreviated to illustrate my point



The Injunction said:


> IT IS THEREFORE ORDERED THAT Plaintiff shall have and recover from Defendants...pursuant to 28 U.S.C. § 1961
> 
> IT IS FURTHER ORDERED THAT...restrained and enjoined, pursuant to 35 U.S.C. § 283 and Fed. R. Civ. P. 65(d)...only colorably different
> 
> Defendants are hereby FURTHER ORDERED...disable the DVR functionality


I'm surprised none of us have caught this. The "only colorably different" standard only applies to injunctions issued under Fed. R. Civ. P. 65(d). The enjoined devices to be shut down in the third paragraph do not fall under 65(d). If they are not under 65(d), there is not "only colorably different" standard to worry about.

If, as jacmyoung states, the words are chosen very carefully, this was intentional.

In fact, it's curious that the judge offers _no_ "pursuant to" explanation for the third paragraph.

Thoughts?


----------



## nobody99

jacmyoung said:


> ...is very specific and concise, no single word is not thought after.


must...refrain...from...:lol:


----------



## TexasAg

kmill14 said:


> As it stands now, the products listed in the injunction still only have one ruling assigned to them (infringing).


And you must agree that those products are no longer running the same software found to infringe, yes?



kmill14 said:


> I believe the entitlement refers specifically to other, new products, and the colorably different standards definitely refers to other products, not those that were already given to customers and deemed to have infringed.


You're entited to believe that, but there's no case discussing the difference, is there?



kmill14 said:


> This is not relevant to the case at all. The new software was designed after the initial verdict was issued, well before the appeals ruling was made on HW claims. I think its clear that E* intended for the new software to "design around" both the SW and HW claims. Also, the affirmed claims include one process and one apparatus claim. Lets not confuse "software" with what has been titled SW claims.


Tivo's software claims were actually "process" and "apparatus" claims, but both require 4 objects, flow control, and various other elements. And yes, it is highly relevant - only Echo's software infringed those claims and the software has changed. Without Echo's software, the DVRs would not have infringed. So, it is no longer clear whether Echo continues to infringe (which was the point of the injunction). In fact, Echo has said that it no longer uses flow control, which if believed raises substantial doubt that there is continued infringement.



nobody99 said:


> In fact, it's curious that the judge offers _no_ "pursuant to" explanation for the third paragraph.
> 
> Thoughts?


The order granting the injunction referred to Echo's customers' continued use of infringing DVRs. If there is no "infringing" requirement for the shut-down order, Echo likely has a good argument that this particular part is over-broad. At which point, the prior case I cited applies, and it said over-broad provisions are interpreted according to KSM (which uses the "more than colorably different" standard).
__________________
My personal opinions are just that. Don't rely on them - I could be Charlie Ergen's pool boy.


----------



## kmill14

nobody99 said:


> TexasAG, since you seem to know what you are talking about, can you bring to light this peculiarity.
> 
> The injunction has three specific paragraphs of interest which I have extremely abbreviated to illustrate my point
> 
> I'm surprised none of us have caught this. The "only colorably different" standard only applies to injunctions issued under Fed. R. Civ. P. 65(d). The enjoined devices to be shut down in the third paragraph do not fall under 65(d). If they are not under 65(d), there is not "only colorably different" standard to worry about.
> 
> If, as jacmyoung states, the words are chosen very carefully, this was intentional.
> 
> In fact, it's curious that the judge offers _no_ "pursuant to" explanation for the third paragraph.
> 
> Thoughts?


Well done.


----------



## nobody99

TexasAg said:


> The order granting the injunction referred to Echo's customers' continued use of infringing DVRs. If there is no "infringing" requirement for the shut-down order, Echo likely has a good argument that this particular part is over-broad. At which point, the prior case I cited applies, and it said over-broad provisions are interpreted according to KSM (which uses the "more than colorably different" standard).


Is 65(d) the *only* law that allows for an injunction?


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## TexasAg

nobody99 said:


> Is 65(d) the *only* law that allows for an injunction?


Rule 65(d) is the Federal Rule of Civil Procedure controlling injunctions. Other laws specify when injunctions can be granted (like 35 USC 283 in patent cases), but the form is controlled by Rule 65(d).

Here is the text of FRCP 65(d):
(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).
__________________
My personal opinions are just that. Don't rely on them - I could be Charlie Ergen's pool boy.


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## jacmyoung

kmill14 said:


> Lets see if I understand you correctly. The injunction says this:
> 
> ******
> 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.
> ******
> 
> And you don't think its legally correct to substitute anywhere it says "Infringing Products" with : DP-501; DP-508; DP-510; DP-522; DP-625; DP-721; DP-921; and the DP-942 ?????
> 
> Since we are quoting court rulings: can you quote the one that says the "Infringing Products" are no longer the "Infringing Products?"


What I am saying is when you try to *quote* the injunction, you may not substitue *Infringing Products* with *products*, that is not how you quote someone, not to mention we can all agree the term *Infringing Products* in their capital letters are there not to just fill space.

Of course it is legally correct to substitue the *Infringing Products* with say DP-501, as long as you remmeber at the time of the injunction, the DP-501s were in fact infringing products. What is not appropriate for you to do is to insist the current modified DP-501s are still *Infringging Products* simply because they bear the exact same name: DP-501. Because names, labels, look, color, do not let the infringer out of the scope of the injunction becasue the difference is only colorable.

What makes the DP-501s more than colorably different than the old infringing DP501s is the new software, as long as the new software is more than colorably different than the old software. Remember what TexasAg said, only the software is in question, not the hardware, not what's the name of the hardware either, rather the software in them.


----------



## kmill14

TexasAg said:


> The order granting the injunction referred to Echo's customers' continued use of infringing DVRs. If there is no "infringing" requirement for the shut-down order, Echo likely has a good argument that this particular part is over-broad. At which point, the prior case I cited applies, and it said over-broad provisions are interpreted according to KSM (which uses the "more than colorably different" standard).


E* cannot argue that the injunction is overly broad. They had their chance to argue the wording of the injunction, and they passed it up.

KSM says this:



KSM Ruling said:


> ...*contempt proceedings*, civil or criminal, *are available *only with respect *to devices previously admitted or adjudged to infringe*, *and to other devices which are no more than colorably different *therefrom and which clearly are infringements of the patent. This limitation is seen as properly balancing the interests of the respective parties.


and this:



KSM Ruling said:


> As will be hereinafter shown, *all subsequent constructions* by a convicted infringer are not triable in contempt proceedings


As you can see, it specifically refers to ALL SUBSEQUENT CONSTRUCTIONS, not constructions already adjudicated on.


----------



## scooper

kmill14 said:


> As you can see, it specifically refers to ALL SUBSEQUENT CONSTRUCTIONS, not constructions already adjudicated on.


Precisely - old version was found to infringe. New version needs its own trial to determine if it infringes or not. All that can be determined at a contempt hearing is if the new S/W is "More than colorably different" than the old S/W. If it is - new S/W needs it's own trial to determine if it infringes or not.

Which is exactly what we have been telling you all along.


----------



## nobody99

I can only assume that a number of people have me and kmill14 on ignore . That's the only possible explanation.


----------



## scooper

nobody99 said:


> I can only assume that a number of people have me and kmill14 on ignore . That's the only possible explanation.


No - you just keep repeating yourselves and we keep correcting you.


----------



## kmill14

jacmyoung said:


> What I am saying is when you try to *quote* the injunction, you may not substitue *Infringing Products* with *products*, that is not how you quote someone


Perhaps you missed the [...] brackets in the quote, and I could send you to a couple different sites that would help you to learn quoting do's and don'ts.



jacmyoung said:


> Of course it is legally correct to substitue the *Infringing Products* with say DP-501


Thanks...I knew that.



jacmyoung said:


> as long as you remmeber at the time of the injunction, the DP-501s were in fact infringing products. What is not appropriate for you to do is to insist the current modified DP-501s are still *Infringging Products* simply because they bear the exact same name: DP-501. Because names, labels, look, color, do not let the infringer out of the scope of the injunction becasue the difference is only colorable.
> 
> What makes the DP-501s more than colorably different than the old infringing DP501s is the new software, as long as the new software is more than colorably different than the old software.


I am curious....why would I NOT assume that the "modified" DP501s are still "infringing" even if they were deemed to be "more than colorably different"?

There is no ruling stating otherwise, is there?

Oh, and you may want to pull out the quote from KSM (but I will) that goes as such:



KSM Ruling said:


> Such constructions may turn out to be infringements, but if they are more than "colorably" different, the issue of infringement must be otherwise determined than by a contempt proceeding


because I am sure you will argue that this applies to the Infringing Products. But alas, it does not...as we see from the previous passage that I quoted earlier:



KSM Ruling said:


> As will be hereinafter shown, all subsequent constructions by a convicted infringer are not triable in contempt proceedings


As you can see, it specifically references "subsequent constructions". The Infringing Products are NOT subsequent constructions, and they do not apply to the "colorably different" standard.


----------



## kmill14

scooper said:


> Precisely - old version was found to infringe. New version needs its own trial to determine if it infringes or not. All that can be determined at a contempt hearing is if the new S/W is "More than colorably different" than the old S/W. If it is - new S/W needs it's own trial to determine if it infringes or not.
> 
> Which is exactly what we have been telling you all along.


The injunction does NOT cover software. It covers an entire patent, and it covers a list of products. E* tried initially to word it strictly regarding software, and if you read TiVo's filing of a couple weeks ago, they argued against it, and the Judge sided with TiVo.

So "subsequent constructions" as quoted from KSM refers to "subsequent constructions" of products, not software.


----------



## James Long

kmill14 said:


> And yet, the products DP-501; DP-508; DP-510; DP-522; DP-625; DP-721; DP-921; and the DP-942 HAVE been adjudicated to infringe. Until a Court Ruling says otherwise, those products still infringe.


That ruling could take five minutes on September 4th. It probably will take longer than five minutes, because there are lawyers involved (including the lawyer that became a judge) but it is a simple thing that makes all the speculation leading up to the day meaningless.

We will have some idea of the direction the case is going before then when Tivo files their actual motion (the one they failed to prepare for the status hearing). DISH will reply and the parties will have some haggling to do. There will probably be some ruling from the judge as part of the process when the parties ask leave of the court to do some discovery.

The goal is for Tivo and DISH to have all of this worked out before September 4th. All they should have to do is present the facts to the judge and have him sign off. Of course Tivo and DISH are much like those participating in this thread ... there WILL be two sets of facts that will look surprisingly dissimilar. Almost as if the parties were involved in two different cases against other plaintiffs and defendants instead of each other.


----------



## jacmyoung

kmill14 said:


> ...I am curious....why would I NOT assume that the "modified" DP501s are still "infringing" even if they were deemed to be "more than colorably different"? ...


I never said you may not make such assumption, all we are saying is if you can agree they may be deemed more than colorably different, then you must also agree DISH may not be found in contempt, even if you believe (not to assume, but believe) DP501 still infringes.

I did not say so, the courts said so:

http://bulk.resource.org/courts.gov/c/F2/719/719.F2d.1114.82-5889.html

"...Reliance on the doctrine of equivalents will protect Sure Plus's right to the benefit of its prior judgment while reserving to Kobrin the opportunity to invent around the Sure Plus patent. *Even if Kobrin's modified mirror assembly infringes the Sure Plus patent, as long as it is more than colorably different the infringement should not amount to a contempt nor should it be tested in contempt proceedings.* Interdynamics, Inc. v. Firma Wolf, 653 F.2d at 99; Siebring v. Hansen, 346 F.2d at 477..."


----------



## kmill14

James Long said:


> That ruling could take five minutes on September 4th. It probably will take longer than five minutes, because there are lawyers involved (including the lawyer that became a judge) but it is a simple thing that makes all the speculation leading up to the day meaningless.
> 
> ....when the parties ask leave of the court to do some discovery.


Sep. 4th has nothing do due with whether the products DP-501; DP-508; DP-510; DP-522; DP-625; DP-721; DP-921; and the DP-942 STILL infringe.

It only has to do with whether E* can be found in contempt due to not turning over their DVRs as ordered, or whether they can avoid that order by putting in new software they claim is non-infringing. There will be NO discovery for this ruling.

To actually determine if the [...] Products have ceased to infringe, there will definitely need to be discovery, a trial of some sort, etc, but right now that isn't being addressed.


----------



## James Long

kmill14 said:


> As you can see, it specifically refers to ALL SUBSEQUENT CONSTRUCTIONS, not constructions already adjudicated on.


Have you never heard of a software build?

Not everything is made of stone, steel or sticks. Software is made of code. The new software is a new construction. The old software is no longer present and has been removed and discarded from the "Infringing Products".

If Tivo wants to challenge these subsequent constructions they can file a new case.


----------



## kmill14

jacmyoung said:


> I never said you may not make such assumption, all we are saying is if you can agree they may be deemed more than colorably different, then you must also agree DISH may not be found in contempt, even if you believe (not to assume, but believe) DP501 still infringes.
> 
> I did not say so, the courts said so.


The Courts did NOT say so. The Court was specific in talking about "subsequent constructions" and it was specific about drawing seperation between "subsequent constructions" and those constructions already adjudicated on.


----------



## kmill14

James Long said:


> Have you never heard of a software build?
> 
> Not everything is made of stone, steel or sticks. Software is made of code. The new software is a new construction. The old software is no longer present and has been removed and discarded from the "Infringing Products".
> 
> *If Tivo wants to challenge these subsequent constructions they can file a new case*.


No doubt. But the ruling and injunction were not specific to SOFTWARE, they were specific to PRODUCTS, and more specifically, products already in the hands of subscribers. As jacmyoung has said numerous times, the wording is quite specific for a reason.


----------



## jacmyoung

James Long said:


> Have you never heard of a software build?
> 
> Not everything is made of stone, steel or sticks. Software is made of code. The new software is a new construction. The old software is no longer present and has been removed and discarded from the "Infringing Products".
> 
> If Tivo wants to challenge these subsequent constructions they can file a new case.


That actually is a pretty good way of looking at it. If only people can wrap their minds around the notion that the invisible software product is just the same as a real product one can see and touch.

We can all agree at this point, only the software product had infringed, and DISH was asked to disable the DVR functions so the infringing software product can no longer continue to infringe.

Now the infringing software product has been removed, thrown away, a new software product took its place. The new software product must certainly be differenct than the old infringing software product, and if the difference is more than colorable, DISH shall not be in contempt to use such new product.

If one can have enough imagination to substitue the software to something more visible, like a mirror device as an example used in the above case law I have linked, then a lot of arguments will easily go away, such as what if the new products in the past were never in the field so those past case law simple can not apply here, but wait! The new software product was never in the field before either, can anyone not see that?


----------



## James Long

kmill14 said:


> Sep. 4th has nothing do due with whether the products DP-501; DP-508; DP-510; DP-522; DP-625; DP-721; DP-921; and the DP-942 STILL infringe.
> 
> It only has to do with whether E* can be found in contempt due to not turning over their DVRs as ordered, or whether they can avoid that order by putting in new software they claim is non-infringing. There will be NO discovery for this ruling.


The order of the court:
*The Court has set for hearing September 4, 2008 the first issue of whether EchoStar has disabled the DVR functionality with respect to the Infringing Products as required by the Court's Permanent Injunction.* The second issue outlined above, namely TiVo's request to take limited discovery regarding EchoStar's allegedly new software, is denied at this time. In the interest of judicial economy, *the Court will determine first whether EchoStar should be held in contempt for its failure to disable the DVR functionality in the Infringing Products and for its placement of new infringing DVRs* as urged by TiVo *or* whether, as urged by EchoStar, *the language of the Court's Permanent Injunction allows EchoStar to comply with the spirit of the injunction by changing the software so that the products no longer infringe.* TiVo may renew its request to serve limited discovery regarding EchoStar's modified software after the Court's decision on the first issue.​
Whether the "Infringing Products" are in contempt will most be a part of September 4th. But the door remains open for the parties to ask leave of the court for discovery if needed. That was mentioned in the transcripts of the conference.



> To actually determine if the [...] Products have ceased to infringe, there will definitely need to be discovery, a trial of some sort, etc, but right now that isn't being addressed.


And it doesn't need to be addressed ... unless there is an argument over what receivers are not more than colorably different. I expect there will be an argument ... with Tivo asking leave of the court for discovery long before September 4th.



kmill14 said:


> No doubt. But the ruling and injunction were not specific to SOFTWARE, they were specific to PRODUCTS, and more specifically, products already in the hands of subscribers. As jacmyoung has said numerous times, the wording is quite specific for a reason.


You are forgetting that the PRODUCTS are a combination of hardware and software. It is for the court to decide whether the product can be considered reconstructed by changing the software.


----------



## jacmyoung

James Long said:


> ...You are forgetting that the PRODUCTS are a combination of hardware and software. It is for the court to decide whether the product can be considered reconstructed by changing the software.


And if one uses simple deduction, the answer would be yes, because the same court certainly believed by changing the software the infringing products could be reconstructed to turn them into non-infringing products, by disabling the DVR functions.

So yes changing the software can reconstruct the product.


----------



## HobbyTalk

kmill14 said:


> No doubt. But the ruling and injunction were not specific to SOFTWARE, they were specific to PRODUCTS, and more specifically, products already in the hands of subscribers. As jacmyoung has said numerous times, the wording is quite specific for a reason.


So you believe that there can absolutely be no other outcome then the DVR functions will be disabled in the named products?


----------



## Greg Bimson

HobbyTalk said:


> So you believe that there can absolutely be no other outcome then the DVR functions will be disabled in the named products?


I am only speaking for myself...

The outcome is that DISH/SATS will be found in contempt because the "Infringing Products" are still active. DISH/SATS will then appeal, and the Court of Appeals will also agree, because one simply does not violate an injunction on its face.

All of the interpretation in the world will not stop a ruling on the "prima facie" violation of the injunction in favor of TiVo. The courts do not look kindly on ignoring the plain language of the injunction.

However, DISH/SATS will not ever turn of the DVR's. DISH/SATS will be in contempt for as long as they feel there is a chance they'll win. However, it is entirely too difficult to get a ruling in your favor when simply ignoring the injunction on its face. There will come a point in time where Mr. Ergen will finally fold his hand and lose a lot of the chips he put in the pot.

And this would have cost a lot less two years ago.


----------



## jacmyoung

Here is the case law specifically addressed the issue raised here often about why DISH's initial proposal before the injunction phase to exclude the Infringing Products with a new software from the scope of the injunction. Not because DISH may not modify the Infringing Products to avoid contempt later, rather it was improper for DISH to even try to exclude any proposed modified products from the scope of an injunction. The timing was wrong for the DISH's proposal when the judge was formulating the injunction:

http://www.ll.georgetown.edu/federal/judicial/fed/opinions/04opinions/04-1014.pdf

"Although we are vacating the injunction and remanding to the district court, we are unable to grant IXYS all the relief it has requested with respect to the injunction. IXYS has tried repeatedly, and unsuccessfully, to bring its redesigned products into the case. First, IXYS notified IR of its modified design, but IR declined to file a supplemental pleading to allege infringement of the redesigned devices, which were introduced after IR filed its complaint. *Then, in opposition to IR's motion for summary judgment, IXYS asserted that the redesigned products should not be the subject of contempt proceedings because, in IXYS's view, there is a "substantial open issue" as to whether they infringe*. See KSM, 776 F.2d at 1532 (holding that the test for whether contempt proceedings are appropriate is whether there are substantial open issues with respect to infringement). Consequently, IXYS urged the district court to limit the injunction to the adjudicated products and any products introduced after the effective
date of the judgment that are no more than colorably different from the adjudicated products. *IXYS's proposed judgment would have effectively excluded from the scope of the injunction devices made according to IXYS's modified design.*"

"IXYS contends that as a matter of fairness contempt proceedings should be unavailable with respect to pre-judgment devices not accused of infringement in the underlying action, and thus such devices should be affirmatively excluded from the scope of an injunction. This court has never so held, and we decline to do so now. *If in the future IR chooses to bring a contempt action against IXYS's modified products, the district court at that time must determine whether contempt proceedings are appropriate by applying the standard established by this court in KSM.* 776 F.2d at 1532; see Arbek Mfg., Inc. v. Moazzam, 55 F.3d 1567, 1569-70 (Fed. Cir. 1995) (affirming trial court's denial of a contempt motion when there were substantial open infringement issues to be litigated). *It would have been improper for the district court to address that issue until or unless it was properly before the court.*"

Similarly, in this case DISH also tried to exclude from the language of the injunction the proposed modified DVRs from the scope of the injunction, and that request was denied by the judge, rightfully so, not because it was an unreasonable proposal, rather the timing of it was wrong.

Such proposal should be brouhgt up during a contempt proceeding, if the patentee decided to bring a contempt charge against the modified products (which Tivo did). And when that happens, the standard established in KSM case will be used to determine if the modified products are still within the scope of the injunction-- "(affirming trial court's denial of a contempt motion when there were substantial open infringement issues to be litigated)."

It is agreed upon by both sides on DBStalk, at this point, there are substantial open infringement issues to be litigated on the modified DVRs with the new software, as a result the contempt motion on the modified DVRs shall be denied, even though one time in the past DISH did propose to have the modified DVRs excluded from the language of the injunction and such proposal was denied, it was denied because it should not have been brought up at that time, the timing was wrong.

The correct timing to bring up such proposal is now, in a contempt proceeding, which is why DISH is bringing it up at this time again, and which is why the district court, the judge, must look at this proposal now, and apply the standard in KSM to determine if the modified products are more than colorably different or not.


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## Greg Bimson

> If in the future IR chooses to bring a contempt action against IXYS's modified products, the district court at that time must determine whether contempt proceedings are appropriate by applying the standard established by this court in KSM.





jacmyoung said:


> Such proposal should be brouhgt up during a contempt proceeding, if the patentee decided to bring a contempt charge against the modified products (which Tivo did).


TiVo has not brought up a contempt charge against the modified products.


> [...]the Court will determine first whether EchoStar should be held in contempt for its failure to disable the DVR functionality in the Infringing Products and for its placement of new infringing DVRs *as urged by TiVo*[...]


TiVo is not addressing the new software, yet.


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## nobody99

jacmyoung, what part of "new" product are you having trouble with? None of that case deals with existing, adjudicated devices that are specifically named to be disabled.


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## jacmyoung

Greg Bimson said:


> TiVo has not brought up a contempt charge against the modified products.TiVo is not addressing the new software, yet.


They did, when they asked if DISH should be found in contempt of continued use of the DVRs (not disabling them). And there should be no doubt the DVRs have been modified. So yes the judge, by the vritue of Tivo asking for such contempt hearing, must now take DISH's then proposal, and apply the KSM standard when it comes to deciding if the modified DVRs are more than colorably different or not.

The act of "not disabling the DVRs" is viewed as to cause a contempt only if the modified DVRs are merely colorably different.

Of course we can disagree on that, but you can not deny the fact when you constantly brought up the denial of DISH's then such proposal as the proof such proposal would not work this time, I only used the above link to explain why such DISH's proposal was denied at that time, not because DISH could not ever bring up such proposal, only that the timing was wrong then, and the timing for bringing up such proposal is now correct. DISH is right to bring up the same proposal now, again, the Circuit Court in that case said the time is now to bring it up.


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## nobody99

jacmyoung said:


> you can not deny the fact


Can I ask you a favor? Please don't tell us what we can and cannot do, and please don't represent your opinion as fact. That will make the whole conversation easier.


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## jacmyoung

Greg Bimson said:


> TiVo has not brought up a contempt charge against the modified products.TiVo is not addressing the new software, yet.


Let me try it this way, Tivo by asking the judge to decide if the DISH's act of continued use of the DVR functions on the modified DVRs constitutes a contempt or not, is the same as asking the judge to determine if the modified DVRs are still within the scope of the injunction or not.

Because if the modified DVRs are still within the scope of the injunction, then DISH is in contempt of not disbling the DVR functions on them.

But if the modified DVRs are now outside of the scope of the injunction, DISH can do whatever to those DVRs and not be in contempt. Because if the modified DVRs no longer are within the scope of the injunction, DISH may disable the DVR functions, they may bring back the DVR functions, they may add DVR plus plus functions, whatever that is, they may strike the DVRs with a command to totally distroy them, or they may strike the DVRs with another command to try to bring them back to life in order to try the DVR functions again just for fun, as long as none of the acts infringes on Tivo's patent, DISH is fine, because the modified DVRs are not within the scope of the injunction, and therefore not within the scope of "disabling the DVR functions."

Not that Tivo did not want to address the new software infringement issue yet, they did, but the judge denied it, at DISH's request, rightfully so, because the new software infringement issue can not be discussed in the 9/4 contempt hearing. Only the colorably different issue.


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## Greg Bimson

Greg Bimson said:


> TiVo has not brought up a contempt charge against the modified products.TiVo is not addressing the new software, yet.





jacmyoung said:


> They did, when they asked if DISH should be found in contempt of continued use of the DVRs (not disabling them).


No, they didn't.


jacmyoung said:


> Let me try it this way, Tivo by asking the judge to decide if the DISH's act of continued use of the DVR functions on the modified DVRs constitutes a contempt or not, is the same as asking the judge to determine if the modified DVRs are still within the scope of the injunction or not.


No, it isn't.


> [...]the Court will determine first whether EchoStar should be held in contempt for its failure to disable the DVR functionality in the Infringing Products and for its placement of new infringing DVRs as urged by TiVo[...]


All that is being asked by TiVo is if DISH/SATS is in violation regarding a strict, literal reading of the injunction. TiVo has not been granted anything regarding DVR's with modified software.

It will be DISH/SATS position that a modification of the DVR's make them no longer infringing. Therefore, DISH/SATS should no longer be subject to the injunction.

However, TiVo (and this contempt hearing of 4 September) is not addressing the "modified software". Only DISH/SATS is. Big difference.


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## jacmyoung

Greg Bimson said:


> No, they didn't.No, it isn't.All that is being asked by TiVo is if DISH/SATS is in violation regarding a strict, literal reading of the injunction. TiVo has not been granted anything regarding DVR's with modified software.


But do you at least agree in order for Tivo to prevail, the judge must first find that the modified DVRs are still within the scope of the injunction?

You are saying yes they are still within the scope of the injunction because they still bear the same labels and names. What you have failed to recognize is the standard of which to determine whether a modified proudct is still within the scope of the injunction is not by looking at their names, labels, or their color, because those things are mere colorable. The judge may not stop there, when he tries to determine if the modified products are still within the scope of the injunction, in fact the law said he must *first* look at the differences between the two products, and determine if the differences are more than colorable. That is the judge's job during a contempt hearing. In this case I have even for argument sake let you have your way, that the judge will look at the name, label, color first, but he can not ignore the differences, if he does, the contempt ruling will be overturned, as shown in the prior cases.



> However, TiVo (and this contempt hearing of 4 September) is not addressing the "modified software". Only DISH/SATS is. Big difference.


Not because Tivo did not want to, but because DISH said they may not, and the judge agreed. Therefore you are basically trying to convince yourself at this time it was DISH that helped you to make your argument. Dose that even make sense to you?

Or are you still with the belief DISH's argument on the modified software will fail, because DISH tried it once before and was denied? I have not seen you responding to that issue after my above new citing of the case law, in which the Circuit Court made it clear that DISH could not use such argument in the injunction phase, DISH must use such argument in the contempt phase. So I hope you are not insisting DISH is wrong by bringing up the modified software argument now, or are you?


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## Greg Bimson

jacmyoung said:


> But do you at least agree in order for Tivo to prevail, the judge must first find that the modified DVRs are still within the scope of the injunction?


No. The modifications may end up being immaterial to these proceedings. We will know what will happen once the briefs are filed for the Paice order.


jacmyoung said:


> You are saying yes they are still within the scope of the injunction because they still bear the same labels and names. What you have failed to recognize is the standard of which to determine whether a modified proudct is still within the scope of the injunction is not by looking at their names, labels, or their color, because those things are mere colorable. The judge may not stop there, when he tries to determine if the modified products are still within the scope of the injunction, in fact the law said he must first look at the differences between the two products, and determine if the differences are more than colorable. That is the judge's job during a contempt hearing. In this case I have even for argument sake let you have your way, that the judge will look at the name, label, color first, but he can not ignore the differences, if he does, the contempt ruling will be overturned, as shown in the prior cases.


That is only for a contempt hearing on continuing infringement. This is not a contempt hearing on continuing infringement.


jacmyoung said:


> Not because Tivo did not want to, but because DISH said they may not, and the judge agreed. Therefore you are basically trying to convince yourself at this time it was DISH that helped you to make your argument. Dose that even make sense to you?


Let's be clear here, as I've made the same argument time and time again. What DISH said is since TiVo is not requesting a contempt hearing on continuing infringement, that TiVo is not allowed discovery on the modified software. I've continued from day one to state your "standard" which must address products more than colorably different does not apply in a contempt hearing on "prima facie" violations.

TiVo is not requesting a contempt hearing for continuing infringement of a patent. That means the modified software is off the table for this contempt hearing. Which also means that the "colorably different" issue is off the table. DISH/SATS may try to use it as a defense, but that would require TiVo to have discovery if modified software is a valid defense.


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## TexasAg

Greg Bimson said:


> All of the interpretation in the world will not stop a ruling on the "prima facie" violation of the injunction in favor of TiVo. The courts do not look kindly on ignoring the plain language of the injunction.


And what some people appear unwilling to do is consider the injunction in its context. We all have to consider the injunction in context of everything that's been said and done in this case, and also in view of the law and case law. The law allows injunctions to prevent future infringement. The judge himself referred to ongoing infringement throughout the order granting the injunction. I just don't think the judge is going to say "Well Echo, you have changed the software and might not infringe any more, but I'm going to punish you anyway, even though I specifically referred to ongoing infringement as the injunction's justification."

Tivo's software claims require 4 different objects and flow control of at least 3 of those objects. If Echo completely rewrote its software to use only 2 of those objects and performed no flow control with those objects, for example, Echo clearly wouldn't infringe the software claims any longer. At that point, there is no basis for preventing Echo from using non-infringing software in its DVRs, and there most certainly is no basis for preventing Echo from making its products non-infringing.

The shut-down order has to be related in some way to avoiding future infringement. I'm sure the judge could simply say "I don't care about ongoing infringement, Echo didn't do what I said, so Echo is in contempt." The appeals court most likely would care, though, since the patent law discussing injunctions specifically refers to preventing future infringement.

At this point, it seems we're just re-hashing old arguments, so I'll wait for Tivo to file its motion. I expect to see lots of talk about the face of the injunction and Fifth Circuit cases dealing with contempt. I don't expect Tivo to bring up the new software unless it's in Tivo's fallback position. I certainly don't expect Tivo to make any mention of continued infringement.

And I do agree with jacmyoung - the court shouldn't just look at model numbers since the current DVRs used by Echo customers are not "adjudicated" to be infringing. The new software makes them different devices and even possibly non-infringing.



Greg Bimson said:


> We will know what will happen once the briefs are filed for the Paice order.


Again, the court said in the interest of "judicial economy" that it will not allow Tivo discovery until after the first issue is decided. I wouldn't be surprised if the judge waits until 9/4 to decide whether Echo's defense of the new software is valid, then grant Tivo discovery after that.
__________________
My personal opinions are just that. Don't rely on them - I could be Charlie Ergen's pool boy.


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## kmill14

jacmyoung said:


> They did, when they asked if DISH should be found in contempt of continued use of the DVRs (not disabling them). *And there should be no doubt the DVRs have been modified. *
> 
> *The act of "not disabling the DVRs" is viewed as to cause a contempt only if the modified DVRs are merely colorably different.*


Wow, you're stubborn. For starters, the "colorably different" standard ONLY applies to "subsequent constructions" of products. The products already adjudicated on and in the hands of the end user are not subject to this standard.

I have quoted the KSM ruling to prove my point, but you haven't shown anything to say that an adjudicated product in the hands of the end user can qualify as a "subsequent construction."


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## kmill14

HobbyTalk said:


> So you believe that there can absolutely be no other outcome then the DVR functions will be disabled in the named products?


Is that not the order?


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## kmill14

jacmyoung said:


> We can all agree at this point, only the software product had infringed, and DISH was asked to disable the DVR functions so the infringing software product can no longer continue to infringe.
> 
> Now the infringing software product has been removed, thrown away, a new software product took its place. The new software product must certainly be differenct than the old infringing software product, and if the difference is more than colorable, DISH shall not be in contempt to use such new product.


Oh, this is a funny argument. Could you show me in the Injunction/Final Order

(here) http://www.southernme.com/DAVY_v_GO...ded final judgement and injunction 9-8-06.pdf

where it differentiates between "software product" and "hardware product"? All I see is PRODUCTS.

As far as I can read, the order was to disable the functionality of the software AND hardware that allowed said PRODUCT to be a DVR.

Did the Appeals court, in remanding the HW claims, invalidate the injunction? NO THEY DID NOT. They did NOT ask that the wording be changed to only refer to disabling SOFTWARE but not HARDWARE. And I am pretty sure E* didn't ask for it either, so the wording of the injunction is what the wording of the injunction is.


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## TexasAg

kmill14 said:


> For starters, the "colorably different" standard ONLY applies to "subsequent constructions" of products.


What exactly is a "subsequent construction"? Didn't you admit earlier that Echo could sell a new DVR with the modified software? I know others have.

Echo's DVRs used to execute old software that infringed Tivo's software claims (which were process and apparatus claims, but that required the software in order to be infringed). Are you absolutely unwilling to admit that the currect Echo DVRs with the same hardware and different (possibly non-infringing) software cannot be a "subsequent construction"?

Let's assume Echo sells new DVRs with the exact same hardware as the listed DVRs but the new software. Is that new DVR a "subsequent construction"? If it is, you surely can't be saying that the old DVRs with the exact same hardware and the new software are not "subsequent constructions." They would be the exact thing - same hardware and new software.



kmill14 said:


> Did the Appeals court, in remanding the HW claims, invalidate the injunction? NO THEY DID NOT. They did NOT ask that the wording be changed to only refer to disabling SOFTWARE but not HARDWARE. And I am pretty sure E* didn't ask for it either, so the wording of the injunction is what the wording of the injunction is.


Again, we must read everything in context. The finding of infringement for Tivo's hardware claims was reversed. The judge may feel somewhat obligated to take that into consideration. Let's not just say "Echo didn't shut them off" and then stick our fingers in our ears and yell "la la la la la la la la." The judge will take all of the facts in this case into account.
__________________
My personal opinions are just that. Don't rely on them - I could be Charlie Ergen's pool boy.


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## kmill14

TexasAg said:


> What exactly is a "subsequent construction"? Didn't you admit earlier that Echo could sell a new DVR with the modified software? I know others have.
> 
> Echo's DVRs used to execute old software that infringed Tivo's software claims (which were process and apparatus claims, but that required the software in order to be infringed). *Are you absolutely unwilling to admit that the currect Echo DVRs with the same hardware and different (possibly non-infringing) software cannot be a "subsequent construction*"?


Thats correct. The KSM ruling is quite clear in seperating devices already adjudicated on (enjoined), and subsequent (or made after) (also referred to as accused) devices.

http://bulk.resource.org/courts.gov/c/F2/776/776.F2d.1522.84-1568.html

****
In view of these and other considerations to be discussed, where the patent owner seeks to enforce an injunction against an enjoined infringer *by reason of a manufacture which was not the subject of the original litigation*, the courts have been uniform in exercising restraint in affording the patent owner the benefit of contempt proceedings
****

Here it clearly spells out "a manufacture...not the subject of the original litigation". Those products DP-501 etc listed in the original verdict have not disappeared. They are still in the hands of the end user, and are the subject of the original litigation.


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## TexasAg

kmill14 said:


> Thats correct. The KSM ruling is quite clear in seperating devices already adjudicated on (enjoined), and subsequent (or made after) (also referred to as accused) devices.


So again I'll ask, if Echo sells a new DVR model with the exact same hardware as the listed DVRs from the injunction and the modified software, would those new DVRs be "subsequent constructions"?
__________________
My personal opinions are just that. Don't rely on them - I could be Charlie Ergen's pool boy.


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## kmill14

TexasAg said:


> Let's assume Echo sells new DVRs with the exact same hardware as the listed DVRs but the new software. Is that new DVR a "subsequent construction"? If it is, you surely can't be saying that the old DVRs with the exact same hardware and the new software are not "subsequent constructions." They would be the exact thing - same hardware and new software.


Are you asking me if E* actually "builds" a new DVR that has the same hardware but new software as older models, *but has never been given to an end user*, whether I consider this a "subsequent construction"? Of course the answer would be YES. The KSM ruling though is quite clear in spelling out devices that have already been adjudicated and enjoined, and new "modificed" devices. The Injunction is also quite clear that the devices already in the hands of the customer are the ones adjudicated on and enjoined, and ordered to be disabled. It is very different from building a "modified" version AFTER THE FACT and selling it.



TexasAg said:


> Again, we must read everything in context. The finding of infringement for Tivo's hardware claims was reversed. The judge may feel somewhat obligated to take that into consideration. Let's not just say "Echo didn't shut them off" and then stick our fingers in our ears and yell "la la la la la la la la." The judge will take all of the facts in this case into account.


I am taking everything in context...aka...as written. There is no seperation of hardware and software claims in the verdict OR the injunction. It just talks about adjudicated/enjoined products.


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## TexasAg

kmill14 said:


> Are you asking me if E* actually "builds" a new DVR that has the same hardware but new software as older models, *but has never been given to an end user*, whether I consider this a "subsequent construction"? Of course the answer would be YES. The KSM ruling though is quite clear in spelling out devices that have already been adjudicated and enjoined, and new "modificed" devices. The Injunction is also quite clear that the devices already in the hands of the customer are the ones adjudicated on and enjoined, and ordered to be disabled. It is very different from building a "modified" version AFTER THE FACT and selling it.


No, I mean would Echo be in contempt if they sold to customers a new DVR model with the same hardware as the listed DVRs and the new modified software? Would you consider that new DVR model to be a "subsequent construction"? It sounds like the answer is yes, is that right?
__________________
My personal opinions are just that. Don't rely on them - I could be Charlie Ergen's pool boy.


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## kmill14

TexasAg said:


> No, I mean would Echo be in contempt if they sold to customers a new DVR model with the same hardware as the listed DVRs and the new modified software? Would you consider that new DVR model to be a "subsequent construction"? It sounds like the answer is yes, is that right?


Thats correct. And those "modified" devices would need to be analyzed for the "colorably different" standard.

But that does not absolve E* from turning off the DVR functionality of devices that were already captured in the scope of the verdict/injunction, which were the Products already in the hands of users.


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## TexasAg

kmill14 said:


> Thats correct. And those "modified" devices would need to be analyzed for the "colorably different" standard.


So for you, it only comes down to the timing of when the DVR hardware is built. It doesn't matter if the old and new DVRs are the exact same inside and outside, it just matters if one was built before or after the trial verdict. Seems a little silly. If one is a "subsequent construction," then so is the other.

In reality, the construction date doesn't matter - it's what is inside that counts. If Echo manufactured brand new DVRs right now with the same hardware and software found to originally infringe, no court would consider that to be a "subsequent construction." The courts would say that is the original infringing product. There must be some type of modification to make something a "subsequent construction."

Also, where does the fact that Echo modified its DVRs after the trial verdict come into your analysis? Echo downloaded the new software during the appeal. Why doesn't the modification after the verdict make those DVRs "subsequent constructions"?

And how does the fact that only Tivo's software claims were found to be infringed come into play? Echo downloaded the new software. Shouldn't the "subsequent construction" determination be based on the software actually found to have infringed, rather than simply the date that the hardware was built (especially since no valid infringement finding has been made for the hardware itself)?
__________________
My personal opinions are just that. Don't rely on them - I could be Charlie Ergen's pool boy.


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## jacmyoung

kmill14 said:


> Wow, you're stubborn. For starters, the "colorably different" standard ONLY applies to "subsequent constructions" of products. The products already adjudicated on and in the hands of the end user are not subject to this standard.
> 
> I have quoted the KSM ruling to prove my point, but you haven't shown anything to say that an adjudicated product in the hands of the end user can qualify as a "subsequent construction."


I have already shown you even if you are correct (which I do not believe so) but let's say you are correct, only the "subsequent construction" applies, the new software is indeed "subsequent construction", because the hardware claim was removed, only the old software product was infringing, and when DISH "subsequently" modified the software and turned it into a subsequent new product, and when DISH threw away the old software product, and replaced it with the new software product, and BTW the new software product had never before been in the end users hands, it was "new", so this case is no different than any case I have cited before, including the KSM case.

And for you to continue to ignore my above argument which I did more than once already, it is just beyond me.


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## kmill14

TexasAg said:


> So for you, it only comes down to the timing of when the DVR hardware is built. It doesn't matter if the old and new DVRs are the exact same inside and outside, it just matters if one was built before or after the trial verdict. Seems a little silly. If one is a "subsequent construction," then so is the other.


Actually, there certainly is a differentiation between devices built EXACTLY the same and those with alterations. As you said...



TexasAg said:


> In reality, the construction date doesn't matter. If Echo manufactured brand new DVRs right now with the same hardware and software found to originally infringe, no court would consider that to be a "subsequent construction." The courts would say that is the original infringing product.


Of course.



TexasAg said:


> Also, where does the fact that Echo modified its DVRs after the trial verdict come into your analysis? *Echo downloaded the new software during the appeal.* Why doesn't the modification after the verdict make those DVRs "subsequent constructions"?


The Devices that were already adjudicated on, enjoined, and ordered to be shut down were the ones already in the hands of the end users. KSM was clear in defining "subsequent" or modified devices as new devices...not as modifications of already enjoined ones.



TexasAg said:


> And how does the fact that only Tivo's software claims were found to be infringed come into play? Echo downloaded the new software. Shouldn't the "subsequent construction" determination be based on the software actually found to have infringed, rather than simply the date that the hardware was built (especially since no valid hardware infringement finding has been made)?


The order was based on the entire product. There is a very specific reason why "hardware" and "software" is not defined in the injunction. Ask jacmyoung how important the wording of injunction is.


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## TexasAg

kmill14 said:


> The Devices that were already adjudicated on, enjoined, and ordered to be shut down were the ones already in the hands of the end users. KSM was clear in defining "subsequent" or modified devices as new devices...not as modifications of already enjoined ones.


Well then, it looks like the trial or appeals court gets the make new law. What do you think is more reasonable law:

(i) A product found to infringe due only to its software is forever "adjudicated to infringe" no matter what software is downloaded to it; or

(ii) A product found to infringe due only to its software is "adjudicated to infringe" only as long as the infringing software is on the product.

I'll place my bet on (ii).
__________________
My personal opinions are just that. Don't rely on them - I could be Charlie Ergen's pool boy.


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## kmill14

jacmyoung said:


> I have already shown you even if you are correct (which I do not believe so) but let's say you are correct, only the "subsequent construction" applies, the new software is indeed "subsequent construction", because the hardware claim was removed, only the old software product was infringing, and when DISH "subsequently" modified the software and turned it into a subsequent new product, and when DISH threw away the old software product, and replaced it with the new software product, and BTW the new software product had never before been in the end users hands, it was "new", so this case is no different than any case I have cited before, including the KSM case.
> 
> And for you to continue to ignore my above argument which I did more than once already, it is just beyond me.


jacmyoung, there is no "software product"...there are just products. There is no seperation of hardware products and software products, and I have addressed this numerous times in the last day or so. The KSM case is VERY clear in defining new, accused, subsequent DEVICES. In this case, the DEVICE is the entire DVR, and KSM's "colorably different" standard does not apply to DEVICES that have already been ruled on.


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## TexasAg

kmill14 said:


> jacmyoung, there is no "software product"...there are just products. There is no seperation of hardware products and software products, and I have addressed this numerous times in the last day or so. The KSM case is VERY clear in defining new, accused, subsequent DEVICES. In this case, the DEVICE is the entire DVR, and KSM's "colorably different" standard does not apply to DEVICES that have already been ruled on.


And you still will not believe that a product with new software developed after an infringement finding is not the same product found to infringe. It is a subsequent construction, especially when only the software claims were infringed. And you can't necessarily rely on a 1985 case to say that Echo can't download new software to its devices to make them non-infringing or non-adjudicated. This issue is relatively new in patent infringement cases since we can't seem to find any cases dealing with it. So my prior post stands - someone gets to make new law. But I will say that the courts will rely on the principles of the past cases - the past cases do not state that a once-infringing product is always infringing regardless of the changes made to it. Unless of course, kmill14, you have a case saying that an infringer cannot modify existing products in the field to make then non-infringing.

Anyway, I hadn't gotten involved in this line of reasoning, but I've said my piece. See everyone on Friday (if that's when Tivo files its motion).
__________________
My personal opinions are just that. Don't rely on them - I could be Charlie Ergen's pool boy.


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## Greg Bimson

TexasAg said:


> Well then, it looks like the trial or appeals court gets the make new law. What do you think is more reasonable law:
> 
> (i) A product found to infringe due to its software is forever "adjudicated to infringe" no matter what software is downloaded to it; or
> 
> (ii) A product found to infringe due to its software is only "adjudicated to infringe" as long as the infringing software is on the product.
> 
> I'll place my bet on (ii).


Except we already get back to this problem...

The injunction enjoins and demands feature removal of eight models. The plaintiff is not asking for an evaluation of the software. The plaintiff is not asking for additional products to be evaulated (yet). The plaintiff simply wants the injunction followed.

The defendants' main defense will be that they've changed the software, but that does not override the injunction language. We don't know what exactly the defendants have done to those products, and that would proably take a couple of years to sort out.

However, we do know what has not been done: compliance with the plain language of the injunction to cease sales and functionality of listed DVR's.


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## TexasAg

Greg Bimson said:


> Except we already get back to this problem...
> 
> The injunction enjoins and demands feature removal of eight models. The plaintiff is not asking for an evaluation of the software. The plaintiff is not asking for additional products to be evaulated (yet). The plaintiff simply wants the injunction followed.


Yes, and the trial court will have to decide whether to hold Echo in contempt given the appeals court ruling, and his language about continued infringement in his injunction order, and the law that requires injunctions to prevent future infringement, and the appeals court decisions that relate to contempt in patent cases. Again, everything will be decided in context, esp. everything said to date about ongoing infringement as the basis for the injunction.

The judge is basically deciding on 9/4 what the proper standard is - if it's only the "face of the injunction," Tivo will probably get the contempt finding right there, since Echo's lawyers will likely be asked to admit that the DVRs are still functional. If it's "more than colorably different" because the DVRs have been modified, the court can let Tivo have discovery. Based on the court's 6/5 order, I don't see the judge deciding before 9/4 which standard applies, and it appears he won't grant discovery until that issue is settled.
__________________
My personal opinions are just that. Don't rely on them - I could be Charlie Ergen's pool boy.


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## Curtis0620

And while the colorably different is determined, the DVR's must be shut off. They can not drag this out forever. At some point a final decision must be issued, which some of us believe has already happened for the listed DVR's.

If the new software still infringes, what happens next? Does DISH get to say we have download new software that now definately doesn't infringe, and the process starts over? Where does it end?


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## jacmyoung

TexasAg said:


> ...Anyway, I hadn't gotten involved in this line of reasoning, but I've said my piece. See everyone on Friday (if that's when Tivo files its motion).


On that note, I think there is even a chance Tivo will take leave of court and ask the judge to go straight to the new software infringement proceeding.

The reason I say such is possible is because the new lawsuit DISH filed in DE, the purpose of such as I speculated was to force Tivo's hand. Tivo most certainly does not want any chance that the DE court accepts the DISH lawsuit, which will mean this court can no longer visit such issue.

If I were Tivo I would seriously consider such leave of court compromise and take the initiative on the new software suit. Not that I think such motion will be likely, just a possibility with clear justification.


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## Greg Bimson

jacmyoung said:


> On that note, I think there is even a chance Tivo will take leave of court and ask the judge to go straight to the new software infringement proceeding.
> 
> The reason I say such is possible is because the new lawsuit DISH filed in DE, the purpose of such as I speculated was to force Tivo's hand. Tivo most certainly does not want any chance that the DE court accepts the DISH lawsuit, which will mean this court can no longer visit such issue.


It is doubtful that TiVo will take leave of court. TiVo is more able to force DISH/SATS hand by receiving a ruling for a "prima facie" violation.

And let's be honest, here. We've seen the first volley from SATS starting the procedure for a lawsuit. What happens during this exchange:

DISH/SATS: Our new software product...
TiVo: There is no "software product". On what models are you asking for a declaratory judgment?
DISH/SATS: Any with the software version x.xx
TiVo: That is not a product, as your customers aren't purchasing software. What receivers are you talking about?

If the answer to this question contains the receivers that are currently enjoined, the suit goes to Texas, and the entire Delaware suit becomes moot.

A finding of contempt makes it that much harder for DISH/SATS to maneuver.


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## kmill14

Another reason not to get too caught up on "new software" verses "old software" and HW claims verses SW claims.

Taken from the Appeals Court verdict:

***
What matters is whether the operations performed by the interaction of software and hardware in the accused DVRs, taken as a whole, are covered by the claim term.
***


----------



## jacmyoung

kmill14 said:


> Another reason not to get too caught up on "new software" verses "old software" and HW claims verses SW claims.
> 
> Taken from the Appeals Court verdict:
> 
> ***
> What matters is whether the operations performed by the interaction of software and hardware in the accused DVRs, taken as a whole, are covered by the claim term.
> ***


Yes and if they, working together, are no longer covered by the claims term (no longer infringe), which is what DISH argues on the modified DVRs, then they are not within the scope of the injunction.

As far as the argument "there is no software product", or change of software can not be considered subsequent construction or re-construction, I hope people who use such argument realize it flies in the face of Judge Folsom's own interpretation.

When the judge put in the injunction to disable the DVR functions on the Infringing Products, I sincerely wish you can all agree what did the judge really know how such act of "subsequent construction", or "re-construction", might be accomplished?

Yes, he knew it could be accomplished by a software download. Why he required such act. Therefore it was this same court that had determined in this case a software download would be a sufficient form of "subsequent construction", of course in his case to use such subsequent construction to avoid future infringement by disabling the DVR functions in the Infringing Products.

By virtue of such permitted act, the same court had clearly allowed a software download as a form of re-constructing the products, to avoid future infringement.

So please let's not continue to argue that a software download may not be considered a subsequent construction, it certainly can, because the judge thought so, otherwise he would have said "disabling the DVR functions by recalling all Infringing Products and removing them from the hands of the end users."

Remember, an injunction must be specific as how the process may be achieved or prevented.


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## TexasAg

kmill14 said:


> Another reason not to get too caught up on "new software" verses "old software" and HW claims verses SW claims.
> 
> Taken from the Appeals Court verdict:
> 
> ***
> What matters is whether the operations performed by the interaction of software and hardware in the accused DVRs, taken as a whole, are covered by the claim term.
> ***


Nice try, but that quote deals with Echo's argument that they were performing something in hardware and not in software. The court was disposing of that argument by saying the hardware/software distinction doesn't matter. The point is that the particular claim term in Tivo's patent covered what Echo was doing, regardless of whether it was done in hardware or software.

Echo's argument now is that they've updated the software to not do what Tivo's software claims require (based on what I've read, that includes no flow control for 3 of the required objects). So yes, the new software is definitely important since Echo is effectively arguing that they no longer do what Tivo's claims require. In other words, they aren't saying that they do something in hardware and not software, they are saying they don't do it all. Big difference. (and I know, I know, I just can't stay away ).
__________________
My personal opinions are just that. Don't rely on them - I could be Charlie Ergen's pool boy.


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## kmill14

TexasAg said:


> But I will say that the courts will rely on the principles of the past cases - the past cases do not state that a once-infringing product is always infringing regardless of the changes made to it. Unless of course, kmill14, you have a case saying that an infringer cannot modify existing products in the field to make then non-infringing.
> 
> Anyway, I hadn't gotten involved in this line of reasoning, but I've said my piece. See everyone on Friday (if that's when Tivo files its motion).


The case law I have found, particularly the KSM ruling, is VERY specific to identify new, non-adjudged devices as those that get to have the "colorably different" standard applied.

So even IF there is no legal precident regarding altering devices "already in the field", there IS legal precident regarding which devices can have the "colorably different" standard applied.

It comes back to the Judge's Order that specifically said to turn off all the DVRs (not software) that are in the hands of the end user. Since there is no precident regarding altering adjudged devices, and there is no ruling stating that this new software would alter the adjudged devices such that they no longer infringe, how can the judge NOT follow his own order?


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## Greg Bimson

jacmyoung said:


> When the judge put in the injunction to disable the DVR functions on the Infringing Products, I sincerely wish you can all agree what did the judge really know how such act of "subsequent construction", or "re-construction", might be accomplished?
> 
> Yes, he knew it could be accomplished by a software download. Why he required such act. Therefore it was this same court that had determined in this case a software download would be a sufficient form of "subsequent construction", of course in his case to use such subsequent construction to avoid future infringement by disabling the DVR functions in the Infringing Products.
> 
> By virtue of such permitted act, the same court had clearly allowed a software download as a form of re-constructing the products, to avoid future infringement.


You mean by virtue of such required act. Yet it still is not done, and the injunction runs until the expiration of the Time Warp patent. And the clear, concise language of the injunction says to disable those products. If they aren't disabled, then the ruling will highly likely be that DISH/SATS is in contempt.


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## TexasAg

kmill14 said:


> The case law I have found, particularly the KSM ruling, is VERY specific to identify new, non-adjudged devices as those that get to have the "colorably different" standard applied.


And yet you continue to ignore the fact that the software on the Echo DVRs now has never been adjudicated as infringing. It is new software. And yes, the software is required in order for Tivo's claims to be infringed here. Tivo's "software" claims are not infringed by Echo's hardware by itself. Echo's DVRs need the software in order to infringe Tivo's software claims. Since the software has changed (and it has been changed since the trial verdict) it is technically a "subsequent construction." It came after the trial verdict. It is not the same product that actually infringed.

The new software is important. As I said above, Echo is not arguing here that they do something in hardware and not software. They are arguing that they don't do something specifically listed in Tivo's software claims in either hardware or software. If that's true, they don't infringe any more (and no, Echo doesn't get to make that call, the court does). If they don't infringe any more, they shouldn't be held in contempt.

You yourself said that a new DVR manufactured after the trial verdict is a "subsequent construction" if it included the new software, right? You can't have it both ways - you can't say a new hardware box is a "subsequent construction" but say the new software is not a "subsequent construction" (esp. when the software on Echo's DVRs is required for infringement). If the hardware is the same both before and after the trial verdict, only the software can make the newer DVRs a "subsequent construction." And if that's true, the same new software makes the old DVRs a "subsequent construction".
__________________
My personal opinions are just that. Don't rely on them - I could be Charlie Ergen's pool boy.


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## kmill14

jacmyoung said:


> So please let's not continue to argue that a software download may not be considered a subsequent construction, it certainly can, because the judge thought so, otherwise he would have said "disabling the DVR functions by recalling all Infringing Products and removing them from the hands of the end users."
> 
> *Remember, an injunction must be specific as how the process may be achieved or prevented.*


You have a strange definition of subsequent construction, and nowhere in the Injunction does the Judge hint that a "software download" equals a "subsequent construction". The complete phrase should be assumed as a "subsequent construction of a device". The word subsequent can be and was interchanged with "new", and "accused" in the KSM ruling, but never interchanged with "adjudicated" or "enjoined".

The point of the injunction was to destroy the ability of those boxes to perform as DVRs.

If E* couldn't have issued a "software download" to do such a task, the Judge could have ordered that all those products must be destroyed in some other way, but at the end of the day, the point was to destroy the functionality of the DVRs. That is still the standing order, no?


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## Curtis0620

TexasAg said:


> And yet you continue to ignore the fact that the software on the Echo DVRs now has never been adjudicated as infringing. It is new software. And yes, the software is required in order for Tivo's claims to be infringed here. Tivo's "software" claims are not infringed by Echo's hardware by itself. Echo's DVRs need the software in order to infringe Tivo's software claims. Since the software has changed (and it has been changed since the trial verdict) it is technically a "subsequent construction." It came after the trial verdict. It is not the same product that actually infringed.
> 
> The new software is important. As I said above, Echo is not arguing here that they do something in hardware and not software. They are arguing that they don't do something specifically listed in Tivo's software claims in either hardware or software. If that's true, they don't infringe any more (and no, Echo doesn't get to make that call, the court does). If they don't infringe any more, they shouldn't be held in contempt.
> 
> You yourself said that a new DVR manufactured after the trial verdict is a "subsequent construction" if it included the new software, right? You can't have it both ways - you can't say a new hardware box is a "subsequent construction" but say the new software is not a "subsequent construction" (esp. when the software on Echo's DVRs is required for infringement). If the hardware is the same both before and after the trial verdict, only the software can make the newer DVRs a "subsequent construction." And if that's true, the same new software makes the old DVRs a "subsequent construction".


It is not "new" software. Has it been completely re-written? It is the original software with modifications. Has it been modified enough to make it more than colorably different?


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## kmill14

TexasAg said:


> And yet you continue to ignore the fact that the software on the Echo DVRs now has never been adjudicated as infringing.
> 
> You yourself said that a new DVR manufactured after the trial verdict is a "subsequent construction" if it included the new software, right? You can't have it both ways - you can't say a new hardware box is a "subsequent construction" but say the new software is not a "subsequent construction" (esp. when the software on Echo's DVRs is required for infringement). If the hardware is the same both before and after the trial verdict, only the software can make the newer DVRs a "subsequent construction." And if that's true, the same new software makes the old DVRs a "subsequent construction".


You continue to miss some key pointss

1) that the adjudicated devices already have a standing order to be turned off...

2)The "subsequent constructions" of devices are clearly seperate devices from "adjudicated" devices in KSM.

3)E* has put new software in these devices, but the devices themselves are currently stilled ruled as infringing devices. There is nothing to prove otherwise.


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## jacmyoung

Greg Bimson said:


> You mean by virtue of such required act. Yet it still is not done, and the injunction runs until the expiration of the Time Warp patent. And the clear, concise language of the injunction says to disable those products. If they aren't disabled, then the ruling will highly likely be that DISH/SATS is in contempt.


But the argument here is not if you believe DISH did not do it, and I believe DISH did it, rather the act of a software download, as required by the judge, is indeed an act of subsequent construction, because the judge said so.


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## TexasAg

kmill14 said:


> You continue to miss some key pointss
> 
> 1) that the adjudicated devices already have a standing order to be turned off...
> 
> 2)The "subsequent constructions" of devices are clearly seperate devices from "adjudicated" devices in KSM.
> 
> 3)E* has put new software in these devices, but the devices themselves are currently stilled ruled as infringing devices. There is nothing to prove otherwise.


I've said this before, but I'll say it again (and then I really do have to bolt).

I believe Echo's position is this - Echo's original software is required to infringe Tivo's claims. At some point, Echo turned off all of its DVRs, disabling the DVR functionality in the DVRs listed in the injunction. Echo then loaded new non-infringing software (according to Echo) onto those DVRs. The DVRs were then turned back on.

The "adjudicated devices" no longer exist - all Echo customers currently have a "subsequent construction," a DVR with the new software. Echo has never reactivated the original software in the listed DVRs. It has only modified the devices that customers had in an attempt to avoid future infringement. The software on those DVRs was modified after the original trial verdict, so the DVRs have to be considered "subsequent constructions."

You can say "KSM applies only to new products and not to existing products" until the cows come home. The principle of KSM is that devices found to infringe are subject to contempt, but modified devices that are "more than colorably different" are not. Show me the court case that says you can't modify an infringing device in the field to create a "subsequent construction," and you'll prove your point. Otherwise, I will continue to place my bet on the court (whatever court that is) saying that modifying the software that led to an infringement finding creates a "subsequent construction."

You help my case greatly when you acknowledge that Echo could sell a DVR with the exact same hardware as a listed DVR and the modified software and that box is a "subsequent construction." With that acknowledgement, you are saying that the same device is either a "subsequent construction" or not depending on when it was built, even though they are identical inside.
__________________
My personal opinions are just that. Don't rely on them - I could be Charlie Ergen's pool boy.


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## jacmyoung

kmill14 said:


> ...If E* couldn't have issued a "software download" to do such a task, the Judge could have ordered that all those products must be destroyed in some other way, but at the end of the day, the point was to destroy the functionality of the DVRs. That is still the standing order, no?


Good thing you said that, what would have happened had the software download would not be able to subsequently construct the DVRs? You believe the DVRs would have been asked to be physically destroyed or taken away from the hands of the end users.

Anyone else having the same belief? I will only respond to such idea if there is a second person in the audience agreeing with him.


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## Greg Bimson

jacmyoung said:


> But the argument here is not if you believe DISH did not do it, and I believe DISH did it, rather the act of a software download, as required by the judge, is indeed an act of subsequent construction, because the judge said so.


The only subsequent construction regarding the injunction is to have the listed DVR's disabled. That is all the judge's order states.

Talk about putting words in someone's mouth.


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## Curtis0620

Is DISH still selling any of these products? If so, did they open all these and modify the software before they sold them? If not, they are in violation of the injunction regardless of what they do to them later.


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## Curtis52

> "Under the standard we adopt, a judgment of contempt against an enjoined party for violation of an injunction against patent infringement by the making, *using* or selling of a modified device may not be upheld without a finding that the modified device falls within the admitted or adjudicated scope of the claims and is, therefore, an infringement."


http://bulk.resource.org/courts.gov/c/F2/776/776.F2d.1522.84-1568.html


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## James Long

Curtis0620 said:


> It is not "new" software. Has it been completely re-written? It is the original software with modifications. Has it been modified enough to make it more than colorably different?


How can you make a statement then question your own statement?

Completely re-written? Perhaps. The old software with everything that makes it a DVR removed and new DVR coding inserted. Similar menu structures and operation but code not using Tivo's patented process. Quite possible.

The command of the injunction is to disable the DVR function of those particular DVRs ... DISH has done that, they even took the next step and removed the offending code. In compliance. The question is can they replace that code with new DVR code (as they have done). I say yes, since there is no "death penalty" that says DISH can no longer offer any DVR at any time ever. DISH is simply delivering the replacement DVRs via satellite.


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## James Long

Curtis0620 said:


> Is DISH still selling any of these products? If so, did they open all these and modify the software before they sold them? If not, they are in violation of the injunction regardless of what they do to them later.


IIRC the named products are mostly discontinued (I don't have the list handy and I too am in a hurry). Any that are now reaching the market should be referbs, which would have new software.

The ViP models (not in the injunction but perhaps not more than colorably different) come with a very simple software that can be used to point the dish and download whatever the most current new version is available. The DVR software isn't on a new ViP until it is installed.


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## nobody99

Curtis52 said:


> http://bulk.resource.org/courts.gov/c/F2/776/776.F2d.1522.84-1568.html


There's that pesky "they are talking only about a new device" issue again.



> The question is presented as to how a patentee should be allowed to proceed when following a successful infringement suit the infringer modifies the infringing structure and continues as before. Allowing the patentee to proceed by a summary contempt proceeding in all cases *would unnecessarily deter parties from marketing new devices that are legitimately outside the scope of the patent in question*. On the other hand, to require in each instance the patentee to institute *a new infringement suit diminishes the significance of the patent and the order of the court holding the patent to be valid and infringed.* Obviously there must be a dividing point between those cases which should be handled by a summary contempt proceeding and those cases which should be more fully viewed in an infringement proceeding. Courts have uniformly held that the standard to be applied in determining the dividing point is whether the alleged offending device is "merely 'colorably' different from the enjoined device or from the patent."
> 
> ...
> 
> But where *infringement by the new device is not clear* on the face of the matter, and there are substantial issues for the determination of the court, the plaintiff may not have them determined in contempt proceedings, but must bring a supplemental bill for an *injunction covering the new device, or institute a wholly new suit for such an injunction.*


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## kmill14

James Long said:


> The command of the injunction is to disable the DVR function of those particular DVRs ... DISH has done that, *they even took the next step* and removed the offending code. *In compliance. * The question is can they replace that code with new DVR code (as they have done). I say yes, since there is no "death penalty" that says DISH can no longer offer any DVR at any time ever. DISH is simply delivering the replacement DVRs via satellite.


Just to be clear, it wasn't offending "code"...it was offending "devices", and they were never removed. The order was clear: disable the functionality of those devices to perform as DVRs. There was no "next step" order in the injunction, and there certainly was no "next step" order in the junction that said to turn them back on.

Dish never delivered replacement "devices" (aka DVRs...aka hardware AND software combined)...they replaced software. Software was not the scope of the injunction...entire products were.


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## Curtis52

> "The authorities are uniform that the modified device must be an infringement to find contempt of such an injunction. See, e.g., Panther Pumps Equipment Company, Inc. v. Hydrocraft, Inc., 566 F.2d 8, 18-20"


.
.


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## jacmyoung

Greg Bimson said:


> The only subsequent construction regarding the injunction is to have the listed DVR's disabled. That is all the judge's order states.
> 
> Talk about putting words in someone's mouth.


But you seem to now agree the software download ordered by the judge is a subsequent construction, only that you do not believe any other software downloads may be considered subsequent constructions? Why? Because the judge did not say they are? Are we just so incapable of making any reasonable deduction anymore? What are we, 2-year-olds?

But wait, the judge did not even say explicitly his software download was a subsequent construction, but you nevertheless agreed it is, because you do have the ability to deduct, you just refuse to deduct when the outcome goes against you, that's all.


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## nobody99

jacmyoung said:


> But you seem to now agree the software download ordered by the judge is a subsequent construction, only that you do not believe any other software downloads may be considered subsequent constructions? Why? Because the judge did not say they are? Are we just so incapable of making any reasonable deduction anymore? What are we, 2-year-olds?
> 
> But wait, the judge did not even say explicitly his software download was a subsequent construction, but you nevertheless agreed it is, because you do have the ability to deduct, you just refuse to deduct when the outcome goes against you, that's all.


You have convinced all of us. We all agree with you 100%. :lol:


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## Greg Bimson

jacmyoung said:


> But wait, the judge did not even say explicitly his software download was a subsequent construction, but you nevertheless agreed it is, because you do have the ability to deduct, you just refuse to deduct when the outcome goes against you, that's all.


That's because I am simply trying to use the terms you understand. I honestly do not believe it is a subsequent construction.


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## Greg Bimson

jacmyoung said:


> Are we just so incapable of making any reasonable deduction anymore? What are we, 2-year-olds?


Well, let's make this point very clear: this is exactly how the parties in the suit are behaving. All TiVo wants is its licensing agreement. The 2-year-old here is trying to game the system to any advantage possible, and my feeling is that will end at some point.

Yes, there is such thing as a vigorous defense. I just don't believe for one second the defense against the perceived violation of the injunction order will even come close to standing.

Did you just use the word "reasonable" regarding laws?


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## jacmyoung

Well, you people asked for it, and I have found one, in which the infringer was enjoined from the continued use of an infringing software in the network systems already at the hands of their end users, and after the infringer continued the operation, only with a new software patch, the patentee asked the judge to issue a contempt but was denied becasue the judge looked at the new patch and decided there was no clear evidence the new patch still infringed:

http://www.networkworld.com/news/2002/0702akwin.html

http://www.theregister.co.uk/2002/11/05/court_not_persuaded_c_w/

I will research for details on the injunction and more info. But just for starter, in denying the patentee's motion for contempt of court the judge said:

"I am not persuaded that the revised version of the Footprint 2.0 does infringe any of the claims as to which the jury found infringement by the prior version of defendant's service," court documents said.

Keep in mind the injunction enjoined the infringer from the continued use of such software with the end users, and in the patentee's view the injunction would cripple the infringer's business. The infringer issues a patch to replace the infringing software with a revised one, and contineud as before, and that was enough to convince the judge not to find the infringer in contempt, even though the infringer never stopped the use of the systems at the hands of the end users.

One more link:

http://findarticles.com/p/articles/mi_m0EIN/is_2002_August_22/ai_90671024

Notice the patentee's mentioning of the infringer's "workaround" not successful in their view.


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## jacmyoung

Now also keep in mind the injunction above was very severe, it required the infringer to completely shut down the whole service, due to the infringement of the software as found by the jury earlier.

In the face of such broad injunction, the infringer "did not comply", rather simply sent out a software patch to revise the infringing old software. And when the same judge who issued that injunction to shut down the service, looked at that new patch, and decided there was no convincing evidence the new patch still infringed, the judge said sorry, the infringer was not in contempt.


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## nobody99

jacmyoung said:


> Now also keep in mind the injunction above was very severe, it required the infringer to completely shut down the whole service, due to the infringement of the software as found by the jury earlier.
> 
> In the face of such broad injunction, the infringer "did not comply", rather simply sent out a software patch to revise the infringing old software. And when the same judge who issued that injunction to shut down the service, looked at that new patch, and decided there was no convincing evidence the new patch still infringed, the judge said sorry, the infringer was not in contempt.


Interesting, from the third article you quote.



> The Court's Order requires Cable & Wireless to shut down Digital Island's Footprint 2.0 service *as configured and described at trial*


Hmm. Sounds like the injunction asked for a specific thing to be shut down, not a product.

It would be very helpful if you could find a link for the actual injunction. Without seeing that, it's not very helpful.


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## nobody99

Well, there, how about that:



> IT IS HEREBY ORDERED that:
> 
> Defendants, including Digital Island (now known as Cable & Wireless Internet Services, Inc.), their officers, agents, servants, employees, and attorneys are permanently enjoined and prohibited from making, using, selling, offering for sale, or importing into the United States the patented inventions claimed in claims 1, 3, 5 and 9 of the '703 patent, and from active inducement of infringement of these claims of the '703 patent. *This injunction extends to Digital Island's Footprint 2.0 service, as configured and described at trial.*


https://www.fastcase.com/Google/Sta...675c51dd3c7d36e5bc0e855f14243a5ced24b0a5a790e


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## jacmyoung

nobody99 said:


> ...Hmm. Sounds like the injunction asked for a specific thing to be shut down, not a product...


Right, to shut down the entire service, which was why the patentee at the time had predicted the infringer's such business would be crippled.

But the question people need to ask is did the infringer shut down the service? Was the infringer in contempt for not shutting down the service?

An injunction can be broad, the judge had wide latitude in that, but when it came to the issue on contempt, the standard used to make a decision was entirely different.

What people must stop doing is trying to convince yourself that what's good for an injunction, is what's good for an contempt. No it is not so.


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## James Long

kmill14 said:


> Just to be clear, it wasn't offending "code"...it was offending "devices", and they were never removed. The order was clear: disable the functionality of those devices to perform as DVRs. There was no "next step" order in the injunction, and there certainly was no "next step" order in the junction that said to turn them back on.
> 
> Dish never delivered replacement "devices" (aka DVRs...aka hardware AND software combined)...they replaced software. Software was not the scope of the injunction...entire products were.


Just to be clear, the JUDGE gets the task of deciding whether the injunction is being followed or not. There is NOTHING in the injunction that requires DISH replace the hardware or cease using the hardware. Absolutely NOTHING.

And absolutely NOTHING in the injunction nor the law that prevents DISH from making another attempt at offering a DVR to their customers. Even if that offer uses the same hardware. You're reading restrictions into the injunction that ABSOLUTELY do not exist.

The products (even "Infringing Prooducts") are a combination of hardware and software. The injunction on it's face allows DISH to continue to offer and operate the product. Only the DVR function need to be disabled. That leaves the door open for the hardware to be used for other purposes ... perhaps as a non-DVR receiver or perhaps (operating under different software) as a non-infringing DVR.

Don't shut a door that the court has not shut.


----------



## nobody99

jacmyoung said:


> What people must stop doing


Again, I would like to request of you to not tell me what I can and can't do.


----------



## nobody99

jacmyoung said:


> An injunction can be broad, the judge had wide latitude in that, but when it came to the issue on contempt, the standard used to make a decision was entirely different.


Wow, I don't even know what you are saying. I think, and correct me if I'm wrong, is that the judge has wide latitude in issuing an injunction that he cannot enforce.

Is that really what you are saying?


----------



## James Long

nobody99 said:


> Again, I would like to request of you to not tell me what I can and can't do.


Discuss the topic, not the people.

:backtotop TiVo vs Echostar


----------



## kmill14

James Long said:


> Just to be clear, the JUDGE gets the task of deciding whether the injunction is being followed or not. There is NOTHING in the injunction that requires DISH replace the hardware *or cease using the hardware*. Absolutely NOTHING.


I agree completely that it is up the Judge. Of course if you read E*'s recent filing, they seem to think THEY get that task too. This is what the Judge wrote regarding the "hardware":

"disable all storage to and playback from a hard disk drive of television data"

Now what else can a hard disk drive do if it can't store data?



James Long said:


> And absolutely NOTHING in the injunction nor the law that prevents DISH from making another attempt at offering a DVR to their customers. Even if that offer uses the same hardware. You're reading restrictions into the injunction that ABSOLUTELY do not exist.


I agree, except with regards to the hardware already connected to the devices (Products) already adjudicated on and in the hands of end users. Again, the Judge was quite clear on THOSE products/devices: disable the DVR functionality.



James Long said:


> The products (even "Infringing Prooducts") are a combination of hardware and software. The injunction on it's face allows DISH to continue to offer and operate the product. Only the DVR function need to be disabled. That leaves the door open for the hardware to be used for other purposes ... perhaps as a non-DVR receiver or perhaps (operating under different software) as a non-infringing DVR.
> 
> Don't shut a door that the court has not shut.


I agree that the device can be used as a non-DVR receiver (assuming that would work after disabling the DVR functionality). But the injunction order is again clear: the adjudicated devices must have their DVR functionality disabled.


----------



## TexasAg

jacmyoung said:


> Well, you people asked for it, and I have found one, in which the infringer was enjoined from the continued use of an infringing software in the network systems already at the hands of their end users, and after the infringer continued the operation, only with a new software patch, the patentee asked the judge to issue a contempt but was denied becasue the judge looked at the new patch and decided there was no clear evidence the new patch still infringed:


Excellent find, jacmyoung. Perhaps some will admit now that this issue as not as clear-cut and that Echo may have a valid defense.
__________________
My personal opinions are just that. Don't rely on them - I could be Charlie Ergen's pool boy.


----------



## jacmyoung

kmill14 said:


> I agree completely that it is up the Judge. Of course if you read E*'s recent filing, they seem to think THEY get that task too. This is what the Judge wrote regarding the "hardware":
> 
> "disable all storage to and playback from a hard disk drive of television data"
> 
> Now what else can a hard disk drive do if it can't store data?
> 
> I agree, except with regards to the hardware already connected to the devices (Products) already adjudicated on and in the hands of end users. Again, the Judge was quite clear on THOSE products/devices: disable the DVR functionality.
> 
> I agree that the device can be used as a non-DVR receiver (assuming that would work after disabling the DVR functionality). But the injunction order is again clear: the adjudicated devices must have their DVR functionality disabled.


The judge in the above case ordered the infringer to shut the entire service down, because the service at the time when the injunction was issued was using an infringing software. Did the infringer shut down the service? No they did not. What they did was sent a new software patch to revise the infringing software, and that was enough to avoid a contempt.


----------



## nobody99

James Long said:


> Discuss the topic, not the people.
> 
> :backtotop TiVo vs Echostar


I'm glad you agree with me


----------



## Greg Bimson

jacmyoung said:


> they did not. What they did was sent a new software patch to revise the infringing software, and that was enough to avoid a contempt.


Correct.


> Defendants, including Digital Island (now known as Cable & Wireless Internet Services, Inc.), their officers, agents, servants, employees, and attorneys are permanently enjoined and prohibited from making, using, selling, offering for sale, or importing into the United States the patented inventions claimed in claims 1, 3, 5 and 9 of the '703 patent, and from active inducement of infringement of these claims of the '703 patent. *This injunction extends to Digital Island's Footprint 2.0 service, as configured and described at trial.*


And with a download, Digital Island's Footprint 2.0 service became something else.

However, and DP-501 and the rest of the Infringing Products are still DP-501 and Infringing Products. Also, there isn't any language in the injunction such as what was in the Digital Island suit.

The injunction was clear and concise. The injunction prohibited a "model" of software that infringed. That model was removed, and Digital Island was able to continue on as before with a modified product.

However, with that stated, this injunction prohibits the sale of eight models of DVR's, called "Infringing Products". The injunction here is clear and concise. A collateral attack on an injunction is prohibited when the infringer already had a chance to appeal. Therefore, the order to disable the "Infringing Products" stands.

Thanks to jacmyoung for the find, supporting the injunction TiVo has received.


----------



## TexasAg

Greg Bimson said:


> Thanks to jacmyoung for the find, supporting the injunction TiVo has received.


Yeah, that's what the case does. In a case where an infringer is instructed to stop operating a particular service, the infringer doesn't and instead provides a software work-around and is not found in contempt. That's nothing like this case, where the infringer was told to stop operating particular devices, the infringer doesn't and instead provides a software work-around. 



Greg Bimson said:


> Also, there isn't any language in the injunction such as what was in the Digital Island suit.


The injunction specifically lists the service provided by the infringer. Sounds remarkably similar to naming products that infringe.



Greg Bimson said:


> The injunction prohibited a "model" of software that infringed. That model was removed, and Digital Island was able to continue on as before with a modified product.


The software on the Echo DVRs that infringed has also been removed. It has been replaced by arguably non-infringing software. Again, sounds remarkably similar.



Greg Bimson said:


> And with a download, Digital Island's Footprint 2.0 service became something else.


And with Echo's download, Echo's DVRs became something different. It's almost magical. 
__________________
My personal opinions are just that. Don't rely on them - I could be Charlie Ergen's pool boy.


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## Greg Bimson

And what is today's formerly infringing and possibly still infringing DP-501 called? Why it is exactly the same name, and funny enough listed as a receiver that is to be disabled.

At least the product in the Digital Island injunction was removed. Not so in this case.

Game. Set. Match.


----------



## scooper

Greg Bimson said:


> And what is today's formerly infringing and possibly still infringing DP-501 called? Why it is exactly the same name, and funny enough listed as a receiver that is to be disabled.
> 
> At least the product in the Digital Island injunction was removed. Not so in this case.
> 
> Game. Set. Match.


First thing we've ever agreed about for this discussion - we win, you lose.


----------



## Curtis52

Greg Bimson said:


> And what is today's formerly infringing and possibly still infringing DP-501 called? Why it is exactly the same name, and funny enough listed as a receiver that is to be disabled.


Companies aren't required to change model numbers when software changes. In fact it almost never happens. Nevertheless, the software is modified.


----------



## TexasAg

Greg Bimson said:


> And what is today's formerly infringing and possibly still infringing DP-501 called? Why it is exactly the same name, and funny enough listed as a receiver that is to be disabled.
> 
> At least the product in the Digital Island injunction was removed. Not so in this case.


Really, the software required to infringe Tivo's software claims hasn't been removed? The software required to infringe Tivo's software claims hasn't been replaced?

This case does nothing to help Tivo.



Greg Bimson said:


> Game. Set. Match.


Unless your name is Judge Folsom in real life, you don't get the make that call.
__________________
My personal opinions are just that. Don't rely on them - I could be Charlie Ergen's pool boy.


----------



## jacmyoung

But Greg did not even try to understand what was that "Footprint 2.0 Service", it was not a "software model", rather a service provided to the Internet servers a way to reduce the traffic jam by redirecting the web browser requests to alternate servers, in general term of course. In offering such service, C&W used several of their own patents, but was found that one of the methods they used infringed on the 703 patent claims licensed exclusively to Akamai. As a result the injunction was entered to, among other things, to prohibit C&W from providing the "Footprint 2.0 Service" entirely, because the "software model", as Greg called it and used by the "Footprint 2.0 Service", infringed on the 703 patent.

This is no different than when the DISH DVR software was found to have infringed, and the injunction ordered the DVRs that used such infringing software to be shut down.

In the above case law, the infringer downloaded a software patch to revise the software used by the Footprint 2.0 Service, notice they did not even change the name of the service, still called it Footrprint 2.0 Service, the only thing that changed was the software, and with that patch, the software no longer infringed on the 703 patent claims. By doing a software download, C&W avoided a contempt ruling, while continued their Footprint 2.0 Internet traffic control service without interruption, even though the injunction was clear, the Footprint 2.0 service itself was under the injunction.


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## rocatman

jacmyoung said:


> Well, you people asked for it, and I have found one, in which the infringer was enjoined from the continued use of an infringing software in the network systems already at the hands of their end users, and after the infringer continued the operation, only with a new software patch, the patentee asked the judge to issue a contempt but was denied becasue the judge looked at the new patch and decided there was no clear evidence the new patch still infringed:
> 
> http://www.networkworld.com/news/2002/0702akwin.html
> 
> http://www.theregister.co.uk/2002/11/05/court_not_persuaded_c_w/
> 
> I will research for details on the injunction and more info. But just for starter, in denying the patentee's motion for contempt of court the judge said:
> 
> "I am not persuaded that the revised version of the Footprint 2.0 does infringe any of the claims as to which the jury found infringement by the prior version of defendant's service," court documents said.
> 
> Keep in mind the injunction enjoined the infringer from the continued use of such software with the end users, and in the patentee's view the injunction would cripple the infringer's business. The infringer issues a patch to replace the infringing software with a revised one, and contineud as before, and that was enough to convince the judge not to find the infringer in contempt, even though the infringer never stopped the use of the systems at the hands of the end users.
> 
> One more link:
> 
> http://findarticles.com/p/articles/mi_m0EIN/is_2002_August_22/ai_90671024
> 
> Notice the patentee's mentioning of the infringer's "workaround" not successful in their view.


I hope the Dish/SATS legal team is following this thread because this case appears to provide some good ammunition in this case. I guess that Dish/SATS can state that the Footprint 2.0 Service is like the DVR service on the satellite receivers in question. In addition, I am positive Echostar has changed the software version number for every one of the applicable DVRs.


----------



## Greg Bimson

Greg Bimson said:


> At least the product in the Digital Island injunction was removed. Not so in this case.





TexasAg said:


> Really, the software required to infringe Tivo's software claims hasn't been removed?


This is comparing apples to a space shuttle.

The injunction required Digital Island to remove the offending, infringing product. Digital Island did that. This injunction requires DISH/SATS to disable eight models of receivers. Hmm.


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## Greg Bimson

rocatman said:


> I hope the Dish/SATS legal team is following this thread because this case appears to provide some good ammunition in this case.


And it provides no ammuntion against a "prima facie" injunction.


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## James Long

kmill14 said:


> "disable all storage to and playback from a hard disk drive of television data"
> 
> Now what else can a hard disk drive do if it can't store data?


Store non-television data? Precise language there. 
Would you consider the EPG "television data"?


> I agree that the device can be used as a non-DVR receiver (assuming that would work after disabling the DVR functionality). But the injunction order is again clear: the adjudicated devices must have their DVR functionality disabled.


Does the injunction say "and never enable that hardware as a DVR again!"?

Nope. The door is there.



rocatman said:


> I hope the Dish/SATS legal team is following this thread because this case appears to provide some good ammunition in this case.


They've got it under control.


----------



## jacmyoung

rocatman said:


> I hope the Dish/SATS legal team is following this thread because this case appears to provide some good ammunition in this case. ...


Like James said, DISH does not have to check this thread, because this thread is about people who are not familiar with the law (me included, except a few members who actually practice law) to argue for argument sake, any way they want. DISH will be in front of a judge, who does not argue for argument sake, and the judge also knows the law and the rules.

DISH only needs to make sure they themsleves follow the rules and the law. They did not at one time and got caught, hopefully they have learned a lesson.


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## jacmyoung

Greg Bimson said:


> This is comparing apples to a space shuttle.
> 
> The injunction required Digital Island to remove the offending, infringing product. Digital Island did that. This injunction requires DISH/SATS to disable eight models of receivers. Hmm.


You must be kidding me, "Digital Island Footprint 2.0 Service" was a service I described above, a service that allowed Internet server providers, someone like DBStalk.com, to avoid traffic congestion, when too many argumentative people like us taking up a lot of BW and making too many website research requests.

The service provider C&W was ordered by the judge to stop the above service, because one of the many methods used by the software loaded up to make the service possible, infringed. C&W subsequently downloaded a software patch to replace that particular infringing method so to "workaround" the patent, as the patentee Akamia themselve admitted it. Akamia asked the judge to find C&W in contempt of the injunction likely becasue C&W did not stop the service.

The judge only needed to look at the new software patch to decide that C&W was not in contempt, because the software patch made the service no longer infringe, even though the name of the service never changed, and even though such named service was ordered to stop by that injunction.


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## nobody99

scooper said:


> First thing we've ever agreed about for this discussion - we win, you lose.


Oooh, except for that $125+ million in escrow that will be released in a month or two once the Supreme Court laughs at Dish's request to appeal. Sorry, maybe laugh is a strong word. How about "giggle." :lol:


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## nobody99

jacmyoung said:


> You must be kidding me, "Digital Island Footprint 2.0 Service" was a service I described above, a service that allowed Internet server providers, someone like DBStalk.com, to avoid traffic congestion, when too many argumentative people like us taking up a lot of BW and making too many website research requests.
> 
> The service provider C&W was ordered by the judge to stop the above service, because one of the many methods used by the software loaded up to make the service possible, infringed. C&W subsequently downloaded a software patch to replace that particular infringing method so to "workaround" the patent, as the patentee Akamia themselve admitted it. Akamia asked the judge to find C&W in contempt of the injunction likely becasue C&W did not stop the service.
> 
> The judge only needed to look at the new software patch to decide that C&W was not in contempt, because the software patch made the service no longer infringe, even though the name of the service never changed, and even though such named service was ordered to stop by that injunction.


And if the injunction against read "turn off the DVR functions that are provided by version 4.235 of the DISH Operating System or any software merely colorably different" then they would be good.

I can't remember who it was, but someone here has repeatedly pointed out that the wording in an injunction is very carefully chosen. So the exclusion of such words would have been done intentionally.


----------



## scooper

Nobody said Echo doesn't owe Tivo money on past infringement.

But I think you're all in for a rude awakening if you think the "previously Infringing Products" will be shutdown in any way, shape or form.


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## jacmyoung

nobody99 said:


> And if the injunction against read "turn off the DVR functions that are provided by version 4.235 of the DISH Operating System or any software merely colorably different" then they would be good.
> 
> I can't remember who it was, but someone here has repeatedly pointed out that the wording in an injunction is very carefully chosen. So the exclusion of such words would have been done intentionally.


Did the above case mention any software version in the injunction? It did not even mention the software, only the name of the patent, and the name of the service to be shut off.

Did the infringer shut off the service? No they did not, was the infringer in contempt? No they were not.


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## James Long

jacmyoung said:


> Did the above case mention any software version in the injunction? It did not even mention the software, only the name of the patent, and the name of the service to be shut off.





> Defendants, including Digital Island (now known as Cable & Wireless Internet Services, Inc.), their officers, agents, servants, employees, and attorneys are permanently enjoined and prohibited from making, using, selling, offering for sale, or importing into the United States *the patented inventions claimed in claims 1, 3, 5 and 9 of the '703 patent*, and from active inducement of infringement of these claims of the '703 patent. This injunction extends to Digital Island's Footprint 2.0 service, as configured and described at trial.


Unfortunately the injunction against DISH doesn't say "the patented inventions claimed in claims 1, 5, 21, 23, 32, 36, 52, 31 and 61 of the '389 patent" (claim 1 "hardware" process, claim 32 "hardware" apparatus, claim 31 "software" process and claim 61 "software" apparatus being the subject of the appeal). It says "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".

"Infringing Products" is earlier defined in the injunction as "DP-501; DP-508; DP-510; DP-522; DP-625; DP-721; DP-921; and the DP-942."

The Digital Island injunction is against the claims of the patent ... not the end result other than the service "as configured and described at trial." The injunction does not cover the service if it isn't configured as described at trial.

It is still up to Judge Folsom to decide if his injunction is being followed. Even though I doubt he has put in more than a fraction of the time those in this forum have thinking about the injunction and parsing every word he knows more that anyone what those words meant. We'll find out in about three months.


----------



## kmill14

jacmyoung,

Your articles were from 2002....did you happen to read this case log from the Fed. Appeals Court in 2003 on the same trial?

http://rds.yahoo.com/_ylt=A0geu6O9D...13357629/**http://pub.bna.com/ctlr/031007.htm

Also, as you have repeatedly pointed out, injunctions are specifically worded for a reason:

*****
The Court's Order requires Cable & Wireless to shut down Digital Island's Footprint 2.0 service as configured and described at trial
*****

The wording of this injunction above is very clear as to C&W's boundaries.

Folsom never wrote into his injunction that E* needed to shut down 8 models of DVRs only "as configured and described at trial". He just said to shut them down.

And shut them down is very clear....it doesn't say shut them down and turn them back on.


----------



## nobody99

scooper said:


> Nobody said Echo doesn't owe Tivo money on past infringement.
> 
> But I think you're all in for a rude awakening if you think the "previously Infringing Products" will be shutdown in any way, shape or form.


I think you're completely misunderstanding the emotion of TiVo fans. we certainly won't be rudely awakened. It'll be more like being a kid on Christmas morning after just getting a new Playstation 3 (the original judgement). Just when we thought we'd opened all the presents, we also get an xbox 360 (contempt).

If we don't get the 360, we'll still have lots of fun playing with the PS3.


----------



## Greg Bimson

James Long said:


> Does the injunction say "and never enable that hardware as a DVR again!"?


Well, let's break out the carefully worded injunction, but use kmill14's version of it...


> Defendants are hereby FURTHER ORDERED to, within thirty (30) days of the issuance of this order, disable the DVR functionality (i.e., disable all storage to and playback from a hard disk drive of television data) in all but 192,708 units of the [products DP-501; DP-508; DP-510; DP-522; DP-625; DP-721; DP-921; and the DP-942] that have been placed with an end user or subscriber.


There is this one section that says "disable the DVR functionality". It is in present tense. There is another section, unquoted, which states the injunction runs until the Time Warp patent expires.

The only question which needs to be answered: As of this moment, are the Infringing Prodcuts' DVR functions working?

The injunction states a given action within a specific time frame; "disable the DVR functionality" until the expiration of the Time Warp patent. Just because the length of the disablement is not in the same paragraph doesn't mean there is no time frame.


----------



## Greg Bimson

scooper said:


> But I think you're all in for a rude awakening if you think the "previously Infringing Products" will be shutdown in any way, shape or form.


Well, just change "previously Infringing Products" to "Infringing Products", and I'll still agree with you.

DISH/SATS would rather be in contempt than to disable DVR functionality. The most bone-headed maneuver (sorry Geico Cavemen) would be if DISH/SATS does disable DVR functionality. Customers would flat out leave.


----------



## jacmyoung

kmill14 said:


> jacmyoung,
> 
> Your articles were from 2002....did you happen to read this case log from the Fed. Appeals Court in 2003 on the same trial?
> 
> http://rds.yahoo.com/_ylt=A0geu6O9D...13357629/**http://pub.bna.com/ctlr/031007.htm
> 
> Also, as you have repeatedly pointed out, injunctions are specifically worded for a reason:
> 
> *****
> The Court's Order requires Cable & Wireless to shut down Digital Island's Footprint 2.0 service as configured and described at trial
> *****
> 
> The wording of this injunction above is very clear as to C&W's boundaries.
> 
> Folsom never wrote into his injunction that E* needed to shut down 8 models of DVRs only "as configured and described at trial". He just said to shut them down.
> 
> And shut them down is very clear....it doesn't say shut them down and turn them back on.


That appeals court decision caused the judge to modify her injunction to exclude the claims of the patent that were found not being infringed from the original injunction. But it did not cause her to remove the language to shut down the service. The appeals court in that case was right, though it was not its goal to frame the injunction for the judge, still one can not enjoin a device that was not infringing.

A similar comparison would be if Judge Folsom in his initial injunction, in addition to all the things, added DISH was enjoined from furture infringement of the saftware patent claims A, B, C, and also enjoined from the hardware patent claims D, E, F, then the appeals court would have asked the judge to remove the hardware claims from the injunction, because the hardware verdict was reversed.

I agree that Judge Folsom's injunction is more broad, but so was that injunction in the above case. The question is not which one is broader, the question is whether the infringer was in contempt by not following the exact language of the injunction. Did C&W follow the exact language of the injunction by shutting down the service as described in the injunction? No they did not. The service was never interrupted, never shut down. Therefore one must recognize, the term "shutt down", similar to the term "disabling", are there to service one purpose, to prohibit further infringement, not there to be a literal weapon to punish the infringer.

But as I have said before, even if you are correct DISH must disable the Infringing Products, they did, at the time of the modification, when the new software was downloaded, the DVRs were disabled entirely, no DVR functions, no nothing, not even the ability to watch TV at all, then after re-booting, the modified, non-infringing products continued as before.

Is this the kind of defense you insist DISH use? Because such literal defense is equally unnecessary as you insisting on the face of the injunction argument.

I have agreed in this case, the judge can found DISH in contempt, in fact the judge in the above case could have found C&W in contempt on the literal interpretation, but the appeals court will overturn such ruling, and I have provided ample case law and the law itsself to support my opinion.


----------



## jacmyoung

Greg Bimson said:


> ...The only question which needs to be answered: As of this moment, are the Infringing Prodcuts' DVR functions working?...


The answer is no, because the Infinging Products were removed, replaced with the modified products that no longer infringed. The Infringing Products are gone, no longer, history, just because the products still bear the same names, looks and colors, is irrelevant in defining an infringing product, just like in the early case, whether the service was still called Footprint 2.0 Service or not was irrelevant, it is the substance of the products that defines them, whether they are still the Infringing Products or not.

In fact many of you had already agreed had DISH recalled all the DVRs on the list, modified them in their warehouse, and slapped a new name on them, shipped them back, DISH would not be in contempt. If you still beleive in so, then I hope you are all able to accept that the only difference here is the method in which such modification should take place. The judge obviously considered the software download as a legitimate way to modifiy the products, why? Because he himself order the use of such legitimate method to achieve the goal of prohibiting further infringement.

You can not have it both ways, on one hand the software download must be recognized as a legitimate way to disable the infringing products, yet the same method will not be legitimate for workaround. I don't think a reasonable person can insist he has it both ways.


----------



## Curtis0620

jacmyoung said:


> The answer is no, because the Infinging Products were removed, replaced with the modified products that no longer infringed. The Infringing Products are gone, no longer, history, just because the products still bear the same names, looks and colors, is irrelevant in defining an infringing product, just like in the early case, whether the service was still called Footprint 2.0 Service or not was irrelevant, it is the substance of the products that defines them, whether they are still the Infringing Products or not.


This is where we disagree. The products are infringing until proven otherwise. So as of today they are infringing. Just because DISH says they no longer do, does not make it so.


----------



## Greg Bimson

jacmyoung said:


> A similar comparison would be if Judge Folsom in his initial injunction, in addition to all the things, added DISH was enjoined from furture infringement of the saftware patent claims A, B, C, and also enjoined from the hardware patent claims D, E, F, then the appeals court would have asked the judge to remove the hardware claims from the injunction, because the hardware verdict was reversed.


There wasn't an "initial injunction". Judge Folsom has only issued one injunction in this case.

I've kept the entire paragraph of the injunction I've quoted intact. Read the bold parts only as one sentence:


> *IT IS FURTHER ORDERED THAT
> Each Defendant, its officers,* agents, servants, employees and attorneys, and those persons in active concert or participation with them who receive actual notice hereof, *are hereby restrained and enjoined*, pursuant to 35 U.S.C. § 283 and Fed. R. Civ. P. 65(d), from making, using, offering to sell 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.*


So Judge Folsom's injunction did say "DISH was enjoined from furture infringement of the saftware patent claims A, B, C, and also enjoined from the hardware patent claims D, E, F". That's what the "Infringed Claims" are. Which means that the Court of Appeals did not ask "the judge to remove the hardware claims from the injunction, because the hardware verdict was reversed."


jacmyoung said:


> The answer is no, because the Infinging Products were removed


There are people with four year old 501's. You're telling us those 501's were removed? I don't think so.


----------



## kmill14

jacmyoung said:


> =
> 
> But as I have said before, even if you are correct DISH must disable the Infringing Products, they did, at the time of the modification, when the new software was downloaded, the DVRs were disabled entirely, no DVR functions, no nothing, not even the ability to watch TV at all, then after re-booting, the modified, non-infringing products continued as before.
> 
> Is this the kind of defense you insist DISH use? Because such literal defense is equally unnecessary as you insisting on the face of the injunction argument.
> 
> I have agreed in this case, the judge can found DISH in contempt, in fact the judge in the above case could have found C&W in contempt on the literal interpretation, but the appeals court will overturn such ruling, and I have provided ample case law and the law itsself to support my opinion.


The other trial's injunction you are talking about was nowhere near as broad as the E*injunction, and even James Long is arguing against you on that. The Judge in that trial clearly gave them an OUT when he put in the phrase *"as configured and described at trial"*. There is no such clause in the E* Injunction.

Also, you continue to focus on the idea that an ADJUDICATED DEVICE, in this example the DVR models already in the hands of the end user, can be altered in some fashion, and suddenly stop being ADJUDICATED DEVICES.

You also continue to use the phrase *"non-infringing"*, as if that were a FACT. The ONLY proven FACT in this case is that those ADJUDICATED DEVICES already in the hands of the end user were ruled to infringe and have been ordered to be shut off. Can you dispute any of that?


----------



## nobody99

I'd like to revisit something that is still bugging me. Take the case where all the DISH people are right, and contempt is not found.

In the language of the injunction is this line:



> Thus, the Court concludes that the full impact of Defendants' infringement cannot be remedied by monetary damages.


This was written by the court _after_ the jury's verdict of monetary damages had been returned, so the judge was fully aware of those damages.

In fact, in arguing against the injunction, DISH (who also already knew about the damages) insisted that monetary compensation would be adequate.

As I've quoted earlier from Wikipedia,



> a court will not grant an injunction unless monetary damages are an insufficient remedy for the injury in question.


So I think we can pretty clearly establish that the injunction was an _additional remedy because monetary damages were not adequate_. The question, though, is could TiVo have asked for _more_ money and that we'll pass on the injunction request, in effect saying that it was an adequate remedy?

If we accept this hypothesis, then TiVo has a reasonable expectation that the court will honor its promise to make DISH turn off the DVR functionality. If DVR functionality is _not_ turned off, wouldn't the court have to go back and award additional damages _in lieu of_ the injunction not being enforced by the court?

Here's an oversimplified example of what I mean. Suppose $100 is the injunction, and $50 is the "acceptable" monetary damages that DISH said would be adequate.

TiVo: Judge, we want $100
DISH: Judge, $100 is excessive, but we think $50 is adequate remedy.
Judge: I'm awarding $100.

Later, DISH refuses to pay the $100. The judge decides that the $100 was excessive after all. He says, "DISH, don't worry about it, forget what I said earlier." And you don't need to pay the $50 either.

How can TiVo _not_ be entitled to the next-best alternative?


----------



## Curtis0620

I think DISH is taking a tremendous risk here. Currently, the DVR's specifically listed in the injunction are the ones that are affected. By bringing up this new software they better be absolutely sure that it no longer infringes. Because, if it does, that will take down all their DVR's. The risk just seems too great to not come to some type of aggreement with TiVo.


----------



## jacmyoung

Greg Bimson said:


> There wasn't an "initial injunction". Judge Folsom has only issued one injunction in this case....


That was a hypo scenario in response to Kmill14, if you can't read into that I am sorry...


----------



## Greg Bimson

jacmyoung said:


> The judge obviously considered the software download as a legitimate way to modifiy the products, why? Because he himself order the use of such legitimate method to achieve the goal of prohibiting further infringement.
> 
> You can not have it both ways, on one hand the software download must be recognized as a legitimate way to disable the infringing products, yet the same method will not be legitimate for workaround. I don't think a reasonable person can insist he has it both ways.


1) Judge Folsom only addressed one way "to achieve the goal of prohibiting further infringement", namely to DISABLE the "Infringing Products".

2) You are trying to apply "reason" to LAW.


----------



## jacmyoung

kmill14 said:


> ...Also, you continue to focus on the idea that an ADJUDICATED DEVICE, in this example the DVR models already in the hands of the end user, can be altered in some fashion, and suddenly stop being ADJUDICATED DEVICES. ...


The resaon was because it was not me, but the judge, who has decided the DVRs in the field can be altered in some fashion and stop being the adjudicated devices. He said as long as DISH alter the DVRs in the field by disabling the DVR functions, by the use of a software download BTW, DISH will be in compliance, did he not? So it was the judge, not me, who told you yes the DVRs in the hands of the end users may be altered to stop being adjudicated devices.

And guess what, DISH did exactly that.


----------



## jacmyoung

Greg Bimson said:


> 1) Judge Folsom only addressed one way "to achieve the goal of prohibiting further infringement", namely to DISABLE the "Infringing Products"....


I hope you are not seriously thinking the judge had no idea how it could be done, and the only way it could be done?

Remember usually products in the field are nevered enjoined, the reason this time they are included is precisely because the judge was fully aware that by a software download, the act of disabling teh DVR functions can be achieved.

Please give the judge a little credit.


----------



## nobody99

jacmyoung said:


> The resaon was because it was not me, but the judge, who has decided the DVRs in the field can be altered in some fashion and stop being the adjudicated devices. He said as long as DISH alter the DVRs in the field by disabling the DVR functions, by the use of a software download BTW, DISH will be in compliance, did he not? So it was the judge, not me, who told you yes the DVRs in the hands of the end users may be altered to stop being adjudicated devices.


Oh, puh-lease. If you really think that's Dish's position, why did they argue this way against the injunction:



> According to Defendants, the injunction Plaintiff proposes "would immediately remove DVRs from three million families who are innocent of any wrongdoing&#8230; [depriving] those families of DVRs and force[ing] them to incur significant disruption and expense in order to replace them."


So which is it?


----------



## nobody99

jacmyoung said:


> I hope you are not seriously thinking the judge had no idea how it could be done, and the only way it could be done?


So let me understand. You believe the judge chooses his words very carefully (according to several previous posts). If he chooses his words very carefully, and he knows how it could be done, wouldn't he, er, carefully spell out how it could be done?

To quote, well, you, "you can't have it both ways."


----------



## kmill14

jacmyoung said:


> The resaon was because it was not me, but the judge, who has decided the DVRs in the field can be altered in some fashion and *stop being the adjudicated devices*. He said as long as DISH alter the DVRs in the field by disabling the DVR functions, by the use of a software download BTW, DISH will be in compliance, did he not? So it was the judge, not me, who told you yes the DVRs in the hands of the end users may be altered to stop being adjudicated devices.
> 
> And guess what, DISH did exactly that.


Where did the Judge say that? You really love to add flavor into your "fact-finding", don't you?

All the Judge said was to disable the DVR functionality of the adjudicated devices. They will always BE the adjudicated devices....just without the ability to be DVRs.

And since those adjudicated devices are still ON, Dish is in contempt. So tell me again what Dish did to follow the letter of the injunction?


----------



## nobody99

jacmyoung said:


> Please give the judge a little credit.


Oh, I'll give him a ton of credit when DISH is slapped with contempt :lol:


----------



## nobody99

kmill14 said:


> You really love to add flavor into your "fact-finding", don't you?


Funniest quote of the thread!! :hurah:


----------



## kmill14

jacmyoung said:


> I hope you are not seriously thinking the judge had no idea how it could be done, and the only way it could be done?
> 
> Remember usually products in the field are nevered enjoined, *the reason this time they are included is precisely because the judge was fully aware that by a software download, the act of disabling teh DVR functions can be achieved.*
> Please give the judge a little credit.


Wow, you really need to read up on this case more. The products in the field are enjoined because the Judge is aware of the "stickiness" of customers in staying with their current provider. Thats why the Judge ordered them disabled, because TiVo can't catch up to Dish (who cheated their way to those subscribers) any other way.


----------



## Greg Bimson

jacmyoung said:


> The resaon was because it was not me, but the judge, who has decided the DVRs in the field can be altered in some fashion and stop being the adjudicated devices.


Clarification:
The eight models of DVR listed in the injunction as "Infringing Devices" will *always* be considered adjudicated devices. They have been judged as infringing, and therefore are adjudicated devices. Having the functions on those DVR's disable still keeps them as adjudicated devices.


----------



## James Long

kmill14 said:


> And shut them down is very clear....it doesn't say shut them down and turn them back on.


Does it say "shut them down and never use them as DVRs again"?

There is room for the future.


Greg Bimson said:


> Well, let's break out the carefully worded injunction, but use kmill14's version of it...There is this one section that says "disable the DVR functionality". It is in present tense. There is another section, unquoted, which states the injunction runs until the Time Warp patent expires.


And this inconsistent language leaves the injunction open for interpretation, by the author. If we are to believe that every word in the injunction was carefully chosen the injunction would be invalid as it refers to the "Untied States" ... not a country I live in. I suppose I should interpret "Untied" as "United"? Why shouldn't further interpretation be allowed?



> The only question which needs to be answered: As of this moment, are the Infringing Prodcuts' DVR functions working?


So DISH has to wait for the incredibly slow court process to end to be able to provide a non-infringing service to their customers? That hardly seems fair.



nobody99 said:


> Thus, the Court concludes that the full impact of Defendants' infringement cannot be remedied by monetary damages.
> 
> 
> 
> Later, DISH refuses to pay the $100. The judge decides that the $100 was excessive after all. He says, "DISH, don't worry about it, forget what I said earlier." And you don't need to pay the $50 either.
> 
> How can TiVo _not_ be entitled to the next-best alternative?
Click to expand...

If the judge says it then the discussion is over. Tivo can take it to the appeals court, just like DISH took the court's decision to the appeals court.

Personally I believe this CAN be handled with money. Do you believ Tivo is going to turn down monitary damages? Turning off the DVRs is all they want? Hell no. DISH DVRs disabled doesn't resurrect Tivo's business. Money does that.


----------



## kmill14

James Long said:


> Does it say "shut them down and never use them as DVRs again"?
> 
> There is room for the future.


Well, it says "disable them" and it says for how long. If you turn them back on again, are they "disabled"? No, then you are disregarding the order.

Lets assume you have a child (since these are becoming child-like arguments) who likes to hit his brother and you tell him to stop hitting his brother or be punished. Does that leave room for him to hit his brother in the future and NOT be punished?


----------



## James Long

kmill14 said:


> The products in the field are enjoined because the Judge is aware of the "stickiness" of customers in staying with their current provider. Thats why the Judge ordered them disabled, because TiVo can't catch up to Dish (who cheated their way to those subscribers) any other way.


Scenario:
Imagine if the infringer used the last two years to physically recall and replace every "Infringing Product" with completely new models. The customer had no gap in service and only minor inconvenience as they swapped receivers (perhaps even including a service call to transfer content from the old DVR to the new). The infringer has no gap ... the customer remains "sticky" and there is nothing the plaintiff can do except file a new suit against the new product or pray that the court sees the new receivers as only colorably different.

There is NOTHING in the injunction requiring there to be a service gap. There is NOTHING in the injunction requiring DISH to lose customers. If Tivo can't "catch up" to DISH that is their problem. They should have got an injunction requiring DISH to "cease offering DVRs for a period of one year". Tivo didn't get that injunction.

So we're back to arguing the difference between physically replacing receivers in the field with non-infringing product or 'virtually' replacing them. If it would be OK with the injunction to physically replace every receiver it should be OK with the injunction to virtually replace every receiver. It is just a matter of opinion.



kmill14 said:


> Lets assume you have a child (since these are becoming child-like arguments) who likes to hit his brother and you tell him to stop hitting his brother or be punished. Does that leave room for him to hit his brother in the future and NOT be punished?


It depends on how the judge interprets their own order.


----------



## nobody99

James Long said:


> Scenario:
> So we're back to arguing the difference between physically replacing receivers in the field with non-infringing product or 'virtually' replacing them. If it would be OK with the injunction to physically replace every receiver it should be OK with the injunction to virtually replace every receiver. It is just a matter of opinion.


This brings up two questions:

1) So why wouldn't the judge have explicitly have allowed replacing the software in the injunction. jacmyoung has gone out of his way to explain how judges choose their words very carefully, and that we should give them credit.

2) Why wouldn't the judge have said "you won't need to physically replace the receivers if you put new software on them" when DISH used that as a defense against ""would immediately remove DVRs from three million families who are innocent of any wrongdoing"


----------



## kmill14

James Long said:


> Scenario:
> Imagine if the infringer used the last two years to physically recall and replace every "Infringing Product" with completely new models. The customer had no gap in service and only minor inconvenience as they swapped receivers (perhaps even including a service call to transfer content from the old DVR to the new). The infringer has no gap ... the customer remains "sticky" and there is nothing the plaintiff can do except file a new suit against the new product or pray that the court sees the new receivers as only colorably different.
> 
> There is NOTHING in the injunction requiring there to be a service gap. There is NOTHING in the injunction requiring DISH to lose customers. If Tivo can't "catch up" to DISH that is their problem. They should have got an injunction requiring DISH to "cease offering DVRs for a period of one year". Tivo didn't get that injunction.
> 
> So we're back to arguing the difference between physically replacing receivers in the field with non-infringing product or 'virtually' replacing them. If it would be OK with the injunction to physically replace every receiver it should be OK with the injunction to virtually replace every receiver. It is just a matter of opinion.
> 
> It depends on how the judge interprets their own order.


What you say at the top is true...Dish could do that and avoid contempt charges. And you are also correct in that there is nothing in the injunction requiring Dish to lose customers. 
But the basis for the "disabling of the DVRs in the field" being in the injunction has nothing to do with the fact that Dish can do so via a software download (as jacmyoung argued) and everything to do with the harm Tivo endured and the stickiness of customers and puts TiVo at a serious "disadvantage and results in long-term customer loss" (Folsom).


----------



## nobody99

Judge Folsom's Court Discussion said:


> The hardship of disabling DVR capabilities to Defendants' DVR customers is a
> consequence of Defendants' infringement and does not weigh against an injunction. Defendants do not dispute that, with software updates transmitted directly to the infringing products, the DVR capabilities of the infringing products can be disabled.


Why would he not have mentioned that they could also upload non-infringing software?


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## James Long

nobody99 said:


> This brings up two questions:
> 
> 1) So why wouldn't the judge have explicitly have allowed replacing the software in the injunction. jacmyoung has gone out of his way to explain how judges choose their words very carefully, and that we should give them credit.


The judge is not a technical person ... he saw "hardware" and "software" claims and despite DISH's requests to write the injunction allowing for a software change he wrote what he wrote, probably believing hardware could not be fixed by software. Judges error.



> 2) Why wouldn't the judge have said "you won't need to physically replace the receivers if you put new software on them" when DISH used that as a defense against ""would immediately remove DVRs from three million families who are innocent of any wrongdoing"


The judge isn't there to debate the parties, he is there to decide who wins the debate between the parties. That would have been an excellent comment for Tivo to make, not the court.

If it were up to the judge to debate the parties his first question on May 30th of DISH would have been "so, have you turned off any of the DVRs in the injunction?" He didn't ask that. Tivo didn't explicitly ask that either (they wanted "discovery" to go fishing for the answers ... not a direct question).

A simple question would have been better. But that's not how courts operate.


----------



## Greg Bimson

James Long said:


> So we're back to arguing the difference between physically replacing receivers in the field with non-infringing product or 'virtually' replacing them.


I notice the people arguing on DISH/SATS' side doing this all the time.

Nothing has been replaced with "non-infringing product". A DP-501 according to the courts today is no different than it was two years ago, when it was found to infringe. A DP-501 in the customers hands for the past four years has been determined to be infringing and is subject to an injunction.

Yes, there was software downloaded, which modified the product. NO, that does not simply mean it is "non-infringing product", as that determination has not been made yet.


James Long said:


> If it would be OK with the injunction to physically replace every receiver it should be OK with the injunction to virtually replace every receiver.


The technology isn't there to simply replace existing DP-501's in the field by saying "Beam me up, Scottie". 

It isn't that it would be OK with the injunction to physically replace the "Infringing Products", it is that DISH/SATS has that ability. The DP-501 isn't changed to something else by changing the software. And that, in a nutshell, is the problem.

No matter how much we get into discussing the new software, the order is fairly clear: disable the "Infringing Products", for the length of the Time Warp patent.

And just so no one thinks I am one-sided about this...


James Long said:


> Scenario:
> Imagine if the infringer used the last two years to physically recall and replace every "Infringing Product" with completely new models. The customer had no gap in service and only minor inconvenience as they swapped receivers (perhaps even including a service call to transfer content from the old DVR to the new). The infringer has no gap ... the customer remains "sticky" and there is nothing the plaintiff can do except file a new suit against the new product or pray that the court sees the new receivers as only colorably different.


This is 100 percent correct, provided the new DVR NEVER had infringing software. This is exactly what DISH/SATS should have done since they didn't bother addressing the scope of the injunction with the Court of Appeals.


----------



## James Long

kmill14 said:


> What you say at the top is true...Dish could do that and avoid contempt charges. And you are also correct in that there is nothing in the injunction requiring Dish to lose customers.
> But the basis for the "disabling of the DVRs in the field" being in the injunction has nothing to do with the fact that Dish can do so via a software download (as jacmyoung argued) and everything to do with the harm Tivo endured and the stickiness of customers and puts TiVo at a serious "disadvantage and results in long-term customer loss" (Folsom).


So goes life. I'm sure the boatload of money Tivo will eventually receive for _*past*_ infringement will sooth that disadvantage.


----------



## James Long

Greg Bimson said:


> Nothing has been replaced with "non-infringing product". A DP-501 according to the courts today is no different than it was two years ago, when it was found to infringe.


The courts need to be corrected. DISH lawyers are standing by. The day that they say "you're right, a DP-501 isn't the same as a DISHPlayer DVR-501 because of the software differences" Tivo will be in trouble.



> Yes, there was software downloaded, which modified the product. NO, that does not simply mean it is "non-infringing product", as that determination has not been made yet.The technology isn't there to simply replace existing DP-501's in the field by saying "Beam me up, Scottie".


DISH is doing as close as they can to that with the software.


----------



## kmill14

I have to say that this has been a lot of fun to "discuss" and thankfully I am seriously late to the conversation or we would be over 100 pages by now in this thread. 

I assume TiVo's filing will come at some point tomorrow, and that will spice things up even more.


----------



## jacmyoung

kmill14 said:


> ...All the Judge said was to disable the DVR functionality of the adjudicated devices. They will always BE the adjudicated devices....just without the ability to be DVRs. ...


Not so, if the DVRs will always be within the scope of the injunction, they will have to be destroyed, put in the landfill, but this is not the case, they only need to have the DVR fucntions disabled, once they do they will be allowed to continue, as they will no longer be in the scope of the injunction.

So yes, the judge certainly recognized DISH's ability to use a software download to modify, not to destroy the DVRs, but to modify them, and turn them into something that are no longer within the scope of the injunction. As long as DISH is done that, DISH will be in compliance.

Except that DISH did it a little differently to use the same method, and equally to modify the products, to move them outside of the scope of the injunction, a way that the judge did not prohibit DISH from doing.


----------



## jacmyoung

nobody99 said:


> Why would he not have mentioned that they could also upload non-infringing software?


There is rarely any injunction that spells out how the infringer may be permitted to workaround the patent, it is not the job of an injunction to do that. Occasionally you may find one or two actually did so, but for the vast majority of them there is no need, and the infringers avoid contempt all the time without any methods spelled out for them.


----------



## Curtis0620

jacmyoung said:


> Not so, if the DVRs will always be within the scope of the injunction, they will have to be destroyed, put in the landfill, but this is not the case, they only need to have the DVR fucntions disabled, once they do they will be allowed to continue, as they will no longer be in the scope of the injunction.
> 
> So yes, the judge certainly recognized DISH's ability to use a software download to modify, not to destroy the DVRs, but to modify them, and turn them into something that are no longer within the scope of the injunction. As long as DISH is done that, DISH will be in compliance.
> 
> Except that DISH did it a little differently to use the same method, and equally to modify the products, to move them outside of the scope of the injunction, a way that the judge did not prohibit DISH from doing.


They can still be used as standard satellite receivers (No DVR functions).

DISH has done nothing but download a software revision. Until it has been ruled that the software doesn't infringe, then it still does.

And if it does, DISH's other DVR's will be killed also.


----------



## jacmyoung

kmill14 said:


> Well, it says "disable them" and it says for how long. If you turn them back on again, are they "disabled"? No, then you are disregarding the order.
> 
> Lets assume you have a child (since these are becoming child-like arguments) who likes to hit his brother and you tell him to stop hitting his brother or be punished. Does that leave room for him to hit his brother in the future and NOT be punished?


But if he actually stopped hitting, should he continue to be punished?

Regardless though, one simply can not use any other types of injunctions and try to fit the injunctions in a patent case. One must only look at the injunctions/contempt rulings issued in patent cases as guide.


----------



## kmill14

jacmyoung said:


> Not so, if the DVRs will always be within the scope of the injunction, they will have to be destroyed, put in the landfill, but this is not the case, they only need to have the DVR fucntions disabled, once they do they will be allowed to continue, as they will no longer be in the scope of the injunction.


:beatdeadhorse:

You've got to be kidding me! The scope of the injunction is the 8 models of DVRs we are intimately aware of now, and the order to disable those DVR models that are in the hands of the end user. There is no such language (or prior case history) that allows for these specific adjudged devices to fall outside the scope of the injunction. 
If Dish wants to gather up the DVRs in these households and put them in a landfill, thats all well and good, but the order just says to disable them. If they aren't disabled at some point in the future, then they are not in compliance with the injunction.

:beatdeadhorse:


----------



## jacmyoung

Curtis0620 said:


> They can still be used as standard satellite receivers (No DVR functions).
> 
> DISH has done nothing but download a software revision. Until it has been ruled that the software doesn't infringe, then it still does.
> 
> And if it does, DISH's other DVR's will be killed also.


I hope you understand what you just said has nothing to do with the point I am making, that the judge did agree so ordered, by a software download, the products within the scope of the injunction may be taken out of the scope and continue as standard receivers.

Here we are not arguing about DVRs or not, only that whether the judge have told us whether by downloading a new software it is possible to take the products outside of the scope of the injunction, the answer is a clear yes, otherwise the judge would have ordered a different method, like asking all DVRs be shipped back and physically destroyed.


----------



## jacmyoung

kmill14 said:


> :beatdeadhorse:
> 
> You've got to be kidding me! The scope of the injunction is the 8 models of DVRs we are intimately aware of now, and the order to disable those DVR models that are in the hands of the end user. There is no such language (or prior case history) that allows for these specific adjudged devices to fall outside the scope of the injunction.
> If Dish wants to gather up the DVRs in these households and put them in a landfill, thats all well and good, but the order just says to disable them. If they aren't disabled at some point in the future, then they are not in compliance with the injunction.
> 
> :beatdeadhorse:


Stop being so dramatic, what you need to do is tell me whether DISH will be allowed to use the products to continue to provide TV service, while not having the DVR functions. I hope your answer is yes.

And by answering yes, you have just agreed, by downloading a software, the products within the scope of the injunction can be taken out of the same scope of the injunction and continue to be used, because if not the products will not be able to be used at all.

That is all we are debating at this right moment, whether the judge himself thought the act of downloading a softeware was a legitimate way to modify the products so to move them outside of the scope of the injunction.


----------



## James Long

jacmyoung said:


> And by answering yes, you have just agreed, by downloading a software, the products within the scope of the injunction can be taken out of the same scope of the injunction and continue to be used, because if not the products will not be able to be used at all.


It isn't that easy. The "disabling of DVR function" software update is specifically permitted by the injunction. Apparently someone thought of that.

I like that because it ALLOWS the product to continue to perform a function. Combine that with the lack of a blanket prohibition of DISH providing DVR service and we've got room for the judge to interpret.



> That is all we are debating at this right moment, whether the judge himself thought the act of downloading a softeware was a legitimate way to modify the products so to move them outside of the scope of the injunction.


It needs to be narrower than that. The question is whether a software change is enough to satisfy the judge. A question the judge himself said would be answered in September.


----------



## kmill14

jacmyoung said:


> I hope you understand what you just said has nothing to do with the point I am making, that the judge did agree so ordered, by a software download, the products within the scope of the injunction *may be taken out of the scope and continue as standard receivers*.


Where did the Judge say that? So once a person is found guilty (adjudged) and ordered to go to jail, they are no longer guilty or adjudged because they are in jail...and well...can leave jail?

Honestly...:nono:


----------



## Greg Bimson

jacmyoung said:


> I hope you understand what you just said has nothing to do with the point I am making, that the judge did agree so ordered, by a software download, the products within the scope of the injunction may be taken out of the scope and continue as standard receivers.


That is not correct.

A DP-501 is in the scope of the injunction until the injunction expires, which is when the Time Warp patent expires. A DP-501 can most certainly have its DVR functions turned back on after the injunction expires.

Therefore, the DP-501 (and the rest of the "Infringing Products") are subject to the injunction until the injunction expires. They will never be out of scope of the injunciton, unless there is another order from the court that takes the "Infringing Products" out of scope.


----------



## kmill14

jacmyoung said:


> ...what you need to do is tell me whether DISH will be allowed to use the products to continue to provide TV service, while not having the DVR functions. I hope your answer is yes.


Thats correct. So far you are making sense.



jacmyoung said:


> And by answering yes, you have just agreed, by downloading a software, the products within the scope of the injunction can be taken out of the same scope of the injunction and continue to be used, because if not the products will not be able to be used at all.


And then sense goes by the wayside. How did I...or more importantly...the Judge...agree that a product specifically identified in the injunction to do a certain thing (disable DVR functionality) can cease to be that product specifically identified?

ALL products identified in the injunction (the 8 models) that are in the hands of the end users are ordered to have NO DVR functionality. Thats the scope. Thats all there is. They can receive TV signals in play them in real time, but they can't do anything else with those signals. They can't later receive a DIFFERENT software update that enables DVR functionality, because that goes against the order of the injunction.

Which part of that paragraph makes no sense to you and is not supported by the injunction?


----------



## nobody99

jacmyoung said:


> I hope you understand what you just said has nothing to do with the point I am making, that the judge did agree so ordered, by a software download, the products within the scope of the injunction may be taken out of the scope and continue as standard receivers.
> 
> Here we are not arguing about DVRs or not, only that whether the judge have told us whether by downloading a new software it is possible to take the products outside of the scope of the injunction, the answer is a clear yes, otherwise the judge would have ordered a different method, like asking all DVRs be shipped back and physically destroyed.


Feel free to ignore what DISH said:

"would immediately remove DVRs from three million families who are innocent of any wrongdoing"


----------



## nobody99

jacmyoung said:


> There is rarely any injunction that spells out how the infringer may be permitted to workaround the patent


Oh. My. God.

Have you forgotten about "not more than colorably different" already? Virtually every injunction has it. That's how you work around it.


----------



## kmill14

nobody99 said:


> Oh. My. God.
> 
> Have you forgotten about "not more than colorably different" already? Virtually every injunction has it. That's how you work around it.


But that does not apply to devices already "adjudicated".


----------



## nobody99

kmill14 said:


> But that does not apply to devices already "adjudicated".


You just tripped my trap early :lol:


----------



## Jim5506

If the hardware part of the case is not reinstated, then the specification of certain hardware to be disabled is null, regardless of what the injunction said, that part of it was sent back by the appellate court.

Only software matters can be considered for contempt, since there is no pending finding as to hardware.


----------



## kmill14

Jim5506 said:


> If the hardware part of the case is not reinstated, then the specification of certain hardware to be disabled is null, regardless of what the injunction said, that part of it was sent back by the appellate court.
> 
> Only software matters can be considered for contempt, since there is no pending finding as to hardware.


How did you come to that determination? The Appeals Court reinstated the injunction AS IS, even after remanding the hardware "claims". Again, lets not get too caught up in Hardware/Software and "hardware claims" and "software claims". They are not apples to apples and the injunction does not specify shutting down specific software OR hardware. It just says to disable functionality.


----------



## Greg Bimson

Jim5506 said:


> If the hardware part of the case is not reinstated, then the specification of certain hardware to be disabled is null, regardless of what the injunction said, that part of it was sent back by the appellate court.
> 
> Only software matters can be considered for contempt, since there is no pending finding as to hardware.


This is incorrect, for only one reason...

The specification isn't "certain hardware", it is certain models collectively called "Infringing Products". Those models may or may not infringe now, but that does nothing to the standing injunction requiring DISH/SATS to disable DVR functionality in existing products.


----------



## Jim5506

Simple logic. If the judge finds Dish in contempt for violations that were remanded then he runs the risk of having the same appelate court slap it back to him for ignoring their ruling.

AS IS SHMAZZIS - there are no infringement findings with regard to hardware and hardware cannot be considered for contempt proceedings - only software.

To do so would be to snub the appelate courts decision.

While picking your nits you completely miss the salve.


----------



## nobody99

From the appeal decision:



> As an initial matter, software alone cannot extract data from a physical device; it can only control hardware that extracts data. Therefore, when a device "extracts video and audio data from [a] physical data source," it is necessarily the case that certain hardware operations are performed. For that reason, *the hardware/software distinction made by EchoStar is unhelpful. What matters is whether the operations performed by the interaction of software and hardware in the accused DVRs, taken as a whole, are covered by the claim term.
> *
> ...
> 
> As there is substantial evidence that the required data and operations are performed by the accused DVRs, and *because we agree that the pertinent data and operations do not need to be housed within a particular file or grouping of lines of code*, the EchoStar DVRs satisfy the "extracting" limitation. We therefore uphold the jury's verdict that *the EchoStar DVRs* infringe the software claims of the '389 patent.





Jim5506 said:


> there are no infringement findings with regard to hardware and hardware cannot be considered for contempt proceedings - only software.


Bzzzz. See above.


----------



## kmill14

Jim5506 said:


> Simple logic. If the judge finds Dish in contempt for violations that were remanded then he runs the risk of having the same appelate court slap it back to him for ignoring their ruling.


You need to do a little homework. A finding of contempt would be based on violating a judge's order to disable the DVR functionality. There is no order to disable specific software OR hardware, or software/hardware claims. Did you ignore that part where the Appeals Court reinstated the entire injunction?



Jim5506 said:


> AS IS SHMAZZIS - there are no infringement findings with regard to hardware and hardware cannot be considered for contempt proceedings - only software.
> 
> To do so would be to snub the appelate courts decision.
> 
> While picking your nits you completely miss the salve.


Actually, there is no infringement findings on hardware OR software. Again, do your homework. The contempt proceedings are with regards to entire devices that were ruled to have infringed on a patent. Those devices were ordered to disable their DVR functionality. There is no verbage in the entire injunction order that discusses software, hardware, or picking nits.


----------



## Greg Bimson

Jim5506 said:


> Simple logic. If the judge finds Dish in contempt for violations that were remanded then he runs the risk of having the same appelate court slap it back to him for ignoring their ruling.
> 
> AS IS SHMAZZIS - there are no infringement findings with regard to hardware and hardware cannot be considered for contempt proceedings - only software.
> 
> To do so would be to snub the appelate courts decision.
> 
> While picking your nits you completely miss the salve.


"Miss the salve"?

The Court of Appeals, the one that reversed and remanded the hardware claims, allowed the injunction to stand. That injunction states:


> Defendants are hereby FURTHER ORDERED to, within thirty (30) days of the issuance of this order, disable the DVR functionality (i.e., disable all storage to and playback from a hard disk drive of television data) in all but 192,708 units of the [products DP-501; DP-508; DP-510; DP-522; DP-625; DP-721; DP-921; and the DP-942] that have been placed with an end user or subscriber.


It says nothing about hardware nor software. It does order DISH/SATS to disable "Infringing Products" (products DP-501; DP-508; DP-510; DP-522; DP-625; DP-721; DP-921; and the DP-942).

And in case you missed it, a contempt proceeding is only to determine compliance with a court order. If DISH/SATS does not do as Judge Folsom ordered (that which I have quoted), then DISH/SATS could be easily found in contempt. There isn't any analysis of the new product, as that is not what is being asked of the court. The complaintant (TiVo) is asking the court to rule that the defendant (DISH/SATS) is violating the court's clear and concise order.


----------



## jacmyoung

Greg Bimson said:


> That is not correct.
> 
> A DP-501 is in the scope of the injunction until the injunction expires, which is when the Time Warp patent expires. A DP-501 can most certainly have its DVR functions turned back on after the injunction expires.
> 
> Therefore, the DP-501 (and the rest of the "Infringing Products") are subject to the injunction until the injunction expires. They will never be out of scope of the injunciton, unless there is another order from the court that takes the "Infringing Products" out of scope.


Then how do you explain those DVRs can be used as standard receivers?


----------



## kmill14

jacmyoung said:


> Then how do you explain those DVRs can be used as standard receivers?


:nono2:

Since those DEVICES will have their DVR functionality disabled, they can operate as standard receivers all they want. But they will still be adjudicated devices and in the scope of the injunction, and not be allowed to have their DVR functionality turned back on.


----------



## jacmyoung

kmill14 said:


> Where did the Judge say that? ..


There is no need for the judge to say everthing if people can be assume to have average intelligence. When the judge said DISH can use a software download to disable the DVR functions, and as long as the DVR functions are removed, whether the products can be used for other purpose will be up to DISH, if DISH decides to use them as standard receivers, so be it, as long as the DVR functions are removed.

By that, the judge was telling us once the DVR functions are removed, the same products will no longer be within the scope of the injunction, because otherwise they will still not be able to be used.

I hope you can see that deduction?

Now the question is, since we have establised that a software download is a legitimate way to modify the products as viewed by the judge, can the same legitimate method be used to bring back the DVR functions, as long as the modified DVRs are no longer within the scope of the injunction?

The answer has to be yes, as long as the products are no longer within the scope of the injunction, why because the judge said so, by virtue of not prohibiting DISH from continued use of the products as standard receivers, the judge was saying as long as those products are not within the scope of the injunction, they can be used.

Else the judge would have ordered the DVRs on the list physically removed from the field and disposed of. But he did not, because he must have known at the time, those products could still be used as standard receivers, after the DVR functions are removed. Allowing the products to continue as non-DVRs is the same as saying those products minus the DVR functions will be outside of the scope of the injunction.

But the judge did not have to spell out everything I said above, it is assumed we can deduct from it, no need to hold our hands through such understanding, he did not have time nor was it his job to babysit us.


----------



## Greg Bimson

jacmyoung said:


> Then how do you explain those DVRs can be used as standard receivers?


Because it only says to disable the DVR functions. If by disabling the DVR functions the "Infringing Products" can still be used as standard receivers, then there is no issue. They would still be subject to the injunction as they cannot be used as DVR's.


----------



## jacmyoung

kmill14 said:


> :nono2:
> 
> Since those DEVICES will have their DVR functionality disabled, they can operate as standard receivers all they want. But they will still be adjudicated devices and in the scope of the injunction, and not be allowed to have their DVR functionality turned back on.


You still did not answer my question, if the products without the DVR functions are still within the scope of the injunction, then how do you firgure they can be used? The only reason the receivers may be used after the DVR functions are removed, is because by removing the DVR functions, the same products will be outside of the scope of the injunction.


----------



## nobody99

jacmyoung said:


> There is no need for the judge to say everthing if people can be assume to have average intelligence.


By the same token, a person with average intelligence can see that DISH argued against this injunction, knowing what it _really_ means



> ...would immediately remove DVRs from three million families who are innocent of any wrongdoing&#8230; [depriving] those families of DVRs and force[ing] them to *incur significant disruption and expense in order to replace them.*


But please, continue to ignore this point since it doesn't fit your exquisitely contrived logic.


----------



## jacmyoung

Greg Bimson said:


> ...If by disabling the DVR functions the "Infringing Products" can still be used as standard receivers, then there is no issue. ...


What issue? Issue of whether they are still within the scope of the injunction? Are you saying then such issue will be gone, as long as the DVR functions are removed?


----------



## nobody99

jacmyoung said:


> You still did not answer my question, if the products without the DVR functions are still within the scope of the injunction, then how do you firgure they can be used? The only reason the receivers may be used after the DVR functions are removed, is because by removing the DVR functions, the same products will be outside of the scope of the injunction.


Maybe this will help you to more easily understand:

The eight named receivers can *never again* have DVR functionality. It doesn't matter if the software infringes or not.

The injunction is clear on this point, you must agree, and any reasonably intelligent person can see that.

And for what it's worth, they will *always* be in the scope of the injunction. Always. That's what "adjudicated" means in this context. As long as they _comply_ with what the injunction orders, they aren't in contempt. With DVR functions, without, they are within the scope of the injunction. They've been given a scarlet letter that can never be removed.


----------



## jacmyoung

nobody99 said:


> By the same token, a person with average intelligence can see that DISH argued against this injunction, knowing what it _really_ means
> 
> But please, continue to ignore this point since it doesn't fit your exquisitely contrived logic.


DISH will argue on everything they can come up with that they see fit to use, just because the judge did not buy most of them, did not mean much, the judge only needs to buy one out of 100 arguments DISH makes for DISH to win.

Remeber the hardware claim? DISH made at least 5 or so arguments agaisnt the verdict, and the appeals court rebuffed all except one, and that was good enough to reverse the verdict.


----------



## jacmyoung

nobody99 said:


> ...With DVR functions, without, they are within the scope of the injunction. ....


Absolutely false. If they are always within the scope of the injunction with or without the DVR functions, they can not be used period, with or without the DVR functions.


----------



## kmill14

jacmyoung said:


> You still did not answer my question, if the products without the DVR functions are still within the scope of the injunction, then how do you firgure they can be used? The only reason the receivers may be used after the DVR functions are removed, is because by removing the DVR functions, the same products will be outside of the scope of the injunction.


I am REALLY trying to restrain myself from smart-ass comments here...

:hair:

I've actually answered your question (as have others) numerous times.

The products in question must have their DVR functionality disabled until the Judge says otherwise. Thats the scope of the injunction. If those boxes can perform as normal receivers AFTER the DVR functionality has been disabled, then good for them...thats OK. But they are still within the scope of the injunction, because they are the SAME PRODUCTS. There is no moving these products outside the scope of the injunction. I don't have the faintest idea why you continue to go down this path.


----------



## Greg Bimson

Greg Bimson said:


> ...If by disabling the DVR functions the "Infringing Products" can still be used as standard receivers, then there is no issue. ...





jacmyoung said:


> What issue? Issue of whether they are still within the scope of the injunction? Are you saying then such issue will be gone, as long as the DVR functions are removed?


Try the negative of my "if" statement...

If by disabling the DVR functions the "Infringing Products" *cannot* be used as standard receivers, the issue is that the "Infringing Products" will become doorstops.


jacmyoung said:


> DISH will argue on everything they can come up with that they see fit to use, just because the judge did not buy most of them, did not mean much, the judge only needs to buy one out of 100 arguments DISH makes for DISH to win.


We can agree on something. However, this will be a tight one. I just don't understand why DISH/SATS would paint themselves into a worse corner. I only believe that the risk ratio goes up daily if DISH/SATS is found in contempt, and it is very likely the judge will find them in contempt (yes this is my opinion).


----------



## kmill14

jacmyoung said:


> Absolutely false. If they are always within the scope of the injunction with or without the DVR functions, they can not be used period, with or without the DVR functions.


How do you figure? Do you even know what the "scope of the injunction" means?

IN scope is the 8 product models specified in the injunction.
IN scope is the order to disable the DVR functionality all 8 product models that are in the hands of the end users.

OUT of scope is functionality in these 8 product models that does NOT EQUATE to DVR functionality. If these boxes want to act like normal receivers, thats OK, because that functionality is OUT of scope, in terms of what must be disabled.


----------



## nobody99

jacmyoung said:


> Absolutely false. If they are always within the scope of the injunction with or without the DVR functions, they can not be used period, with or without the DVR functions.


Let's also try this:

The eight DVRs are in the scope of the injunction, and are currently not following the orders of the injunction.

Once the receivers' DVR functionality has been shut off, they are still in the scope of the injunction, and are also following the orders of the injunction.


----------



## jacmyoung

kmill14 said:


> How do you figure? Do you even know what the "scope of the injunction" means?
> 
> IN scope is the 8 product models specified in the injunction.
> IN scope is the order to disable the DVR functionality all 8 product models that are in the hands of the end users.
> 
> OUT of scope is functionality in these 8 product models that does NOT EQUATE to DVR functionality. If these boxes want to act like normal receivers, thats OK, because that functionality is OUT of scope, in terms of what must be disabled.


Remember we are not debating the DVR functions at this very moment, rather that whether if a product can still be used if it is still within the scope of the injunction.

The only reason a product may be allowed to continued to be used is if such product is modified to be outside of the scope of the injunction. If we cannot agree on that, then of course there is no hope.


----------



## jacmyoung

nobody99 said:


> ...Once the receivers' DVR functionality has been shut off, they are still in the scope of the injunction, and are also following the orders of the injunction.


But they will not be able to be used as non DVRs, because as you said, they will still be within the scope of the injunction.


----------



## kmill14

Its obvioius jacmyoung wants to hang his hat on the idea that once you initially disable the DVR functionality of a specific device, that device is no longer within the bounds of the injunction, and can then be given DVR functionality again.

I can't imagine a more bizarre thought process. 

Its like a person being found guilty, sent to jail for 10 years, and then immediately released from jail because they are no longer guilty (since they went to jail).


----------



## nobody99

jacmyoung said:


> But they will not be able to be used as non DVRs, because as you said, they will still be within the scope of the injunction.


I'm not going to argue the English Language with you.


----------



## kmill14

jacmyoung said:


> modified to be outside of the scope of the injunction.


There can be modifications that are outside the scope of the injunction (as I said above), but the products themselves are NOT outside the scope of the injunction.

How is this so hard to understand?

John Doe owns a DP-501 that has DVR functionality.

Dish issues a software patch to John's DP-501 that disables that functionality but allows it to still act as a receiver.

John's DP-501 will not be able to have its DVR functionality enabled until after the expiration of TiVo's time-warp patent.


----------



## nobody99

kmill14 said:


> Its obvioius jacmyoung wants to hang his hat on the idea that once you initially disable the DVR functionality of a specific device, that device is no longer within the bounds of the injunction, and can then be given DVR functionality again.
> 
> I can't imagine a more bizarre thought process.
> 
> Its like a person being found guilty, sent to jail for 10 years, and then immediately released from jail because they are no longer guilty (since they went to jail).


Or, using the same logic, if the DVR functions are removed, the machine rebooted, and then _the exact same infringing_ code is reloaded, they would be ok since they had gone "out of scope" when the removal occurred.


----------



## Greg Bimson

nobody99 said:


> ...With DVR functions, without, they are within the scope of the injunction. ....





jacmyoung said:


> Absolutely false. If they are always within the scope of the injunction with or without the DVR functions, they can not be used period, with or without the DVR functions.


You've read more into what an injunction is than should be.

Simply removing the DVR functions from the "Infringing Products" does not take them out of scope, but does make them compliant with the injunction.


----------



## Greg Bimson

jacmyoung said:


> But they will not be able to be used as non DVRs, because as you said, they will still be within the scope of the injunction.


Of course they could still be used as non-DVR's.

The injunction DOES NOT state they can no longer be used as regular receivers. There is even a spot in the injunction that allows for placement of "Infringing Products", if their DVR functions are disabled.


----------



## jacmyoung

kmill14 said:


> Its obvioius jacmyoung wants to hang his hat on the idea that once you initially disable the DVR functionality of a specific device, that device is no longer within the bounds of the injunction, and can then be given DVR functionality again.
> 
> I can't imagine a more bizarre thought process.
> 
> Its like a person being found guilty, sent to jail for 10 years, and then immediately released from jail because they are no longer guilty (since they went to jail).


First off I have cautioned you to never use examples outside of a patent case to prove your point. People tried that before and found themselves very dissapointed.

Secondly, please do not try to put words in my mouth. I never said the same DVRs can bring back any DVR functions and be outside of the scope of the injunction, the infringer must do more, whatever they bring back must also be outside of the scope of the injunction. If the DVRs brought back later are non-infringing, then they will be outside of the scope of this injunction.


----------



## jacmyoung

nobody99 said:


> Or, using the same logic, if the DVR functions are removed, the machine rebooted, and then _the exact same infringing_ code is reloaded, they would be ok since they had gone "out of scope" when the removal occurred.


Don't put words in my mouth, see above.


----------



## jacmyoung

Greg Bimson said:


> Of course they could still be used as non-DVR's...


Even if they are still within the scope of the injunction? Do you understand what it means when a product is within the scope of an injunction, that means that product must be stopped, not used, period.


----------



## kmill14

jacmyoung said:


> Even if they are still within the scope of the injunction? Do you understand what it means when a product is within the scope of an injunction, that means that product must be stopped, not used, period.


You ignored my entire IN scope and OUT of scope section up above it seems:

I'll re-state it here:

*****
IN scope is the 8 product models specified in the injunction.
IN scope is the order to disable the DVR functionality all 8 product models that are in the hands of the end users.

OUT of scope is functionality in these 8 product models that does NOT EQUATE to DVR functionality. If these boxes want to act like normal receivers, thats OK, because that functionality is OUT of scope, in terms of what must be disabled
*****

There is no such clause that said the entire product must be stopped/not used. The only clause in the injunction is that the product must have its DVR capabilities disabled.

PS: You've been putting words into people's mouths ever since I have read this thread. So take your own "cautions" to heart.


----------



## Greg Bimson

There was a trial.

DISH/SATS was found to infringe the TiVo Time Warp patent.

The judge ordered damages and a permanent injunction.

Because the receivers had to be judged (adjudicated), it is the receivers that were in front of the judge that were found to infringe. So the judge wrote the injunction limiting the *scope* of the injunction to a handful of models that were found infringing, and those not more than colorably different.

The "Infringing Products" are within the scope of the injunction. They are to have their DVR functions disabled. No more, no less. Even without DVR functions, they are still in the scope of the active injunction.


----------



## jacmyoung

http://www.ll.georgetown.edu/federal/judicial/fed/opinions/04opinions/04-1014.html

"...Therefore, *the only acts* the injunction may prohibit are *infringement of the patent * by the adjudicated devices and *infringement* by devices not more than colorably different from the adjudicated devices. In order to comply with Rule 65(d), the injunction should explicitly proscribe only those specific acts."

The above statement is absolute and clear, the only things an injunction can prohibit are *infringement of the patent* by the adjudicated devices, and ... If the adjudicated devices no longer infringe, they are outside of the scope of the injunction, just like the DP501 without the DVR functions, it no longer infringes on the Tivo patent, even though it is still the adjudicated device, it can be used because it is now outside of the scope of the injunction.

How did that happen? Because a software download made it happen, a software download modified the adjudicated devices to remove the DVR functions and made them no longer infringe, and therefore made they outside of the scope of the injunction, and therefore they may be used as non-DVRs.

For the same reason, if they be brought back as DVRs again, as long as they no longer infringe, those adjudicated devices will no longer be subject to the injunction (within the scope of the injunction), because the Circuit Court said so, not I said so.

Now there is disagreement on whether this injunction "explicitly proscribe only those specific acts", I say yes, by the use of the term "Infringing Products" this injunction has its bases covered. But even if you people are correct, that this injunction does not "explicitly proscribe only those specific acts" and went beyond that to prohibit all DVR functions, infrigning or not, it is ok, because the judge is given wide latitude to frame his injunctions.

It will be up to the Circuit Court to ensure that "only those specific acts" are within the scope of the injunction, not other acts that are non-infringing, such as the use of the new DVR software that no longer infringes on Tivo's patent, or the use of the receivers as non-DVRs which automatically imples they no longer infringe, despite the fact either way they will still be ajudicated devices.


----------



## James Long

nobody99 said:


> The injunction is clear on this point, you must agree, and any reasonably intelligent person can see that.


If that were true we would not need a court decision. We've got "reasonably intelligent" people all over the place ... people who have passed the bar and now work for DISH and Tivo or the Texas Eastern District Court. THESE are the "reasonably intelligent" people who are doing the same as the (uncharacterized) people in this thread ... expressing their opinions. Except the real lawyers and judges in the case do it with less backhand.

Please, don't tell us what "reasonably intelligent" people will decide when there is ample proof of a difference of opinion among the most informed people of all.


----------



## James Long

kmill14 said:


> Its like a person being found guilty, sent to jail for 10 years, and then immediately released from jail because they are no longer guilty (since they went to jail).


Not quite ... it is more like being immediately released from jail because they have made reparations. But the example fails miserably because being sent to jail for 10 years was NOT the sentence DISH received. DISH was not ordered to cease providing DVR service for any length of time including forever. DISH is permitted to discover and use other ways of providing DVR service than violating Tivo's patent. And they have apparently done so.

So the sentence in this case is being fined and told not to infringe on Tivo's patented process with their DVRs (both named and only colorably different). DISH believes that they have overcome the "not infringe" part. A "reasonably intelligent" judge will decide.


----------



## nobody99

James Long said:


> If that were true we would not need a court decision. We've got "reasonably intelligent" people all over the place ... people who have passed the bar and now work for DISH and Tivo or the Texas Eastern District Court. THESE are the "reasonably intelligent" people who are doing the same as the (uncharacterized) people in this thread ... expressing their opinions. Except the real lawyers and judges in the case do it with less backhand.
> 
> Please, don't tell us what "reasonably intelligent" people will decide when there is ample proof of a difference of opinion among the most informed people of all.


You obviously missed by cynical imitation of another person. :sure:


----------



## James Long

nobody99 said:


> You obviously missed by cynical imitation of another person. :sure:


Remember, this thread is about Tivo vs Echostar ... not each other.
If you're here to discuss the topic, great. If you're here to mock people, not so great.

:backtotop Tivo vs Echostar


----------



## jacmyoung

And in debating whether a software download might be used to modify the infringing devices or not, I even lost focus and forgot to mention the very case I just quoted yesterday, in which C&W used precisely such software download to get themselves out of a contempt charge. So yes it is certainly alright to use a software download, as long as such method can indeed modify the products in a way that a legitimate workaround may be achieved.

Notice the other side had little to rely on as far as past cases and the actual reading of the law and the standards by the courts. Every time I produce a fact of case law or other means, they insisted it shall not apply. As far as they are concerned to prove myself I must find a case that is exactly the same as this one, else do not even try on them, because Tivo is so dear to their hearts and so special that this case in their minds deserves special treatment.

Also notice despite the fact my counter arguments with facts and case laws may appear all over the map, they were so only because the other side was all over the map in their attack of my facts and findings.

Despite that, all my facts and arguments and researches converge to a single point of agreement, that is the infringer must be allowed to modify his infringing products and continue as before, as long as the modification is legitimate in getting around the patent he infringed.

It is really not that complicated.


----------



## Greg Bimson

jacmyoung said:


> Also notice despite the fact my counter arguments with facts and case laws may appear all over the map, they were so only because the other side was all over the map in their attack of my facts and findings.


Counter arguments? It is your research that is suspect. All the "facts and case laws" in the world don't matter if they don't apply.

Cable and Wirelesss? I already mentioned the injunction allowed for the software/service to be changed, to workaround the injunction.

The only matter being taken up is that the "Infringed Products" have been ordered to be disabled and that the "Infringed Products" and those "not more than colorably different" are no longer being sold.

This hearing has nothing to do with, "the infringer must be allowed to modify his infringing products and continue as before, as long as the modification is legitimate in getting around the patent he infringed." DISH/SATS doesn't even argue that; they argue they aren't subject to the injunction.


----------



## kmill14

I am still waiting for that court decision that this great new software is in fact non-infringing. Certainly jacmyoung doesn't think a judge should ignore the only clear ruling and order that is available, does he?


----------



## scooper

kmill14 said:


> I am still waiting for that court decision that this great new software is in fact non-infringing. Certainly jacmyoung doesn't think a judge should ignore the only clear ruling and order that is available, does he?


You've got a long wait, if that is what you're after. Dish filed in Delaware for a declaration of that.

All that can happen in September is a whether Dish's / Echo's new software is "more than colorably different" or not - not whether it is infringing or not. The infringement of the new software (if there is any or not) must be determined in a new trial.

I'm not sure what else you could be asking for. We have laid it out.


----------



## James Long

scooper said:


> You've got a long wait, if that is what you're after. Dish filed in Delaware for a declaration of that.
> 
> All that can happen in September is a whether Dish's / Echo's new software is "more than colorably different" or not - not whether it is infringing or not. The infringement of the new software (if there is any or not) must be determined in a new trial.
> 
> I'm not sure what else you could be asking for. We have laid it out.


The new software is not at issue on September 4th ... beyond the generic question of if DISH can be in compliance with the injunction by changing the software instead of turning off the DVR function. There won't be discovery on what this new software is and what it does. How can the judge make any decision on the specifics of the new software without discovery?

The furthest they will get is a simple legal question of if changing software is enough and if DISH is in contempt for changing the software and not disabling all DVR functions on the named units.


----------



## jacmyoung

Greg Bimson said:


> Counter arguments? It is your research that is suspect. All the "facts and case laws" in the world don't matter if they don't apply.


This is exactly why I said some of the Tivo fans think they are so special no case law or unifrom standards must apply to this case.



> DISH/SATS doesn't even argue that; they argue they aren't subject to the injunction.


DISH most certainly argued the workaround issue, and DISH most certainly did not argue they were not subject to the injuntion, go back and read again, and quote for us where DISH said those.

We have a disagreement on what is the scope of the injunction, the difference is on your side, you believe your inerpretation is right, but you decide to go one step further, insist that anyone who disagree with your interpretation is either attacking the injunction, or do not care to follow the injunction.

Please realize it is only your interpretation, no more no less. We disagree with you but we did not say you are above the law, did we?

I only said you feel you are special, because you said no case law shall apply here, that seems to fit in the definition of feeling special.


----------



## jacmyoung

kmill14 said:


> I am still waiting for that court decision that this great new software is in fact non-infringing. Certainly jacmyoung doesn't think a judge should ignore the only clear ruling and order that is available, does he?


Except that ruling does not exist yet, the ruling whether the new software is still infringing.

The order that is available is clear to me that DISH is in compliance, you disagree, that is fine, but that does not make you correct, nor me being correct. Let the judge tell us.

What I have said is, even if the judge sides with you, every past case I have cited leads to one outcome, the contempt ruling will be overturned.


----------



## peak_reception

James Long said:


> The new software is not at issue on September 30th ...


 What hearing is scheduled for September 30th?


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## Greg Bimson

jacmyoung said:


> This is exactly why I said some of the Tivo fans think they are so special no case law or unifrom standards must apply to this case.


No, I believe that "case law or uniform standards must apply to this case". Just not the case law you've presented.


jacmyoung said:


> What I have said is, even if the judge sides with you, every past case I have cited leads to one outcome, the contempt ruling will be overturned.


So inform us what your opinion would be if DISH/SATS is found in contempt and DISH/SATS loses an appeal of the contempt charge at both the Court of Appeals and the Supreme Court?


jacmyoung said:


> We have a disagreement on what is the scope of the injunction, the difference is on your side, you believe your inerpretation is right, but you decide to go one step further, insist that anyone who disagree with your interpretation is either attacking the injunction, or do not care to follow the injunction.


Because words have meaning. The "scope" of the injunction are DVR's, specifically those which have infringed (the "Infringing Products") and those "not more than colorably different". If DISH/SATS adheres to the injunction order, they are in compliance with the injunction. If DISH/SATS ignores the injunction order, they are probably in contempt of the injunction. Neither case changes the fact the "scope" of the injunction is simply the adjudicated products, as the injunction remains in effect until the expiration of TiVo's Time Warp patent.


----------



## James Long

peak_reception said:


> What hearing is scheduled for September 30th?


The one on September 4th ... too many dates, not enough raisins.


----------



## James Long

Greg Bimson said:


> So inform us what your opinion would be if DISH/SATS is found in contempt and DISH/SATS loses an appeal of the contempt charge at both the Court of Appeals and the Supreme Court?


Looking forward to 2010 ... :grin: ...

Opinions are modified by the facts. At this point DISH has not been found in contempt, has not appealed that finding to an appeals court, the full appeals court or the Supreme Court. Looking that far ahead is a bit premature.

But may I suggest "shock" "surprise" or any of the feelings that YOU would expect to express if DISH is _not_ found in contempt?



> Because words have meaning. The "scope" of the injunction are DVR's, specifically those which have infringed (the "Infringing Products") and those "not more than colorably different".


Specifically "in the _Untied_ States" (my emphasis) and "all other products that are _only colorably different_" (my emphasis). Words have meaning.



> If DISH/SATS adheres to the injunction order, they are in compliance with the injunction. If DISH/SATS ignores the injunction order, they are probably in contempt of the injunction. Neither case changes the fact the "scope" of the injunction is simply the adjudicated products, as the injunction remains in effect until the expiration of TiVo's Time Warp patent.


Or until a court says so ... which may be shortly after September 4th.

What if Tivo settled with DISH? Would the injunction still be effect? Technically yes. Would DISH be in contempt if they ran "Infringing Products" on 2004 DVR code? Perhaps. For clarity it would be best if the injunction were lifted or modified should there be a settlement.

What if DISH's "Infringing Products" were found to be non-infringing? Wouldn't that be an event that would allow for the injunction to be lifted or modified?

What if DISH convinced the court, without specifically proving that the new software IS non-infinging, that it would be theoretically possible to adjust the "Infringing Products" to be non-infringing for present or future use? Is this not an event that should allow the injunction to at least be stayed pending discovery on the matter?

It isn't the decision Tivo wants ... but it is a possible outcome.


----------



## nobody99

Here's what I think the biggest problem is. None of us know what Judge Folsom _intended_ with the "disable the DVR functionality" on the DVRs already placed with customers. Let's skip new DVRs for the time being.

If he intended that the DVR functionality be disabled permanently, regardless of new software, then perhaps DISH has a case for a appeal based on the injunction being overly broad. I find it interesting that the language of the injunction with regard to the already-placed DVRs omits any mention of "colorably different" or new software, or anything. It's very specific. The fact that an earlier paragraph _contains_ the term "colorably different" sounds a lot like the omission was intentional in the "turn off the DVR functionality" paragraph.

If he intended that the DVR does not need to be turned off - just reloaded with new software that does not infringe, and rules that the DVRs are not in contempt..then we go ahead with discovery to determine if the DVR with new software is merely colorably different than the old. I don't even know what the law allows TiVo in appeals in this case - that the injunction is worded so poorly that it is effectively neutered.

There are several things that are problematic for DISH in trying to figure out Judge Folsom's intent with the injunction. First, the language of the injunction specifically omits any "out" for DISH for existing DVRs. Secondly, the injunction does not apply to the software, it applies to the DVRs.

My opinion (agree with me or not) is that Judge Folsom's intent was to permanently remove DVR functions from those receivers _forever_. This was, in his mind, equitable relief in that it gives TiVo a chance at these 'sticky' customers that they lost because cheated.

If I'm right, DISH will be found in contempt and the four million or so DVRs will be orderd to be shut off immediately (not to mention significant additional damages and penalties). DISH will appeal and ask the injunction to again be stayed (of course this all requires Crazy Charlie to continue gambling with his investors' money).

The appeal is where it gets interesting. Regardless of what anyone says, I have yet to see a case where a company was ordered to do so specific a thing to such a specific list of devices. I imagine in the contempt ruling, Judge Folsom might further explain why the devices were ordered to have their DVR functionality shut off. His reasoning is awfully critical to the appeal.

Again, this is just my opinion. But I believe that Judge Folsom is going to find Dish in contempt, and he's going to say that new software is not an option for these specific DVRs (and explain why).

Of course, it'll all probably be settled by September 3rd, and we'll all be pissed of because we didn't get to see who eats crow.


----------



## kmill14

scooper said:


> You've got a long wait, if that is what you're after. Dish filed in Delaware for a declaration of that.
> 
> *All that can happen in September is a whether Dish's / Echo's new software is "more than colorably different" or not - not whether it is infringing or not. *The infringement of the new software (if there is any or not) must be determined in a new trial.
> 
> I'm not sure what else you could be asking for. We have laid it out.


For starters, as has been pointed out by others, Sep. 4th won't analyze the new software AT ALL. And even if they WERE to, the "colorably different" standard does not apply to all those DEVICES already ADJUDICATED on, and in the hands of end users.

Notice the emphasis on DEVICES. That means entire products and not pieces of software. Software was not ruled on or spelled out in the injunction.


----------



## kmill14

jacmyoung said:


> Except that ruling does not exist yet, the ruling whether the new software is still infringing.
> 
> The order that is available is clear to me that DISH is in compliance, you disagree, that is fine, but that does not make you correct, nor me being correct. Let the judge tell us.
> 
> What I have said is, even if the judge sides with you, *every past case I have cited leads to one outcome, the contempt ruling will be overturned*.


There is no past case you have cited that is applicable to this case.

And since you feel that DISH is in compliance with the order that says to disable the DVR functionality of 8 product lines in the hands of end users, I feel your judgment is severely lacking and I do not trust any opinion you may have regarding what an Appeals Court would do.


----------



## jacmyoung

kmill14 said:


> There is no past case you have cited that is applicable to this case.
> 
> And since you feel that DISH is in compliance with the order that says to disable the DVR functionality of 8 product lines in the hands of end users, I feel your judgment is severely lacking and I do not trust any opinion you may have regarding what an Appeals Court would do.


Just read the above case and the quote again, it is a quote right out of the same Circuit Court which will preside over an appeal in this case, if there is one.

It said the *only acts* an injunction may prohibit are the *infringement of the patent by the adjudicated devices*...not acts by adjudicated devices that do not infringe. If you can not accept that then yes there is no use to argue.

When the injunction said to disable the DVR fucntions, it *must be* referring to the DVR functions that had infringed the Tivo patent, because those were the *only acts* this injunction may prohibit. Once the DVR functions no longer infringe, such acts are no longer within the reach of the injunction.

By virtue of the above court opinion, it completely destroys the notion of any injunction's ability to render an "adjudicated device" useless regardless the circumstances. If the adjudicated devices and its functions and acts are no longer infringing on the Tivo patent, they can do such things free and clear, the court can not do anything about is, the only time the court can prohibit the use of those DVRs on the list is if the DVRs again infringe on the same patent.

By virtue of the above court opinion, it completely destroys the notion once an "Infringing Product", always an "Infringing Product", no the court says, don't try to stretch it my friend.

The *only defense* you have now, or maybe just Greg has, is to insist the above Circuit Court's opinion does not apply here. Well you can certainly insist on that.

But may I suggest what you are doing is somewhat similar to sticking head in the sand?


----------



## Greg Bimson

Finally a voice of reason:


James Long said:


> What if Tivo settled with DISH? Would the injunction still be effect? Technically yes. Would DISH be in contempt if they ran "Infringing Products" on 2004 DVR code? Perhaps. For clarity it would be best if the injunction were lifted or modified should there be a settlement.





James Long said:


> What if DISH convinced the court, without specifically proving that the new software IS non-infinging, that it would be theoretically possible to adjust the "Infringing Products" to be non-infringing for present or future use? Is this not an event that should allow the injunction to at least be stayed pending discovery on the matter?


Now, all I ask it that procedurally, you tell us how either of these happen. I'll even start the first one:

Your Honor, we are ready to settle. We have motions that must appear before this court in order to "wipe the slate clean".

So, of course, that would be when the injunction is finally removed. That would be an order of modification, which would be presented to the court by both parties, and would usually be accepted, as it is something both parties can agree upon.

Now, how about that second scenario? How would one go about proving that "Infringing Products", which have a definition in the injunction, are no longer infringing products, and therefore should not be subject to the disable the "Infringing Products" language in the injunction? Or does it even matter?


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## Greg Bimson

jacmyoung said:


> It said the *only acts* an injunction may prohibit are the *infringement of the patent by the ajudicated devices.*


The "Infringing Products" are devices that have been adjudicated, found guilty of infringement.


----------



## jacmyoung

Greg Bimson said:


> The "Infringing Products" are devices that have been adjudicated, found guilty of infringement.


And the Circuit Court said above, the only time the injunction can stop those adjudicated devices is when the adjudicated device is still infringing NOW, not in the past but now.


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## kmill14

jacmyoung said:


> *infringement of the patent by the ajudicated devices*...not acts by ajudicated devices that do not infringe.
> 
> *When the injunction said to disable the DVR fucntions, it must be referring to the DVR functions that had infringed the Tivo patent*,
> 
> *Once the DVR functions no longer infringe*,


I continue to notice a theme in your posts that you have yet to address, even though Greg and I continue to ask for clarification. That theme is that you continue to refer to devices that no longer infringe.

I am not aware of any adjudicated devices that "no longer infringe", are you?

Dish lost a lawsuit that said these devices infringed on TiVo's patent. There has been no such lawsuit ruling that these devices are suddenly non-infringing.

My argument has nothing to do with non-infringing devices, because I am not aware of any. My argument has everything to do with the standing court decision and order that the adjudicated devices in question must be disabled. Thats it.

If E* wants to go to court (as they are trying to do in DE) to argue that this new software allows for their adjudicated devices to be non-infringing, thats fine. They can have their day(s) in court, just like TiVo did. But before they actually win that trial, those adjudicated devices are STILL infringing.


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## jacmyoung

Greg Bimson said:


> Finally a voice of reason:Now, all I ask it that procedurally, you tell us how either of these happen. I'll even start the first one:
> 
> Your Honor, we are ready to settle. We have motions that must appear before this court in order to "wipe the slate clean".
> 
> So, of course, that would be when the injunction is finally removed. That would be an order of modification, which would be presented to the court by both parties, and would usually be accepted, as it is something both parties can agree upon.
> 
> Now, how about that second scenario? How would one go about proving that "Infringing Products", which have a definition in the injunction, are no longer infringing products, and therefore should not be subject to the disable the "Infringing Products" language in the injunction? Or does it even matter?


James was trying to give you a way out, did not want you to continue on a dead end. He was certainly more considerate than me since I am not a moderator.

BTW I also had prefered a reasonable settlement, but I hope you agree a settlement is less likely now than ever before?


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## nobody99

jacmyoung said:


> Just read the above case and the quote again, it is a quote right out of the same Circuit Court which will preside over an appeal in this case, if there is one.
> 
> It said the *only acts* an injunction may prohibit are the *infringement of the patent by the ajudicated devices*...not acts by ajudicated devices that do not infringe. If you can not accept that then yes there is no use to argue.


It's not the same, but that's ok, you are within your right to misunderstand that. The case you cite above was, again, a new product. If you read the entire paragraph, not just the line you quoted, you will see that.

In fact, let's look at the previous sentence, where the give reasoning for the line you quoted:



> because this court has held that "contempt proceedings . . . are available only with respect to devices previously admitted or adjudged to infringe, and to other devices which are no more than colorably different therefrom and which clearly are infringements of the patent."


That actually sounds like an absolutely crystal clear case for TiVo. Have the eight models of DVR previously admitted or adjudged to infringe (whether they do or not now)? If the answer is yes, contempt proceedings are appropriate -- and this from the very same appeals court that will hear our case. Bad news for DISH.

So within a single paragraph there are seemingly opposite outcomes for our case.

In that case, the original injunction included "any products" as well. So the original injunction basically said stop the adjudicated products and any other products that infringe. What the appeals court said was you can only stop adjudicated products and those not more than colorably different.

If you choose to ignore the sentence I quoted above, that's fine, that's your choice. But that sentence takes what you believe is absolute proof of DISH's right to modify and reverse it to no right to modify. So don't tell me the law is clear.

Besides, if the intent of Judge Folsom was always to shut down the DVRs, they are going to be shut down. The only question that will remain is whether or not DISH gets a stay. Pretty big risk.

One other possibility that I think has been alluded to before. Judge Folsom has probably made the injunction intentionally vague so he can steer TiVo and DISH into a settlement. We know how Judge Spencer behaved with RIM/NTP when faced with issuing an injunction - he told each party something along the lines of "I can't believe you are going to leave this in my hands. This has become a legal question, and I am going to give you a legal answer, and it is unlikely that either of you will like the answer."

Maybe the same thing happens here on September 4.


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## jacmyoung

kmill14 said:


> I continue to notice a theme in your posts that you have yet to address, even though Greg and I continue to ask for clarification. That theme is that you continue to refer to devices that no longer infringe.
> 
> I am not aware of any adjudicated devices that "no longer infringe", are you? ...


Try the "Footprint 2.0 Service", try the countless adjudicated devices in my earlier case law that had later been modified yet continued to use the exact same names, the above latest case law I quoted talked about a modified device the infringer made right after they were suspected of infringing someone else patent, in fact the court refered to that modified device as the "adjudicated device" in it opinion above, just read it.

All devices, adjudicated ones, and the ones only colorable different than the adjudicated ones, are all subject to the same injunction, no difference, but they are free and clear, if their acts no longer infringe on the same patent. This much is clear by the above court's opinion.

New products, modified products, bad products, good products, if they are only colorably different than the adjudicated devices, or even the exact same products, they get the exact same treatment under the injunction, and the treatment is that they are prohibited to continue to infringing. The treatment is if they no longer infringe they are free and clear.


----------



## Greg Bimson

Greg Bimson said:


> Now, how about that second scenario? How would one go about proving that "Infringing Products", which have a definition in the injunction, are no longer infringing products, and therefore should not be subject to the disable the "Infringing Products" language in the injunction? Or does it even matter?





jacmyoung said:


> James was trying to give you a way out, did not want you to continue on a dead end. He was certainly more considerate than me since I am not a moderator.


It is a simple question. Really it is. Maybe instead of attacking me, answering the question would be in order. Again:

Procedurally, what must DISH/SATS file to have the court consider changing the adjudicated devices from the "Infringing Products" category, so that they no longer are part of the injunction?


----------



## nobody99

jacmyoung said:


> Try the "Footprint 2.0 Service", try the countless adjudicated devices in my earlier case law that had later been modified yet continued to use the exact same names, the above latest case law I quoted talked about a modified device the infringer made right after they were suspected of infringing someone else patent, in fact the court refered to that modified device as the "adjudicated device" in it opinion above, just read it.
> 
> All devices, adjudicated ones, and the ones only colorable different than the adjudicated ones, are all subject to the same injunction, but they are free and clear, if their acts no longer infringe on the same patent. This much is clear by the above court's opinion.


Please stop using cases that don't apply. The injunction prevent _a specific version_ of that software. TiVo's injunction prevents DVR functions on eight models of DVRs. Apples and oranges.

I'd also like to add something that might help you for debate. When you ay things like "this is made clear by" or "you must agree" here's what you are saying to people who disagree with you "The hell with your opinion, mine is the only one that counts." It puts people on the defensive. In the interest of a friendly debate about the case please keep this in mind.


----------



## Herdfan

nobody99 said:


> If he intended that the DVR functionality be disabled permanently, regardless of new software, then perhaps DISH has a case for a appeal based on the injunction being overly broad.


Here is what I don't understand. The injunction was based on the notiont hat both hardware and software infringed. Given those facts, the borad injunction was proper.

The COA reversed and remanded the hardware claims back to be retried. Yet they left the injunction that was based on both software and hardware stand as is. The big question is why.

The COA are smart people and they could have easily forseen new non-infringing software being loaded onto these devices. Yet they let it stand as written. Was it just an oversite.

Another question regarding the hardware claims. I am sure it has been covered, but I must have missed it. Were they reversed because the judge instructed the jury incorrectly as to the standard to use or was it for some other reason.


----------



## jacmyoung

Greg Bimson said:


> It is a simple question. Really it is. Maybe instead of attacking me, answering the question would be in order. Again:
> 
> Procedurally, what must DISH/SATS file to have the court consider changing the adjudicated devices from the "Infringing Products" category, so that they no longer are part of the injunction?


Accroding to the above court opinion, all DISH needs to do is to demonstrate to the judge their modified products no longer infringe on the same patent, they don't need to ask the judge to change anything already written, they are free and clear.

Because the only things an injunction, any injunction can prohibit are the act of infringement. If such acts no longer exist, the injunction cannot do anything to the adjudicated devices, and for a very good reason, the goal of the injunction has been reachded.


----------



## TexasAg

kmill14 said:


> I continue to notice a theme in your posts that you have yet to address, even though Greg and I continue to ask for clarification. That theme is that you continue to refer to devices that no longer infringe.
> 
> I am not aware of any adjudicated devices that "no longer infringe", are you?
> 
> Dish lost a lawsuit that said these devices infringed on TiVo's patent. There has been no such lawsuit ruling that these devices are suddenly non-infringing.





Greg Bimson said:


> Procedurally, what must DISH/SATS file to have the court consider changing the adjudicated devices from the "Infringing Products" category, so that they no longer are part of the injunction?


That's what the "more than colorably different" standard is for. There does not need to be an entire infringement trial before Echo is allowed to make its products "more than colorably different". There never is. The "more than colorably different" standard applies in contempt proceedings precisely because an infringer has modified its products and there has been no new infringement trial on those products. That's what the court is trying to decide - whether a new infringement trial is needed based on whether the modified product is "more than colorably different."



kmill14 said:


> There is no past case you have cited that is applicable to this case.


What you mean is that there is no past case that has a factual situation identical to this, because only that is something you are willing to accept. Several cases that are very similar have already been discussed here. And in reality, the courts are always guided by the principles in their past decisions. The courts will not ignore those decisions because this case, while it may have a slight factual variation from prior cases, is not so radically different from all prior cases to say that all laws and prior cases don't apply.

This insistence that the "more than colorably different" standard applies only to new products is questionable at best. No court has said that the standard applies only to new products. All of the cases we've seen so far where they discuss this standard and used the term "new" have been situations where the infringer couldn't easily modify the devices remotely to make them "more than colorably different."

So in this case, the courts will be guided by the principles of the prior cases - and the principle of those cases is that the infringer can modify its devices and avoid contempt when the "more than colorably different standard" is met. Show me the case where an infringing product was given the "death sentence" (as James called it) and the infringer could not do anything to that product to make it "more than colorably different".


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## nobody99

jacmyoung said:


> Accroding to the above court opinion, all DISH needs to do is to demonstrate to the judge their modified products no longer infringe on the same patent, they don't need to ask the judge to change anything already written, they are free and clear.
> 
> Because the only things an injunction, any injunction can prohibit are the act of infringement. If such acts no longer exist, the injunction cannot do anything to the adjudicated devices, and for a very good reason, the goal of the injunction has been reachded.


I think Greg is asking an someone who actually knows the legalities, not an opinion (we all have those )

The above court opinion was at the appeals level. If you are suggesting that DISH is just going to sit by and be hit with contempt proceedings...well, maybe you are actually Charlie Ergen?!

And with regards to your second point, that "the only things an injunction, any injunction can prohibit" -- that's completely open to debate. There hasn't been a case like this where a previously-adjudicated device was modified to remove something _without an explicit out_. And who says the "goals of the injunction have been reached?" What if the goal of the injunction -- in shutting down the existing DVRs -- was to allow TiVo a chance to earn more customers? We don't know for sure what Judge Folsom's goal actually was.


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## kmill14

Oh jacmyoung, you trickster. nobody99 beat me to it, but it deserves anothe rchance to be drilled into your foggy head.

Here is the full paragraph from that case, which you only decided to quote part of, and then added a few words of your own (like the word NOW):

*******
The actual scope of the injunction cannot be that expansive, however, because this court has held that "*contempt proceedings . . . are available only with respect to devices previously admitted or adjudged to infringe*, and to other devices which are no more than colorably different therefrom and which clearly are infringements of the patent." KSM, 776 F.2d at 1526. Therefore, the only acts the injunction may prohibit are infringement of the patent by the adjudicated devices and infringement by devices not more than colorably different from the adjudicated devices. In order to comply with Rule 65(d), the injunction should explicitly proscribe only those specific acts.
*******

As far as I can tell, TiVo is pressing for contempt proceedings for devices "previously admitted or adjudged to infringe". Do you disagree?

Oh, and you bring up the Footprint 2.0 case, which we have addressed already. The Footprint 2.0 service was in fact the DEVICE that infringed, and was ordered to be shut down in the current format described at trial. The injunction was quite specific in those terms. C&W replaced the ENTIRE DEVICE, aka the Footprint service, with a NEW DEVICE, or version.

The case you most recently cited (and poorly at that) is basically the same thing. The infringing company replaced an entire line of products with NEW products.

E* however has *not replaced* their *adjudicated devices*with *new devices*. Why? Because the DEVICE in question is NOT A PIECE OF SOFTWARE, which is all E* supposedly replaced. With that series of FACTS in mind, E* is not in compliance with the injunction (that was not appealed by the way) because the *adjudicated devices* in the hands of the subscribers are still functional as DVRs, which is a NO NO.


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## TexasAg

nobody99 said:


> What if the goal of the injunction -- in shutting down the existing DVRs -- was to allow TiVo a chance to earn more customers? We don't know for sure what Judge Folsom's goal actually was.


Two problems:

(i) We do know the judge specifically mentioned "continuing infringement" by Echo's customers.

(ii) Tivo was only able to prove at trial that it would have sold an additional 192,000 units had it not been for Echo's infringement (this is what formed the basis for Tivo's "lost profits" damages). Tivo could not show that it would have sold the other 4 million DVRs had it not been for Echo's infringement - if Tivo had done this, they would have gotten more lost profits instead of a royalty for those units. It seems difficult to believe that Tivo would be unable to show that it would have gained those customers and yet still get an injunction on the basis that Tivo deserved a chance to get those customers.



kmill14 said:


> Because the DEVICE in question is NOT A PIECE OF SOFTWARE, which is all E* supposedly replaced.


Simple question - do you agree that the software on Echo's DVRs is required in order for Echo to infringe Tivo's software claims?


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## jacmyoung

TexasAg said:


> ... Show me the case where an infringing product was given the "death sentence" (as James called it) and the infringer could not do anything to that product to make it "more than colorably different".


Realize this request is futile, they do not need to show us anything, their case is the only thing they care, the "face of the injunction" is the only thing they care, what else can they rely on anyway? Tivo is the only thing they care, no one else, nothing else really matters.


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## kmill14

TexasAg said:


> That's what the "more than colorably different" standard is for. There does not need to be an entire infringement trial before Echo is allowed to make its products "more than colorably different". There never is. The "more than colorably different" standard applies in contempt proceedings precisely because an infringer has modified its products and there has been no new infringement trial on those products. That's what the court is trying to decide - whether a new infringement trial is needed based on whether the modified product is "more than colorably different."
> 
> This insistence that the "more than colorably different" standard applies only to new products is questionable at best. No court has said that the standard applies only to new products. All of the cases we've seen so far where they discuss this standard and used the term "new" have been situations where the infringer couldn't easily modify the devices remotely to make them "more than colorably different."


TexasAG, KSM is quite clear on what the "more than colorably different" standard applies to, and it was NOT to devices already adjudicated on. That is why the Appeals Court used the exact verbage from that trial i nthe one jacmyoung is referring to:

*****
The actual scope of the injunction cannot be that expansive, however, because this court has held that "contempt proceedings . . . are available only with respect to devices *previously admitted or adjudged to infringe*, and *to other devices **which are no more than colorably different *therefrom and which clearly are infringements of the patent
*****

Notice the seperation?

Also, you will notice as well that E*'s motion on 5/23 did not mention "colorably different" once. They pressed for this new software to be "non-infringing", and never mentioned anything about "more than colorably different". So even THEY are not arguing your point.


----------



## kmill14

TexasAg said:


> Simple question - do you agree that the software on Echo's DVRs is required in order for Echo to infringe Tivo's software claims?


Lets not cut it short....I agree that software AND hardware on Echo's DVRs are required to make the DVRs work, and the processes (combining software AND hardware) that Echo designed for their DVRs is what infringed on TiVo's software claims.


----------



## nobody99

TexasAg said:


> This insistence that the "more than colorably different" standard applies only to new products is questionable at best. No court has said that the standard applies only to new products. All of the cases we've seen so far where they discuss this standard and used the term "new" have been situations where the infringer couldn't easily modify the devices remotely to make them "more than colorably different."


But you are forgetting one very important point. In the DISH injunction, the "more than colorably standard" language is present for new devices. For existing devices it is not present.

We can argue until the cows come home on why this is the case, and we can argue whether or not it will stand up to an appeal for being overly broad, but that has to have been done for a reason. If you take the position that the "court's colorably different" is used to allow a company to redesign a new product for new sales (a workaround), all the cases used as examples in this thread fit this definition as well.


----------



## TexasAg

kmill14 said:


> Also, you will notice as well that E*'s motion on 5/23 did not mention "colorably different" once. They pressed for this new software to be "non-infringing", and never mentioned anything about "more than colorably different". So even THEY are not arguing your point.


Echo's May 23 letter specifically cited KSM and Arbek, both of which are based on the "more than colorably different" standard. And we'll have to wait to see Echo's actual response to Tivo's motion to see specifically what their legal position is. As a side note, either argument works for Echo - either one gets them around a contempt finding.



kmill14 said:


> Lets not cut it short....I agree that software AND hardware on Echo's DVRs are required to make the DVRs work, and the processes (combining software AND hardware) that Echo designed for their DVRs is what infringed on TiVo's software claims.


And if Echo's software completely eliminates a function required by Tivo's software claims (so that neither the hardware or the software performs a required function), would the DVRs still infringe Tivo's software claims?


----------



## jacmyoung

kmill14 said:


> ...As far as I can tell, TiVo is pressing for contempt proceedings for devices "previously admitted or adjudged to infringe". Do you disagree?


Yes and it is no different than the above case BTW. And the court said in such case the injunction can only prohibit the acts of infringement by those "previously admitted or adjudicated to infringe", the injunction can prohibit only those specific acts, not other acts, such as an act that perfomed by the "previously admitted or adjudicated" that does not infringe.



> Oh, and you bring up the Footprint 2.0 case, which we have addressed already. The Footprint 2.0 service was in fact the DEVICE that infringed, and was ordered to be shut down in the current format described at trial. The injunction was quite specific in those terms. C&W replaced the ENTIRE DEVICE, aka the Footprint service, with a NEW DEVICE, or version.


No they only downloaded a small software patch, they did nothing else to the Footprint 2.0 Service, the service was never shut down.



> The case you most recently cited (and poorly at that) is basically the same thing. The infringing company replaced an entire line of products with NEW products.


But the opinion of the court was about the adjudicated devices, not the "new products", we are in fact, as you wished, discussing the adjudicated devices, nothing else, at this moment, I don't know why you insist on discussing the "new products". We are talking about the adjudicated devices, and the court said these devices must be acting on things that are infringing in order for the injunction to prohibit them from doing so. An injunction can not prohibit an *adjudcated device* from doing things that are not infringing.



> E* however has *not replaced* their *adjudicated devices*with *new devices*. Why? Because the DEVICE in question is NOT A PIECE OF SOFTWARE, which is all E* supposedly replaced. With that series of FACTS in mind, E* is not in compliance with the injunction (that was not appealed by the way) because the *adjudicated devices* in the hands of the subscribers are still functional as DVRs, which is a NO NO.


Does not matter if it is software, or hardware, DVR or non-DVR, a piece of doorstop or not, as long as those devices no longer infringe, the injunction can not prohibit them.


----------



## TexasAg

nobody99 said:


> But you are forgetting one very important point. In the DISH injunction, the "more than colorably standard" language is present for new devices. For existing devices it is not present.


So perhaps that is why Echo is focusing on its new software being "non-infringing" rather than "more than colorably different." Looking again at the May 23 letter from Echo, it appears that both cases are true:
(i) For existing DVRs, the argument is they don't infringe any more and so are no longer infringing products.
(ii) For new DVRs, the argument is they are more than colorably different.

In either case, though, I haven't seen anything saying that Echo must first have a trial before it can modify its products to be non-infringing or more than colorably different. That's what the contempt hearing is for. Echo doesn't need to have a trial before it makes its products non-infringing (assuming they have done that - if they haven't, they can be held in contempt).


----------



## bobcamp1

kmill14 said:


> I continue to notice a theme in your posts that you have yet to address, even though Greg and I continue to ask for clarification. That theme is that you continue to refer to devices that no longer infringe.
> 
> I am not aware of any adjudicated devices that "no longer infringe", are you?


Yes. And that's all I can say about the subject, since I was involved in just such a case. (I actually had to check with a lawyer before I posted that previous sentence. Sigh.).

Actually, Dish's products are all "new" in the eyes of the court. It's not like the injunction was already in effect when the very first infringing DVR was released by Dish. I think you are stuck on a moot point.

And all that will happen on Sept. 4 is the judge will rule if his injunction should now be (not "meant to be", see Appellate Court ruling) taken word for word, letter for letter, or if there is a little wiggle room. Whoever loses will appeal, and Tivo will file a motion for contempt either way (and this outcome can be appealed). Note that E* doesn't have to initiate anything. An infringing company can continue to violate the injunction, and if the other company doesn't file for a contempt motion it cannot collect additional damages.

The second point that some people are stuck on is the injunction wording. The exact wording doesn't matter. If the judge orders E* executives to kill their first born sons, they don't have to follow it even if the judge later finds them in contempt. The Appeals Court would eventually overturn the injunction (or at least provide clarification on it or modify it in less extreme cases). And if they don't, there are laws that prevent E* from carrying out the injunction. The injunction takes a back seat to existing case law and laws, not the other way around.

I'm not a lawyer. I just see more of them than I want to.


----------



## Greg Bimson

jacmyoung said:


> Accroding to the above court opinion, all DISH needs to do is to demonstrate to the judge their modified products no longer infringe on the same patent, they don't need to ask the judge to change anything already written, they are free and clear.


But what about adjudicated products, the eight models listed as "Infringing Products"? That case law talks about modified products, not adjudicated products.


TexasAg said:


> That's what the "more than colorably different" standard is for. There does not need to be an entire infringement trial before Echo is allowed to make its products "more than colorably different". There never is. The "more than colorably different" standard applies in contempt proceedings precisely because an infringer has modified its products and there has been no new infringement trial on those products. That's what the court is trying to decide - whether a new infringement trial is needed based on whether the modified product is "more than colorably different."


Once again, those are modified products, not adjudicated products.

Even with a modification in the field, they are still adjudicated to be infringing. Something must happen within the court system for that to change.

The 4 September hearing is rather clear. What should happen to the adjudicated products, which are defined in the injunction as "Infringing Products"? At face value, the injunction says to disable them.

DISH/SATS needs to do something to have those "Infringing Products" no longer considered infringing, and therefore, would need to have to file something with the court. And it more than likely would have to be separate from a contempt hearing. What would that be?


----------



## TexasAg

Greg Bimson said:


> DISH/SATS needs to do something to have those "Infringing Products" no longer considered infringing, and therefore, would need to have to file something with the court. And it more than likely would have to be separate from a contempt hearing. What would that be?


As far as I'm aware, there is no such type of hearing that the Texas court would have. It would be during the contempt hearing where Echo could argue it is no longer infringing and so shouldn't be held in contempt. Are you asking about the Delaware thing? Because that doesn't help here - if Echo is no longer infringing, it shouldn't be held in contempt regardless of whether a declaratory judgment trial is ongoing elsewhere.


----------



## kmill14

TexasAg said:


> Echo's May 23 letter specifically cited KSM and Arbek, both of which are based on the "more than colorably different" standard. And we'll have to wait to see Echo's actual response to Tivo's motion to see specifically what their legal position is. As a side note, either argument works for Echo - either one gets them around a contempt finding.


E* also decided to neglect the same quote that I put in front of you and jacmyoung, that shows CLEAR seperation from adjudged devices AND others "not more than colorably different".

E* is well within their rights to design around TiVo's patent, and construct a modified device and then sell it to their customers. However, KSM (and the Appeals Court in later cases) is quite clear in seperating adjudged devices from "other" devices. Otherwise, why this phrase:

*****
"contempt proceedings . . . are available only with respect to devices previously admitted or adjudged to infringe, and to other devices which are no more than colorably different therefrom and which clearly are infringements of the patent
*****

Why don't you break that phrase down for me and tell me what it means to you, and then apply it to this case.


----------



## kmill14

TexasAg said:


> And if Echo's software completely eliminates a function required by Tivo's software claims (so that neither the hardware or the software performs a required function), would the DVRs still infringe Tivo's software claims?


Well, that is certainly going to require another trial, won't it?

But just like TiVo having to wait for THEIR vindication, E* will have to wait for theirs as well. While they go through a new trial, the standing order of infringement and disabling the DVRs will no doubt stand.


----------



## TexasAg

kmill14 said:


> *****
> "contempt proceedings . . . are available only with respect to devices previously admitted or adjudged to infringe, and to other devices which are no more than colorably different therefrom and which clearly are infringements of the patent
> *****
> 
> Why don't you break that phrase down for me and tell me what it means to you, and then apply it to this case.


It means the original versions of Echo's DVRs (including the original software) are adjudicated devices, and Echo will always be subject to contempt proceedings if they ever use, sell, or make the original versions of those DVRs. It also means any product that is only colorably different from the original versions of Echo's DVRs (including the original software) can form the basis for contempt.



kmill14 said:


> Well, that is certainly going to require another trial, won't it?


You better be careful. You're basically admitting that whether Echo continues to infringe Tivo's patent is in doubt if Echo truly has modified its DVRs. And if continuing infringement is required to find contempt...


----------



## kmill14

TexasAg said:


> It means the original versions of Echo's DVRs (including the original software) are adjudicated devices, and Echo will always be subject to contempt proceedings if they ever use, sell, or make the original versions of those DVRs.
> 
> You better be careful. You're basically admitting that whether Echo continues to infringe Tivo's patent is in doubt if Echo truly has modified its DVRs. And if continuing infringement is required to find contempt...


A) There is no proof that E*'s adjudicated devices are NOT infringing, only that they infringed.

B) E* is subject to contempt proceedings for failure to obey the Court's Order

C) The Court's Order specified specific products, not versions of software.

D) The Court's Order specified that those specific products in the hands of End Users must be disabled. That Order contains no other verbage.


----------



## TexasAg

kmill14 said:


> A) There is no proof that E*'s adjudicated devices are NOT infringing, only that they infringed.
> 
> B) E* is subject to contempt proceedings for failure to obey the Court's Order
> 
> C) The Court's Order specified specific products, not versions of software.
> 
> D) The Court's Order specified that those specific products in the hands of End Users must be disabled. That Order contains no other verbage.


And if those products no longer infringe (or there is a reasonable question about whether they continue to infringe), and continued infringement is required for contempt, then what?


----------



## kmill14

Does this scenario meet the Court Order?

A) John Doe has possession of the DP-501, with DVR capabilities

B) Court Order states that John's DP-501 must have its DVR capabilities disabled.

C) E* uploads new software to John's DP-501.

D) John's DP-501 still has its DVR capabilites enabled.


----------



## James Long

nobody99 said:


> Here's what I think the biggest problem is. None of us know what Judge Folsom _intended_ with the "disable the DVR functionality" on the DVRs already placed with customers.


And yet that does not stop people from stating _clearly_ what he meant. 



> If he intended that the DVR functionality be disabled permanently, regardless of new software, then perhaps DISH has a case for a appeal based on the injunction being overly broad. I find it interesting that the language of the injunction with regard to the already-placed DVRs omits any mention of "colorably different" or new software, or anything. It's very specific. The fact that an earlier paragraph _contains_ the term "colorably different" sounds a lot like the omission was intentional in the "turn off the DVR functionality" paragraph.


The mention of "only colorably different" serves to expand the injunction on interpretation. These products and others "only colorably different". Not "all infringing DVRs". Another indicator of "overly broad" since there is no way to redeem the product and come into compliance as a DVR.



> My opinion (agree with me or not) is that Judge Folsom's intent was to permanently remove DVR functions from those receivers _forever_. This was, in his mind, equitable relief in that it gives TiVo a chance at these 'sticky' customers that they lost because cheated.


And, as you note, that is overly broad. Charlie _will_ "gamble" because he has a good hand.

If Judge Folsom "folds" and doesn't find contempt DISH wins.

Did I mention Charlie Ergen likes to play poker? Did I mention that Mr Ergen is a pretty good businessman?


----------



## kmill14

TexasAg said:


> And if those products no longer infringe (or there is a reasonable question about whether they continue to infringe), and continued *infringement is required for contempt, then what?[/*QUOTE]
> 
> The only thing E* needs to do to be held in contempt is to fail to follow the Court's clear and specific Order.
> 
> That Order was to disable the DVR functionality of 8 products in the hands of End Users.
> 
> Those 8 products in the hands of End Users still currently have their DVR functionality enabled.
> 
> Hence, E* did not obey the order, and can be held in contempt.
> 
> Which part of that do you disagree with?


----------



## kmill14

James,

Which part of THIS order is overly broad:

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


----------



## TexasAg

kmill14 said:


> Does this scenario meet the Court Order?
> 
> A) John Doe has possession of the DP-501, with DVR capabilities
> 
> B) Court Order states that John's DP-501 must have its DVR capabilities disabled.
> 
> C) E* uploads new software to John's DP-501.
> 
> D) John's DP-501 still has its DVR capabilites enabled.


Wow, it really is "only read the injunction, consider absolutely nothing else," isn't it? No context at all. No other considerations at all.

Do you consider the judge's order granting the injunction (and mentioning ongoing infringement as justification) relevant? Or the case jacmyoung cited about preventing future infringement? Or the law that says injunctions are issued in patent cases to prevent future infringement? Does any of that matter at all?

In answer to your question, if the DP-501 is no longer infringing, then no, I don't believe it is subject to the injunction.


----------



## Greg Bimson

TexasAg said:


> And if those products no longer infringe (or there is a reasonable question about whether they continue to infringe), and continued infringement is required for contempt, then what?


Is continued infringement required for contempt on a "prima facie" violation? I think we should revisit what this contempt hearing is about...


----------



## nobody99

TexasAg said:


> Do you consider the judge's order granting the injunction (and mentioning ongoing infringement as justification) relevant? Or the case jacmyoung cited about preventing future infringement? Or the law that says injunctions are issued in patent cases to prevent future infringement? Does any of that matter at all?


So the concept of equitable relief, in the context of the court discussion TiVo's lost market share and "sticky customers" means nothing either? Is there even the slightest possibility - the slightest - that the eight named DVRs could have their DVR functionality turned off permanently legally through an injunction? Can you show me in rule 65(d) that says an injunction must only apply to ongoing infringement?

If you are going to have a one-side conversation, you don't need us.


----------



## TexasAg

Greg Bimson said:


> Is continued infringement required for contempt on a "prima facie" violation? I think we should revisit what this contempt hearing is about...


I said before, to me it looks like it is basically a hearing to determine the proper standard. If Tivo's standard wins, I think the contempt hearing ends with a contempt finding since Echo will probably acknowledge at the hearing (or beforehand) that the DVRs remain operational. If Echo's standard wins, I think the contempt hearing ends with an order for more discovery. And I think the answer depends on whether you feel a modified DP-501 is adjudicated infringing or not. I don't think we'll know which standard applies until 9/4.



nobody99 said:


> Can you show me in rule 65(d) that says an injunction must only apply to ongoing infringement?


Rule 65(d) specifies how injunctions are written. It is unrelated to the patent laws in any way. And jacmyoung has already posted a case about ongoing infringement. Again, I think the answer here depends on whether you feel a modified DP-501 is adjudicated infringing or not. I don't believe you can say it is adjudicated infringing and simply assume that the infringement continues even after the modification. Gotta run. Check in later.


----------



## TBoneit

I find myself torn between whether the longevity of this thread is because one side has E* boosters and the other side has Tivo and/or D* boosters or E* haters. Or something else.

Personally I'd like to see this thread locked as it has become cumbersome in size and a new one with strict restrictions started. 76 pages! I can not see someone wading through all 76 pages if they stumble onto this message thread.

The curent title of "TiVo vs Echostar ... Discussion leading to September 4th Hearing" seems to have degenerated into a infringing vs not infringing, yes it does, no it doesn't contest where whoever carries on the longest feels they've won.

There have been some good points on both sides, however they're being beaten to death and beyond.

Sorry if I step on anybody's toes but it seems as if this thread has become a tool to hurt E* DVR sales with F.U.D. And I don't think personally it can effect sales enough to matter when compared to some of what passes for an advertisement from D*. 

I for example would never sign up in todays market for D* as I have a dislike for their current round of commercials.


----------



## kmill14

Texas,

So you think it is up to E* to take a clear and concise order as I described and put their own spin on it based on what they THINK was the spirit of the order?

I am picturing a scene from "A Few Good Men", with Kaffee questioning Kendrink on the different types of orders...peace time orders verses war-time orders. Do they tell the Marines to apply different sets of standards in following orders?

I wonder if the Courts do?

"Your Honor, we know you told us to *JUST* disable the DVR functionality, but we didn't think you really meant that. We've put some new software in you see, and we *claim* that it makes the devices that were found to infringe to no longer infringe. Thats OK, right? Its not what you specifically asked us, but its OK, right?


----------



## scooper

kmill14 said:


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


How about all that that I just Bolded ? Because that impacts us users out in the field.
It's amputating the arm for what should be a pinprick.


----------



## kmill14

TexasAg said:


> Wow, it really is "only read the injunction, consider absolutely nothing else," isn't it? No context at all. No other considerations at all.


Contempt proceedings are clear regarding three elements that must be met:

*1) the order which the contemnor violated was clear and unambiguous, *

(disable the DVR functionality in the 8 adjudged products that are in the hands of end users)

*2) proof of noncompliance is clear and convincing and *

(the DVR functionality of those 8 products is still enabled)

*3) the contemnor has not diligently attempted to comply in a reasonable
manner. *

I suppose E* will try to say that they have complied in a reasonable manner by uploading software they "feel" is non-infringing. Of course this has nothing to do with the order to "disable the DVR functionality".

Given the nature of this case and the clear and unambiguous order (disable the DVR functionality), I can't see the Judge going against his own order.


----------



## kmill14

scooper said:


> How about all that that I just Bolded ? Because that impacts us users out in the field.
> It's amputating the arm for what should be a pinprick.


So if you had invented something and had it patented, and someone came along and stole it from you and made millions off of it, you would only ask that the "thief" be given a slap on the wrist and allowed to continue on with their their stolen property?


----------



## Greg Bimson

I'll state the simplicity...

It all goes away with a settlement. If DISH/SATS doesn't want to settle, they'd better make darn sure they win on appeal. Contempt fines will be killer if they don't win on appeal.

Some of us here simply cannot see that the arguments currently structured by DISH/SATS can defeat a contempt proceeding on a violation on the face of an injunction, nor will those arguments upon appeal reverse a judgment of contempt.

I'd prefer to see the sides settle so this FUD can go away. I'd prefer customers not get caught in the crosshairs.


----------



## nobody99

TBoneit said:


> Sorry if I step on anybody's toes but it seems as if this thread has become a tool to hurt E* DVR sales with F.U.D. And I don't think personally it can effect sales enough to matter when compared to some of what passes for an advertisement from D*.


Holy frickin' crap. That has to be the worst comment in the 76 pages. You are suggesting that those of us who have TiVo are trying to hurt DISH's sales? It never even occurred to me that more than maybe 25 people even _read_ this thread.

Wow.


----------



## scooper

You're excluding the possiblity of it ever being used again, I'm allowed to take the other extreme position. 

There have been very few other cases where products already in the hands of customers are impacted by this kind of case. It's only with the recent innovations of products that CAN be updated in the field has this kind of "penalty" been possible. If you're saying it's OK to shut them off, then you ALSO have to allow for them to be modified to non-infringing products - and the case law on "more than colorably different" is clear that this is allowed - nay, even ENCOURAGED.


----------



## jacmyoung

kmill14 said:


> ...Given the nature of this case and the clear and unambiguous order (disable the DVR functionality), I can't see the Judge going against his own order.


Only if you refuse to consider the possibility that when, at the time, the injunction was written, the DVR functions did infringe, and therefore the "clear and concise" wording of the injunction referred to that DVR functions that infringed. The injunction did not predict the future what might happen to the infringing DVR functions, all it could do at the time was to stop them, because they were infringing indeed.

And only if you refuse to read the above Circuit Court's opinion as far as the *only acts* this injunction may prohibit by the *adjudicated devices* (meaning DP501...), and such acts must be infrigning on the same patent.

If the DVR functions now no longer infringe on the same patent, the act of using such functions can not be prohibited by this injunction. I don't know if the above Circuit Court opinion can be made any clearer. You can say the judge should have specified to "disable the infringing DVR functions" to make you feel more comfortable to change your mind, I can say no it is not necessary. Becasue the judge knew what his goal was, and what place his goal may not reach. He knows what the Circuit Court's opinions are and the standards. He can clearly explain his injunction away that the DVR functions he referred to were those that infringed, not any DVR functions that do not infringe. And it is perfectly fine for him to explain it that way and find DISH not in contempt.

Now of course you can have doubt about whether the new DVR fucntions are infringing or not, but as long as a doubt exists that they might not infringe, DISH will not be in contempt, a new proceeding will be needed to discover the answer to your doubt.


----------



## Greg Bimson

scooper said:


> If you're saying it's OK to shut them off, then you ALSO have to allow for them to be modified to non-infringing products - and the case law on "more than colorably different" is clear that this is allowed - nay, even ENCOURAGED.


And it is part of the problem...

The Court has required the DVR's to be disabled. The Court can also allow for them to be modified to non-infringing products. But the infringing party never told the court, never gave a motion, never filed a brief, until required to do so, and that was after the injunction was active.

A contempt hearing on the face of the injunction is not the venue to discuss changes to the adjudicated, infringing products.


----------



## nobody99

scooper said:


> You're excluding the possiblity of it ever being used again, I'm allowed to take the other extreme position.
> 
> There have been very few other cases where products already in the hands of customers are impacted by this kind of case. It's only with the recent innovations of products that CAN be updated in the field has this kind of "penalty" been possible. If you're saying it's OK to shut them off, then you ALSO have to allow for them to be modified to non-infringing products - and the case law on "more than colorably different" is clear that this is allowed - nay, even ENCOURAGED.


I think a compromise is in order. I think the changes have to _first_ be approved by the court. Then there's no wiggle room for either party.


----------



## Greg Bimson

jacmyoung said:


> And only if you refuse to read the above Circuit Court's opinion as far as the only acts this injunction may prohibit by the adjudicated devices (meaning DP501...), and such acts must be infrigning on the same patent.
> 
> If the DVR functions now no longer infringe on the same patent, the act of using such functions can not be prohibited by this injunction. I don't know if the above Circuit Court opinion can be made any clearer.


Procedure time...

When does the Court determine "if the DVR functions now no longer infringe on the same patent"? It isn't at a contempt hearing for violations on the face of the injunction regarding devices already adjudicated to infringe.


----------



## James Long

kmill14 said:


> I continue to notice a theme in your posts that you have yet to address, even though Greg and I continue to ask for clarification. That theme is that you continue to refer to devices that no longer infringe.
> 
> I am not aware of any adjudicated devices that "no longer infringe", are you?


Several actually. The court has not ruled on them but that doesn't change whether they infringe or not. I have a telephone on my desk that doesn't infringe Tivo's patents. No court has ruled that and yet it is still true. What is true and court rulings sometimes overlap, but one is not a subset of the other.



> If E* wants to go to court (as they are trying to do in DE) to argue that this new software allows for their adjudicated devices to be non-infringing, thats fine. They can have their day(s) in court, just like TiVo did. But before they actually win that trial, those adjudicated devices are STILL infringing.


Until the court in THIS case rules that the devices are non infringing it doesn't matter what Delaware says. DISH isn't (and can't) ask a Delaware court to overrule a Texas court.

But regardless of Delaware, the judge in this case in Texas _CAN_ rule that DISH is not in contempt. He can rule that the devices are non-infringing. He can stay or rewrite his injunction. He can do a lot of things that seem to be foreign concepts to those that apparently believe DISH must die for violating Tivo's patent.

There is no death penalty. 



kmill14 said:


> Does this scenario meet the Court Order?
> 
> A) John Doe has possession of the DP-501, with DVR capabilities
> B) Court Order states that John's DP-501 must have its DVR capabilities disabled.
> C) E* uploads new software to John's DP-501.
> D) John's DP-501 still has its DVR capabilites enabled.


The answer: "Perhaps." It is for the judge to decide. 



kmill14 said:


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


The part I bolded. Where is the opportunity for DISH to use their equipment for DVR service that doesn't violate Tivo's patent?

It would be like a police officer confiscating your car for driving without a license. Sure, you don't have a license to drive so you shouldn't be driving. But not having a license is a fixable problem. Once you have a license you should be able to use your car.

Once DISH figures out a way to use their equipment as a DVR without violating Tivo's patent they should be able to do so. Any permanent restriction is overly broad. (IMHO.)


----------



## scooper

nobody99 said:


> I think a compromise is in order. I think the changes have to _first_ be approved by the court. Then there's no wiggle room for either party.


That's not really a compromise at all, isn't it ?

Are you stating that everytime E* changes the encryption on their receivers, it has to come through the court for approval ? Because if you are, the judge will have none of it.

If you're meaning "only when the DVR functions are changed" - that MIGHT be a bit more reasonable...


----------



## TexasAg

Greg Bimson said:


> Procedure time...
> 
> When does the Court determine "if the DVR functions now no longer infringe on the same patent"? It isn't at a contempt hearing for violations on the face of the injunction regarding devices already adjudicated to infringe.


Yes it is, if you're trying to hold the infringer in contempt and the "devices already adjudicated to infringe" have been modified.



nobody99 said:


> I think a compromise is in order. I think the changes have to _first_ be approved by the court. Then there's no wiggle room for either party.


Believe it or not, I think that's what the contempt hearing is, the compromise. It allows Tivo to argue that infringing devices remain in service and Echo should be held in contempt. It allows Echo to argue that their devices in service are more than colorably different or non-infringing.



TBoneit said:


> There have been some good points on both sides, however they're being beaten to death and beyond.


While I don't agree with everything TBoneit said, I do agree with this.


----------



## nobody99

scooper said:


> That's not really a compromise at all, isn't it ?
> 
> Are you stating that everytime E* changes the encryption on their receivers, it has to come through the court for approval ? Because if you are, the judge will have none of it.
> 
> If you're meaning "only when the DVR functions are changed" - that MIGHT be a bit more reasonable...


Wow, have a bit more of a closed mind why dontcha.

No, I mean that once a non-infringing change is made to the device, it's "out of jail." The only way to put it back in jail is to have a new trial.

And, by the way, I am specifically referring to your post mentioning "It's only with the recent innovations of products that CAN be updated in the field has this kind of "penalty" been possible. "

So take a chill pill dude.


----------



## nobody99

TexasAg said:


> Believe it or not, I think that's what the contempt hearing is, the compromise. It allows Tivo to argue that infringing devices remain in service and Echo should be held in contempt. It allows Echo to argue that their devices in service are more than colorably different or non-infringing.


But don't you think it would be beneficial for both parties to remove the cloud of doubt? It's not really fair to TiVo that DISH can continue to operate DVR's that were ordered to have that functionality removed. And it's not really fair to DISH that if there is an "escape clause" that it can't be tested until a contempt action.

I think there needs to be an in-between. DISH can go to get the devices "unadjudicated." In this case, it would have been some time in 2006. If the judge decides the modified, in-the-hands-of-the-customer devices are now ok, great, they are no longer part of the injunction.


----------



## James Long

kmill14 said:


> *2) proof of noncompliance is clear and convincing and *
> (the DVR functionality of those 8 products is still enabled)


Curiosity ... but I note that the injunction says "The DVR functionality" not "No DVR functionality". You seem to like reading the "The" as "No" ... those units can never have DVR functionality again. But the "The" could be set in time and refer only to "The DVR functionality" that has been adjudicated (and any that is "only colorably different").

The judge has a decision to make.


----------



## James Long

Greg Bimson said:


> Procedure time...
> 
> When does the Court determine "if the DVR functions now no longer infringe on the same patent"? It isn't at a contempt hearing for violations on the face of the injunction regarding devices already adjudicated to infringe.


What can (per this court) be decided September 4th is whether DISH is in contempt for attempting to fix the problem via software instead of via the method suggested (Tivo read: demanded) by the injunction.


----------



## jacmyoung

Greg Bimson said:


> Procedure time...
> 
> When does the Court determine "if the DVR functions now no longer infringe on the same patent"? It isn't at a contempt hearing for violations on the face of the injunction regarding devices already adjudicated to infringe.


In a new trial, and at the meantime, as long as the new software and its DVR functions "give rise to fair ground the *doubt* whether the modified products are still within the scope of the injunction", yes as long as such doubt exists, the defendent gets the benefit of it and should not be found in contempt.


----------



## jacmyoung

nobody99 said:


> But don't you think it would be beneficial for both parties to remove the cloud of doubt? ...


Of course it is, but the proper way to remove such doubt is a new trial, not in the contempt proceeding. See my above quote from a prior case as far as how to address the "doubt".


----------



## nobody99

James Long said:


> Curiosity ... but I note that the injunction says "The DVR functionality" not "No DVR functionality". You seem to like reading the "The" as "No" ... those units can never have DVR functionality again. But the "The" could be set in time and refer only to "The DVR functionality" that has been adjudicated (and any that is "only colorably different").
> 
> The judge has a decision to make.


He really doesn't. He knows exactly what he intended. The meaning of "the" is not going to matter to him.


----------



## James Long

nobody99 said:


> He really doesn't. He knows exactly what he intended. The meaning of "the" is not going to matter to him.


The judge HAS a decision to make. He spelled it out in his last order. The decision is to either agree with Tivo or agree with DISH - or to find middle ground.


----------



## jacmyoung

TexasAg said:


> ...While I don't agree with everything TBoneit said, I do agree with this.


Well not quite, the latest Circuit Court opinion I just discovered above was never discussed before, such opinion actually solved a mystery I had been holding for some time.

Through my prior researches I had come to believe that to find the infringer not in contempt, the colorable difference issue had to be addressed. And for that reason I have tried to understand why the 9/4 hearing lacked such item.

Now it *seems reasonable*, because the Circuit Court had said an injunction can not prohibit acts by the adjudicated devices if such acts are not infringing. Therefore it is possible for DISH to be found not in contempt without going through the traditional colorable difference discussion.

All DISH needs to convince the judge is the act of using the new software and its DVR functions no longer infringes on the Tivo patent, that will be enough, because the judge's injunction, no matter how it is worded, can not prohibit such act, and therefore the judge can not find DISH in contempt for performing such act.

Of course I whole-heartedly agree the judge has the power to tell DISH to take a hike, and still finds DISH in contempt, sticking to Tivo's fans interpretation. Then it will be up to the Circuit Court to overturn such ruling, based on the very opinion the Circuit Court had issued above.

And believe it or not, it happens all the time too. The majority of the cases I cited were those which the contempt rulings were overturned by the Circuit Court.


----------



## Greg Bimson

James Long said:


> What can (per this court) be decided September 4th is whether DISH is in contempt for attempting to fix the problem via software instead of via the method suggested (Tivo read: demanded) by the injunction.


Needs to be rewritten:

What this court can decide 4 September is whether DISH/SATS is in contempt because the Court *ordered* DISH/SATS to disable "Infringing Products" and to stop sales of "Infringing Products" (but have not complied), or not in contempt because DISH/SATS "complied within the spirit of the injunction" by changing the software.


jacmyoung said:


> In a new trial, and at the meantime, as long as the new software and its DVR functions "give rise to fair ground the doubt whether the modified products are still within the scope of the injunction", yes as long as such doubt exists, the defendent gets the benefit of it and should not be found in contempt.


Also needs to be rewritten:

DISH/SATS can present their new software in a new trial. In the meantime, *the old judgment and injunction apply*, because an adjudicated guilty infringer is not given the benefit of the doubt in a contempt proceeding regarding "prima facie" violations. After all, the eight "Infringing Products" are definitely the subject of the injunction, and always will be, until some court does something to the injunction.


----------



## nobody99

jacmyoung said:


> Of course it is, but the proper way to remove such doubt is a new trial, not in the contempt proceeding. See my above quote from a prior case as far as how to address the "doubt".


I must have a hard time expressing myself clearly.

Let's say Company A has a product. They get an injunction against Company B that says:

"Turn off XYZ Functions on products A,B,C in the hands of customers, or file a motion with the court requesting a hearing on an acceptable alternative. Stop selling products A,B,and C and other products merely colorably different."

Now it's clear for both sides. If the XYZ functions are not turned off, they are in contempt. No ifs, ands, or buts.

If the Company B asks the judge to review a change, and he says it's "good" 20 days after the injunction took effect, Company B was in contempt for the first 20 days. Company A gets enhanced damages for those 20 days.

Company B can go to the court and ask to have their products "cleared." Once cleared, they are always cleared.

Today, the way the system works, Company B has to *wait until Company A files a contempt motion.* I don't think that's fair to the infringer. I also don't think it's fair to the patent holder that an injunction is not enforced.


----------



## Greg Bimson

jacmyoung said:


> All DISH needs to convince the judge is the act of using the new software and its DVR functions no longer infringes on the Tivo patent, that will be enough, because the judge's injunction, no matter how it is worded, can not prohibit such act, and therefore the judge can not find DISH in contempt.


Understand what you are saying.

DISH/SATS has downloaded new software to the "Infringing Products". Nothing in this 4 September hearing is going to determine the status of infringement regarding the new software.

That requires some kind of trial. And TiVo needs discovery if DISH/SATS is going to argue that the "new software" is infringement-free. That discovery hasn't been granted...

See?


jacmyoung said:


> Through my prior researches I had come to believe that to find the infringer not in contempt, the colorable difference issue had to be addressed. And for that reason I have tried to understand why the 9/4 hearing lacked such item.


Because TiVo did not file for a contempt hearing regarding ongoing infringement of a patent, where the first issue that would be determined is the colorable difference of the modified product. TiVo requested a "prima facie" contempt charge, which is simply a strict reading of the injunction.


----------



## jacmyoung

nobody99 said:


> I must have a hard time expressing myself clearly.
> 
> Let's say Company A has a product. They get an injunction against Company B that says:
> 
> "Turn off *the* XYZ Functions on products A,B,C in the hands of customers, *or file a motion with the court requesting a hearing on an acceptable alternative.* Stop selling products A,B,and C and other products merely colorably different."
> 
> Now it's clear for both sides. ...


Except you omitted some and added some to make it sound in your favor, the are different than the actual injunction we are discussing.


----------



## nobody99

jacmyoung said:


> Except you omitted some and added some to make it sound in your favor, the are different than the actual injunction we are discussing.


jacmyoung, please, this was in response to scooper saying that now that field-modifiable devices are becoming more prevalent, the system is going to have to change. That's all. I'm not attacking your manhood, your case law, your idea. It's only related to the DISH/TiVo case in the sense that this is the first case of its type. What I'm suggesting is how *FUTURE* cases might be better handled.


----------



## jacmyoung

Greg Bimson said:


> Understand what you are saying.
> 
> DISH/SATS has downloaded new software to the "Infringing Products". Nothing in this 4 September hearing is going to determine the status of infringement regarding the new software.


And it should not, because a contempt hearing will not try to determine the infringement issue. But this much is clear, the Infringing Proudcts are the same as the adjudicated devices, can we agree on that? And the Circuit Court has said as long as the acts performed by the adjudicated devices (Infringing Products) are not infringing, the injunction can not prohibit such acts.



> that reuires some kind of trial. And TiVo needs discovery if DISH/SATS is going to argue that the "new software" is infringement-free. That discovery hasn't been granted...


That does not change the fact that if the doubt exsits that the current act of the DVRs might not infringe, DISH gets the benefit of it. The "some kind of trial" will be needed to eventually figure out the answer.



> See?Because TiVo did not file for a contempt hearing regarding ongoing infringement of a patent, where the first issue that would be determined is the colorable difference of the modified product. TiVo requested a "prima facie" contempt charge, which is simply a strict reading of the injunction.


Tivo can ask for anything under the sky, that does not mean judge will give to them. The fact the judge granted such "face of injunction" clarification in no way was saying Tivo was right.


----------



## jacmyoung

nobody99 said:


> jacmyoung, please, this was in response to scooper saying that now that field-modifiable devices are becoming more prevalent, the system is going to have to change. That's all. I'm not attacking your manhood, your case law, your idea. It's only related to the DISH/TiVo case in the sense that this is the first case of its type. What I'm suggesting is how *FUTURE* cases might be better handled.


No it is not about my manhood, maybe yours because I have just pointed out two instances in the above hypo scenario where you purposefully omitted the word "the", then added a whole sentence that simply is not in the current injunction, it is called "begging the question", a fallacy in debate.


----------



## nobody99

jacmyoung said:


> No it is not about my manhood, maybe yours because I have just pointed out two instances in the above hypo scenario where you purposefully omitted the word "the", then added a whole sentence that simply is not in the current injunction, it is called "begging the question", a fallacy in debate.


I give up.


----------



## kmill14

jacmyoung said:


> *And the Circuit Court has said as long as the acts performed by the adjudicated devices (Infringing Products) are not infringing, the injunction can not prohibit such acts.*


And round and round we go. There is no proof that the adjudicated devices no longer infringe. There is only proof that they DID infringe.

You continue to think that E* is within their rights to ignore a very specific COURT ORDER. The COURT ORDER does not say to alter the adjudged devices that the COURT ordered disabled so that you think they no longer infringe. It says to disable the functionality of said devices so that they cannot perform as DVRs.

Even if the new software helped the adjudicated devices become non-infringing *(which we won't know for a long time)*, E* can still be held in contempt because they did not follow the order of the court.

E* by the way never appealed the injunction to a higher court, and they can't now.


----------



## Greg Bimson

jacmyoung said:


> And it should not, because a contempt hearing will not try to determine the infringement issue. But this much is clear, the Infringing Proudcts are the same as the adjudicated devices, can we agree on that? And the Circuit Court has said as long as the acts performed by the adjudicated devices (Infringing Products) are not infringing, the injunction can not prohibit such acts.


That's fine, but that only assumes that the "modified Infringing Products" do not infringe. That isn't up for discussion in this hearing. So...


jacmyoung said:


> That does not change the fact that if the doubt exsits that the current act of the DVRs might not infringe, DISH gets the benefit of it.


I'd like to see that one in a case law regarding an injunction.


jacmyoung said:


> Tivo can ask for anything under the sky, that does not mean judge will give to them. The fact the judge granted such "face of injunction" clarification in no way was saying Tivo was right.


That was simply in your response to your statement:


jacmyoung said:


> Through my prior researches I had come to believe that to find the infringer not in contempt, the colorable difference issue had to be addressed. And for that reason I have tried to understand why the 9/4 hearing lacked such item.


You've stated from the beginning that the "colorable difference issue" had to be addressed. However, it has not been addressed by the courts. Therefore, it is entirely possible the "colorable difference" issue will not be addressed during this contempt proceeding.


----------



## kmill14

James Long said:


> Curiosity ... but I note that the injunction says "The DVR functionality" not "No DVR functionality". You seem to like reading the "The" as "No" ... those units can never have DVR functionality again. But the "The" could be set in time and refer only to "The DVR functionality" that has been adjudicated (and any that is "only colorably different").
> 
> The judge has a decision to make.


It took me a while to figure out what you were saying here, but I get it now.

You think there is a certain "type" of DVR functionality that the judge said to disable on these products??

I personally don't see that anywhere in the injunction. All I see is "disable the DVR functionality in these products." Again, that sounds like these products deemed to have infringed (and already in the hands of the End User) cannot have DVR functionality.

There was no clause about a certain version of DVR functionality in those products.


----------



## James Long

nobody99 said:


> I must have a hard time expressing myself clearly.


I agree ...


> Let's say Company A has a product. They get an injunction against Company B that says:
> 
> "Turn off XYZ Functions on products A,B,C in the hands of customers, or file a motion with the court requesting a hearing on an acceptable alternative. Stop selling products A,B,and C and other products merely colorably different."
> 
> Now it's clear for both sides. If the XYZ functions are not turned off, they are in contempt. No ifs, ands, or buts.


Reading the injunction you wrote you have skipped the line "or file a motion with the court requesting a hearing on an acceptable alternative" in your own interpretation! You have ignore an explicit "if and or but".



> Today, the way the system works, Company B has to *wait until Company A files a contempt motion.* I don't think that's fair to the infringer. I also don't think it's fair to the patent holder that an injunction is not enforced.


I don't believe it is fair to enforce a death penalty against a competitor who is no longer violating the patent. That is what you're asking for.

As far as waiting for Company A, they don't. They can file for an opinion (such as DISH did in Delaware) or you can tempt fate and hope the court acts under the "easier to ask forgiveness that permission" standard.


----------



## kmill14

jacmyoung doesn't want to admit that the "more than colorably different" standard isn't addressed because it just plain does not apply to adjudicated devices. Period. 

As far as benefit of the doubt goes, I would love to hear jacmyoung's reasoning for why Dish should get it at this stage. After all, they were the ones fighting tooth and nail to say that they did not infringe. They got the benefit of the doubt leading up to a trial decision and TiVo suffered "irreperable harm". After 2 different courts agreed that infringement took place (aka stealing), some still think Dish should STILL get benefit of the doubt on specific products already adjudicated on, and placed in the hands of end users. Amazing.


----------



## James Long

kmill14 said:


> It took me a while to figure out what you were saying here, but I get it now.
> 
> You think there is a certain "type" of DVR functionality that the judge said to disable on these products??
> 
> I personally don't see that anywhere in the injunction. All I see is "disable the DVR functionality in these products." Again, that sounds like these products deemed to have infringed (and already in the hands of the End User) cannot have DVR functionality.
> 
> There was no clause about a certain version of DVR functionality in those products.


The injunction was written in 2006 for a case filed in 2004 that found "the" DVR functionality in "the" named products to be infringing. Other DVR functionality was not adjudicated in this case. Other products were not adjudicated in this case.

In 2006 DISH was ordered to turn off the DVR functionality on those specific receivers. No argument on that except that the injunction was stayed until 2008.

The line in the injunction I quoted was the beginning of the part where it said "The DVR functionality" of the infringing products could not be active in new placements. If this is referring to the 2004/2006 functionality then DISH is OK and is not in contempt. If this is to be read "No DVR functionality" instead of what the judge wrote then the injunction is too broad as it prohibits legitimate non-infringing acts.


----------



## TexasAg

kmill14 said:


> After 2 different courts agreed that infringement took place (aka stealing), some still think Dish should STILL get benefit of the doubt on specific products already adjudicated on, and placed in the hands of end users. Amazing.


And what I find amazing is that you still refuse to acknowledge the new software makes the DVRs different. The following are all facts: 
- The original software in Echo's DVRs was required to find infringement. The hardware by itself (without the software) did not infringe Tivo's software claims.
- The original software in Echo's DVRs has been replaced. 
- The original DVRs found to infringe have been modified. Echo downloaded the new software to all of its DVRs. 
- DVRs with the new software (regardless of whether they are old or new) have never been adjudicated to infringe.

The most amazing admission I've seen so far is when someone (maybe you) said Echo could release a new DVR with the exact same hardware as an older DVR and the new software, the new DVR would be subject to the "more than colorably different" standard, but the old DVRs with the new software would not. The old and new DVRs would be the exact same thing - same hardware, new software. Yet according to this theory, one has been adjudicated to infringe and one has not. I don't expect a federal court judge to buy that logic. The response was "hardware vs. software doesn't matter," which misses the point that if neither the hardware nor the software does a function required by Tivo's claims then the Echo DVRs are clearly modified devices (since they wouldn't infringe at that point).

But we've discussed this before. And round and round we go.


----------



## jacmyoung

kmill14 said:


> jacmyoung doesn't want to admit that the "more than colorably different" standard isn't addressed because it just plain does not apply to adjudicated devices. Period.


I admit this readily, are you happy now? What I had said before was the new software as a new product, itself, once modified and new, is no longer adjudicated product therefore the colorable test applies. Of course you disagree with the concept of the new software product, but that is fine.



> As far as benefit of the doubt goes, I would love to hear jacmyoung's reasoning for why Dish should get it at this stage. After all, they were the ones fighting tooth and nail to say that they did not infringe. They got the benefit of the doubt leading up to a trial decision and TiVo suffered "irreperable harm". After 2 different courts agreed that infringement took place (aka stealing), some still think Dish should STILL get benefit of the doubt on specific products already adjudicated on, and placed in the hands of end users. Amazing.


Unfortunately the infringers get the benefit of the doubt one more time during contempt proceedings, again, after they get the benefit of the doubt in the trial proceedings, the case law (more than one) said so, not me. It sucks I know, but it is so for a good reason, so that legitimate innovations are not prohibited.


----------



## Greg Bimson

James Long said:


> I don't believe it is fair to enforce a death penalty against a competitor who is no longer violating the patent. That is what you're asking for.


Once again, no one knows whether or not DISH/SATS is *currently* violating the patent. That is for the courts to decide.

But that is not among the topics at the 4 September hearing.

The actual only question that needs answering is, "does changing the software change the Infringing Products".


----------



## TexasAg

Greg Bimson said:


> The actual only question that needs answering is, "does changing the software change the Infringing Products".


On that Greg, you and I are in complete agreement.

Let's be thankful neither of us is running a billion or multi-billion dollar company that depends on that answer (at least, I assume you're not the head of a multi-billion dollar company.)


----------



## Curtis0620

TexasAg said:


> On that Greg, you and I are in complete agreement.
> 
> Let's be thankful neither of us is running a billion or multi-billion dollar company that depends on that answer (at least, I assume you're not the head of a multi-billion dollar company.)


Which is why DISH should not be taking this risk and should settle with TiVo.


----------



## jacmyoung

TexasAg said:


> On that Greg, you and I are in complete agreement...


Let me go out on a limb and say it is possible.

For one thing, if the software does not infringe, the product does not infringe, I hope we can agree on that, because there is no hardware issue here.

The question is then how difficult it is in this case to workaround the Tivo patent and still maintain all the necessary DVR functions. I would imagine it is quite difficult, therefore I never said DISH was successful, we don't know, I don't go by what DISH is telling us in this instance. What I do believe is DISH did put in a great deal of man-hours for over a year, from the time the jury handed them the verdicts, to right before the injunction was to take full effect.

This time DISH did not try to "steal", they were not lazy and careless, they made a good faith and legitimate effort to come up with their own innovative method that did not infringe, and while the court has not ruled if such effort was successful, the court will say such effort shall not be discouraged.

I think people have a hard time accepting the fact DISH may be allowed to continue the DVRs, and such thought irritates them, they think DISH will be getting away with murder if the DVRs may continue.

But DISH did not get away with murder, they will soon send $90 million Tivo's way, plus interest, and in addition any enhanced damages during the stay of the injunction once determined.

Not only that, if the new software is again to be found infringing later, DISH will have to pay again, during the time it uses the new software, and faced with a new injunction or even some additional fines.

The lessons learned from this may be:

For DISH, do it right the first time, make the effort and don't infringe.

For Tivo, do it right the first time, don't give away your trade secret without some assurance.


----------



## James Long

Greg Bimson said:


> James Long said:
> 
> 
> 
> I don't believe it is fair to enforce a death penalty against a competitor who is no longer violating the patent. That is what you're asking for.
> 
> 
> 
> Once again, no one knows whether or not DISH/SATS is *currently* violating the patent. That is for the courts to decide.
> 
> But that is not among the topics at the 4 September hearing.
> 
> The actual only question that needs answering is, "does changing the software change the Infringing Products".
Click to expand...

As a reply to nobody99, he doesn't care if DISH is violating the patent. He wants every DVR shut down. He has made that quite clear. I wouldn't be surprised if he wanted every non-named DVR immediately shut down. He even wants the unreleased TR-50 shut down. That is the context for my statement "That is what you're asking for."

What Tivo is asking for and what the courts are looking at are a separate issue than what nobody99 wants. 

I agree with you on the September 4th hearing ... this will be a theoretical question, not a question of actual infringement.


----------



## Greg Bimson

James Long said:


> As a reply to nobody99, he doesn't care if DISH is violating the patent. He wants every DVR shut down. He has made that quite clear. I wouldn't be surprised if he wanted every non-named DVR immediately shut down. He even wants the unreleased TR-50 shut down. That is the context for my statement "That is what you're asking for."
> 
> What Tivo is asking for and what the courts are looking at are a separate issue than what nobody99 wants.
> 
> I agree with you on the September 4th hearing ... this will be a theoretical question, not a question of actual infringement.


Most of us can agree on this. However, I am going to dissect this next post...


jacmyoung said:


> For one thing, if the software does not infringe, the product does not infringe, I hope we can agree on that, because there is no hardware issue here.


I can agree on this.


jacmyoung said:


> I think people have a hard time accepting the fact DISH may be allowed to continue the DVRs, and such thought irritates them, they think DISH will be getting away with murder if the DVRs may continue.


And there is the problem in a nutshell. The problem is not that "DISH may be allowed to continue the DVR's", it is that the court must bless the "Infringing Products" first. And to me, unless TiVo receives discovery for the 4 September hearing, this issue will not be addressed.

And if the "Infringing Products" are not blessed in that hearing, there is only one course of action that will occur in that meeting.


----------



## nobody99

James Long said:


> As a reply to nobody99, he doesn't care if DISH is violating the patent. He wants every DVR shut down. He has made that quite clear. I wouldn't be surprised if he wanted every non-named DVR immediately shut down. He even wants the unreleased TR-50 shut down. That is the context for my statement "That is what you're asking for."


Dear Lord, where one earth do you come up with this idea?

To quote jacmyoung, "don't put words in my mouth."

I want the eight named products in customers homes to have their _DVR functions turned off._ I don't care if they still act as regular receivers (in fact, I'd prefer it, because it's not fair to innocent bystanders to have them go completely dark).

And I never said I want every DVR shut down, or the TR50. Far from it. I said that other DVRs (not the eight named) are subject to the "more than colorably different" standard. And that includes the TR-50. So when DIsh releases a brand-new DVR-501a, or a TR-50, TiVo can ask the court for a contempt motion. The court can then decide if those machines are more than colorably different.

James, please, if you are going to argue with me, at least get the facts straight.


----------



## kmill14

jacmyoung said:


> Let me go out on a limb and say it is possible.
> 
> For one thing, if the software does not infringe, the product does not infringe, I hope we can agree on that, because there is no hardware issue here.


First, let me say how funny it is to see you take a quote where two people on this thread agree on something, and then turn it into a further discussion point.

Having said that, your comment about "if the software does not infringe, the product does not infringe...because there is no hardware issue here" is absolutely and completely misrepresenting the ENTIRE CASE.

How could you spend so much time discussing this case, and not understand the difference between what have been called "hardware claims" and "software claims" and hardware and software???

Just because E* issued a software patch to their adjudicated devices does not mean they no longer infringe on the "software claims" and certainly does not mean that there is no "hardware" issue here.

As was said way back on page 68 and originally from the Appeals Court verdict:

***
What matters is whether the operations performed by the interaction of software and hardware in the accused DVRs, taken as a whole, are covered by the claim term.
***

They (the Appeals Court) ruled that the *operations performed *by the interaction of software AND hardware *in the accused DVRs*, taken as a whole, WERE in fact covered by the software claims in TiVo's patent.

There is still no proof that a change in just the SOFTWARE will negate the "operations performed" by the DVRs that have been ruled to infringe, and it certainly does not negate any hardware located in the DVR. After all, you can't store data on a piece of software, can you?


----------



## TexasAg

kmill14 said:


> There is still no proof that a change in just the SOFTWARE will negate the "operations performed" by the DVRs that have been ruled to infringe, and it certainly does not negate any hardware located in the DVR. After all, you can't store data on a piece of software, can you?


If you haven't done so, you really need to go read Tivo's "software" claims. The claims talk about 4 different types of objects, physical data sources, flow control, and all sorts of other stuff. Now Echo has publicly said that they have stopped parsing data (which could be a weak argument since the court said "parse" simply meant "analyze") and that they have stopped using flow control (which could be much stronger since Tivo's claims require flow control).

It is entirely possible that Echo could design around Tivo's software claims using only the software on its DVRs. And again, if Echo completely removes a function that is required in Tivo's patent claims, then there is no infringement since Echo is not doing that function (in hardware or software).

So it still comes down on 9/4 to whether "changing the software changes the Infringing Products" (I think Greg boiled down 1900 posts into one setence quite nicely).


----------



## kmill14

Texas, I've read Tivo's "software" claims, and I have read E*'s claims and I am not in the business at this point of arguing whether or not they do or do not infringe on TiVo's claims. 

I am simply responding to jacmyoung's claim:

****
For one thing, if the software does not infringe, the product does not infringe, I hope we can agree on that, because there is no hardware issue here.
****

You started to touch on functions and claims, and thats a lot better than jacmyoung stating that there can be "non-infringing software" when the software by itself isn't even the issue. The issue is the overall "operations performed by the interaction of software and hardware". 

If you aren't addressing "overall operations" when you talk about infringing or not, there is no point in continuing your line of thought. 

But again, I am not ready to get into a conversation about whether E*'s "novel approach" does or does not infringe. 

Also, I am not even sure that 9/4 will decide whether changing the software changes the "Infringing Products". 

I think 9/4 will decide whether changing the software will make any difference in finding E* in contempt of the Court's order.


----------



## kmill14

But while we are at it, if you have read E*'s claims, you will notice seperate claims for receiving, storing and presenting video from an MPEG stream, and receiving, storing and presenting audio from an MPEG stream (claim 1 and claim 12).

I haven't read the rest of the patent app in great detail, but I do seem to recall E* claiming that they do not seperate the audio and video in this "novel approach" yet they are quite seperate in the claims. Very strange....


----------



## jacmyoung

Greg Bimson said:


> ...And if the "Infringing Products" are not blessed in that hearing, there is only one course of action that will occur in that meeting.


That is a good point. Being debating on the legal proceedings at least long enough to learn that one can never be sure what is going to happen next, just when you thought things would happen in one way, the judge or the parties could come up with some thing totally unexpected.

Not to mention a lot can happen between now and 9/4. But if we assume what may happen will be what we currently know from the order, each party will have about 30 minutes, then the judge will give his take which should not take too long.

The judge may say DISH is in contempt on the face of the injunction, then I think everything will be put on hold pending an appeal by DISH, which can take a while. The reason I say other things will be on hold is because for example the enhanced damages will differ depending on the outcome of the appeals.

The judge may say DISH is not in contempt on the face of the injunction, in that case he will likely grant Tivo's original discovery request on the new software depending on what kind of proceeding Tivo will be asking.

If Tivo asks for another contempt hearing on the new software, then the discovery will have to do with the colorable difference issue of the new software.

If Tivo asks for new software infringement discovery, then the judge must arrange a separate trial for that.

But could it be possible the judge will not give an answer? Is the judge compelled to give an answer? Why? He did not promise he would. He only agreed to listen to the two sides on the face of the injunction issue. What if he declines to give an answer? Then Tivo will have to do something to move things forward I think.

And of course as TexasAg said, the judge can also give an answer that will be a compromise for both parties. I just don't know what that might be.

I am thinking of how a preliminary injunction is usually implemented, the patentee may be required to put up a bond that reflects the loss the defendant will incur during the period of preliminary injunction, and the defendant is asked to cease the use of the products. A trial will take place to determine the infringement on the new software. If DISH wins, the bond money goes to DISH and DISH may turn the DVRs back on, if Tivo wins, Tivo gets the bond money back and DISH will not be able to turn the DVRs back on.

It's all for Friday the 13th fun anyway.


----------



## James Long

Greg Bimson said:


> The problem is not that "DISH may be allowed to continue the DVR's", it is that the court must bless the "Infringing Products" first. And to me, unless TiVo receives discovery for the 4 September hearing, this issue will not be addressed.


And yet the problem for some IS that DISH still offers DVRs ... any DVR, including DVRs that are not named in the injunction and DVRs that have not actually been offered to customers yet.

It is the far edges of the argument that keep it going. We in the middle may have different guesses as to the outcome but our desire isn't for DISH to lose and lose big or Tivo to lose and lose big. We just want to see happen what is fair.



nobody99 said:


> So when DIsh releases a brand-new DVR-501a, or a TR-50, TiVo can ask the court for a contempt motion.


Constant filing of contempt motions for every new product isn't what the court system wants.



nobody99 said:


> James, please, if you are going to argue with me, at least get the facts straight.


I am getting the facts straight, including those in the posts I write myself. You seem to have a problem understanding your own posts (as politely noted earlier today). You have made plenty of posts where there seems to be zero tolerance for DISH offering any DVR. Is this your way of apologizing and correcting the way you have presented your views?

In a nutshell, what is the outcome you want?


----------



## TexasAg

kmill14 said:


> Also, I am not even sure that 9/4 will decide whether changing the software changes the "Infringing Products".
> 
> I think 9/4 will decide whether changing the software will make any difference in finding E* in contempt of the Court's order.


I think it's six of one, half dozen of the other. 9/4 will decide whether a change in the software could possibly make the products outside of "Infringing Products". If no, contempt. If yes, more discovery.


----------



## jacmyoung

kmill14 said:


> ...
> ***
> What matters is whether the operations performed by the interaction of software and hardware in the accused DVRs, taken as a whole, are covered by the claim term.
> ***
> ...


Wait a minute, it was your idea the hardware and software must be separated. By virtue of insisting on the face of the injunction, you said the software did not matter, only the hardware, since the hardware did not change its shape, name, or its behavior, DISH is in contempt.

Now you are saying no software and hardware must be considered together, so what is it? Does the new software matter or not?


----------



## James Long

kmill14 said:


> But while we are at it, if you have read E*'s claims, you will notice seperate claims for receiving, storing and presenting video from an MPEG stream, and receiving, storing and presenting audio from an MPEG stream (claim 1 and claim 12).
> 
> I haven't read the rest of the patent app in great detail, but I do seem to recall E* claiming that they do not seperate the audio and video in this "novel approach" yet they are quite seperate in the claims. Very strange....


By the nature of MPEG2 and MPEG4 satellite transmission video and audio streams arrive separated ... the combined MUX contains many channels (as many as 12-13 SD MPEG2 or 6-7 HD MPEG4 at the moment). A channel consists of one video feed and one or more audio feeds. Normally one audio feed is paired with the video feed for processing and presentation to the customer's eyes and ears.

The combined MUX of one video and one audio could be stored as one file not separated into two files so when reprocessed audio and video remain syncronized. When that single channel MUX is processed for presentation the two streams encoded it in go their separate ways.

Dish DVRs are also capable of recording audio only streams (such as the CD and SIRIUS channels). In that case there is no video feed, but there is a companion data feed with title/album information that is recorded syncronized along with the audio so on playback the title/album information remains as accurate as live.


----------



## TBoneit

Curtis0620 said:


> Which is why DISH should not be taking this risk and should settle with TiVo.


If you settle with everybody and make it easy then everybody will be eyeing your bank account wondering how much they can chip off for themselves.


----------



## James Long

Yep. The same strategy as used in channel negotiations.


----------



## nobody99

James Long said:


> You have made plenty of posts where there seems to be zero tolerance for DISH offering any DVR.


I wish I could have that sort of laser-beam focused memory on a thread with thousands of messages. Could you, for giggles, just find one where I have "zero tolerance for any DVR." Because if I did say anything even remotely similar to that, I apologize. From day 1, that's not the least bit what I've thought.


----------



## TBoneit

nobody99 said:


> Holy frickin' crap. That has to be the worst comment in the 76 pages. You are suggesting that those of us who have TiVo are trying to hurt DISH's sales? It never even occurred to me that more than maybe 25 people even _read_ this thread.
> 
> Wow.


No I'm not trying to suggest that. I was probably unclear as to what I was trying to say. I wasn't trying to suggest that anyone is using it that way, Just that it has become what it is. A overly long convoluted message. Where both sides are refusing to budge.

Think about it this way you are a new person thinking about going to satellite and can not decide E* or D*. You come visit this forum and see this thread. Are you going to sign up to someone with DVRs that could be turned off in Sept.? Or will you play safe.

I have a Tivo. I have no Stock in either D* or E*.

I'd like to see them settle at a reasonable price. Reasonable price = a small one time payment for each DVR sold. I say small price as the Tivo patents can be worked around and hence have a limited value. Licensing prevents being dragged into court where it costs money and bad publicity even when you win.

Tivo is entitled to the penalties as determined in the court for the 192,000 units they claim they lost sales and revenue on. Whether or not 192,000 is right I come down on the side of it is a high figure. Who wants a two box solution vs Cable or D*s one box solution?

Did E* infringe? The Court says yes. Did they do it maliciously or did they arrive at the same solution to the problem independently? It is possible that Tivo gave them the idea for a integrated Sat box/DVR. I'm not sure of the timing vs the Tivo showing their product and the Dishplayer which they made in conjunction with Microsoft.

I said it before E* and Tivo should cross license so that Tivo could make Dishnetwork Tivos for thos that want them. I'm sure E* could sell them a mainboard that has the satellite receiver section that could be hooked up to a daughterboard supoorting the Tivo functions or that Tivo could just Buy Bare VIP722 boards and write their own software for the hardware and sell them in a Tivo case.

But I suppose that would be to easy.

Oh well time to go.


----------



## nobody99

TBoneit said:


> I'd like to see them settle at a reasonable price. Reasonable price = a small one time payment for each DVR sold. I say small price as the Tivo patents can be worked around and hence have a limited value. Licensing prevents being dragged into court where it costs money and bad publicity even when you win.
> 
> Tivo is entitled to the penalties as determined in the court for the 192,000 units they claim they lost sales and revenue on. Whether or not 192,000 is right I come down on the side of it is a high figure. Who wants a two box solution vs Cable or D*s one box solution?
> 
> Did E* infringe? The Court says yes. Did they do it maliciously or did they arrive at the same solution to the problem independently? It is possible that Tivo gave them the idea for a integrated Sat box/DVR. I'm not sure of the timing vs the Tivo showing their product and the Dishplayer which they made in conjunction with Microsoft.
> 
> I said it before E* and Tivo should cross license so that Tivo could make Dishnetwork Tivos for thos that want them. I'm sure E* could sell them a mainboard that has the satellite receiver section that could be hooked up to a daughterboard supoorting the Tivo functions or that Tivo could just Buy Bare VIP722 boards and write their own software for the hardware and sell them in a Tivo case.
> 
> But I suppose that would be to easy.
> 
> Oh well time to go.


I agree with pretty much everything you say. I wish they had come to an arrangement before it had gotten to this point. Lawsuits are only good for lawyers.


----------



## jacmyoung

nobody99 said:


> I agree with pretty much everything you say. I wish they had come to an arrangement before it had gotten to this point. Lawsuits are only good for lawyers.


There are countries that have no lawyers, I don't know if you have ever investigated how life is like there.


----------



## Curtis52

TexasAg said:


> If you haven't done so, you really need to go read Tivo's "software" claims. The claims talk about 4 different types of objects, physical data sources, flow control, and all sorts of other stuff. Now Echo has publicly said that they have stopped parsing data (which could be a weak argument since the court said "parse" simply meant "analyze") and that they have stopped using flow control (which could be much stronger since Tivo's claims require flow control).


Claim construction:



> ""automatically flow controlled"
> 
> TiVo argues these terms mean "the flow of data is self-regulating." "
> 
> "EchoStar argues the terms mean "the transform object controls when and where
> video and audio data is stored by the source object.""
> 
> "The Court agrees with TiVo's position and defines "automatically flow
> controlled" as "self-regulated" due to its clear definition in the specification.


----------



## jacmyoung

There is no doubt in my mind DISH infringed on Tivo’s patent, most of their arguments are trivial, did not amount to much to me. There arguments at the time were only part of the appeal process to buy them time while they worked on the new software.

The parsing, or analyzing, if I understand was described in the earlier numbers of constructions of the Tivo patent claims. My understanding is when DISH said their new software no longer parsed data, it was referring to those earlier constructions. The DISH new software does analyze data but at the tail end. 

The concept of analyzing data in a DVR itself can not be patented in my view only because it is obvious to a person of ordinary skill that some form of data analyzing must occur in order to perform DVR functions. So it is the method of the analyzing that matters. If one does it at the front end, the other does it at the tail end, they should not infringe on each other.

Of course I admit I did not read the claims and the arguments carefully for that part of the trial. Likewise if the flow control part can be avoided by the new software, then there will be no infringement on that particular construction, be it automatic or some live mini robot doing the work in the DVR.

And only if DISH manages to avoid infringement on each construction of a claim, will it be able to say they no longer infringe on that claim, from a standpoint of infringement on the equivalents. And that is why I said it will be a difficult task. Correct me if I am wrong.

It however will also be more difficult for Tivo in the next trial, if there is one, because this time around DISH actually made a great deal of effort to avoid infringement, certainly much more so than the last time.


----------



## TexasAg

Curtis52 said:


> Claim construction:


Thanks. I hadn't seen that, so continuing infringement is a much closer question (go figure, par for this course, I guess).


----------



## scooper

Greg Bimson said:


> The actual only question that needs answering is, "does changing the software change the Infringing Products".


I don't even see where it needs to be asked - it's ASSUMED to change the infringing products.

As someone with a BS in Computer Science - how can anybody argue otherwise ?


----------



## Curtis52

TiVo's contempt motion is out. Dish also filed a motion about repairs of the 192,000 lost profits boxes.


----------



## Curtis52

Here's a tidbit:

"EchoStar's argument that the Court can no longer exert its authority over the DVRs once EchoStar has modified their software is not only an improper collateral attack on the injunction (as discussed above), it is wrong. The Federal Circuit has approved the district courts' authority to rule upon and to enjoin so-called "design arounds" in injunctions in patent infringement cases. For example, in Additive Controls & Measurement Systems, Inc. v. Flowdata, Inc., the district court issued an order enjoining the defendant "from making, using, and/or selling any positive displacement flowmeter" and prohibiting the defendant from engaging in commercial activities for any allegedly redesigned flowmeter product without obtaining the court's permission in advance. 32 U.S.P.Q.2d 1747, 1757 (S.D. Tex. July 12, 1994), aff'd in part and rev'd in part on other grounds, 154 F.3d 1345, 1356 (Fed. Cir. 1998). The Federal Circuit affirmed this portion of the order, finding that "the district court reasonably concluded that such measures were necessary in this case to compel compliance with the court's orders." 154 F.3d at 1356. The Federal Circuit approved a similar provision, prohibiting the defendant from selling any allegedly redesigned device without obtaining the court's permission in advance, in Spindelfabrik Suessen-Schurr v. Schubert & Salzer Maschinenfabrik Aktiengesellschaft, 903 F.2d 1568, 1577 (Fed. Cir. 1990). In each of these cases, the defendants engaged in precisely the same tactic that EchoStar has here, claiming to have redesigned a product to avoid infringement and, in each case, the court determined that it had authority over the allegedly modified product. Spindelfabrik, 903 F.2d at 1571; Additive Controls, 32 U.S.P.Q.2d at 1755, 1757.

Here, EchoStar knew that it was modifying its software when the injunction issue was being briefed and argued before this Court. EchoStar could have and should have requested a "pre-clearance" provision like the ones above. EchoStar made the decision to go ahead in secrecy without any Court approval instead. But that did not make EchoStar's modified products automatically exempt from the Court's injunction. To the contrary, under the language of the injunction, they remained subject to the disablement requirement. To exempt them would require a decision by this Court, not by EchoStar. As EchoStar's behavior confirms, the Court's decision to issue a simple and unambiguous order, "disable the DVR functionality (i.e., disable all storage to and playback from a hard disk drive of television data) in [DP-501, DP-508, DP-510, DP-522, DP-625, DP-721, DP-921 and DP-942]" was a wise one. EchoStar's decision to be less than candid with this Court and with the Federal Circuit - by seeking a stay of the injunction without disclosing its efforts to modify the software and then, if necessary in the future, using the software modifications as an argument for disregarding the injunction's disablement provision - was made deliberately. While EchoStar may now be arguing that the spirit of the injunction allows for modified software, its previous positions with this Court and with the Federal Circuit coupled with its conduct show that it was attempting to circumvent the injunction, not comply with it. Such conduct constitutes contempt of court. "


----------



## Greg Bimson

Greg Bimson said:


> The actual only question that needs answering is, "does changing the software change the Infringing Products".





scooper said:


> I don't even see where it needs to be asked - it's ASSUMED to change the infringing products.
> 
> As someone with a BS in Computer Science - how can anybody argue otherwise ?


scooper, here is the problem:

There are eight models defined in the injunction as "Infringing Products", which are subject to a disable order. One would literally have to change or interpret the "Infringing Products" to something else.

So let's talk about this modification...

If I as an infringer change only one byte or one billion lines of code, I'd need something to tell the court of my changes, and also need to provide all those changes to the opposing party. Until those changes are ruled upon by a court, the fact there is a change doesn't mean anything to the standing of the adjudicated products.


----------



## scooper

Greg Bimson said:


> scooper, here is the problem:
> 
> There are eight models defined in the injunction as "Infringing Products", which are subject to a disable order. One would literally have to change or interpret the "Infringing Products" to something else.
> 
> So let's talk about this modification...
> 
> If I as an infringer change only one byte or one billion lines of code, I'd need something to tell the court of my changes, and also need to provide all those changes to the opposing party. Until those changes are ruled upon by a court, the fact there is a change doesn't mean anything to the standing of the adjudicated products.


YOU see this as a problem. MY training says it is an implicit assumption (why would you change it otherwise ?).

The problem you're having here is "there is not a physical change in the box I hold in my hand that I can physically see and touch". The changes are all in the software that runs it.


----------



## spear61

Curtis52 said:


> Here's a tidbit:
> 
> "EchoStar's argument that the Court can no longer exert its authority over the DVRs once EchoStar has modified their software is not only an improper collateral attack on the injunction (as discussed above), it is wrong. The Federal Circuit has approved the district courts' authority to rule upon and to enjoin so-called "design arounds" in injunctions in patent infringement cases. For example, in Additive Controls & Measurement Systems, Inc. v. Flowdata, Inc., the district court issued an order enjoining the defendant "from making, using, and/or selling any positive displacement flowmeter" and prohibiting the defendant from engaging in commercial activities for any allegedly redesigned flowmeter product without obtaining the court's permission in advance. 32 U.S.P.Q.2d 1747, 1757 (S.D. Tex. July 12, 1994), aff'd in part and rev'd in part on other grounds, 154 F.3d 1345, 1356 (Fed. Cir. 1998). The Federal Circuit affirmed this portion of the order, finding that "the district court reasonably concluded that such measures were necessary in this case to compel compliance with the court's orders." 154 F.3d at 1356. The Federal Circuit approved a similar provision, prohibiting the defendant from selling any allegedly redesigned device without obtaining the court's permission in advance, in Spindelfabrik Suessen-Schurr v. Schubert & Salzer Maschinenfabrik Aktiengesellschaft, 903 F.2d 1568, 1577 (Fed. Cir. 1990). In each of these cases, the defendants engaged in precisely the same tactic that EchoStar has here, claiming to have redesigned a product to avoid infringement and, in each case, the court determined that it had authority over the allegedly modified product. Spindelfabrik, 903 F.2d at 1571; Additive Controls, 32 U.S.P.Q.2d at 1755, 1757.
> 
> A great find. You have framed Tivo's arguement for them with what appears to be good precedent. But, what if Dish comes back and says the injunction was not clear in it's intent because of the inclusion of that rascal adjective "infringing" products. When in doubt about intention of injuntion, the defendent prevails.


----------



## Greg Bimson

scooper said:


> The problem you're having here is "there is not a physical change in the box I hold in my hand that I can physically see and touch". The changes are all in the software that runs it.


No, I think I'm not getting through correctly...

The DP-501, along with the other seven models collectively called "Infringing Products", are to be disabled. "Infringing Products" only has the one meaning according to the injunction.

There has been no ruling by the courts that have made a DP-501 non-infringing.

So DISH/SATS has changed one byte of code. Big deal.

So DISH/SATS has changed a billion lines of code. Big deal.

The point is the Court hasn't ruled what the new software does. And according to the contempt hearing, the "new software" remains a question that will not be answered...

Which only leaves adjudicated a DP-501 and seven other models as infringing, and listed in the injunction as "Infringing Products".


----------



## jacmyoung

This is most interesting because I actaully went through this particular case (Additive Controls & Measurement Systems, Inc. v. Flowdata) during my research but did not focus on it since it did not appear relevant at the time.

The problem I see is in this case there was an initial injunction, then the infringer went to talk to several parties to continue to manufacture the same device, only with a new name, and later when the injunction went into effect, all parties involved were served the notice of the injunction, but the parties continued with the manufacturing activities, under request by the patentee, the court issued a supplemental order to again enjoin the original infringer, plus those new partners from make, use, sell...the product. Without further details, it must be that after looking at the modified meter, the court had determined the modified meter was only colorably different, else that modified meter would not have been enjoined.

So basically in that case the court did go through necessary proceeding to determine that the modified product was still within the scope of the initial injunction, and then added more parties on to the order list, because those new parties were served the initial injunction notice but continue to work with the infringer to make the modified meter that was no more than colorably different.

Notice only the second supplemental order prohibited the make and use...of the modified device. Here there is no such second order, while the proposal DISH made during the injunction phase was denied, it was denied because DISH simply could not even make such proposal at that time. In fact the appeals court in affirming the injunction said no such thing as whether DISH may or may not use its proposed modification.

This case law used by Tivo seems of entirely different circumstance.


----------



## scooper

Greg Bimson said:


> No, I think I'm not getting through correctly...
> 
> The DP-501, along with the other seven models collectively called "Infringing Products", are to be disabled. "Infringing Products" only has the one meaning according to the injunction.
> 
> There has been no ruling by the courts that have made a DP-501 non-infringing.
> 
> So DISH/SATS has changed one byte of code. Big deal.
> 
> So DISH/SATS has changed a billion lines of code. Big deal.
> 
> The point is the Court hasn't ruled what the new software does. And according to the contempt hearing, the "new software" remains a question that will not be answered...


That really doesn't matter, as long as it is "more than colorably different". The place to determine if it is infringing or not is in another trial.



Greg Bimson said:


> Which only leaves adjudicated a DP-501 and seven other models as infringing, and listed in the injunction as "Infringing Products".


I see you're falling back into the "there is the injunction, and ONLY the injunction" - and I thought there might be hope for you...


----------



## jacmyoung

And also interesting is in the second case, the infringer was first found to have willfully infringed on a patent, and ordered to pay among other things patentee's attorney fees and a fine, with an injunction.

The infringer later asked the court to go to a trade show where it would showcase a modified device, and seeked the court approval to make that modified device. The court denied the request to go to the show. The infringer did the show anyway and began to sell that modified device.

The court then, per request by the patentee, issued another order to enjoin the infringer from the sale of the modified device, but not until after the court looked at that modified device and determined the modified device still infringed.

Now I don't know how Tivo can ignore all the important elements in those above cases and pretend that the judge will simply equate them to this case, and DISH would not have a strong response.

I am no lawyer but this just did not seem right to me to come out of the Tivo's legal team.


----------



## peak_reception

From II. Statements of Fact, in TiVo's contempt motion: 


> Before issuance of the injunction, the "disable the DVR functionality" language was the
> subject of argument. EchoStar argued against the disablement approach and proposed instead
> that the Court enjoin only "the provision of infringing DVR software . . . upon activation."
> Docket No. 737, EchoStar's (1) Opposition to TiVo's Motion for Entry of Judgment and (2)
> Cross-Motion to Stay any Injunction Pending Appeal, at 17 (Giza Decl., Ex. B). *TiVo warned
> that such an approach would be "an invitation for EchoStar to engage in mischief. Such an
> injunction would only result in EchoStar providing what it deemed as 'non-infringing' DVR
> software to its already-found-to-be-infringing DVRs, creating the opportunity for interminable
> disputes to determine what exactly is 'infringing DVR software.'"* Docket No. 747, TiVo's (1)
> Reply Re Motion for Entry of Judgment and Permanent Injunction and (2) Opposition to
> EchoStar's Cross-Motion to Stay Injunction, at 11. The Court rejected EchoStar's formulation,
> which would have permitted EchoStar to download a software change to its DVRs and then
> continue to provide the DVR functionality unless and until the software with that change was
> deemed to infringe, the same position it takes now. Instead, the Court required action from
> EchoStar that was simple and unambiguous: disablement of the DVR functionality in all the
> identified units.
> Long before the injunction issued, EchoStar was already modifying its software. Prior to
> the Court's entry of the injunction on September 8, 2006, EchoStar was so far along with the
> development of the modified software that EchoStar already had obtained formal written
> opinions of counsel (dated August 24 and September 1, 2006) regarding the software that
> EchoStar now contends does not infringe.3 Thus, EchoStar knew about the modified software,
> but did not inform this Court or the Federal Circuit of its argument that the modified software
> supposedly gave EchoStar an easy out from the injunction.


 So all of this had been argued in court previously, and ruled on previously. It leaves Echo on very thin ice, particularly how they did not inform the Court of their massive software modification program which was mostly completed by the time the injunction issued (evidenced by the opinions of non-infringement procured by Echo at that time). 
TiVo is highlighting the gamesmanship Echo is engaging in. TiVo also points out that they warned the court that Echo was planning to do just such a thing (highlighted in bold above). Homing in on this evasive conduct is very effective. 
I've only read through this first section of TiVo's motion thus far but it appears that the tight argument and well-structured presentation of this document is far superior to the agenda they submitted in May. And what a difference it makes!


----------



## jacmyoung

I hope Curtis can post the rest of the filing soon.

I am mostly interested in why the judge denied the DISH's modification proposal. Can someone link the actual documents?

Based on what I have read from Tivo so far I simply have no confidence to take what Tivo is saying as true and factual. But I agree, if the reason DISH's proposal was denied was exactly what Tivo said, then yes DISH is in trouble.

But I just can not take what Tivo said at its face value anymore after researching the two cases myself and found out the real details.

But regardless, even if one use the above two cases as examples, one can easily realize, in each case the court actaully did look at the modified device, and found out that the modified device was either mere colorably different, or still infringed, before a second order was issued.

The court did not say well just because we denied your modification proposal, we did not have to look at the modified device anymore, in fact the court did look at the modified devices, then found them to still infringe.


----------



## James Long

Pardon any repeated quoting here.

Echostar wants - to be able to swap receivers for repair:Before the Court is Defendants' Motion for Interpretation of the Permanent Injunction. After considering the motion, the evidence and the record, and the arguments of counsel, the Court finds that the motion has merit and GRANTS the motion.
IT IS, THEREFORE, ORDERED, ADJUDGED AND DECREED that the Permanent Injunction permits EchoStar to send customers previously-repaired same-model DVR units through the Advance Exchange program in exchange for the 721, 921, and 942 models that are in need of repair.​
Tivo wants - DISH held in contempt:Before the Court is Plaintiff TiVo's Motion for EchoStar To Be Held in Contempt for Violation of This Court's Permanent Injunction. After considering the motion, the evidence, the record, and the argument of counsel, the Court finds that the motion has merit and GRANTS the motion. EchoStar is in contempt of Court for failing to "disable the DVR functionality" as required by the Amended Final Judgment and Permanent Injunction (Docket No. 806). EchoStar is ordered to comply with the injunction within seven calendar days. The Court will rule on a later date on an appropriate remedy for EchoStar's violation of the injunction.​
The Schedule:1) *June 13, 2008* TiVo motion and brief for contempt on Issue 1 in June 5, 2008 Order (up to 20 pages, excluding exhibits). EchoStar motion and brief re Advance Exchange Program. *[FILED]*
2) *June 30, 2008* EchoStar response brief re contempt on Issue 1 (up to 20 pages, excluding exhibits). TiVo response brief re Advance Exchange Program
3) *July 11, 2008* TiVo reply brief re contempt on Issue 1 (up to 10 pages, excluding exhibits). EchoStar reply brief re Advance Exchange Program.
4) *September 4, 2008* Hearing. Each side shall have 30 minutes.​
_Complete_ of the filings attached. (Exhibits separated)


----------



## nobody99

jacmyoung said:


> But I just can not take what Tivo said at its face value anymore after researching the two cases myself and found out the real details.


Then you'll just love what TiVo says about DISH's pattern of legal shennanigans in the motion :lol:


----------



## nobody99

I like TiVo's proposed language for a contempt finding:



> Before the Court is Plaintiff TiVo's Motion for EchoStar To Be Held in Contempt
> for Violation of This Court's Permanent Injunction. After considering the motion, the
> evidence, the record, and the argument of counsel, the Court finds that the motion has merit and GRANTS the motion. EchoStar is in contempt of Court for failing to "disable the DVR functionality" as required by the Amended Final Judgment and Permanent Injunction (Docket No. 806). EchoStar is ordered to comply with the injunction within seven calendar days. The Court will rule on a later date on an appropriate remedy for EchoStar's violation of the injunction.


----------



## peak_reception

From Echo's own account, in their May 23 reply to TiVo's agenda, their massive design-around project sounds like it's on par with something like Apollo 11 as one of the great endeavors and technical achievements of the last half century:


> Within days of the original verdict on April 13, 2006, EchoStar
> convened a team of engineers to investigate alternatives to the accused
> devices that had been found to infringe. Fifteen engineers supported by a
> multitude of test technicians and program management personnel worked on
> the project, putting in approximately four man-years of effort. This
> program was successful and, while the appeal was pending, EchoStar was able
> to replace its existing infringing software with redesigned software based
> on a novel approach....


 *"15 engineers"

"A multitude of test technicians and program management personnel."

"four man-years of effort" *

You'd think that something this massive and central to the case might merit notice of its existance to the judge.


----------



## jacmyoung

nobody99 said:


> Then you'll just love what TiVo says about DISH's pattern of legal shennanigans in the motion :lol:


You got that right, DISH did not get away with that did it? Why should Tivo be different?

Again even in the above cases when the courts actually denied the infringers' modification proposals, and when the infringers did them anyway, the courts still looked at the modified devices, and only after the courts found the modified devices to still infringe, did the courts issue the contempt orders.


----------



## nobody99

jacmyoung said:


> You got that right, DISH did not get away with that did it? Why should Tivo be different?
> 
> Again even in the above cases when the courts actually denied the infringers' modification proposals, and when the infringers did them anyway, the courts still looked at the modified devices, and only after the courts found the modified devices to still infringe, did the courts issue the contempt orders.


Uh, what?


----------



## jacmyoung

peak_reception said:


> ...You'd think that something this massive and central to the case might merit notice of its existance to the judge.


Which is exactly why I want to read the actual documents on why the judge denied the DISH's proposal. The judge must knew at that time DISH was doing it already, because DISH proposed it to the judge.

I am not saying what Tivo said was non-factual, just I will not take its words, after Tivo managed to find that two cases then totally misrepresented them.


----------



## nobody99

jacmyoung said:


> Which is exactly why I want to read the actual documents on why the judge denied the DISH's proposal. The judge must knew at that time DISH was doing it already, because DISH proposed it to the judge.
> 
> I am not saying what Tivo said was non-factual, just I will not take its words, after Tivo managed to find that two cases then totally misrepresented them.


You don't have to "take its words" - TiVo includes full evidence of its allegations.


----------



## Greg Bimson

Greg Bimson said:


> The point is the Court hasn't ruled what the new software does. And according to the contempt hearing, the "new software" remains a question that will not be answered...





scooper said:


> That really doesn't matter, as long as it is "more than colorably different". The place to determine if it is infringing or not is in another trial.


That's the problem, scooper. But there is no place to determine if one byte of code, one billion lines of code, or none of the code has been changed.

There is no discovery regarding the "colorably different" issue.

In order to determine "colorably different", TiVo must be granted discovery; no one will simply take one party's word.


----------



## James Long

peak_reception said:


> You'd think that something this massive and central to the case might merit notice of its existance to the judge.


Why? Is it required by law? DISH _DID_ attempt to get the judge to word the injunction to explicitly allow software updates after that April 16th date, but they were planning on appealing the entire decision. In essence saying "we're not wrong ... but we're changing the software". 



jacmyoung said:


> Which is exactly why I want to read the actual documents on why the judge denied the DISH's proposal. The judge must knew at that time DISH was doing it already, because DISH proposed it to the judge.


That was YEARS ago! Did you do any sort of searching?

FYI: Complete filings for today now linked in my post above (split due to file size limits).
http://www.dbstalk.com/showpost.php?p=1643603&postcount=1954


----------



## kmill14

spear61 said:


> But, what if Dish comes back and says the injunction was not clear in it's intent because of the inclusion of that rascal adjective "infringing" products. When in doubt about intention of injuntion, the defendent prevails.


E* can't challenge anything about the wording of the injunction, or its meaning. Tivo went into that in large amounts of detail in their motion. It was quite brilliant.


----------



## James Long

kmill14 said:


> E* can't challenge anything about the wording of the injunction, or its meaning. Tivo went into that in large amounts of detail in their motion. It was quite brilliant.


So, have you read the motion yet. :lol:


----------



## spear61

Tivo's best arguements may be Dish's past history of playing fast and loose with the courts. The concealment of a software fix developed before the injuntion was issued, along with the court's experiences in the Distant Network case, and the discovery problems in this one, all point towards the court concluding thatDish thinks they are above the law. I listened to a federal judge describe my company as being comparable to a herd of of musk ox protecting their young ( butts in-heads out). The judge got removed but the appeals court got even before it was done. DON'T MESS WITH THE JUDGE.


----------



## kmill14

Yes, unlike jacmyoung, I actually read the entire motion first before calling TiVo liars. Too funny. 

Its too late for me to argue with jacmyoung anymore today, but I do find it extra amusing that the guy who loves to mis-quote rulings (and isn't a lawyer) jumps all over one of the most highly decorated patent attorneys in the country (Morgan Chu).


----------



## jacmyoung

James Long said:


> ...That was YEARS ago! Did you do any sort of searching?...


I knew, and I did not even start to care for this case until a few months ago.

Why I asked if anyone has a link to that particular document where the judge denied DISH's proposal.


----------



## jacmyoung

kmill14 said:


> Yes, unlike jacmyoung, I actually read the entire motion first before calling TiVo liars. Too funny. ...


Did you also read the two cases Tivo quoted?


----------



## James Long

jacmyoung said:


> Did you also read the two cases Tivo quoted?


He didn't need to. He didn't call those cases brilliant.


----------



## nobody99

jacmyoung said:


> Based on what I have read from Tivo so far I simply have no confidence to take what Tivo is saying as true and factual.


In light of some of the quotes in the contempt motion, this position is pretty laughable. Each of these quotes are not from lawyers, not from witnesses. They are from the court hearing the case. That's a pretty damning pattern of being scum.



> After reaching "the unavoidable conclusion that EchoStar engaged in a 'pattern or practice' of [statutory] violations," and that EchoStar had violated the Act "in every way imaginable," the Eleventh Circuit remanded to the district court for entry of "a nationwide permanent injunction
> 
> ***
> 
> Even more than before trial, it is now 'clear beyond reasonable dispute that [EchoStar] ha[d] been guilty of gross spoliation of evidence.' Echostar clearly acted in bad faith
> 
> ***
> 
> Having reviewed the parties' briefs in this matter, we, too, are hard pressed to attribute good motives to EchoStar's conduct.
> 
> ***
> 
> EchoStar failed in its duty of candor .... We admonish EchoStar for this abuse of process and caution EchoStar to take greater care.
> 
> ***
> 
> Knearl and EchoStar represent that they have complied fully with the June 8, 2006 order, but do so with vague, equivocal, and
> qualified explanations. The responsive brief to TiVo's motion suggests a legal shell game, which Knearl and EchoStar may be playing without a pea.


----------



## Greg Bimson

James Long said:


> Why? Is it required by law? DISH DID attempt to get the judge to word the injunction to explicitly allow software updates after that April 16th date, but they were planning on appealing the entire decision. In essence saying "we're not wrong ... but we're changing the software".


You know, and that leads me to wonder...

DISH/SATS appealed the entire decision, but didn't appeal any of the injunction. For the life of me, I cannot figure out why. What happens if the appeal is unsuccessful in reversing the entire verdict? We're living it.

At this point, I understand that if everything regarding the verdict was reversed, then the injunction is dissolved. But if only part or none of the suit was reversed, then DISH/SATS would have simply done what they are doing today.


----------



## jacmyoung

The Tivo fans need to learn not to rely on what Tivo says as if this is what the judge will agree.

Remember what happened when you used Tivo's 5/16 filing as the Bible and predicted that on 5/30 DISH would be crushed, all DVRs shut, DISH would pay through the nose. You folks pointed to each and every one of the items in that Tivo's filing as if they would happen exactly so on 5/30.

Did you not learn a lesson? Tivo got only one thing, the judge agreed to provide his interpretation on the "face of the injunction" as Tivo asked for, and how to calculate rate of which the enchanced damages may be done. In fact in the above motions the enchanced damages are not even discussed by either party, Tivo is only busy trying to convince the judge on this single "face of the injunction" item.

So basically after asking for everything under the Sun on 5/16, Tivo is now relegated to only trying to influence the judge on the face of the injunction item.

So I think to avoid another disappointment, it is a good thing to spend a little time to actually read that two cases Tivo cited in their motion as far as trying to prove that the court may prohibt modification of a device.

And after you read the two actual cases, you will come back with a totally different understanding and actually agree with me, in a contempt proceeding, the court will in fact look at the modified devices, even in the two cases Tivo cited, in which after the infringers proposed the modifications to avoid injunctions, and even after the court denied such requests, and even after the infringers ignored the courts' denials and went ahead with the modifications.

Even after all that, the courts still looked at the modified devices to find out if such modified devices were more than colorably different or not, or if such modified devices were still infringing or not, before rendering a contempt ruling.

So please do not just read what Tivo wants to tell you, read for yourself. Don't take anything Tivo says and assume that is what the judge will buy. The judge did not buy most what Tivo said last time.


----------



## nobody99

jacmyoung said:


> you will come back with a totally different understanding and actually agree with me


Hahaha. Bwahahaha. :lol: :hurah: :lol:

Good one. You almost got me.


----------



## nobody99

jacmyoung said:


> Remember what happened when you used Tivo's 5/16 filing as the Bible and predicted that on 5/30 DISH would be crushed, all DVRs shut, DISH would pay through the nose. You folks pointed to each and every one of the items in that Tivo's filing as if they would happen exactly so on 5/30.


Can you do me a small favor? Can you quote a single case where any "TiVo Fans" predicted that 5/30 would be the date DISH was crushed?

And what do yo mean by "each and every one of those filings as if they would happen exactly so on 5/30"

I'll remind you of 5/16 requests by TiVo:



> A hearing at the earliest possible date to determine whether EchoStar should be held in contempt for its failure to disable the DVR functionality in the Infringing Products and for its placement of new infringing DVRs (and new EchoStar products that are only colorably different); and


TiVo got what they wanted. Perhaps not as early as they wanted it - but it was due to scheduling conflicts with the court (see the transcript), plus Dish asked for another week on top of it.



> Permission to serve limited discovery to obtain additional information before determining the damages TiVo sustained during the stay of the injunction, and, if necessary, bringing a motion for an order to show cause why EchoStar is not in
> contempt for the continuing use of the Infringing Products, changed only by downloading modified, but still infringing, software (and new EchoStar products that are only colorably different).


TiVo was denied this request for "judicial economy." In other words, if you need it after the first request, you'll get it. Some of us have read that to mean "you won't need it." So the jury's still out on this request.

Just to save you some time, here's a post from me on May 27.



> DISH can do whatever they want to the infringing products. Until the court decides they are not infringing, they are infringing. It's really that simple.
> 
> *That determination will not be made at the May 30 status hearing. It will not be made at a contempt hearing that is scheduled during the May 30 hearing.*


But hey, why start being accurate now, right?


----------



## peak_reception

Originally Posted by *peak_reception*:


> You'd think that something this massive and central to the case [the massive, top-secret "design-around"] might merit notice of its existance to the judge.





James Long said:


> Why? Is it required by law?


Maybe not _required_ by law, but just more evidence of a lack of respect or *contempt* for the law.

Echo has apparently calculated that it can manipulate and maneuver its way out of obeying a lawfully executed order (the Final and Permanent Injunction) in this case (and not just in this case as TiVo surprisingly documents in some detail).

Keeping their design-around a secret from the judge is part and parcel of Echo's arrogant attitude. I don't expect Judge Folsom will take kindly to it, and I doubt the appeals court will either. TiVo is smart to give this behavior by Echo the broader context it deserves.


----------



## peak_reception

jacmyoung said:


> The Tivo fans need to learn not to rely on what Tivo says as if this is what the judge will agree.
> 
> Remember what happened when you used Tivo's 5/16 filing as the Bible and predicted that on 5/30 DISH would be crushed, all DVRs shut, DISH would pay through the nose. You folks pointed to each and every one of the items in that Tivo's filing as if they would happen exactly so on 5/30.


That's a wild exaggeration. I thought TiVo's May agenda was very weak and said so here on more than one occasion.

I think TiVo's contempt motion is far more more effective. Maybe if TiVo had put their agenda across with as much strength and focus in May then we wouldn't be looking at September now for the issue of contempt to be resolved.


----------



## peak_reception

spear61 said:


> Tivo's best arguements may be Dish's past history of playing fast and loose with the courts. The concealment of a software fix developed before the injunction was issued, along with the court's experiences in the Distant Network case, and the discovery problems in this one, all point towards the court concluding that Dish thinks they are above the law.


 I agree. TiVo is saying that Echo is not just a convicted infringer in this case alone, but a habitual manipulator/abuser of the legal system in general. The gloves are definitely off. Don't look for an amicable settlement anytime soon.


----------



## jacmyoung

nobody99 said:


> Hahaha. Bwahahaha. :lol: :hurah: :lol:
> 
> Good one. You almost got me.


Were you laughing because you actually attempt to read that two cases Tivo cited and agreed with me?

Or you could not figure out what to read and laughed at yourself?


----------



## jacmyoung

peak_reception said:


> I agree. TiVo is saying that Echo is not just a convicted infringer in this case alone, but a habitual manipulator/abuser of the legal system in general. The gloves are definitely off. Don't look for an amicable settlement anytime soon.


Yeah try that childish mentality with Tivo fans is just the right way to turn the tide on the Tivo investors' confidence, but to think they can try such thing in front of the judge?

The only reason Tivo's motion today seems a little more focused is because they are relegated to talk about just on issue only, among about 20 issues they wanted to talk about on 5/30. If you are only talking about one thing, you have to appear focused, because there is nothing else to even let you lose focus.

Tivo knows they can not win on the standards, the two cases Tivo cited was only for show, they could not even shoot straight with that two cases. So Tivo ended up playing the emotion card, rather offering any case law and actual law as their basis of the argument.

Look judge, DISH has been very very bad, they are cheater, they tried to play you judge, are you not mad? You should, let us tell you because we are mad, and let us tell you why we are mad, and why you should also be very mad. Be a man judge, slap DISH the bad boy good, slap him real good.


----------



## James Long

peak_reception said:


> Keeping their design-around a secret from the judge is part and parcel of Echo's arrogant attitude. I don't expect Judge Folsom will take kindly to it, and I doubt the appeals court will either. TiVo is smart to give this behavior by Echo the broader context it deserves.


I don't play poker, but if I did and I played you I'd likely win every hand as I would keep my cards hidden and yours would be on display on the table.

It isn't contempt of court to not volunteer data that is not requested. DISH broke no law by not immediately fully disclosing the efforts that were begun after the jury verdict.


----------



## peak_reception

kmill14 said:


> Its too late for me to argue with jacmyoung anymore today, but I do find it extra amusing that the guy who loves to mis-quote rulings (and isn't a lawyer) jumps all over one of the most highly decorated patent attorneys in the country (Morgan Chu).


 Highly decorated? What war did he fight in? 

Seriously, everyone has strengths and weaknesses. Everyone has better days and worse days. It's not beyond the pale to suggest that one or the other lawyer made mistakes, even if they have steller reputations. I thought TiVo's May agenda was very weak. Maybe I was wrong but at least I backed up that claim with examples of why it was weak. Maybe Morgan Chu didn't even write it, so I didn't mention him by name. But maybe he did write it and writing isn't his greatest strength. If that's the case then he was smart to get some help with this one 

Same with the Echo lawyers. They're probably impeccably credentialed as well. Their May agenda reply was stronger than TiVo's but in the May 30 status meeting the transcript shows counselor McElhinny stammering "you know," "you know," "you know," "You know," over and over again. I didn't mention it at the time because I chalked it up to Judge Folsom's intimidating presence. Or maybe McElhinny is just stronger in writing and weaker in oral argument? They're all top lawyers no doubt, but even those atop their game have weak spots and bad days.

Even Michael Jordan threw up air balls on occasion. :nono:

Time to turn in.


----------



## jacmyoung

James Long said:


> I don't play poker, but if I did and I played you I'd likely win every hand as I would keep my cards hidden and yours would be on display on the table.
> 
> It isn't contempt of court to not volunteer data that is not requested. DISH broke no law by not immediately fully disclosing the efforts that were begun after the jury verdict.


Again, unless someone provides a link to the actual document which states why the DISH proposal was denied by the judge, I will use one of the cases I cited as why DISH's proposal of modification was denied.

It was not because of Tivo's argument, rather by law such proposal simply can not be introduced in the injunction phase, because the Circuit Court stated that. Any modification issue will have to be discussed in a contempt proceeding, not in the injunction phase. It was a simple timing issue, that is all. Otherwise DISH would have brought it up during the appeal, otherwise after the appeals court reaffirmed the injunction it would have added DISH may not use that proposed method in the future.


----------



## jacmyoung

peak_reception said:


> ...but in the May 30 status meeting the transcript shows counselor McElhinny stammering "you know," "you know," "you know," "You know," over and over again. I didn't mention it at the time because I chalked it up to Judge Folsom's intimidating presence. Or maybe McElhinny is just stronger in writing and weaker in oral argument? They're all top lawyers no doubt, but even those atop their game have weak spots and bad days.
> 
> Even Michael Jordan threw up air balls on occasion. :nono:
> 
> Time to turn in.


Everyone noticed that, not just you, at least he got to talk to the judge and the judge listened, noticed the judge did not even want to talk to Mr. Chu? He was interrupted by the judge each time, did not get to talk much at all. And that was even after Mr. Chu started his opening with, we got good news for you judge...


----------



## peak_reception

James Long said:


> I don't play poker, but if I did and I played you I'd likely win every hand as I would keep my cards hidden and yours would be on display on the table.


 Echo's playing poker with the judge. Not too smart. You'll see. 



> It isn't contempt of court to not volunteer data that is not requested. DISH broke no law by not immediately fully disclosing the efforts that were begun after the jury verdict.


 You don't read very carefully, that's obvious. I didn't say that Echo broke a law by not informing the judge. Goodnight


----------



## jacmyoung

peak_reception said:


> ... I didn't say that Echo broke a law by not informing the judge. Goodnight


I hope you realize the judge is about law, whether the law is broken or not, no more no less.

Tivo playing emotional card is underestimating who this judge is. Stop playing with him, start citing real cases, unless there is none to cite, then of course the only thing left to play is the emotional card.


----------



## James Long

jacmyoung said:


> Again, unless someone provides a link to the actual document which states why the DISH proposal was denied by the judge, I will use one of the cases I cited as why DISH's proposal of modification was denied.


So unless someone else does your homework for you you'll continue to use irrelevant references? 

There is so much available in THIS CASE. Things that are actually relevant. You could spend your time looking through DISH's response for the May 30th meeting and finding all of their legal references.

As for today's (Friday's) filings, we have two separate issues. DISH filed on the answer they want, Tivo filed on the issue answer they want. Next they change up and file reply comments to each other (Tivo addresses ONLY DISH's request to be able to newly place Infringing Receivers that do not have new software as repair replacements, DISH addresses ONLY Tivo's request that DISH be found in contempt). That is where the fun will begin.

Then replies to the replies will be offered ... followed by the final round in court in September. Not live on HBO PPV but still just as exciting for about 10 people. 

This is a thread about Tivo vs Echostar. It's probably best to stay as close to the case as possible.


----------



## jacmyoung

James Long said:


> So unless someone else does your homework for you you'll continue to use irrelevant references?
> 
> There is so much available in THIS CASE. Things that are actually relevant. You could spend your time looking through DISH's response for the May 30th meeting and finding all of their legal references...


Because Tivo used this DISH proposal as one of their main arguments, and I could not find the actual document. The only thing I can use is the case law I cited before in which the Circuit Court clearly stated the reason an infringer may not propose during the injunction phase to exclude any modified devices was, not because the modification is not permitted, rather the injunction phase is not the right forum to discuss it or even to bring it up. The infringer will be able to bring it up in a contempt proceeding, because the contempt proceeding is the right forum for such proposal.

So you see it is the most relevant to one of the most important arguments Tivo used, in fact the only one that may have some merit, only that I decide not to trust the reason Tivo has given, because they could not even shoot straight with the two cases which actually proved they were wrong, only if one cares to read those two cases.

Everything lese Tivo said in there is a waste, at least to me, becasue they are nothing but trying to play the judge's emotion.


----------



## kmill14

jacmyoung said:


> Everything lese Tivo said in there is a waste, *at least to me*, becasue they are nothing but trying to play the judge's emotion.


Again, the admitted non-lawyer believes he is smarter than TiVo's 1st class patent attorney. By the way, you can complain about their lack of content leading up to the 5/30 meeting, but they DID get exactly what they wanted. A contempt hearing on the law. They also got what they wanted in the 1st trial, and the injunction wording, and the appeals verdict. So far, E* hasn't won any big battle in this entire case.

OH, and because you seem to have trouble finding relevant documents and information for *this* case, perhaps you should read up on it more.

This should help:

http://www.southernme.com/DAVY_v_GOLIATH/

Start with the file labeled "perm injunction"


----------



## jacmyoung

kmill14 said:


> ...This should help:
> 
> http://www.southernme.com/DAVY_v_GOLIATH/
> 
> Start with the file labeled "perm injunction"


Help about what? You tried to have me read the injunction? Did you not notice you need to cite actual cases, something other than just what this case is and what Tivo is saying?

Tivo did, as you said "finding relevant documents and information to this case", finally they cited two prior cases to support their position, except when you read those two actual cases, any reasonable person would have come to some conclusion that is to the contrary what Tivo was trying to prove. If this is all Tivo has as far as the law is concerned, you don't need me to tell you what to expect.

Of course you don't even care to read anything else, only what Tivo says is the rule. That is fine, you have your way of doing things. But don't even try me, because I will not take anyone's words at their face value, I can think for myself, I will research myself to verify those words, and when I see those words are baloney, I call them so.


----------



## kmill14

You said yourself you wanted to see this "Dish proposal" for the injunction that TiVo referred to. Well, the only place to see it is in that file.

Oh, and TiVo didn't quote just "two" cases as you say.

There is this:

*****
"A party commits contempt when he violates a definite and specific order of
the court requiring him to perform or refrain from performing a particular act or acts with knowledge of the court's order." SEC v. First Fin. Group, 659 F.2d 660, 669 (5th Cir. 1981).
*****

and this:

*****
"collateral attack on an injunction during contempt proceedings is prohibited if earlier review of the injunction was available" (citing Ryan, 42 U.S. at 532 n.4)). 
*****

And this:

*****
As the Supreme Court has made clear, "[a] 'contempt proceeding does not open to reconsideration the legal or factual basis of the order alleged to have been disobeyed and thus become a retrial of the original controversy.'" Local 28 of the Sheet Metal Workers' Int'l Ass'n v. EEOC, 478 U.S. 421, 441 n.21 (1986) (quoting Maggio v. Zeitz, 333 U.S. 56, 69 (1948)).
*****

I am excited to see how you (or more importantly E*) will argue the literal meaning of the Court's order when there can be no reconsideration or attack on that injunction.


----------



## TexasAg

I read through Tivo's filing pretty quickly. Initial thoughts.

I'm not going to get into Tivo's discussion of Echo's prior cases. Personal opinion, but I always thought focusing on somebody's past conduct unrelated to the current case looked like an admission that your current case wasn't strong enough on its own merit.

Tivo's focus on 5th Circuit law and no mention of ongoing infringement was expected. I think Tivo's complaint about Echo doing stuff "in secret" is just silly. Echo didn't have to tell anyone what its plans were for designing-around Tivo's patent, especially if Echo wasn't sure at the time that the design would work or could be implemented in the current DVRs. 

Tivo's argument about Echo not getting a "pre-clearance" provision in the injunction is not a fair reading of the cases. Tivo appears to try and say that some cases that had it mean Echo was required to get it. I've never seen a case that said pre-clearance is required in order to avoid contempt. If it was, every injunction would have it.

jacmyoung, I don't believe the court ever came out and said it was rejecting the possibility of a software download due to the possibility of Echo gaming the system (or whatever Tivo's phrase was). I think Tivo is just using the fact that the court used its language for the injunction rather than Echo's. I could be wrong, but I've never seen the court actually discuss that argument.


----------



## kmill14

This is also interesting:

*****
“If a party can make himself a judge of the validity of orders which
have been issued, and by his own act of disobedience set them aside, then are the courts impotent, and what the Constitution now fittingly calls the ‘judicial power of the United States’ would be a mere mockery.” Gompers, 221 U.S. at 450

*****

and this:

*****
The Supreme Court has affirmed contempt convictions even where the underlying injunction would “unquestionably be subject to substantial constitutional questions.” Walker, 388 U.S. at 317. As the Walker court explained, “respect for judicial process is a small price to pay for the civilizing hand of law.” Id. at 321.
*****


----------



## kmill14

Texas, admittedly, a lot of that stuff is "fluffy", but thats nothing new for motions. TiVo added a lot of things in there just to pull on emotions, but the meat of the argument is just what I copied above and have been arguing all along:

There was a clear order by the Court that has not been obeyed. To interpret the meaning of the order differently is in essence trying to change that meaning, which at this point is not allowed. They had their chance to change it, and didn't.


----------



## TexasAg

kmill14 said:


> There was a clear order by the Court that has not been obeyed. To interpret the meaning of the order differently is in essence trying to change that meaning, which at this point is not allowed. They had their chance to change it, and didn't.


So it again comes back to whether the modified DVRs with the new software are still considered "Infringing Products" (don't mean to keep quoting Greg, but I think he summarized all of the arguments nicely with that). And I think Echo is still free to argue that the injunction only covers infringing products, so ongoing infringement is still an issue. Gotta run for a while (international plane rides stink, and so does waiting 3 months for this to resolve itself).


----------



## kmill14

TexasAg said:


> So it again comes back to whether the modified DVRs with the new software are still considered "Infringing Products" (don't mean to keep quoting Greg, but I think he summarized all of the arguments nicely with that). And I think Echo is still free to argue that the injunction only covers infringing products, so ongoing infringement is still an issue. Gotta run for a while (international plane rides stink, and so does waiting 3 months for this to resolve itself).


The term "Infringing Products" in the order has nothing to do with "on-going infringement", and just refers to the 8 products that were deemed to have infringed (period).

Again, E* could have asked for specific wording regarding "ongoing infringement" of these products as stipulation for them being disabled, but they didn't. The Order is not vague in its meaning, so it makes no sense to try to add "clauses" to it that are not there.


----------



## kmill14

And to add to my above statement, the purpose of injunctions are to prevent ongoing infringement, and the assumption is (based on the Court's ruling) that these 8 products DO in fact infringe.


----------



## jacmyoung

TexasAg said:


> ...jacmyoung, I don't believe the court ever came out and said it was rejecting the possibility of a software download due to the possibility of Echo gaming the system (or whatever Tivo's phrase was). I think Tivo is just using the fact that the court used its language for the injunction rather than Echo's. I could be wrong, but I've never seen the court actually discuss that argument.


Me either, which was why it is very suspicous when Tivo was trying to imply their argument was exactly the judge's. I only have the actual cases that specifically related to such issue as guide, and I have stated my opinion based on those cases and the Circuit Court's opinions.

You of course put it plainly with your experience in the field, Tivo by attacking DISH on unrelated issue, rather sticking to the issues at hand, actaully showed their weakness. The Tivo fans think whatever Tivo says is the rule. Their memory is very short. Only less than a month ago, when Tivo filed their initial brief and made no less than 20 or so demands in it, the Tivo fans jumped on the bandwagon, predicting dooms day for DISH. Then DISH responded, and most people ended up agreeing DISH was very organized and pointed in their responses. And in the end Tivo gets to talk about this face of the injunction only.

As far as the legal teams on both sides, I never doubted their capability, they don't get selected to do such job easily, they do have their reputations. But most importantly they must do what their bosses tell them to do, in order to get paid.

There was little doubt in my mind DISH infringed, the DISH legal team must rigorously defend DISH in order to buy them time to work on a workaround of the patent. They appeared to have just bought enough time for DISH to do so. The fact they lost on appeal was not a reflection on the legal team, they never had much chance to win last time, they were focused on this time, to continue to use the DVRs without being in contempt. So far they have succeeded, because my 625 is still working.

The Tivo legal team is doing the same, they need to show their investors Tivo is rigorously pursuing this case, because that is the only thing that can keep Tivo alive. They don't have any cases to support their argument, so they had to attack DISH on unrelated issues, even if the judge will not buy them, at least the investors may see them working very hard on their behalf.


----------



## jacmyoung

kmill14 said:


> And to add to my above statement, the purpose of injunctions are to prevent ongoing infringement, and the assumption is (based on the Court's ruling) that these 8 products DO in fact infringe.


Infringed. Even the most rigorous Tivo defenders here have agreed it is possible the current DVRs do not infringe. The law said a new trial is needed to determine that.


----------



## kmill14

jacmyoung said:


> Me either, which was why it is very suspicous when Tivo was trying to imply their argument was exactly the judge's. I only have the actual cases that specifically related to such issue as guide, and I have stated my opinion based on those cases and the Circuit Court's opinions.
> 
> they were focused on this time, to continue to use the DVRs without being in contempt. So far they have succeeded, because my 625 is still working.


TiVo never said their argument was the Judge's. They said the Judge sided with their argument, and he did. Stop putting words into the TiVo's mouth.

And for Dish to continue to let end users use DVR functionality in the products that were ruled to infringe IS in contempt of the order. Your continued ignorance of that fact is amazing, given your legal "expertise".


----------



## TexasAg

kmill14 said:


> And to add to my above statement, the purpose of injunctions are to prevent ongoing infringement, and the assumption is (based on the Court's ruling) that these 8 products DO in fact infringe.


Got an extra couple of minutes to re-read Tivo's motion.

It's weird - as jacmyoung noted, both of the two cases Tivo cited on page 11 of its motion (Additive Controls and Spindelfabrik) involved modified devices remaining under the authority of the courts. Spindelfabrik dealt with a case where a broader second injunction was issued. This argument seems weird for Tivo to make.

I don't think Echo ever argued that its modified DVRs were not under the authority of the court, just that the modified DVRs meant they were not violating the injunction. It is possible for Echo to acknowledge that its modified DVRs remain under the court's authority but argue that they are no longer "infringing products." By arguing this point, Tivo almost gives strength to Echo's argument that the court does need to consider the modifications to the devices in deciding contempt. If anything, these cases would appear to say that Tivo could get the modified DVRs under a second injunction, which would mean that Echo wouldn't be held in contempt for the first injunction. I don't see how these cases help Tivo since, as I said, I don't think Echo ever argued that the court doesn't have the authority to review the modified devices. (Note: I could be wrong here - it's just that I don't remember Echo ever saying the court lacked authority over the modified DVRs. I'm sure Curtis can point out if that happened).

Anyway, I'll be out of contact for a couple weeks. Can't wait to see Echo's response.


----------



## Greg Bimson

TexasAg said:


> Echo didn't have to tell anyone what its plans were for designing-around Tivo's patent, especially if Echo wasn't sure at the time that the design would work or could be implemented in the current DVRs.


In all likelyhood, DISH/SATS should have informed the court they were trying to workaround the patent with respect to the adjudicated devices. DISH/SATS knew how their arguments regarding the injunction wording were going.

So although DISH/SATS may not have wanted to tell the court of their plans regarding the placement of new software on the adjudicated, infringing products, it could hurt them in the end.

As I've been posing to scooper, what if DISH/SATS has only changed one byte of code? It is a modification. Would that make any difference to these arguments at all?

The modification has no bearing on the injunction, when the court stated the required modification is to disable the "Infringing Products".


----------



## kmill14

This will unfortunately be near to my last post before tomorrow night...

Texas, those two cases are not the meat of TiVo's argument. The Legal section that focuses on contempt rulings, and the SC's feelings on them (that I quoted earlier) will be the meat. A lot of the other stuff is window dressing.


----------



## James Long

TexasAg said:


> I'm not going to get into Tivo's discussion of Echo's prior cases. Personal opinion, but I always thought focusing on somebody's past conduct unrelated to the current case looked like an admission that your current case wasn't strong enough on its own merit.


Past conduct is good during a penalty phase but not when finding facts. The contempt hearing is intended to find facts. Prior bad acts shouldn't be there. The judge needs to concentrate on the facts in THIS case. Anything else is just grounds for appeal.



TexasAg said:


> I don't think Echo ever argued that its modified DVRs were not under the authority of the court, just that the modified DVRs meant they were not violating the injunction.


They have not argued anything yet. They are just starting to present opinions - but the argument doesn't begin until September.

I don't expect DISH to claim that modified DVRs are no longer under the court's authority. When they present their opinion I expect it will offer an alternative interpretation to the injunction. I doubt they will be picking apart the injunction word for word like we do. What they need is another case where a seemingly clear injunction was interpreted a different way by the defendant and the defendant was found not in contempt. If that case (or cases) exists I'm sure we'll hear about it in the next round.

Tivo seems to be using a shotgun method ... not knowing what DISH's reply will be they are throwing a lot of legal theory up and hoping something sticks. They are hoping that they didn't miss anything. Perhaps a simpler approach would be to focus on ONE path that they absolutely know that they will win. But perhaps there isn't one clear path to victory? Perhaps they are unwilling to take the risk that clarity requires?



kmill14 said:


> A lot of the other stuff is window dressing.


Window dressing doesn't keep out the storm. It just gets in the way of getting to the window. The window needs to be closed by Tivo, not dressed up.


----------



## Greg Bimson

James Long said:


> Tivo seems to be using a shotgun method ... not knowing what DISH's reply will be they are throwing a lot of legal theory up and hoping something sticks. They are hoping that they didn't miss anything. Perhaps a simpler approach would be to focus on ONE path that they absolutely know that they will win. But perhaps there isn't one clear path to victory? Perhaps they are unwilling to take the risk that clarity requires?


I think part of the problem is that it is difficult to tell the court why someone should be in contempt regarding a strict, literal reading of the injunction.

TiVo has to find out what DISH/SATS arguments are before they can pick them apart. That is why TiVo is at least arguing against some of what DISH/SATS stated in their brief to the court regarding the 30 May status hearing.


----------



## James Long

Simplicity would be "say what YOU want to say" ... the further they get away from the main thing the more they open themselves up to dragging other issues into the case.

Difficulty aside, being direct is a good course. There is an opportunity for Tivo to have the last word before September 4th. They didn't need a preemptive strike.


----------



## HobbyTalk

peak_reception said:


> From Echo's own account, in their May 23 reply to TiVo's agenda, their massive design-around project sounds like it's on par with something like Apollo 11 as one of the great endeavors and technical achievements of the last half century: *"15 engineers"
> 
> "A multitude of test technicians and program management personnel."
> 
> "four man-years of effort" *
> 
> You'd think that something this massive and central to the case might merit notice of its existance to the judge.


Doesn't seem that massave to me. It would only take 25 people 2 months to amass 4 man years of work.


----------



## spear61

You are the judge. You job is to treat everyone fairly and make the "right" decisions according to law. The two parties in front of you are "officers of the court" with the duty to make full disclosure during discovery and be truthful to the court. You've been working on this case for a number of years, your rump is sore and you have a bad back. You needed to get new bifocals to read the fine print. You spend your afternoons (you'd rather be out bass fishing) with your clerk researching and composing finding and orders. You are continually wondering if you are making the right decisions because the boys/girls upstairs may overturn you. You discover that one of the card players in this game showed you his good cards from one of his patent firms (Merchant and Gould) but intentionally hide some bad cards from the same firm. Now, you find out that the time and effort and delayed justice for others in the court system has been negatively affected because the same card player had a hole card he chose not to tell the courts about 18 months ago. A card that could have made life much easier for all and possible put this issue to bed if you knew about the card and could have included reference to it in your injunction.

Now, you are at a point where you have to decide whether "literal" or "spirit" should be used in reading your injunction. You can decide either way and good lawyers and judges will agree with you and supply plenty of "facts" to support your decision. 

Will the judge's experiences "color" his opinion? Sure can and sure will but no one knows what he will decide. It could go either way but he will first make up his mind and then dig up "facts" to support it. I would not want him to be in a bad mood.


----------



## James Long

The question was asked of the judge BEFORE he wrote the injunction two years ago. DISH's efforts are not a complete surprise to him.


----------



## scooper

Greg Bimson said:


> In all likelyhood, DISH/SATS should have informed the court they were trying to workaround the patent with respect to the adjudicated devices. DISH/SATS knew how their arguments regarding the injunction wording were going.
> 
> So although DISH/SATS may not have wanted to tell the court of their plans regarding the placement of new software on the adjudicated, infringing products, it could hurt them in the end.
> 
> As I've been posing to scooper, what if DISH/SATS has only changed one byte of code? It is a modification. Would that make any difference to these arguments at all?
> 
> The modification has no bearing on the injunction, when the court stated the required modification is to disable the "Infringing Products".


WHile I agree a 1-byte change is not really in the spirit of more than colorably different, a complete rewrite of how they do DVR functionality IS. And it DOES make a differenece whether they are still infringing or not. If they ARE still infringing (and my intrepretation says they aren't) - then Echo should get penalized. If they aren't infringing with the new s/w, then Echo is NOT in contempt, as much as you would like to say they are.

As far as it being a "surprise" to the court - I think not. See James' post just above.


----------



## Greg Bimson

scooper said:


> WHile I agree a 1-byte change is not really in the spirit of more than colorably different, a complete rewrite of how they do DVR functionality IS. And it DOES make a differenece whether they are still infringing or not. If they ARE still infringing (and my intrepretation says they aren't) - then Echo should get penalized. If they aren't infringing with the new s/w, then Echo is NOT in contempt, as much as you would like to say they are.


I am hoping you are understanding what I am trying to say...

Will any modification of software even be addressed in the 4 September hearing?

No.

DISH/SATS will try to argue that changing the software on "Infringing Products" no longer makes them "Infringing Products". The possibility that the new software makes the "Infringing Products" "more than colorably different" and possibly no longer infringing appears to be off the table.

I finally read the TiVo motion. It is fairly well written. Heck, the introduction alone should be damning enough.


----------



## scooper

Greg Bimson said:


> I am hoping you are understanding what I am trying to say...
> 
> Will any modification of software even be addressed in the 4 September hearing?
> 
> No.
> 
> DISH/SATS will try to argue that changing the software on "Infringing Products" no longer makes them "Infringing Products". The possibility that the new software makes the "Infringing Products" "more than colorably different" and possibly no longer infringing appears to be off the table.
> 
> I finally read the TiVo motion. It is fairly well written. Heck, the introduction alone should be damning enough.


As soon as the judge says contempt - it's an issue as "More than colorably different" = allowed workaround = needs it's own trial to determine infringement or not.


----------



## Greg Bimson

scooper said:


> As soon as the judge says contempt - it's an issue as "More than colorably different" = allowed workaround = needs it's own trial to determine infringement or not.


As jacmyoung is finding out, there are other versions of contempt besides ongoing infringement. One of those versions of contempt would be following the Court's clear and concise directive, which in this case is to simply disable the "Infringing Products" until TiVo's Time Warp patent expires.

I will easily admit we need to see DISH/SATS' brief, to see if they can find case law besides simple "modified" products, which usually involve a new product being released with modifications.

If "it's an issue as "More than colorably different" = allowed workaround = needs it's own trial to determine infringement or not", why would contempt even be addressed without determining the "colorably different" issue?


----------



## jacmyoung

TexasAg said:


> ...By arguing this point, Tivo almost gives strength to Echo's argument that the court does need to consider the modifications to the devices in deciding contempt. If anything, these cases would appear to say that Tivo could get the modified DVRs under a second injunction, which would mean that Echo wouldn't be held in contempt for the first injunction. I don't see how these cases help Tivo since, as I said, I don't think Echo ever argued that the court doesn't have the authority to review the modified devices. (Note: I could be wrong here - it's just that I don't remember Echo ever saying the court lacked authority over the modified DVRs. I'm sure Curtis can point out if that happened)...


You are correct, DISH did ot say such thing, DISH never "attacked" the injunction.

Indeed if one only reads the two cases cited by Tivo, in each case the modified device was reviewed by the court and found to be still within the scope of the injunction, before the contempt ruling or a second injunction order. In both cases, as well as all other cases I have researched, they all demonstrated the necessity to review the modified products, not ingnore them, during the contempt proceedings.

As far as those two cases are not the meat of the argument, I have not seen any successful argument not based on case law. Even when trying to attack the defendent's character, which is hardly a wise thing to do during the trial phase or contempt phase, but even when such tactic is used, prior cases must still be used to draw support.

This is especially true during any appeal, and this Circuit Court has show its reputation to stick to past cases. When one read this Circuit Court's opinions on the appeals, one can't help but be impressed by its unwillingness to be drawn into any emotional pleas. It always sticks to past cases, or past opinions itself expressed, whether upholding a district court ruling, or overturning one.


----------



## jacmyoung

Greg Bimson said:


> ...why would contempt even be addressed without determining the "colorably different" issue?


The problem is you simply cannot find even one instance in which colorable difference issue was not addressed on contempt. In essence, you are asking the judge to make history, and asking the Circuit Court to embrace such history making ruling.

The problem is most of the time the judges do not make history, and almost never, have I seen this Circuit Court, ever embraced a history making ruling.

You asked then why the judge did not include a discovery of colorable difference item in the next meeting, because Tivo only asked for clarification of the face of the injunction. You are all too focused on Tivo's latest motion, but remember during the actual meeting, Mr. Chu said nothing except asking for clarification, and the judge granted that wish, rightfully so. Go back and read the 5/30 transcript and you will see what I mean. And Tivo's latest motion of course is to try to persuade the judge to clarify the face of the injunction in their favor. It is historical, unprecedented, that is why Tivo had no prior case to cite. The only two cases they cited actually land support to DISH's argument.

The clarification can go either way.

The judge can say DISH is in contempt on the face of injunction, then all things will likely be on hold while DISH appeals. The judge can also find DISH not in contempt on the face of the injunction, then Tvio's discovery will be granted to continue, because that was exactly what the judge said, remember? If the judge was certain to give out a clarification in Tvio's favor, he would not have said we would get to the discovery later, after my clarification.

The type of discovery can vary if DISH is not in contempt.

If Tivo seeks a second contempt hearing on the new software, a discovery of the new software colorable difference issue will follow.

If Tivo seeks a discovery on the new software infringement issue, a new trial will have to be arranged. Of course the above are only my best guesses in an attempt to answer your such continuing question.


----------



## nobody99

jacmyoung said:


> The problem is you simply cannot find even one instance in which colorable difference issue was not addressed on contempt.


And you can't find one where it was addressed. Your point?


----------



## nobody99

Here's a few points to ponder:

1. The "more than colorably different" so-called "standard" is used when _writing an injunction_, not when _enforcing_ it. I already posted an appeals court case that explains this. Perhaps in an appeal the court might find the injunction overly broad, but certainly a Judge is not going to find his own injunction overly broad.

2. Judge Folsom _did_ use this standard by explicitly using the term to prevent _future_ infringement by _new devices._ It is in the second paragraph of orders: "and all other products that are only colorably different therefrom in the context of the Infringed Claims"

3. The "only colorably different" language is _not_ used when the order is given to shut down _existing_ DVRs.

I cannot imagine that the Judge somehow accidentally omitted the "colorably different" terminology for point #3. So let's just assume, for the sake of argument, that I'm right about the _judge's_ intent (regardless of whether or not you think he's right). That means its a foregone conclusion that the Judge Folsom will find DISH in contempt, because that's what he intended all along.

As far as why TiVo brought up the "secret software" DISH was working on without informing the court, I have a guess. DISH will try to argue the interpretation of "Infringing Products" the way DISH fans have beaten to death here, saying, in effect, that the new software means the eight named devices are no longer an "Infringing Product."

"But wait" says the Judge. "At the hearing to stay the injunction, you made it very clear that you would suffer great financial harm if the injunction were not stayed. You would lose up to $90 million a month, and perhaps half of your DVR customers would leave."

DISH would answer, "that's right, your Honor."

The Judge would then ask, "Is it true, as TiVo points out, you had already written the replacement software before that hearing, and already had multiple legal opinions that said the software no longer infringed?"

"Yes your honor" DISH says

The Judge, getting more angry, "Can you explain to me how today you believe that a simple software download is _allowed_, but during hearing to stay the injunction it was not even a possibility? Instead of losing $90 million a month, instead of losing 2 million customers, you could just download the new software that was already written and, according to you, not infringing?"

"Uhm, well..."

"You can't have it both ways. I've heard enough. You will have my decision in five business days."

At this point, DISH will have to count on another stay of the injunction during appeal. And that's a pretty freakin' big gamble.


----------



## nobody99

Let's explore the completely hypothetical case of jacmyoung's dream outcome of this trial: that DISH will not be held in contempt, that the DVRs will never be shut off, and they will all be determined more than colorably diffent, and a new trial finds them non-infringing. Let me also just say, for jacmyoung's benefit, that in no way do I expect this to be the outcome. I just want to explore how painful even a best-case scenario is for DISH.

We still have the sticky little issue that DISH _was_ in contempt until the new software was loaded.



TiVos Contempt Motion said:


> Instead, EchoStar started downloading the modified software to its subscribers at the end of 2006 and continued the process throughout 2007


Let's say for the sake of argument that there were 3 million DVRs on October 8, 2006 (the date the DVRs' funcionality should have been turned off).

Let's say that DISH started sending updates on September 8 - the day of the injunction - and it took six months to complete. That would mean 500,000 receivers per month get updated.

That means we can estimate "infringing months" which would be the total number of months dvrs infringed.

1 month: 2,500,000
2 month: 2,000,000
3 month: 1,500,000
4 month: 1,000,000
5 month: 500,000

Total 7,500,000 Infringing months. Just to get it out of the way, I am absolutely guessing at the number. It is somewhere more than zero and less than one billion, and I'm guessing. Ok?

Those are months that infringing software was running, fully in contempt of court.

If the Judge's intent has always been that the eight named DVRs were to be shut down permanently, the award on these particular DVRs is pretty much safe from appeal unless he awards an ungodly amount of money. Might he be especially punitive with these? Especially in light of the fact that argument given by DISH to stay the appeal was, in fact, a lie?



TiVos Contempt Motion said:


> In patent cases, courts are not bound by the Patent Act in calculating damages for contempt ("In dealing with a civil contempt proceeding the district court was not bound by the provisions of [the Patent Act]. Rather it was free to exercise the inherent discretion possessed by a court to correct willful violations of solemnly passed orders.").
> 
> Awarding multiple damages for contempt of an injunction is often appropriate.
> Disgorgement of profits may be required to achieve full remedial relief. ("_n a proceeding for civil contempt
> for disobedience to an injunction granted in an infringement suit, the profits derived from the violation of the injunction are recoverable.")
> _


_

So does Judge Folsom aware $5 per month per DVR still infringing? $10? $20?

And it brings up another problematic issue. What is DISH says "we loaded new software on all our DVRs on September 7." How do you prove that? Since the DVR is already assumed to be infringing, how would the court verify DISH's evidence of the date of the software download? There'd be a big incentive for DISH to fudge numbers.

How can the court not say that the DVRs are not infringing until DISH tells the court "we've loaded new software?" And how can DISH say "we loaded new software two years ago, Judge!"

Isn't there a case that the judge will say "you're no longer in contempt because as of today you've presented evidence that you've done as you've said with new software. However, I'm awarding TiVo treble damages for three million DVRS for the past two years."

How does that situation get resolved?_


----------



## Greg Bimson

jacmyoung said:


> The problem is you simply cannot find even one instance in which colorable difference issue was not addressed on contempt. In essence, you are asking the judge to make history, and asking the Circuit Court to embrace such history making ruling.


No, the problem is that most cases the injunction's language is simply obeyed.

In this case, it is rather clear that DISH/SATS is interpreting parts of the injunction in their favor, and it gives the appearance that they are not obeying the injunction. Therefore, instead of worrying about contempt for continuing to infringe, this is a different kind of contempt. And just to prove my point...


jacmyoung said:


> Through my prior researches I had come to believe that to find the infringer not in contempt, the colorable difference issue had to be addressed. And for that reason I have tried to understand why the 9/4 hearing lacked such item.


Because TiVo has not filed a contempt motion regarding continuing infringement. It is because TiVo has filed a motion regarding "prima facie" violations of a standing injunction.

So, you are already stating that the Court is trying to "make history", since the "more than colorably different" standard isn't even being addressed. There are many here that understand and believe that the contempt motion filed by TiVo uses a different standard that doesn't require a ruling on any modified receivers and their "more than colorably different" status.


----------



## James Long

Greg Bimson said:


> Will any modification of software even be addressed in the 4 September hearing?
> 
> No.


To the extent of "does modification of software convince the court you're not in contempt" the answer is YES. That point _WILL_ be considered. The details of the specific modifications DISH is claiming won't be addressed ... but modification of software will be discussed on the conceptual level.



nobody99 said:


> "But wait" says the Judge. "At the hearing to stay the injunction, you made it very clear that you would suffer great financial harm if the injunction were not stayed. You would lose up to $90 million a month, and perhaps half of your DVR customers would leave."
> 
> DISH would answer, "that's right, your Honor."
> 
> The Judge would then ask, "Is it true, as TiVo points out, you had already written the replacement software before that hearing, and already had multiple legal opinions that said the software no longer infringed?"
> 
> "Yes your honor" DISH says


Sorry to throw your fan fiction off track, but the answer is "No, your Honor. The team began investigating software changes that would avoid infringing on Tivo's patents but the process was not complete. Replacement software was not written, nor was the success of the writing process guaranteed at that time. The new code was still at the concept stage."


----------



## nobody99

James Long said:


> Sorry to throw your fan fiction off track, but the answer is "No, your Honor. The team began investigating software changes that would avoid infringing on Tivo's patents but the process was not complete. Replacement software was not written, nor was the success of the writing process guaranteed at that time. The new code was still at the concept stage."


Hate to be the bearer of bad news for you, but let's look at this as without emotion, objectively, and logically. I know its a stretch for DISH fans, but hey, it's fun, so give it a try.

DISH effectively told an appeals court judge it would be impossible to work around the patent.

Just _a few weeks later_ they were downloading supposed non-infringing software.

So one of two things is true: they misrepresented the difficulty of a workaround back then, or the work around is not as complicated as they say and still infringes.

James, I do programming for a living. Programming is 1/3 design, 1/3 coding, and 1/3 testing. If they had already received legal opinion about the validity of the workaround -- they had already gone far down this path. For you to say that it was still "at the concept stage" is ludicrous.

And by the way, if you stop with the personal jabs ("throw your fan fiction off track") I'll stop with mine. Can we please try to have an adult conversation?


----------



## jacmyoung

Let's be clear about one thing, there are basically two different interpretations offered here. On our side, the interpretation gets DISH out of the contempt, because based on the Circuit Court's *requirement* as far as how an injunction must be *proscribed*:



jacmyoung said:


> http://www.ll.georgetown.edu/federal/judicial/fed/opinions/04opinions/04-1014.html
> 
> "...Therefore, *the only acts* the injunction may prohibit are *infringement of the patent by the adjudicated devices * and *infringement* by devices not more than colorably different from the adjudicated devices. In order to comply with Rule 65(d), the injunction *should explicitly proscribe only those specific acts*."


Based on the above higher court's requirement, the injunction is perfectly logical under our interpretation:

The "Infringing Products" refer to the *"adjudicated devices"* i.e. DP501... means those products that had infringed at the time the injunction was *"proscribed"*, and at the time the Circuit reaffirmed the injunction.

And "...*The* DVR functionalities..." in those Infringing Products that are required to be disabled, refer to *the* DVR functions that infringed at the time the injunction was *"proscribed"*, and at the time the Circuit reaffirmed the injunction.

And if the same *"adjudicated devices"* i.e. DP501..., no longer infringes, they no longer are Infringing Products, because the adjudicated devices, according to the above higher court's requirement, must be infringing on the patent to be within the scope of the injunction.

And if the DVR functions in the current *"adjudicated devices"*, i.e. DP501..., no longer infringes, then they are no longer *"the"* DVR functionalities *"proscribed"* in the injunction.

Our interpretation conforms to the above higher court's requirement perfectly, and we'd like to think Judge Folsom, as good as he is, as reputable and experienced as he is, must had the knowledge of the above higer court's requirement when he *"proscribed"* the above specific acts in his injunction, because those acts were infringing acts, but if the current acts are non-infringing, then the current acts are not the same as those proscribed acts.

Of course on the other side you may insist a different interpretation to fit your wish. What you cannot say is our interpretation is any less than yours. In fact your interpretation has no basis, you admitted yourselves, it has no precedence.


----------



## nobody99

jacmyoung said:


> Of course on the other side you may insist a different interpretation to fit your wish. What you cannot say is our interpretation is any less than yours. In fact your interpretation has no basis, you admitted yourselves, it has no precedence.


You're missing the forest for the trees. For simplicity's sake, I will momentarily set aside the fact that I disagree with your assertion that the CAFC's guidelines apply to the case of shutting off existing functionality in existing devices. For the sake of argument, suppose that you are absolutely right about that.

The injunction _already_ references more than colorably different. In fact, that same paragraph references that it granted this particular order under Rule 65(d).

The next paragrah does _not_ mention colorably different, nor does it reference Rule 65(d).

What I am _suggesting_ is that the judge intended the "shut off the DVR functionality" to be exactly what he says.

So we come to September 4. Are you suggesting that Judge Folsom is goign to look at his injunction and decide that he wrote it wrong? No, he's going to find contempt.

And that's where DISH may get in trouble. The appeals court, _even if_ they find the injunction overly broad, is not going to be pleased with DISH's failure to comply.


----------



## Curtis52

nobody99 said:


> The next paragrah does _not_ mention colorably different, nor does it reference Rule 65(d).
> 
> What I am _suggesting_ is that the judge intended the "shut off the DVR functionality" to be exactly what he says.


If the Infringing Products were disabled and if sales of DVRs that were no more than colorably different was prohibited then what sense would it make to say: "disable Infringing Products and those that were not more than colorably different". Wouldn't that be redundant? How would the "not more than colorably different" units get into the households if sales were prohibited?


----------



## Greg Bimson

jacmyoung said:


> And if the DVR functions in the current "adjudicated devices", i.e. DP501..., no longer infringes, then they are no longer "the" DVR functionalities "proscribed" in the injunction.


That's all well and good.

Except the Courts aren't looking at the software. So no one cares if the modified software infringes. Which means without any analysis of the "modified products", everything is based off of the last analysis of the "Infringing Products", which were that they infringed and should have their functions shut down.


jacmyoung said:


> The "Infringing Products" refer to the "adjudicated devices" i.e. DP501... means those products that had infringed at the time the injunction was "proscribed", and at the time the Circuit reaffirmed the injunction.


That is one of the most ridiculous statement DISH/SATS made. The software functionality alone can be changed over and over on a daily basis. The injunction clearly states to shut them down.

That is the "we were guilty then, but we are not guilty now" defense. Except no one is checking anything regarding "but we are not guilty now", which simply means that "we were guilty then" and the injunction must be followed.

There will not be any analysis of the new software. So the only software that is in the record is the one that returned a guilty verdict and an injunction.


----------



## nobody99

Curtis52 said:


> If the Infringing Products were disabled and if sales of DVRs that were no more than colorably different was prohibited then what sense would it make to say: "disable Infringing Products and those that were not more than colorably different". Wouldn't that be redundant? How would the "not more than colorably different" units get into the households if sales were prohibited?


Right back at you: if it is redundant, then why have a "shut off the DVR functionality" order at all?


----------



## Curtis52

nobody99 said:


> Right back at you: if it is redundant, then why have a "shut off the DVR functionality" order at all?


The current shut off order is not redundant. You pointed out that the "colorably different" language isn't in that paragraph. It would be redundant and unnecessary. That's why it isn't there.


----------



## jacmyoung

Greg Bimson said:


> That's all well and good.
> 
> Except the Courts aren't looking at the software. So no one cares if the modified software infringes. Which means without any analysis of the "modified products", everything is based off of the last analysis of the "Infringing Products", which were that they infringed and should have their functions shut down.That is one of the most ridiculous statement DISH/SATS made. The software functionality alone can be changed over and over on a daily basis. The injunction clearly states to shut them down.
> 
> That is the "we were guilty then, but we are not guilty now" defense. Except no one is checking anything regarding "but we are not guilty now", which simply means that "we were guilty then" and the injunction must be followed.
> 
> There will not be any analysis of the new software. So the only software that is in the record is the one that returned a guilty verdict and an injunction.


No one will be discussing the new software because it needs not be discussed, the next meeting is to clarify the meaning of the injunction, and I have laid out two possible interpretations, one from you, one from me. None of such interpretation requires looking at the software, nor hardware.

All it does is to clarify two things:

Is the "Infringing Products" referring to the products that infringed at the time, or does it mean that product, once infringed, will alway infringe, no matter what happenes to it later, and therefore will always be the Infringing Products.

Are "the DVR functions" referring to the functions that infringed at the time, or any and all DVR fucntions, even if those that do not infringe.

That is all. That is what the next meeting is going to clarify, and to clarify the above requires no other evidence really, only the judge's words, he will tell us what those two terms mean.

Depending on what his interpretation will be, then the next things can happen.


----------



## Greg Bimson

jacmyoung said:


> No one will be discussing the new software because it needs not be discussed, the next meeting is to clarify the meaning of the injunction, and I have laid out two possible interpretations, one from you, one from me. None of such interpretation requires looking at the software, nor hardware.


Correct.

And if upon the so-called clarification, it is believed that "Infringing Products" is simply the definition of the eight models given in the injunction, and "the DVR functions" simply disabling all DVR functions now until the end of the Time Warp patent expires, then DISH/SATS would be found in contempt, without ever looking at the software.

We've had this discussion for months. And we've finally hit to the point many of us were trying to make: the software modifications are immaterial to the injunction, as those will not be examined.


----------



## jacmyoung

Greg Bimson said:


> Correct.
> 
> And if upon the so-called clarification, it is believed that "Infringing Products" is simply the definition of the eight models given in the injunction, and "the DVR functions" simply disabling all DVR functions now until the end of the Time Warp patent expires, then DISH/SATS would be found in contempt, without ever looking at the software.
> 
> We've had this discussion for months. And we've finally hit to the point many of us were trying to make.


If you go back you will not be able to find anywhere I had denied such possibility you have presented, we are only saying we believe the other interpretation should prevail and therefore DISH should not be in contempt on the so called "face of the injunction" Tivo or you like to see, rather more likely what we like to see.

And we have explained why, with all prior cases and Circuit Court's opinions as our support.

You have admitted you have no prior cases to back you up other than your own interpretation of the injunction.

And I must admit, while I disagree with you, you have mostly been on topic, to the point, and be able to seek logic.

Unlike Tivo, in its latest motion, they talked little about the issue of why their "face of the injunction" must prevail, instead Tivo spent much of it motion accusing DISH of this and that, none of which had anything to do with the topic to be discussed in the next meeting: what is the meaning of the judge's words, what does the face of the injunction really mean?


----------



## James Long

nobody99 said:


> DISH effectively told an appeals court judge it would be impossible to work around the patent.


Effectively or actually? Is effectively just your humble opinion?


> Just _a few weeks later_ they were downloading supposed non-infringing software.


Do you have precise links for that "few weeks" timeline? Creating and deploying the new software was not a "few week" process (unless your idea of few weeks is a few months or longer).


> So one of two things is true: they misrepresented the difficulty of a workaround back then, or the work around is not as complicated as they say and still infringes.


Or they were surprised by the easiness of the "workaround". They simply could have underestimated the difficulty ... not "misrepresented" (you like calling DISH liars without proof) but misunderstood.


> James, I do programming for a living. Programming is 1/3 design, 1/3 coding, and 1/3 testing. If they had already received legal opinion about the validity of the workaround -- they had already gone far down this path. For you to say that it was still "at the concept stage" is ludicrous.


How can I answer this without returning the insult? For you as a claimed programmer for some company to believe that you can speak for all programmers of all companies is "ludicrous". At what point was the legal opinion was written and where were they when the software was released are two different points?

Even using your "expert" opinion ... the 1/3 design level could have been complete or complete enough when the legal opinion was written, with no guarantee that coders could get it to work or testing would approve it.

In your experience are the 1/3rds equal in time and effort? Have you ever taken months to get the coding right to overcome all problems on a design that was pretty simple? Have you ever had a project work much smoother than expected or take much longer than expected? It seems that someone who programs for a living would have experience with projects that didn't go as planned.

BTW: Since you have opened yourself up as an "expert" on this matter it seems only fair to ask these questions ... or you can withdraw your "expert" status and go back to being another guy on the internet (like me).


----------



## Greg Bimson

jacmyoung said:


> If you go back you will not be able to find anywhere I had denied such possibility you have presented, we are only saying we believe the other interpretation should prevail and therefore DISH should not be in contempt on the so called "face of the injunction" Tivo or you like to see, rather more likely what we like to see.
> 
> And we have explained why, with all prior cases and Circuit Court's opinions as our support.


We are now over 2,030 posts into this, and you now want to say that you have NOT "denied such possibility you have presented"?

From your very first post on this thread...


jacmyoung said:


> Now obviously DISH will respond and I don't know how the hardware non-infringement will be used, but DISH will most certainly argue that their new software is more than colorably different so the judge should not rule DISH in contempt, rather arrange the discovery of the new software claim, and the injunction should be stayed while the judge pursues such course.


Or from post 61:


jacmyoung said:


> Because even if you are correct that only the language of the injunction should be relied on in a contempt hearing, the issue of a new device will always be the most crucial evidence in the proceeding to be heard, because that is usually what a contempt hearing is all about, to determine whether the new device is more than colorably different or not.


You may not have completely denied it, but so strongly argued it that you never believed that there are many different versions of a contempt hearing.

Or simply try post 111:


jacmyoung said:


> What do you mean? That DISH will present the new software but the judge will not hear such new software until after he issues a contempt ruling?
> 
> If so the judge will not have a "after" chance to discover the new software, because the appeals court will have to hear DISH, and if the appeals court agrees with DISH, it will be the appeals court that will look at the new software.
> 
> A contempt ruling will be the ticket for DISH to get the appeals court to hear it, if the judge does not want to hear it. *The judge can not "delay" the review of the new software.* He either hears it during the contempt hearing, or not hear it and issue a contempt ruling therefore allow DISH to go to the appeals court.


This was a denial that my argument was even possible. Yet it appears the judge has delayed the review of the new software.


----------



## peak_reception

James Long said:


> The question was asked of the judge BEFORE he wrote the injunction two years ago.


 And BEFORE Judge Folsom wrote the injunction he rejected Echo's hoped-for wording that he only enjoin the infringing software.


----------



## jacmyoung

Greg Bimson said:


> We are now over 2,030 posts into this, and you now want to say that you have NOT "denied such possibility you have presented"?
> 
> From your very first post on this thread...Or from post 61:You may not have completely denied it, but so strongly argued it that you never believed that there are many different versions of a contempt hearing.
> 
> Or simply try post 111:This was a denial that my argument was even possible. Yet it appears the judge has delayed the review of the new software.


First off, thank you for your willingness to dig out my old posts, that means a lot that you do value my input.

Keep in mind that none of the above posts had denied your possibility, and only very recently both you and I had begun to ask the question, why the colorable difference will not be discussed in the next meeting. I must admit I was baffled myself, because through my research I was not able to find a single case where colorable difference issue was not even discussed in a contempt forum.

Then I realized, the 9/4 hearing is not really a contempt proceeding I have read before, rather a clarification process, though one of the two interpretations will lead to a contempt, but not the other. Usually a contempt proceeding, while shorter than a trial, much shorter, but still last some time while each side present evidence and experts to testify. This one could only last a little over an hour.

Not only that, through my continued research I found out the Circuit Court's opinion that I had not seen before, the latest one I had quoted, in which it clearly specifies what may or may not be prohibited in an injunction.

It was through the continuing self education, through research, not insisting on being correct and refuse to look at other evidence, but my willingness to read the outside evidence, the additional court opinions, and also the willingness to read your posts, and saw you logic that made sense, that helped me to change along the way.

And as we continue to gain knowledge, we continue to answer questions that we were not able to before.

For that reason, I rarely go back to dig up other people's old posts, rather respond to their latest ones, because I believe we all evolve over time, gain more knowledge and be closer to truth than before. It is what your latest position that I shall value more so than anything you said before.

I am not perfect, I made mistakes more than I care for before, and I will continue to make mistakes, I am only human. I do not argue for argument sake, rather seek evidence, and am willing to listen to other's evidence, even if those evidence may prove me wrong, that is just fine with me.

Remember at one point I almost completely reversed myself, after some extensive reading of a book, and then realized I was reading it wrong, but that experience tought me a great deal, allowed me to read more carefully and more used to those dry and boring legal jargons, and not falling asleep while doing those readings and misquote or misunderstand them. I was able to research and read more effectively.

I will no doubt still misunderstand in the future, but hopefully will do so less frequently because the lessons learned.


----------



## peak_reception

HobbyTalk said:


> Doesn't seem that massave to me. It would only take 25 people 2 months to amass 4 man years of work.


 My point is that it's massive when Echo wants it to be massive, and modest when they want it to be modest.

When wanting Judge Folsom to accept it into the case on May 23 they make it seem like a massive undertaking so that the judge doesn't reject it outright as too little, too late, to the case.

When wanting to downplay whether they should've asked for guidance or pre-clearance they say either what James Long says, 1) that just asking the question itself (even though they were turned down) amounts to notification. Or 2) they pretend that at the time they had no idea if their little project would bear fruit or not so they didn't think it even merited mention (even though they bought their 3 letters from patent attorneys at about the same time opining that they no longer infringe).

Same game with their appeal to CAFC. On the one hand they argue that the injunction would force them to shut down DVR functionality in millions of receivers, thus causing terrible hardship to them and their customers. While at the same time having no intention whatsoever to disable DVR functionality due to their secret software project which, by the time of the appeal, they felt certain would escape infringement (definitely had the 3 letters by then).

Having it both ways and stalling for time at every opportunity, playing hide and seek with the judge over software modification, and gumming up the courts (not just in this case) with all of their tactics and gamesmanship. None of it is against the law, but a lot of it is *acting in bad faith*. In a contempt hearing the judge can and probably will take this behavior into account when weighing his decision. That's why TiVo included it. We'll see.... maybe..... someday.....


----------



## nobody99

James Long said:


> Effectively or actually? Is effectively just your humble opinion?


"Effectively" has nothing to do with whether or not it's _my_ opinion.

From dictionary.com,

"2. For all practical purposes; in effect: Though a few rebels still held out, the fighting was effectively ended."

When DISH tells that court that it will lose $90 million _per month_, or that three million "innocent families" will need to suffer and have to replace their DVRs as a result of the shutdown, what _other_ conclusion could it draw? Their statements led the court to believe there was no alternative, and DISH believed it _must_ disable the infringing DVRs as the injunction stated.



> Do you have precise links for that "few weeks" timeline?


I don't have precise "few weeks" timeline, but the effective start date of the injunction was October 8 (the injunction issued on September 8 effective 30 days after issuance). From TiVo's motion for contempt "Instead, EchoStar started downloading the modified software to its subscribers at the end of 2006 and continued the process throughout 2007"

So a few weeks from October 8 seems a reasonable guess to me.



> Creating and deploying the new software was not a "few week" process (unless your idea of few weeks is a few months or longer).


I never suggested it was; in fact, just the opposite. I suggested that DISH rolled out the software at an average rate of 500,000 per month.



> Or they were surprised by the easiness of the "workaround". They simply could have underestimated the difficulty ... not "misrepresented" (you like calling DISH liars without proof) but misunderstood.


How could DISH have multiple legal opinions that the workaround does not infringe without actually having developed the workaround? Honest question!



> How can I answer this without returning the insult?


Personal message has been sent regarding this.


----------



## peak_reception

TexasAg said:


> I don't think Echo ever argued that the court doesn't have the authority to review the modified devices. (Note: I could be wrong here - it's just that I don't remember Echo ever saying the court lacked authority over the modified DVRs. I'm sure Curtis can point out if that happened).


 They might not have explicitly argued that the court [i.e. Judge Folsom] doesn't have the authority to review their modified software, but two facts implicitly make that their position: 1) that they never asked for guidance or authorization for their "design-around," and 2) that they immediately filed in DE after the status meeting in TX asking for a ruling that their new software no longer infringes.



> Anyway, I'll be out of contact for a couple weeks.


 We'll see if you can stay away, incommunicado, for that long. None of the rest of us can 



> Can't wait to see Echo's response.


 You'll have to


----------



## nobody99

James Long said:


> Do you have precise links for that "few weeks" timeline?


From the Delaware suit:

"...began deployment of their new DVR product to customers in the field on October 24, 2006"

So it was, in fact, sixteen days after the injunction took effect.


----------



## peak_reception

jacmyoung said:


> I hope you realize the judge is about law, whether the law is broken or not, no more no less.


 A judge is also about _judging_ whether a litigant is *acting in bad faith.* It can hurt a party badly if that's how the judge sees it.


----------



## peak_reception

jacmyoung said:


> Everyone noticed that, not just you...


 I didn't say no one else noticed.



> ...at least he got to talk to the judge and the judge listened, noticed the judge did not even want to talk to Mr. Chu?
> He was interrupted by the judge each time, did not get to talk much at all. And that was even after Mr. Chu started his opening with, we got good news for you judge...


 I think you're reading too much into that.


----------



## James Long

peak_reception said:


> When wanting to downplay whether they should've asked for guidance or pre-clearance they say either what James Long says, 1) that just asking the question itself (even though they were turned down) amounts to notification. Or 2) they pretend that at the time they had no idea if their little project would bear fruit or not so they didn't think it even merited mention (even though they bought their 3 letters from patent attorneys at about the same time opining that they no longer infringe).


#1 - DISH was attempting to set up the injunction so it would be easier to get their products back to market once they ceased to infringe. They believed that a software update could remove any code that the court would consider infringing and wanted the court to write the injunction accordingly. As with many pleas to courts, they were unsuccessful. But they did raise the concept.

#2 - DISH did not have a finished product ... They were not "pretending". They were not "hiding information". If they were asked to produce the software at that _point_ of time they would not have been able to as the software was not complete. You're asking DISH to go before the court and say "we have new software that doesn't infringe" BEFORE the software is ready? Apparently you want DISH to commit perjury? They didn't have software ... just an idea that a few experts believed would lead to non-infringing software.

Tivo's patent didn't guarantee that they had a working product to speak of. Just an idea.


----------



## Greg Bimson

jacmyoung said:


> It was through the continuing self education, through research, not insisting on being correct and refuse to look at other evidence, but my willingness to read the outside evidence, the additional court opinions, and also the willingness to read your posts, and saw you logic that made sense, that helped me to change along the way.


So in other words, you've formulated a position without any basis in law, then found the law that supports your opinion. Got it. Because...


jacmyoung said:


> Keep in mind that none of the above posts had denied your possibility, and only very recently both you and I had begun to ask the question, why the colorable difference will not be discussed in the next meeting. I must admit I was baffled myself, because through my research I was not able to find a single case where colorable difference issue was not even discussed in a contempt forum.
> 
> Then I realized, the 9/4 hearing is not really a contempt proceeding I have read before, rather a clarification process, though one of the two interpretations will lead to a contempt, but not the other.


There is a motion now before the court, to rule on "prima facie" contempt of an injunction. Each side will present its argument on 4 September, which will lead to a ruling sometime after it.

Again, the new software will not enter the picture. Yet.


----------



## HobbyTalk

peak_reception said:


> And BEFORE Judge Folsom wrote the injunction he rejected Echo's hoped-for wording that he only enjoin the infringing software.


And rightfully so as at the time both the software AND hardware were found to infringe. That has changed.


----------



## Greg Bimson

James Long said:


> #2 - DISH did not have a finished product ... They were not "pretending". They were not "hiding information". If they were asked to produce the software at that point of time they would not have been able to as the software was not complete. You're asking DISH to go before the court and say "we have new software that doesn't infringe" BEFORE the software is ready? Apparently you want DISH to commit perjury? They didn't have software ... just an idea that a few experts believed would lead to non-infringing software.


But if you are planning to update infringing products with modified software that you would like the Court to consider, so that infringing products become non-infringing products, you notify the Court of your actions.

Doesn't matter if it is ready or not. You don't spring it on the Court after the injunction has already taken effect, in full force.


----------



## James Long

nobody99 said:


> "Effectively" has nothing to do with whether or not it's _my_ opinion.


So it is your opinion.

"DISH effectively told an appeals court judge it would be impossible to work around the patent."

Where? Exactly? Find the EXACT text where DISH (not you, not Tivo) said it was "impossible" to work around the patent. Apparently it is all your opinion of what DISH said - and opinions are just opinions, not facts.


> When DISH tells that court that it will lose $90 million _per month_, or that three million "innocent families" will need to suffer and have to replace their DVRs as a result of the shutdown, what _other_ conclusion could it draw?


They could conclude that DISH did not have an immediate solution to the problem. That if the injunction was not stayed 30 days would not be long enough to put any solution in place other than complete DVR replacement.

Give DISH six months or more than a year and the software solution was a viable alternative - not just a hope.



> Their statements led the court to believe there was no alternative, and DISH believed it _must_ disable the infringing DVRs as the injunction stated.


At that narrow point in time DISH had no alternative software ready and therefore had no other option. As time lapsed during the appeals DISH was able to develop the software needed and get it to customers.



> How could DISH have multiple legal opinions that the workaround does not infringe without actually having developed the workaround? Honest question!


By looking at the patents ... which are concept, not proof of performance.


----------



## Greg Bimson

Hobby Talk said:
 

> And rightfully so as at the time both the software AND hardware were found to infringe. That has changed.


Yes, but the injunction, fully approved by the Court of Appeals, did not change.

You expect a collateral attack on an injunction that is now in full force and effect to actually work?


----------



## HobbyTalk

peak_reception said:


> My point is that it's massive when Echo wants it to be massive, and modest when they want it to be modest.


The amount of effort has no bearing. The wording in there is to impress the financal world, the public and internet keyboard cowboys. If it only took 2 monkeys 2 days to write a non-infringing work around, it would still be non-infringing. :lol:


----------



## James Long

nobody99 said:


> James Long said:
> 
> 
> 
> Do you have precise links for that "few weeks" timeline?
> 
> 
> 
> From the Delaware suit:
> 
> "...began deployment of their new DVR product to customers in the field on October 24, 2006"
> 
> So it was, in fact, sixteen days after the injunction took effect.
Click to expand...

But MONTHS after the issue was discussed with the judge.


----------



## HobbyTalk

Greg Bimson said:


> Yes, but the injunction, fully approved by the Court of Appeals, did not change.
> 
> You expect a collateral attack on an injunction that is now in full force and effect to actually work?


I don't really expect anything other then another 2k posts with people expressing their own personal biased opinion.


----------



## scooper

James Long said:


> By looking at the patents ... which are concept, not proof of performance.


You can come up with many "problems" that theoritically can be solved by a computer - but the practical application is rendered almost impossible to use (ever try running Windows 2000 on 128 MB of RAM ? MS says you can - but it's impossibly slow and sluggish to use - you really need a minimum of 256 MB of RAM - and generally - more is better). You can see this on MPEG decoding as well - I have a Sigma Designs Hollywood + MPEG decoder board, that we originally got with a 300 MHz Pentium II PC. Try to do DVD playback on 300 MHz is practically impossible - you need a high performance video board as a minimum, and 600 MHz +. The Hollywood board enabled that slow CPU and a "standard VGA video board" to do a pretty credible DVD playback.

In the same way, you can look as the Barton Media switch as the hardware implementation . What Dish had to do was come up with a CPU only process that bypassed the h/w , to some degree of success. Naturally, later models with a "better CPU" can do this better.


----------



## Greg Bimson

Greg Bimson said:


> Yes, but the injunction, fully approved by the Court of Appeals, did not change.
> 
> You expect a collateral attack on an injunction that is now in full force and effect to actually work?





HobbyTalk said:


> I don't really expect anything other then another 2k posts with people expressing their own personal biased opinion.


I've quoted a section of case law that is absolute; collateral attacks on injunctions are prohibited once they could have been addressed earlier, like upon appeal.

I realize that is opinion, but it seems more in line with the law than the millions of interpretations on the other side of the coing.


----------



## James Long

scooper said:


> You can come up with many "problems" that theoritically can be solved by a computer - but the practical application is rendered almost impossible to use ...


Exactly. Which is why DISH got their patent/legal advice based on the concept of having DVR software that worked without the Barton Media Switch - then proceeded to work out the details. They couldn't announce that they had "Barton Media Switch" free software until they had software ... which was many months after they started working on such software.

It would have been a waste of effort to finish work on "Barton Media Switch" free software before getting the patent/legal advice telling them that it was worth the effort.

It is like trying to get from point A to point B and being told that you can't take an access road that someone else owns. So you say (to your lawyer) "what if we go up that steep hill, over that rocky terrain and get to point B without crossing into that other person's property." As long as you don't infringe on their property the answer should be yes. So you draw up a map, file it as your idea (patent pending route for getting from A to B without using route C). Now comes the fun part ... building the actual vehicle that can climb the hill, survive the rocks and get to point B. Building the vehicle certainly takes longer that drawing the map.

It turns out that most of Dish's DVRs have enough horsepower to make that trip. The few that don't are the most impacted by the injunction.


----------



## peak_reception

HobbyTalk said:


> The amount of effort has no bearing. *The wording in there is to impress the financal world, the public and internet keyboard cowboys.*


 The wording in question was not in an Echo/DISH press release. It was shortly into their May 23 reply to TiVo's agenda, addressed to Judge Folsom. It looks like Echo was trying to impress the judge at what a Brobdingnagian project they undertook so that he wouldn't set aside the software modification as too little, too late (so far as the contempt hearing is concerned).



> If it only took 2 monkeys 2 days to write a non-infringing work around, it would still be non-infringing. :lol:


 Another issue, but yes that's true. And we still don't know if it still infringes or not. Once Echo is found in contempt we can explore that too


----------



## Curtis52

I can remember when people posted that the patent application itself was proof that Dish already had working software that didn't infringe. LOL


----------



## kmill14

jacmyoung said:


> As far as those two cases are not the meat of the argument, *I have not seen any successful argument not based on case law*. Even when trying to attack the defendent's character, which is hardly a wise thing to do during the trial phase or contempt phase, but even when such tactic is used, prior cases must still be used to draw support.


jacmyoung, maybe you missed the entire section III A titled Applicable Law.


----------



## Greg Bimson

Knowing how DISH/SATS operates, it probably took five man-years to change one letter of the code, then tell everyone the modification no longer infringes. 

The reality is that the modified software is not being reviewed for its legal status at this contempt hearing. So it doesn't matter if one byte or one billion lines of code were changed in the new software.


----------



## kmill14

jacmyoung said:


> All it does is to clarify two things:
> 
> Is the "Infringing Products" referring to the products that infringed at the time, or does it mean that product, once infringed, will alway infringe, no matter what happenes to it later, and therefore will always be the Infringing Products.
> 
> Are "the DVR functions" referring to the functions that infringed at the time, or any and all DVR fucntions, even if those that do not infringe.


Neither of these arguments are relevant to the legal argument TiVo brought up or needs to be addressed by E*. The "Infringing Products" is a title, nothing more, nothing less. It isn't assuming anything, other than the 8 products lumped into that title infringed and were ordered to be shut off.

E* can be found in contempt simply because they disobeyed that order. You can try to add "spirit", but there is no changing the wording of the injunction, and you are trying to add meaning to it that is not there.

There is no argument to be had on the "colorably different" standard, which you thankfully realize now, but suddenly you want to throw out a perfectly valid court decry on the "possibility" that already adjudicated devices and in the hands of end users no longer infringe, even though there is no case law to support it.


----------



## Curtis52

Greg Bimson said:


> I've quoted a section of case law that is absolute; collateral attacks on injunctions are prohibited once they could have been addressed earlier, like upon appeal.


TiVo seems to be pretty upset that the injunction doesn't require pre-approval of modifications. That sounds like a collateral attack.


----------



## nobody99

Emergency Motion For Stay of Appeal said:


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


James, I can't make it any clearer than this. DISH represented to the court that a stay meant the receivers' DVR functionality would be shut off. If we disagree, fine, we disagree, but I think I have a valid point.

As far as the dates are concerned - you are absolutely right, I had them wrong. The emergency stay motion was filed on August 18.



DISH Status Meeting Update said:


> *After testing the new software*, EchoStar submitted its new design to experienced patent counsel at Fish & Richardson, who issued a series of opinions





TiVo Contempt Motion said:


> EchoStar was so far along with the development of the modified software that EchoStar already had obtained formal written opinions of counsel (dated August 24 and September 1, 2006) regarding the software that EchoStar now contends does not infringe.


This means that not only was the software already _written_, it was already _tested_ when DISH asked for the emergency stay of the appeal. This timeline really cannot be disputed.

So my simple question remains. If DISH thought, on August 18, that it would be *required to disable the DVR functionality*, how can it think the software that had already been written, tested, and reviewed by legal counsel can suddenly change that belief once the stay was lifted?

So either DISH was being dishonest on August 18 for the sole purpose of getting the injunction stayed, or it did not believe the new software was a legal remedy. Which is it?


----------



## Greg Bimson

Curtis52 said:


> TiVo seems to be pretty upset that the injunction doesn't require pre-approval of modifications. That sounds like a collateral attack.


Not a request for "pre-approval for modifications", but that case law suggests that if DISH/SATS wished to keep "Infringing Products" active, that DISH/SATS should have addressed the Court about those changes.

I mean, take a look at DISH/SATS position, through their own lawyer, Harold McElhinny:

Good morning, Your Honor. Harold McElhinny, Damon Young, John Pickett and my partner, Joe Patino, who I think is new to the court.
..Without repeating any of the argument in our letter, our position is that this case, for all practical purposes, is concluded and should be concluded relatively quickly.

How can this case be over? DISH/SATS was found guilty of infringement on eight DVR models, defined in the injunction as "Infringing Products", and none of them have been disabled per the injunction order. Because the software in the "Infringing Products" was changed, but the Court was never notified?

How should the Court feel that DISH/SATS told Judge Folsom that an injunction to disable "Infringing Products" may harm 3 million customers and DISH/SATS' own bottom line, yet never told the Court about proposed changes to those Infringing Products, which still stand with a judgment and an injunction order against them?

Technically, DISH/SATS still hasn't notified Judge Folsom that the software was changed on the existing, installed DVR's. We make a big deal here about what DISH/SATS may have done, but within the court system one must still follow *procedure*.


----------



## Curtis52

Greg Bimson said:


> Technically, DISH/SATS still hasn't notified Judge Folsom that the software was changed on the existing, installed DVR's. We make a big deal here about what DISH/SATS may have done, but within the court system one must still follow *procedure*.


Huh? Judge Folsom didn't read what Dish submitted May 23? Dish said that it had "replaced its existing infringing software with redesigned software based on a novel approach" that they and third parties determined was non-infringing.


----------



## nobody99

Curtis52 said:


> Huh? Judge Folsom didn't read what Dish submitted May 23? Dish said that it had "replaced its existing infringing software with redesigned software based on a novel approach" that they and third parties determined was non-infringing.


Which is, I assume, why TiVo quoted the following in their contempt motion:



> "If a party can make himself a judge of the validity of orders which have been issued, and by his own act of disobedience set them aside, then are the courts impotent, and what the Constitution now fittingly calls the 'judicial power of the United States' would be a mere mockery." Gompers, 221 U.S. at 450.


----------



## Greg Bimson

Curtis52 said:


> Huh? Judge Folsom didn't read what Dish submitted May 23? Dish said that it had "replaced its existing infringing software with redesigned software based on a novel approach" that they and third parties determined was non-infringing.


After an injunction that said DISH/SATS had to shut down DVR functionality in eight models became in full force and effect. Yet the idea to change the DVR software was conceived well before the injunction was ever written.

The "Infringing Products" were adjudicated to be infringing. That is why the injunction was issued back in September, 2006.

The only difference between then and now is that some software may have been changed. The changes could be anywhere from one byte to one billion lines of code. None of this was made aware to the judicial system until 16 May, when TiVo launched their first attack regarding the status hearing, four weeks after the injunction took effect.

This new software remains unadjudicated, while there is an injunction which states to shut down DVR functionality. The contempt hearing regarding the perceived plain language violations of the injunction will not address the new software.

Is there any wonder why DISH/SATS tried forum shopping regarding their new software, by filing a lawsuit in Delaware, less than an hour after the 30 May status hearing?


----------



## Curtis52

Greg Bimson said:


> After an injunction that said DISH/SATS had to shut down DVR functionality in eight models became in full force and effect.


I'm still not clear on whether you agree. Do you feel that Dish has informed the judge about the software change or not?


----------



## James Long

Curtis52 said:


> TiVo seems to be pretty upset that the injunction doesn't require pre-approval of modifications. That sounds like a collateral attack.


And once again we're reminded that both DISH and Tivo would like to see the injunction modified ... to suit their respective selves. 



nobody99 said:


> Emergency Motion For Stay of Appeal said:
> 
> 
> 
> If the district court's injunction were not stayed, EchoStar *would be required* to disable the DVR functionality of DVRS installed in over three million households.
> 
> 
> 
> James, I can't make it any clearer than this. DISH represented to the court that a stay meant the receivers' DVR functionality would be shut off. If we disagree, fine, we disagree, but I think I have a valid point.
Click to expand...

At that moment in time when the statement was made it DID mean the shut off of receivers.



> This means that not only was the software already _written_, it was already _tested_ when DISH asked for the emergency stay of the appeal. This timeline really cannot be disputed.


Considering how long it took to roll the software to all receivers I'd consider any testing to be rudimentary ... just enough to say it could perform the function. Not something that DISH could release without serious harm to their business.

Yes, I know serious harm is exactly what some people want ... 



> So my simple question remains. If DISH thought, on August 18, that it would be *required to disable the DVR functionality*, how can it think the software that had already been written, tested, and reviewed by legal counsel can suddenly change that belief once the stay was lifted?
> 
> So either DISH was being dishonest on August 18 for the sole purpose of getting the injunction stayed, or it did not believe the new software was a legal remedy. Which is it?


While we're hazarding guesses why not: "DISH believed that the software while satisfying to lawyers would not be satisfying to their customers and implementation of the crude early form of the new software would have been equal to disabling their DVRs."

We don't know what level of testing it was at ... had anyone outside the lab seen it? Had it been through any of DISH's normal testing procedure. As a programmer I'm sure you've had projects where you were at a stage where "it runs" but it wasn't ready for prime time or release.

Perhaps they had software that was a legal remedy. Software that totally disabled DVR functionality would also be a legal remedy. But it was not a practical remedy when they still believed that they had not infringed and when they still had rights of appeal. It shouldn't have been an issue anyways. The District Court should have stayed their own injunction.


----------



## Greg Bimson

Curtis52 said:


> I'm still not clear on whether you agree. Do you feel that Dish has informed the judge about the software change or not?


DISH/SATS mentioned the new software in their brief regarding the status hearing on 23 May. DISH/SATS brought no motion to examine that software, as it relates to the "Infringing Products".

The only motion DISH/SATS has made is to ask for a clarification and a ruling regarding allowing the 721, 921 and 942 receivers be placed with end users and keep their DVR functionality active. There hasn't been a motion regarding the 501, 508, 510, 522 and 625.

If there is no motion pending nor a ruling from the court regarding the new software, how in the world could DISH/SATS expect to keep those receivers' DVR functions active?

This is a dangerous legal game, which TiVo was happy to exploit regarding prior cases where DISH/SATS behavior had been addressed by the Court.


----------



## jacmyoung

peak_reception said:


> A judge is also about _judging_ whether a litigant is *acting in bad faith.* It can hurt a party badly if that's how the judge sees it.


Only if at first the law is broken.


----------



## kmill14

E* also never said they downloaded this software to the adjudicated end user products. I wonder why.


----------



## jacmyoung

peak_reception said:


> I didn't say no one else noticed.
> 
> I think you're reading too much into that.


Well then so are you about the "you know, you know..." comment to be your main point.


----------



## jacmyoung

Now of course everyone on the Tivo side is using Tivo's argument as if it is the items to be discussed in the next meeting, it is not.

DISH never by law has to disclose anything what they were doing to workaround the patent. There was never a case where the infringer was asked to do so.

Even in the two cases Tivo cited, there was no requirement by the courts that the infringers sought permission, in fact in the second case the infringer actually sought court's permission, and the court denied the request, and after the infringer did the modification anyway, the court still looked at the modified device and determiend the modified device was still infringing, before handing the infringer a contempt.

While I have conceded that in the next meeting the judge could find DISH in contempt on Tivo's interpretation of the face of the injunction, that does not mean the judge will. I happen to believe based on my research the judge will reject Tivo's interpretation.

What Tivo is doing in its motion is to first assume that their argument had already prevailed, and piling on all the DISH past behaviors to try to paint a very grim picture of DISH.

Except the judge has yet spoken, and DISH did not break any law for the behaviors it was described by Tivo. Just like when this time Tivo has already begun to speak for the judge, before the judge even speaks, I can say Tivo was very disrespectful, but Tivo did not break any law for saying it, Tivo just was doing the best it could to continue in the hope to win.

DISH did the same thing with regard to the new software, just like Tivo, they have the right to argue for themselves with any possible pleas they could come up with, and hoping that one of them might stick, so is Tivo. In Tivo's 5/16 filing, they filled it up with no less than 20 or so demands, most of them appeared childish to me at the time, but the Tivo crowd took each and everyone of them and predicted they would come back after 5/30 and gloat.

The only one that really stuck was this clarification thing to be discussed in the next meeting. The enhanced damage item is not even discussed for now.

The parties have the legal right to exaggerate, go all over the map, to argue on their own behalf, as long as it is within the legal confines. Those exaggerations can not be used against them.


----------



## Greg Bimson

jacmyoung said:


> At that moment in time when the statement was made it DID mean the shut off of receivers.


And where in the injunction is there any language that allowed DISH/SATS to leave DVR functions available to end users regarding "Infringing Products"?


----------



## nobody99

James Long said:


> The District Court should have stayed their own injunction.


But they didn't. That is completely immaterial to what we are discussing.

DISH had already written and tested new software, obtained a legal opinion it didn't infringe, and then went on to completely omit this information from the appeals court and tell them that without a stay of the injunction, they would suffer irreparable harm.

I'll just accept the fact that you find DISH's deception and misrepresentation acceptable, and we'll move on. I've made my point.


----------



## nobody99

jacmyoung said:


> DISH never by law has to disclose anything what they were doing to workaround the patent. There was never a case where the infringer was asked to do so.


Never?

So if, at the emergency motion to stay the injunction, if the appeals court had said "are you working on a software around, and if you are, how many days would it take for you to deploy it?" That wouldn't require a disclosure?


----------



## Greg Bimson

James Long said:


> The District Court should have stayed their own injunction.





nobody99 said:


> But they didn't. That is completely immaterial to what we are discussing.


Add to that fact Judge Folsom did state he would not stay his own injunction, because he felt there was no way DISH/SATS would win their appeal outright. It turns out Judge Folsom was correct.


----------



## Greg Bimson

jacmyoung said:


> Now of course everyone on the Tivo side is using Tivo's argument as if it is the items to be discussed in the next meeting, it is not.


Right. Parties simply file briefs to the court detailing that the sky is blue and the grass is green.

Funny how the briefs filed for the 30 May status hearing were EXACTLY discussed at that meeting.

So the briefs and motions filed now will be for discussion at the 4 September meeting. Proceudre and all, it's just one of those things.


----------



## James Long

nobody99 said:


> James Long said:
> 
> 
> 
> The District Court should have stayed their own injunction.
> 
> 
> 
> But they didn't. That is completely immaterial to what we are discussing.
Click to expand...

It is material to the appeals court CORRECTING that error and staying the injunction. That is what DISH was arguing for ... and they got it. (Unless you believe the Appeals Court erred.)


> I'll just accept the fact that you find DISH's deception and misrepresentation acceptable, and we'll move on. I've made my point.


I'll accept that you are wrong and would like out of the argument. You _have_ made 174 plus posts ... but you have not made that point.


----------



## Greg Bimson

James Long said:


> It is material to the appeals court CORRECTING that error and staying the injunction. That is what DISH was arguing for ... and they got it. (Unless you believe the Appeals Court erred.)


That's only standard procedure...

The trial court goes through the case and decides what to do. In this case Judge Folsom felt that with the facts, there was no way that DISH/SATS could win a complete reversal of the verdict. Therefore, Judge Folsom did not stay his injunction. And Judge Folsom was well within his rights to let the injunction stand.

Then DISH/SATS appealed to the Court of Appeals. Their brief for appeal is written so that everything is slanted in their direction, as it should be. With that brief and the picture it paints, the Court of Appeals decided there was merit to stay the injunction while they heard the appeal. After all, when taking a case upon appeal, and the one-sided view of the appeal is read by the Court of Appeals, it is the appelate court's decision on what to do, as a matter of law. They stayed the injunction while taking up the case. And the Court of Appeals was well within their rights to stay the injunction.

Once the decision was given, with the hardware claims only being reversed, the Court of Appeals had basically confirmed what Judge Folsom stated: that DISH/SATS couldn't win a complete reversal.

No one erred. Except for DISH/SATS, which needed the injunction to never go into effect. DISH/SATS never did question the injunction. They never had appealed to have a single word of it changed. That was why the Court of Appeals simply allowed the injunction to stand by removing their stay.


----------



## nobody99

James Long said:


> It is material to the appeals court CORRECTING that error and staying the injunction. That is what DISH was arguing for ... and they got it. (Unless you believe the Appeals Court erred.)


DISH argued by misrepresenting to the court and got the stay as a result. The software, only a month later, was being deployed to the DVRs (so they clearly must have been happy with the software's quality).



> I'll accept that you are wrong and would like out of the argument. You _have_ made 174 plus posts ... but you have not made that point.


I'm not sure what point I haven't made.


----------



## jacmyoung

Greg Bimson said:


> And where in the injunction is there any language that allowed DISH/SATS to leave DVR functions available to end users regarding "Infringing Products"?


It does not have that because it is not the job of an injunction to tell DISH what it may do, rather what it may not do. It is also an injunction's job to prohibit *only the acts that infringe on the patent by the adjudicated devices*, not any acts that do not infringe.

The vast majority of the injunctions never contained language to permit anything, but in almost all cases when the infringers modified and continued, the act of modification was never rejected in a contempt proceeding, only when the modified product was still found to either infringed or only colorably different and infringed, the modified product was so prohibited, not the modification process itself.


----------



## kmill14

jacmyoung,

I am curious...you keep mentioning these two cases TiVo cited, as if they were the only cases TiVo used in their arguments....did you happen to skip section III part A: 

Echostar Should Be Held in Contempt for Deliberately Ignoring the Terms of this Court's Permanent Injunction (Applicable Law)

There were 8 or 9 cases I believe in that section arguing why E* should be held in contempt simply because they did not follow the Court's Order as it was written, and to try to attack the wording/meaning of the injunction is against the law.


Why do you continue to ignore these cases?


----------



## jacmyoung

nobody99 said:


> Never?
> 
> So if, at the emergency motion to stay the injunction, if the appeals court had said "are you working on a software around, and if you are, how many days would it take for you to deploy it?" That wouldn't require a disclosure?


You can not find one case where the appeals court has asked that question prior to a contempt proceeding, because the same appeals court had already clearly said it is not appropriate to ask such question during the injunction phase, and such question should be asked in a contempt proceeding.

Which is also why whenever we hear an infringer proposing such workaround during the injunction phase, it has been always denied, because the appeals court said the injunction phase is not the correct forum to make such proposal, rather such will be dealt with on contempt.

Both my reponses to Greg and you each has a prior case I have quoted and the appeals court's clear opinion highlighted more than once, please read them.


----------



## kmill14

jacmyoung said:


> It does not have that because it is not the job of an injunction to tell DISH what it may do, rather what it may not do. It is also an injunction's job to prohibit *only the acts that infringe on the patent by the adjudicated devices*, not any acts that do not infringe.


jacmyoung, and the adjudicated devices in the hands of end users were ruled to perform operations that infringed on TiVo's patents. Has there been any other ruling to say they don't?

As a matter of fact, I am still waiting for the answer regarding whether E* has communicated anything to the Court regarding downloading this new software to the adjudicated devices in the hands of end users. There is actually no written statement to the Court from E* to say that they have.


----------



## jacmyoung

kmill14 said:


> jacmyoung,
> 
> I am curious...you keep mentioning these two cases TiVo cited, as if they were the only cases TiVo used in their arguments....did you happen to skip section III part A:
> 
> Echostar Should Be Held in Contempt for Deliberately Ignoring the Terms of this Court's Permanent Injunction (Applicable Law)
> 
> There were 8 or 9 cases I believe in that section arguing why E* should be held in contempt simply because they did not follow the Court's Order as it was written, and to try to attack the wording/meaning of the injunction is against the law.
> 
> Why do you continue to ignore these cases?


Except Tivo spoke for the judge too soon, the judge has not said DISH is in contempt, and if the judge should say so on 9/4, it will not mean the judge was absolutely right, it will be up to the appeals court to have the final say, and until then whenever Tivo speaks as if DISH is already in contempt, it is misleading, it is to speak for the court and it's order, but Tivo is not the judge, Tivo is not the Circuit Court.

DISH should be confident they are not in contempt, all the Tivo cases proved little, the two cases you and I mentioned landed to DISH's support, all other cases assumed DISH is already in contempt. Since DISH is not current determined to be in contempt, they do not apply, not yet, we will have to wait and see what the judge will say, and if the judge agrees with Tivo, then what the Circuit Court will say.

And even if the judge finds DISH in contempt, and then the appeals court upholds such ruling, which I do not think so based on the appeals court's clear opinions, but even if it should happen, one can still argue DISH made a good faith attempt to interpret the judge's injunction and made a good faith effort to come into compliance with the injunction, they did not deliberately ignore the court.

Unless you adamently believe the injunction has only one meaning, one that you hold, everyone else who holds a different interpretation than yours is deliberately ignoring and trying to abuse the court.


----------



## James Long

nobody99 said:


> I'm not sure what point I haven't made.


You can start with the one I quoted where you, the guy who complains about words being put in your mouth put words in my mouth.  (BTW: Incorrect words - which is why you didn't make the point.) Other points you have not made are available earlier in this thread. :lol:


----------



## jacmyoung

kmill14 said:


> jacmyoung, and the adjudicated devices in the hands of end users were ruled to perform operations that infringed on TiVo's patents. Has there been any other ruling to say they don't?
> 
> As a matter of fact, I am still waiting for the answer regarding whether E* has communicated anything to the Court regarding downloading this new software to the adjudicated devices in the hands of end users. There is actually no written statement to the Court from E* to say that they have.


But only if the same adjudicated devices are still performing acts that infringe on the same patent now, so will the injunction have effect on them, so much is clearly said by the Circuit Court.

You will be waiting till the cows come home, because an infringer is never required to comminicate to the court regarding any modifications prior to contempt proceedings, in fact prior to a contempt proceeding, the court said no the infringer shall not conmmunicate such to us, we don't care.

But during a contempt proceeding, it is all about communications on the modification, because the contempt process is just that, to look at the modification and see if the modification has been successful in getting the infringer out of contempt or not.


----------



## nobody99

James Long said:


> You can start with the one I quoted where you, the guy who complains about words being put in your mouth put words in my mouth.  (BTW: Incorrect words - which is why you didn't make the point.) Other points you have not made are available earlier in this thread. :lol:


Thanks. I'll drop it.


----------



## kmill14

jacmyoung said:


> Except Tivo spoke for the judge too soon, the judge has not said DISH is in contempt, and if the judge should say so on 9/4, it will not mean the judge was absolutely right, it will be up to the appeals court to have the final say, and until then whenever Tivo speaks as if DISH is already in contempt, it is misleading, it is to speak for the court and it's order, but Tivo is not the judge, Tivo is not the Circuit Court.


Thats hilarious. Spoke for the Judge too soon? They are arguing that E* is in contempt of the Court's order, and they want the Court to rule as such. Is that NOT what this entire hearing is about?

So basically, you have absolutely no arguments for the 8 or 9 cases including those from the Circuit Courts AND Supreme Court? You have nothing to say regarding this:

****
"A party commits contempt when he *violates a definite and specific order of
the court* requiring him to perform or refrain from performing a particular act or acts with knowledge of the court's order." SEC v. First Fin. Group, 659 F.2d 660, 669 (5th Cir. 1981).
****

or this:

****
Having passed up the opportunity to challenge the validity, scope, or specific terms of the injunction on appeal, *EchoStar cannot do so now in the guise of arguing that the spirit of the injunction required something different from its literal terms.* United States v. Ryan, 402 U.S. 530, 532 n.4 (1971) (citing Walker v. City of Birmingham, 388 U.S. 307 (1967))
****

or this:

****
"*If a party can make himself a judge of the validity of orders which
have been issued,* and by his own act of disobedience set them aside, then are the courts impotent, and what the Constitution now fittingly calls the 'judicial power of the United States' would be a mere mockery." Gompers, 221 U.S. at 450. 
****

and finally:

****
The Supreme Court has affirmed contempt convictions even where the underlying injunction would "unquestionably be subject to substantial constitutional questions." Walker, 388 U.S. at 317. As the Walker court explained, "*respect for judicial process is a small price to pay for the civilizing hand of law."*
****



jacmyoung said:


> Unless you adamently believe the injunction has only one meaning, one that you hold, everyone else who holds a different interpretation than yours is deliberately ignoring and trying to abuse the court.


I'm sorry, what OTHER meaning can you get out of the "disable the DVR functionality" order regarding the 8 adjudicated products in the hands of the end users?


----------



## kmill14

jacmyoung said:


> *But only if the same adjudicated devices are still performing acts that infringe on the same patent now, so will the injunction have effect on them, so much is clearly said by the Circuit Court.*
> 
> But during a contempt proceeding, it is all about communications on the modification, because the contempt process is just that, to look at the modification and see if the modification has been successful in getting the infringer out of contempt or not.


Actually, this contempt proceeding has nothing to do with looking at the modification, or did you miss that point in the Judge's Order (like E* likes to do)

And you still avoid the first question...I'll repaste it:

*jacmyoung, and the adjudicated devices in the hands of end users were ruled to perform operations that infringed on TiVo's patents. Has there been any other ruling to say they don't?*

You seem to want to treat adjudicated devices as "innocent until proven guilty" again, even though they have already been proven guilty.


----------



## Greg Bimson

jacmyoung said:


> You will be waiting till the cows come home, because an infringer is never required to comminicate to the court regarding any modifications prior to contempt proceedings, in fact prior to a contempt proceeding, the court said no the infringer shall not conmmunicate such to us, we don't care.


And let us know when you find a case law where an adjudicated infringing device with an injunction against it is simply ignored and allowed to continue.


----------



## kmill14

jacmyoung said:


> You will be waiting till the cows come home, *because an infringer is never required to comminicate to the court regarding any modifications prior to contempt proceedings*, in fact prior to a contempt proceeding, the court said no the infringer shall not conmmunicate such to us, we don't care.


The Supreme Court says you are wrong:

***
*These precedents clearly put the petitioners on notice that they could not bypass orderly judicial review of the injunction before disobeying it.*

***

http://supreme.justia.com/us/388/307/case.html#319


----------



## Greg Bimson

jacmyoung said:


> But during a contempt proceeding, it is all about communications on the modification, because the contempt process is just that, to look at the modification and see if the modification has been successful in getting the infringer out of contempt or not.


That would be a contempt proceeding for ongoing infringement. TiVo's motion is not for that kind of contempt proceeding. So modifications as an excuse are out the window.


----------



## jacmyoung

kmill14 said:


> Thats hilarious. Spoke for the Judge too soon? They are arguing that E* is in contempt of the Court's order, and they want the Court to rule as such. Is that NOT what this entire hearing is about?


Yes they can argue on that, but as soon as they begin to accuse DISH of delibrately ignoring the judge's order, they have tried to speak for the judge, because the judge has yet ruled, what if the judge says no DISH is not in contempt, is DISH still deliberately ignoring the court?



> So basically, you have absolutely no arguments for the 8 or 9 cases including those from the Circuit Courts AND Supreme Court? You have nothing to say regarding this:
> 
> ****
> "A party commits contempt when he *violates a definite and specific order of
> the court* requiring him to perform or refrain from performing a particular act or acts with knowledge of the court's order." SEC v. First Fin. Group, 659 F.2d 660, 669 (5th Cir. 1981).
> ****
> 
> or this:
> 
> ****
> Having passed up the opportunity to challenge the validity, scope, or specific terms of the injunction on appeal, *EchoStar cannot do so now in the guise of arguing that the spirit of the injunction required something different from its literal terms.* United States v. Ryan, 402 U.S. 530, 532 n.4 (1971) (citing Walker v. City of Birmingham, 388 U.S. 307 (1967))
> ****
> 
> or this:
> 
> ****
> "*If a party can make himself a judge of the validity of orders which
> have been issued,* and by his own act of disobedience set them aside, then are the courts impotent, and what the Constitution now fittingly calls the 'judicial power of the United States' would be a mere mockery." Gompers, 221 U.S. at 450.
> ****
> 
> and finally:
> 
> ****
> The Supreme Court has affirmed contempt convictions even where the underlying injunction would "unquestionably be subject to substantial constitutional questions." Walker, 388 U.S. at 317. As the Walker court explained, "*respect for judicial process is a small price to pay for the civilizing hand of law."*
> ****


They will only be relevant if DISH is indeed in contempt, DISH is not at this moment, therefore all above cases, which was cited after a contempt ruling, shall not apply.



> I'm sorry, what OTHER meaning can you get out of the "disable *the* DVR functionality" order regarding the 8 adjudicated products in the hands of the end users?


I don't know how many times do I have to repeatedly explain this, *the* DVR functionalities *proscribed* in the injunction *must be* acts that infringed on the patent, the injunction cannot *proscribe* any acts that do not infringe, that is what the Circuit Court said.

And that is what I assumed the judge knew about what the Circuit Court said, so when he used the word *the* he must have meant *the* DVR functions that infringed on the patent, not any DVR functions that may not infringe, because the Circuit Court, the higher court, the one above this judge, the one who has the final say, told him so.


----------



## Greg Bimson

jacmyoung said:


> Yes they can argue on that, but as soon as they begin to accuse DISH of delibrately ignoring the judge's order, they have tried to speak for the judge, because the judge has yet ruled, what if the judge says no DISH is not in contempt, is DISH still deliberately ignoring the court?


I guess we can simply throw the entire court system out. After all, you take someone to court because you feel the law is being violated. If you cannot ACCUSE someone of breaking the law, then there is nothing to rule upon.

A party going into court and ACCUSING some other party of breaking the law is normal. It is up to the accuser to prove that their reasoning for their ACCUSATION is correct.

Think about that next time you are in court for a speeding ticket:

Your Honor, the police officer is only ACCUSING me of breaking the law, by driving above the speed limit. I don't think Your Honor would appreciate the police officer ACCUSING me of speeding, because the police officer is then trying "to speak for the judge".


----------



## nobody99

I happened upon a case that seems to have a lot of comparisons with TiVo.

http://www.ll.georgetown.edu/federal/judicial/fed/opinions/94opinions/94-1298.html



> For example, once a patentee has been *fully compensated* by an infringer for the use of a device embodying the patented invention, a court *may not grant an injunction preventing the infringer from using or repairing that device.* See, e.g., King Instrument Corp. v. Otari Corp., 814 F.2d 1560, 1564, 2 USPQ2d 1201, 1204, (Fed. Cir. 1987) (stating that defendant is entitled to sell unpatented parts used to repair infringing devices for which patentee has been fully compensated)
> ...
> Although the court held that Metaullics was clearly entitled to lost profits on all spare parts sales, Metaullics did not attempt to obtain damages for future repair parts sales because the injunction prohibited MMEI from selling parts. Rather, Metaullics sought and received damages only through April 15, 1994, for past sales of repair parts. *Thus, Metaullics was not fully compensated for the infringement because the damages award did not include future lost sales of repair parts for which Metaullics had established entitlement.*


So we have a company that sold a product that was found to be infringing. The court then issued an injunction that said they couldn't even sell _unpatented parts_ to the customers who bought the original infringing device.

For those DISH fans who have argued that an injunction can only be used to prevent sales or use of infringing products, how could an injunction preventing the sales of unpatent parts be allowed?

For what it's worth, the judge has already declared that TiVo was not fully compensated.



> Moreover, the district court's decision not to modify the injunction is further supported by *MMEI's failure to object to the scope of the permanent injunction before the damages phase of the trial.* Although MMEI requested a two- week grace period to sell repair parts prior to converting its customers to noninfringing systems, it did not otherwise challenge the scope of the injunction before the damages phase of the trial. Any objection by MMEI to the court's injunction prohibiting the sale of parts *should have been raised before the damages phase of the trial.* Under all these circumstances, the court did not abuse its discretion when it denied MMEI's motion to modify the injunction.


So the company who can't sell unpatent parts doesn't like it. The want the injunction's language modified. Oops, can't do that either.



> On appeal, MMEI asserts that it cannot be found to be in contempt because the court's injunction should not have prevented MMEI from selling repair parts. We have held to the contrary in the previous section of this opinion. *However, even if we were to accept MMEI's argument, MMEI was not free to ignore the court's order as it did.* See GTE Sylvania, Inc. v. Consumers Union, 445 U.S. 375, 386 (1980) ("*[P]ersons subject to an injunctive order issued by a court with jurisdiction are expected to obey that decree until it is modified or reversed, even if they have proper grounds to object to the order."*)


This case seems to be pretty close to situation with TiVo/DISH. And, I'll point out, most of it held up on appeal.


----------



## nobody99

jacmyoung said:


> the injunction cannot proscribe any acts that do not infringe


Not true. See my post above where an injunction prohibits the sale of _unpatented_ parts.


----------



## kmill14

jacmyoung said:


> Yes they can argue on that, but as soon as they begin to accuse DISH of delibrately ignoring the judge's order, they have tried to speak for the judge, *because the judge has yet ruled*, what if the judge says no DISH is not in contempt, is DISH still deliberately ignoring the court?


Wait a minute....so all those Orders in the injunction as a result of the Final Judgment are not in fact "Judge's Orders"????????????

:hurah: :lol: :grin: 
:nono: :nono2:


----------



## Greg Bimson

jacmyoung said:


> I don't know how many times do I have to repeatedly explain this, the DVR functionalities proscribed in the injunction must be acts that infringed on the patent, the injunction cannot proscribe any acts that do not infringe, that is what the Circuit Court said.


Just as you stated, "the DVR functionalities proscribed in the injunction" were "acts that infringed on the patent." Hence the injunction.


----------



## kmill14

This is interesting:

E* might not even be able to appeal a Contempt ruling
***
Under this rule, known as the final judgment rule, parties may appeal only "final decision of a district court." Nystrom v. TREX Co., 339 F.3d 1347, 1350 (Fed. Cir. 2003) (citing 28 U.S.C. § 1295(a) (2000)). In applying this rule, the "Supreme Court defined a final judgment as a decision by the district court that 'ends the litigation on the merits and leaves nothing for the court to do but execute the judgment.'" Id. (citing Catlin v. United States, 324 U.S. 229, 233 (1945)).

***

Final judgment has already been issued on this case, and the Judge has nothing left to do but "execute the judgment".

http://rds.yahoo.com/_ylt=A0geu9Ppi...deralCircuitPatentWatch_06182007_Entegris.pdf


----------



## Greg Bimson

Contempt findings are appealable if it is believed there was an error in determining contempt.

DISH is going through one of those right now regarding the distants case.


----------



## kmill14

jacmyoung said:


> And that is what I assumed the judge knew about what the Circuit Court said, so when he used the word *the* he must have meant *the* DVR functions that infringed on the patent, not any DVR functions that may not infringe, because the Circuit Court, the higher court, the one above this judge, the one who has the final say, told him so.


There you go adding words into an injunction...or trying to alter the meaning of it. The meaning of the order was clear: disable the DVR functionality in these products. Not THIS particular DVR functionality or THAT particular DVR functionality...just THE DVR functionality.

And he even spelled it out:
"The DVR functionality, i.e., disable all storage to and playback from a hard disk drive of television data)"

You keep trying to add meaning to a very clear order, which is very much against the law.


----------



## jacmyoung

Greg Bimson said:


> Just as you stated, "the DVR functionalities proscribed in the injunction" were "acts that infringed on the patent." Hence the injunction.


Precisely, not *any* DVR functions that may not infringe, because the Circuit Court said *the only acts* an injunction may proscribe are those infringe on the patent.

I want people to spend some time to chew on the phrase *"the only acts"*, please.

After you get the taste of this phrase, then ask yourself the question, is it possible the *current* DVR functions may not infringe? I remember you folks had already answered this question, had you not? You said yes, it is possible the current DVR functions might not infringe.

Unless you are taking back your own words, then it is possible the current DVR functions may not infringe, and the law says as long as such doubt exists, the infringer may not be in contempt, the infringer is afforded a new trial to determine if the current DVR functions still infringe or not, if the patentee shall seek such answer.

And let me also remind you folks it was Tivo themselves expressed such doubt, remember in its 5/16 filing? Tivo said they believed the new software still infringed, but *"to be sure"*, they sought a limited discovery on the new software. It has nothhing to do with the purpose of the discovery, whether it meant for any DVRs not on the list or not, the doubt was expressed by Tivo as whether the new software, hence the current DVR functionalities, still infringe or not.

As long as such doubt exists, such acts of using the current DVR functions may not be within the scope of the injunction, regardless if such acts are performed on the *adjudicated devivces*, or on the devices that are only colorably different than the adjudicated devices. As long as the doubt exists, which Tivo admitted themselves, DISH can not be in contempt, Tivo is relegated to seek a new, *independent* proceeding to find out if the doubt may be removed or not.


----------



## kmill14

Greg Bimson said:


> Contempt findings are appealable if it is believed there was an error in determining contempt.
> 
> DISH is going through one of those right now regarding the distants case.


Has there been an appeal of the Final Judgment in that case yet?

This is what the Fed. Court says:

*("[A]n appeal of a civil contempt order is permissible when it is incident to an appeal from a final order or judgment . . . .").*

****

So one can appeal a civil contempt order if there is the ability to appeal the final judgment on the merits. Thats not applicable in this case, since E* already appealed the final judgment and lost.


----------



## nobody99

jacmyoung said:


> Precisely, not *any* DVR functions that may not infringe, because the Circuit Court said *the only acts* an injunction may proscribe are those infringe on the patent.
> 
> I want people to spend some time to chew on the phrase *"the only acts"*, please.


Are you choosing to ignore my example of a case where I prove you wrong? That an injuction can, in fact, even prohibit the sale of non-patented parts?

If your premise is suspect, everything that follows is suspect too.


----------



## kmill14

jacmyoung said:


> Precisely, not *any* DVR functions that may not infringe, because the Circuit Court said *the only acts* an injunction may proscribe are those infringe on the patent.
> 
> I want people to spend some time to chew on the phrase *"the only acts"*, please.
> 
> After you get the taste of this phrase, then ask yourself the question, is it possible the *current* DVR functions may not infringe? I remember you folks had already answered this question, had you not? You said yes, it is possible the current DVR functions might not infringe.
> 
> Unless you are taking back your own words, then it is possible the current DVR functions may not infringe, and the law says as long as such doubt exists, the infringer may not be in contempt, the infringer is afforded a new trial to determine if the current DVR functions still infringe or not, if the patentee shall seek such answer.


jacmyoung, two things:

1) You seem to think E* warrants more "innocence until proven guilty" on products already proven guilty. Good luck with that. They can try to prove their adjudicated products are non-infringing, but that does not solve for...

2) That they did not follow the clear Order of the Court.

There is no such rule regarding avoiding contempt for disregarding an order because you altered an adjudicated product and you feel those products no longer apply. Maybe you missed the Supreme Court's voice in this matter:

***
"If a party can make himself a judge of the validity of orders which
have been issued, and by his own act of disobedience set them aside, then are the courts impotent, and what the Constitution now fittingly calls the 'judicial power of the United States' would be a mere mockery." Gompers, 221 U.S. at 450. 
***


----------



## Greg Bimson

jacmyoung said:


> the only acts an injunction may proscribe are those infringe on the patent.
> 
> I want people to spend some time to chew on the phrase "the only acts", please.
> 
> After you get the taste of this phrase, then ask yourself the question, is it possible the current DVR functions may not infringe? I remember you folks had already answered this question, had you not? You said yes, it is possible the current DVR functions might not infringe.


The injunction proscribes eight models that were found infringing on the Time Warp patent.

Doubt may exist on the current status of the new software; no doubt exists that "Infringing Products" infringed and are subject to the injunction order.

Just because it is possible only one byte or one billion lines of code were changed doesn't make any difference, as the court can only rule on what is already in the record. TiVo has not asked for a contempt motion regarding injunction violations for ongoing infringement of a patent. It is that type of contempt proceeding that would allow an evaluation of the software.

TiVo's contempt motion is for "prima facie" violations. Which means the "new software" doesn't even need to be addressed in this contempt proceeding.


----------



## kmill14

I don't think jacmyoung knows what you mean by "prima facie".


----------



## jacmyoung

nobody99 said:


> Are you choosing to ignore my example of a case where I prove you wrong? That an injuction can, in fact, even prohibit the sale of non-patented parts?
> 
> If your premise is suspect, everything that follows is suspect too.


Only because the products under repair in that case were still infringing products, like the 190,000 units in this case, and which is why there will be actaully a debate as if the replacement of one of those 190,000 may be done by another infringing product or not.

If the products in the field no longer infringe, they are free and clear.


----------



## jacmyoung

Greg Bimson said:


> ...TiVo's contempt motion is for "prima facie" violations. Which means the "new software" doesn't even need to be addressed in this contempt proceeding.


The so called "prmia facie" you stated was only your "prima facie" interpretation, I have given my interpretation of the "prima facie" if you only cared to read it. All we can say is you have your "prima facie", I have mine. The judge has not ruled which "prima facie" will be the correct one.

I said your "prima facie" has no basis, no precedence, my "prima facie" has prior cases and the Circuit Court opinions lined up behind it.

I have also said both interpretations have their own weight, the judge may go either way, I just think he is likely to go my way because of all the prior cases and the higher court's opinions.

But you have said the judge can only choose your "prima facie" interpretation, there can not be another way, even though you admitted your "prima facie" has no prior basis.


----------



## kmill14

jacmyoung, your ignorance is blinding.

The Judge gave a direct order:

*"disable all storage to and playback from a hard disk drive of television data"*

and you think there can be different "interpretations" of this order?


----------



## nobody99

jacmyoung said:


> the Circuit Court said *the only acts* an injunction may proscribe are those infringe on the patent.


Selling an *unpatented part* is not infringing. The injunction prevented it, the appeals court upheld it. You seem to be hung up on what an injunction can and can't do.


----------



## James Long

Greg Bimson said:


> Contempt findings are appealable if it is believed there was an error in determining contempt.
> 
> DISH is going through one of those right now regarding the distants case.


For clarity - DISH has not been found in contempt in the distants case. They have been accused of being in contempt for allowing NPS to lease a transponder to provide a service to DISH customers (and others with Echostar receivers) that DISH is unable to provide themselves, but there was no contempt finding.

Unless you're referring to the other party appealing because DISH wasn't found in contempt.



kmill14 said:


> This is interesting:
> 
> E* might not even be able to appeal a Contempt ruling
> ***
> Under this rule, known as the final judgment rule, parties may appeal only "final decision of a district court." Nystrom v. TREX Co., 339 F.3d 1347, 1350 (Fed. Cir. 2003) (citing 28 U.S.C. § 1295(a) (2000)). In applying this rule, the "Supreme Court defined a final judgment as a decision by the district court that 'ends the litigation on the merits and leaves nothing for the court to do but execute the judgment.'" Id. (citing Catlin v. United States, 324 U.S. 229, 233 (1945)).
> 
> ***
> 
> Final judgment has already been issued on this case, and the Judge has nothing left to do but "execute the judgment".
> 
> http://rds.yahoo.com/_ylt=A0geu9Ppi...deralCircuitPatentWatch_06182007_Entegris.pdf


Tyr reading that again ... *parties may appeal only "final decision of a district court."*. For example, the final judgement that specified the injunction had a line in it that said "this is a Final Judgement and is appealable."

What can't be applealed is a judgement that isn't final.


----------



## kmill14

James Long said:


> Tyr reading that again ... *parties may appeal only "final decision of a district court."*. For example, the final judgement that specified the injunction had a line in it that said "this is a Final Judgement and is appealable."
> 
> What can't be applealed is a judgement that isn't final.




I understand that, but the Final Judgment in this case has already been appealed. That phase is done. This contempt hearing could be considered nothing more than executing the judgment. That is what that case was all about, and I have found 1 more so far where the Appeals Court would not hear a request to appeal a contempt ruling.


----------



## Greg Bimson

In every argument, the "new software" is brought up.

The only difference between right now and 15 September, 2006, is that there is new software, and the reversal of the hardware claims verdict.

So TiVo is accusing DISH/SATS for contempt of the court because the wording of the injunction isn't being followed. That is a "prima facie" contempt hearing. The only discussion to find contempt centers around how the injunction is being interpreted and followed.

DISH/SATS is desparately trying to have Judge Folsom rule that they aren't in contempt. However, the only reasoning is because DISH/SATS loaded new software, which will not be reviewed in the contempt proceeding. As a matter of fact, it would be difficult for DISH/SATS to use the new software as a defense, because it would risk destroying the lawsuit they just filed in Delaware, to receive a declaratory ruling that the new software does not infringe.

I'll say it again. The injunction simply states to disable the playback and storage from a hard drive on eight adjudicated models. None have been shut down. That is a "prima facie" violation of the injunction. No matter how many people want to spin the injunction, one simply takes the order, reads it, and replaces and proper nouns with their definition.

And when the court orders a party to complete a certain action, defiance of that order is a "prima facie" violation. So if a reporter is ordered by a judge to provide the name of his/her source, a defiance of that order results in contempt. If a party is ordered by a judge to produce secret documents that are relevant to a case, a defiance of that order results in contempt. If a spouse places her children in hiding and is ordered by a judge to have the children in the court room, a defiance of that order results in contempt. If a party is ordered by a judge to disable functionality of a set of products, a defiance of that order results in contempt.

Those are all "prima facie" violations of an order. Yes, there can be exceptions. They are very few and far between.


----------



## Curtis0620

But Greg, don't you realize this is Dishnetwork, they are always right no matter what they steal.


----------



## spear61

Being in contempt is not the end of the world. The judge could easily find contempt, and the sanction might be as little as awarding legal fees to Tivo with the changed software and infringement question continuing on with more litigation.


----------



## Greg Bimson

Greg Bimson said:


> Contempt findings are appealable if it is believed there was an error in determining contempt.
> 
> DISH is going through one of those right now regarding the distants case.





James Long said:


> For clarity - DISH has not been found in contempt in the distants case. They have been accused of being in contempt for allowing NPS to lease a transponder to provide a service to DISH customers (and others with Echostar receivers) that DISH is unable to provide themselves, but there was no contempt finding.
> 
> Unless you're referring to the other party appealing because DISH wasn't found in contempt.


Bingo.


jacmyoung said:


> The so called "prmia facie" you stated was only your "prima facie" interpretation, I have given my interpretation of the "prima facie" if you only cared to read it. All we can say is you have your "prima facie", I have mine. The judge has not ruled which "prima facie" will be the correct one.
> 
> I said your "prima facie" has no basis, no precedence, my "prima facie" has prior cases and the Circuit Court opinions lined up behind it.


I did a search, and this would be the first post you've made that has the words "prima facie". In case it actually matters, there is no interpretation regarding "prima facie". Here is the definition:


> Latin for "at first look," or "on its face," referring to a lawsuit or criminal prosecution in which the evidence before trial is sufficient to prove the case unless there is substantial contradictory evidence presented at trial. A prima facie case presented to a Grand Jury by the prosecution will result in an indictment. Example: in a charge of bad check writing, evidence of a half dozen checks written on a non-existent bank account makes it a prima facie case. However, proof that the bank had misprinted the account number on the checks might disprove the prosecution's apparent "open and shut" case.





> prima facie (prī'mə fā'shē -shə, -shē-ē)
> adj.
> 1) True, authentic, or adequate at first sight; ostensible: prima facie credibility.
> 2) Evident without proof or reasoning; obvious: a prima facie violation of the treaty.


A rebuttal may be the new software, but that rebuttal takes the back seat to the injunction as the "Infringing Prodcts" have been found to infringe.


----------



## jacmyoung

Greg Bimson said:


> Bingo.I did a search, and this would be the first post you've made that has the words "prima facie". In case it actually matters, there is no interpretation regarding "prima facie". Here is the definition:A rebuttal may be the new software, but that rebuttal takes the back seat to the injunction as the "Infringing Prodcts" have been found to infringe.


Except your "prima facie" was wrong, if someone writes bad checks from a check book he owns, which the bank did not misprint, then yes the defendent is guilty of writing those checks, and be punished for it, including being ordered not to write bad checks in the future. Does that mean the defendent can no longer write a good check from the same check book?

There is of course an interpretation of "prima facie", your interpretation is all checks, bad or good, may not be written, as your so called "prima facie", from that same check book, I am saying the so called "prima facie" refers to only the bad checks, not any good checks the defendent may write from the same check book in the future.

There is no rebuttal on the guilt of writing a bad check, likewise there is also no rebuttal on not gulity on writing a good check. All you can say now is you have doubt the new checks are good or not, and all I am saying is if such doubt exists, then the court must examine those new checks, and determine if they are indeed good or still bad, before a ruling is out on the new checks.

Meanwhile the defendent is punished for the past bad checks he wrote, but any punishment on writting the new checks must wait till the determination of the new checks are made.

Now of course the court can order the defendent to stop ever writing a check, ever, if he is found to keep writing bad checks, even after the court ordered him to stop time after time. But this is not the case here, the defendent wrote bad checks before, was found guilty, and punished by a large sum of damages paid, and asked to no longer write any more bad checks, that is the end. The defendent is never asked to stop writing checks, ever, only to stop writing bad checks.


----------



## kmill14

jacmyoung, you must hate direct questions:

How do you interpret this statement from the Judge:

*""disable all storage to and playback from a hard disk drive of television data""*


----------



## kmill14

jacmyoung said:


> Except your "prima facie" was wrong,


:hurah: :hurah: :hurah:

Now jacmyoung is bashing law.com (the source of the above quote) !!!!!

AND he ignores the full message of the example!

:nono2:

"However, proof that the bank had misprinted the account number on the checks might disprove the prosecution's apparent "open and shut" case."


----------



## Greg Bimson

jacmyoung said:


> Except your "prima facie" was wrong, if someone writes bad checks from a check book he owns, which the bank did not misprint, then yes the defendent is guilty of writting those checks, and be punished for it. Does that mean the defendent can no longer write a good check from the same check book?
> 
> There is of course an interpretation of "prima facie", your interpretation is all checks, bad or good, may not be written, as your so called "prima facie", from that same check book, I am saying the so called "prima facie" refers to only the bad checks, not any good checks the defendent may write from the same check book in the future.
> 
> There is no rebuttal on the guilt of writing a bad check, likewise there is also no rebuttal on not gulity on writing a good check. All you can say now is you have doubt the new checks are good or not, and all I am saying is if such doubt exists, then the court must examine those new checks, and determine if they are indeed good or still bad, before a ruling is out on the new checks.
> 
> Meanwhile the defendent is punished for the past bad checks he wrote, but any punishment on writting the new checks must wait till the determination of the new checks are made.


Way to spin and put words in my mouth! This isn't even close to correct.


----------



## HobbyTalk

peak_reception said:


> The wording in question was not in an Echo/DISH press release. It was shortly into their May 23 reply to TiVo's agenda, addressed to Judge Folsom. It looks like Echo was trying to impress the judge at what a Brobdingnagian project they undertook so that he wouldn't set aside the software modification as too little, too late (so far as the contempt hearing is concerned).


I am sure the analysts have read E*'s reply so they can make financial projections. Once they do that then the general public will have exposure to it. We already see that the internet keyboard cowboys are reacting to it. The wording is working exactly as designed


----------



## jacmyoung

kmill14 said:


> jacmyoung, you must hate direct questions:
> 
> How do you interpret this statement from the Judge:
> 
> *""disable all storage to and playback from a hard disk drive of television data""*


That is because you have a habit of taking things out of context:

"(b) "disable the DVR functionality (i.e., disable all storage to and playback from a hard disk drive of television data) in all but 192,708 units of the Infringing Products that have been placed with an end user or subscriber. The DVR functionality..."

The phrase you decided to use was simply to describe what the "DVR functionalities" meant. The "disable *the* DVR functionalities" supercedes the further description. An injunciton must be specific, if it meant all or any DVR functions, regardless if they infringe or not, then it should have said *any* DVR functions, not *the* DVR functions.

Now I have already said you can have your interpretation, I can have mine, the judge has yet to say which one it is, so do not jump into conclusion and try to act as if you are the judge.

And what I have also said was, if your interpretation shall prevail, the Circuit Court must overturn it, because not doing so will mean the Circuit Court's requirement on how an injunciton may be framed will have to be re-written.

That reqruirement says clearly, the only acts an injunction may prohibit are the act of infringement of the patent by the adjudicated devices, and infringement by devices only colorably different than the adjudicated devices.

I don't know how you interpretate the above higer court's requirement, the way I interpretated was, if the act of using the DVR functions which infringe on the patent, then the injunction may prohibit such act, but if the act of using the current DVR functions that are not infringing, then the same injunction may not prohibit such act.

I am very interested to hear what is your interpretation of the above higher court's requirement.

What I am not interested in hearing is your continued asking the same question, what is my interpretation of the injunction, I have told you many times what mine is, and I know full well what's yours, we don't know which one the judge will embrace, so let's not play judge for now. We can agree to disagree.

What I still do not know is what is your interpretation of the above higher court's requirement, I have told you my interpretation, it is your turn to tell me yours.


----------



## jacmyoung

Greg Bimson said:


> Way to spin and put words in my mouth! This isn't even close to correct.


Then tell me which words did I put in your mouths, I shall remove them.


----------



## kmill14

jacmyoung said:


> That is because you have a habit of taking things out of context:
> 
> "(b) "disable the DVR functionality (i.e., disable all storage to and playback from a hard disk drive of television data) in all but 192,708 units of the Infringing Products that have been placed with an end user or subscriber. The DVR functionality..."
> 
> The phrase you decided to use was simply to describe what the "DVR functionalities" meant. The "disable *the* DVR functionalities" supercedes the further description.
> 
> Now I have already said you can have your interpretation, I can have mine, the judge has yet to say which one it is, so do not jump into conclusion and try to act as if you are the judge.


First, lets start with your comment about disable the DVR functionality somehow superceding the (i.e. disable all storage ...) phrase. Do you not know what "i.e." means when the Judge writes it like he did? It means "disable the DVR functionality" and "disable all storage to..." are THE SAME THING.

Do you disagree? (a no response will be taken as a NO)



jacmyoung said:


> And what I have also said was, if your interpretation shall prevail, the Circuit Court must overturn it, because not doing so will mean the Circuit Court's requirement on how an injunciton may be framed will have to be re-written.
> 
> That reqruirement says clearly, the only acts an injunction may prohibit are the act of infringement of the patent by the adjudicated devices, and infringement by devices only colorably different than the adjudicated devices.


For starters, it really sounds like you think the CC would overturn it because the injunction was framed incorrectly. Is that what you are saying? If so, you might as well stop now because there is no attacking the "framing of the injunction" at this stage.

OR, are you arguing again that somehow the adjudicated devices, clearly spelled out in the injunction, are no longer adjudicated devices. Are they now DIFFERENT devices? Did the adjudicated devices disappear?



jacmyoung said:


> I don't know how you interpretate the above higer court's requirement, the way I interpretated was, if the act of using the DVR functions which infringe on the patent, then the injunction may prohibit such act, but if the act of using the current DVR functions that are not infringing, then the same injunction may not prohibit such act.


Let me just say that I don't take your summation of the CC's "requirement" at face value, because I just don't trust in your skills to do that correctly. Why don't you just put a direct citation from the CC so I can respond to that?

Lastly, you again talk about some mysterious DVR functions that are not infringing....what DVR functions? What are the DVR functions that infringed? What would a Judge do with your argument talking about "current DVR functions that are not infringing" when A) there is no proof of such functions and B) there is no proof the functions that infringed before are no longer there


----------



## kmill14

jacmyoung said:


> Then tell me which words did I put in your mouths, I shall remove them.


jacmyoung, do you NOT realize the check-writing example he cites was a direct quote from law.com's site explaining "prima facie"???

Do you also NOT realize that the example provided two sides of the coin so to speak? (It seems that you missed that, since you argued for a good 200 words, and implied it was Greg's example, when it clearly wasn't)


----------



## Greg Bimson

I'll try to keep this simple:


> Example: in a charge of bad check writing, evidence of a half dozen checks written on a non-existent bank account makes it a prima facie case. However, proof that the bank had misprinted the account number on the checks might disprove the prosecution's apparent "open and shut" case.


It is against the law to commit fraud. One type of bank fraud is writing "a half dozen checks written on a non-existent bank account".

If the evidence for fraud is the physical, written checks, it is a prima facie case. There is proof of the unlawful action. The only question is if there was an error committed by someone during the whole process.

It is against the law to disobey the court's orders. One type of disobeyment is called contempt. In this case here, DISH/SATS was ordered to disable eight models of receivers. When the court tells a party to disable a product for the length of a patent term, all one needs to do is present the evidence that NONE of the products have been disabled.

So some software was modified. The software was supposed to be modified to disable the functionality. Modifying the software without disabling the functionality of the product was not an action following the court's order.

There is no need to determine the current infringement status of the "Infringing Products". The new software is off the table for these products.

If the evidence for contempt is the physical, listed "Infringing Products", all of which still have their functionality enabled, it is a prima facie violation of the injunction. There is proof of the unlawful action (which is up to the judge to decide). The only question becomes if there was an error committed by someone during the whole process. Like if DISH/SATS actually turned off functionality in the products, and someone actually turned that functionality back on.

And that error isn't that the injunction is too overbroad. It is too late for that.


----------



## jacmyoung

Greg Bimson said:


> I'll try to keep this simple:It is against the law to commit fraud. One type of bank fraud is writing "a half dozen checks written on a non-existent bank account".
> ...


Except our analogy is inappropriate because in this case the "bank" does exsit, it is called a patent. DISH wrote its checks against that "bank's checks", and was ordered to pay damages and no longer to use any checks that violate that "bank's checks."

When DISH tells the court look we are using new checks, and we can prove these new checks no longer violate the bank's checks, the court will look at the new checks and decide if it is true or not.


----------



## TBoneit

First we have :beatdeadhorse: 



Then We have some :beatdeadhorse: 


Followed by some :beatdeadhorse: 

Now if :icon_peac could just break out and let things sit until sept. then I'd be able to stop :bang

That reminds me, Time to order a VIP722 to go along with the VIP622 and the 721 and the 7100.

Cheers


----------



## jacmyoung

kmill14 said:


> ...For starters, it really sounds like you think the CC would overturn it because the injunction was framed incorrectly. Is that what you are saying? If so, you might as well stop now because there is no attacking the "framing of the injunction" at this stage.


That is what I was waiting for you to say, which proves my interpretation was more likely correct, that when the CC embraced the injunction, it must have interpretated the same way I interpretated, otherwise it would have asked the judge to frame the injunction correctly.



> OR, are you arguing again that somehow the adjudicated devices, clearly spelled out in the injunction, are no longer adjudicated devices. Are they now DIFFERENT devices? Did the adjudicated devices disappear?


They did not disappear, they just are not infirnging anymore, because even you Tivo folks said it is possible the current DVRs with the new software no longer infringe, you people said it, go argue with them.



> Let me just say that I don't take your summation of the CC's "requirement" at face value, because I just don't trust in your skills to do that correctly. Why don't you just put a direct citation from the CC so I can respond to that?


You obviously did not care to read it, I quoted it many times and highlighted them too, many times, go back and find them. I am still waiting for you to offer your interpretation of the CC requirement.



> you again talk about some mysterious DVR functions that are not infringing....what DVR functions? What are the DVR functions that infringed? What would a Judge do with your argument talking about "current DVR functions that are not infringing" when A) there is no proof of such functions and B) there is no proof the functions that infringed before are no longer there


There is not only proof, because Tivo looked at the new software codes, but also Tivo itself said they were not sure if the new software (which the current DVR functions arises) were still infirnging or not, and Tivo asked for discovery on such issue.

So go argue with Tivo why they askd DISH for the new software info, and continues to ask more of such new software info. If they didn't exist, why admit that they looked at the evidence already, and continueto ask for more?


----------



## Greg Bimson

jacmyoung said:



> When DISH tells the court look we are using new checks, and we can prove these new checks no longer violate the bank's checks, the court will look at the new checks and decide if it is true or not.


Back to the real language, with the one issue you have such a problem with...

When does DISH/SATS notify the court they have "new checks", i.e., new software on adjudicated infringing devices?

Because "we have new, unadjudicated software" cannot be used as the basis for the defense during the "prima facie" contempt hearing.


----------



## James Long

Greg Bimson said:


> Greg Bimson said:
> 
> 
> 
> Contempt findings are appealable if it is believed there was an error in determining contempt.
> 
> DISH is going through one of those right now regarding the distants case.
> 
> 
> 
> 
> 
> 
> James Long said:
> 
> 
> 
> For clarity - DISH has not been found in contempt in the distants case. They have been accused of being in contempt for allowing NPS to lease a transponder to provide a service to DISH customers (and others with Echostar receivers) that DISH is unable to provide themselves, but there was no contempt finding.
> 
> Unless you're referring to the other party appealing because DISH wasn't found in contempt.
> 
> Click to expand...
> 
> Bingo.
Click to expand...

I just wanted to make sure that people didn't misunderstand and believe that DISH was in contempt in the other case. I don't believe they were held in contempt on the earlier injunction in the case ... the judge just issued a stiffer (and more appropriate) injunction.


----------



## James Long

jacmyoung said:


> Except your "prima facie" was wrong, if someone writes bad checks from a check book he owns, which the bank did not misprint, then yes the defendent is guilty of writing those checks, and be punished for it, including being ordered not to write bad checks in the future. Does that mean the defendent can no longer write a good check from the same check book?
> 
> The defendent is never asked to stop writing checks, ever, only to stop writing bad checks.


One problem ... the injunction in _this_ case (the Tivo case) would prevent the defendant from writing ANY checks in the future. Gotta read what is actually written, not what you want to see. 

Whether that is fair or not is a different question. Say your bad check writer was told NOT to write ANY checks from that account. Does that mean they can get a new check book and write checks from that account? (NO.) Does that mean that they can get a new account and write checks on it? (YES, if 'from that account' was stated.) It doesn't matter if the checks are rubber or not, the instruction was don't write checks on that account. Period.

What happens to that check writer when they are found writing checks on that account is up to the judge ... just like what happens to DISH is up to Judge Folsom. There is no guarantee of mercy or wrath. It's up to the judge.


----------



## jacmyoung

James Long said:


> One problem ... the injunction in _this_ case (the Tivo case) would prevent the defendant from writing ANY checks in the future. Gotta read what is actually written, not what you want to see.
> 
> Whether that is fair or not is a different question. Say your bad check writer was told NOT to write ANY checks from that account. Does that mean they can get a new check book and write checks from that account? (NO.) Does that mean that they can get a new account and write checks on it? (YES, if 'from that account' was stated.) It doesn't matter if the checks are rubber or not, the instruction was don't write checks on that account. Period.
> 
> What happens to that check writer when they are found writing checks on that account is up to the judge ... just like what happens to DISH is up to Judge Folsom. There is no guarantee of mercy or wrath. It's up to the judge.


Except my "prima facie" interpretation of the injunction told me no the judge did not prohibit *any* DVR functions on the adjudicated DVRs, only *the* DVR functions determined to have infringed.

My basis is the Circuit Court's standard on how an injunction may prohibit acts performed by *adjudicated devices*, and the standard is clear, only those acts that infringe on the patent, not those acts that do not infringe.

It is like saying in a case involving writing bad checks against an account, the injunction can only prohibit the bad check writer from continuing to write bad checks against the same account, but not any good checks against the same account. I know it is hard to believe which is why I have always warned against using any analogy for comparison, why I have always used patent cases for comparison.


----------



## peak_reception

HobbyTalk said:


> I am sure the analysts have read E*'s reply so they can make financial projections. Once they do that then the general public will have exposure to it. We already see that the internet keyboard cowboys are reacting to it. The wording is working exactly as designed


 Why would financial analysts care how much work Echo put into their design-around? There's a design-around, and it's been downloaded to devices previously found to infringe, and Echo says it works. End of story.

Also, if you believe that I was impressed by their design-around description you are mistaken. I was simply making the point that when Echo wants the design-around to be HUGE, then it's HUGE. When they want it to be modest, then it's modest. Whatever suits the situation they're in, the audience they're presenting to, and the strategy they're pursuing. Expediency is the key.

In this case the audience was Judge Folsom, or, more likely, the appeals court to follow. I don't think Folsom will be taken in by it but the appeals court might. That's what Echo is hoping for. Hey, it worked the first time  when they used similar exaggeration to paint a picture of dire hardship, financial disaster, and customer exodus, to convince the appeals court to stay the injunction in the first place. And at that time they had no intention whatsoever of shutting down DVR functionality as we now know :nono: It was a ploy. And it worked :lol: So back to their bag of tricks they go with more games, exaggerations, and court-clogging maneuvers [DE this time]. I wonder if all of this is the reason TiVo exposed Echo's bad faith behavior in the contempt motion, on the record, for everyone to see....


----------



## Greg Bimson

You heard it here first! There's no way that DISH/SATS loses this. They have the upper hand, now! 


jacmyoung said:


> Except my "prima facie" interpretation of the injunction told me no the judge did not prohibit any DVR functions on the adjudicated DVRs, only the DVR functions determined to have infringed.


The injunction did not state remove functionality in adjudicated devices tied to the Time Warp patent. The injunction did state to disable all DVR functionality in the "Infringing Products".


jacmyoung said:


> My basis is the Circuit Court's standard on how an injunction may prohibit acts performed by *adjudicated devices*, and the standard is clear, only those acts that infringe on the patent, not those acts that do not infringe.


Good luck with that. Too bad DISH/SATS didn't argue that part of the injunction on appeal. And there hasn't been any motion introduced to find out if the new software is actually any different. So the models in question are still considered to infringe.


----------



## jacmyoung

Let me cite this one again:

http://www.ll.georgetown.edu/federal/judicial/fed/opinions/04opinions/04-1014.html

"...Therefore, the *only acts* the injunction may *prohibit* are *infringement of the patent by the adjudicated devices* and infringement by devices not more than colorably different from the adjudicated devices. In order to comply with Rule 65(d), the injunction should *explicitly proscribe only those specific acts*."

The above case established the Circuit Court's standard in which an injunction in a patent case may prohibit, it says the *only acts* (such as the use of the DVR functions) by the *adjudicated devices* (such as DP501...) are the acts that infringe on the patent, and the judge's injunction should *explicitly proscribe only those acts*, not other acts that may not infringe on the patent, such as the current DVR functions that may not infringe on the Tivo's patent, in order to comply with rule 65(d).

One can certainly say well in this injunction the judge did not explicitly proscribe those specific acts, but all the acts of using the DVR functions, whether such acts infringe or not.

For one thing, there is another explanation, by the use of the word "the" I believe the judge has the above requirement covered. because the term *"the DVR functionalities"* to me is explicit enough to proscribe only those acts that infringe on the patent.

But even if the other side is correct, if the judge should say no, I did not mean only the DVR functions that infringed, but all DVR functions on those PD501..., regardless if such acts infringe on the patent or not, then his injunction will be deemed too broad, and the contempt ruling will have to be overturned, and the injunction be modified to be more specific.

It is my belief that when the same Circuit Court embraced the above injunction, they had interpretated it as the way I have. But if the judge tells them no you, my bosses, you are wrong, that is not what I actually meant, then the Circuit Court will have to either overturned it, or re-write the above standard the same court had established not too long ago.

My bet is the bosses would rather overturn the judge's ruling, than re-writing their well established standard. And my other bet is, furthermore, the judge is likely to interpret his own injunction the same way I have, or the Circuit Court had, so not to make himself look bad.

This is not a matter of luck, rather assessing odds when one places a bet. When placing a bet, one always knows there is risk, else it is not a bet anymore, but I place a bet based on my best research results to tell me what kind of odds my bet may have, if the odds look good, I go with this bet, if not, I go with the other bet. I don't place a bet because I wish my bet will win, rather I know my bet will more likely than not, win.

Can I lose? Of course I can, that is the nature of betting, you can lose too.


----------



## peak_reception

I wrote a few posts back that I thought jacmyoung was reading too much into the judge interrupting Morgan Chu at the May 30 status meeting. 


jacmyoung said:


> Well then so are you about the "you know, you know..." comment to be your main point.


 Well, here is what I originally wrote:


> Seriously, everyone has strengths and weaknesses. Everyone has better days and worse days. It's not beyond the pale to suggest that one or the other lawyer made mistakes, even if they have steller reputations. I thought TiVo's May agenda was very weak. Maybe I was wrong but at least I backed up that claim with examples of why it was weak. Maybe Morgan Chu didn't even write it, so I didn't mention him by name. But maybe he did write it and writing isn't his greatest strength. If that's the case then he was smart to get some help with this one
> 
> Same with the Echo lawyers.*They're probably impeccably credentialed as well. Their May agenda reply was stronger than TiVo's *but in the May 30 status meeting the transcript shows counselor McElhinny stammering "you know," "you know," "you know," "You know," over and over again. *I didn't mention it at the time because I chalked it up to Judge Folsom's intimidating presence. Or maybe McElhinny is just stronger in writing and weaker in oral argument? They're all top lawyers no doubt, but even those atop their game have weak spots and bad days.
> *
> *Even Michael Jordan threw up air balls on occasion. *


 Somehow you seem to have taken all that as an attack on McElhinny. That's not how I wrote it or intended it. Not sure how you drew the opposite conclusion.

p.s. Everyone seems to agree that TiVo's Contempt Motion is better written and more focused (well, James doesn't... ) than their May 16 Agenda. Looks to be a different author. The contempt motion is undersigned by Sam Baxter, not Morgan Chu.


----------



## Greg Bimson

Your link doesn't work...


jacmyoung said:


> "...Therefore, the only acts the injunction may prohibit are infringement of the patent by the adjudicated devices and infringement by devices not more than colorably different from the adjudicated devices. In order to comply with Rule 65(d), the injunction should explicitly proscribe only those specific acts."


Why is the "colorably different" terminology in here? Could it be this is based off of a contempt charge for ongoing infringement in violation of an injunction? That is different than a contempt charge for "prima facie" violations.

As I seem to recall, the first section of the injunction covers this.


----------



## jacmyoung

Greg Bimson said:


> Your link doesn't work...Why is the "colorably different" terminology in here? Could it be this is based off of a contempt charge for ongoing infringement in violation of an injunction? That is different than a contempt charge for "prima facie" violations.
> 
> As I seem to recall, the first section of the injunction covers this.


I hope the link is fixed.

It does not matter, the standard quoted above covers both *adjudicated devices* and devices *only colorably different* than the adjudicated devices. That is how a standard is established, from a single case, with the opinion expressed by the higher court, all subsequent cases shall follow suit.

No two cases are identical, when you insist only an identical prior case may apply, it goes against the uniform standard. Why then even cite any prior cases? What a waste of time?


----------



## kmill14

jacmyoung, I noticed you didn't respond at all to this:

*****
First, lets start with your comment about disable the DVR functionality somehow superseding the (i.e. disable all storage ...) phrase. Do you not know what "i.e." means when the Judge writes it like he did? It means "disable the DVR functionality" and "disable all storage to..." are THE SAME THING.

Do you disagree? (a no response will be taken as a NO)

*****



jacmyoung said:


> That is what I was waiting for you to say, which proves my interpretation was more likely correct, that when the CC embraced the injunction, it must have interpretated the same way I interpretated, otherwise it would have asked the judge to frame the injunction correctly.
> 
> They did not disappear, they just are not infirnging anymore, because even you Tivo folks said it is possible the current DVRs with the new software no longer infringe, you people said it, go argue with them.


I don't know why you continue to ignore the clear order that says:

*"disable all storage to and playback from a hard disk drive of television data"* Oh wait, thats right. You seem to think this is superseded by the term "The DVR functionality", even if the Judge means them to be the same by utilizing that tricky connective term "i.e.".

But on to that second part about "not infringing anymore". Even if it IS possible, that doesn't mean it is TRUE, and being possible does not suddenly throw out the old verdict, and it certainly does not give E* the right to disobey the clear order to disable all storage of TV data to the hard-drives of those devices. There was no stipulation written into the injunction, and there is nothing remotely close to proof that they no longer infringe anyway.



jacmyoung said:


> There is not only proof, *because Tivo looked at the new software codes, but also Tivo itself said they were not sure if the new software (which the current DVR functions arises) were still infirnging or not, and Tivo asked for discovery on such issue.*
> 
> So go argue with Tivo why they askd DISH for the new software info, and continues to ask more of such new software info. If they didn't exist, why admit that they looked at the evidence already, and continueto ask for more?


What???? First off all, TiVo not only said nothing of the kind, but they in fact said they don't even think the changes are more than colorably different. You keep talking about people putting words in your mouth, but you LOVE to put words and interpretations into clearly stated written statements that completely disregard the actual written statement.

They asked for more because they can, and it has no bearing at all on this upcoming hearing.

Its clear to me now. Your sanity is gone, and I feel bad for you.


----------



## Greg Bimson

jacmyoung said:


> No two cases are identical, when you insist only an identical prior case may apply, it goes against the uniform standard. Why then even cite any prior cases? What a waste of time?


Identical case? Did you even read what this was? The first sentence of the second paragraph:


> IXYS appeals the trial court's order of judgment and permanent injunction.


Get it yet? The linked decision is not the result of a challenge of a contempt proceeding. IXYS appealed the verdict and the injunction after the District Court found them guilty.

In contrast, DISH/SATS only appealed the trial court's order of judgment. They didn't bother (or simply forgot) to appeal the permanent injunction.

You do realize that injunction in the IR v. IXYS case was never in full force and effect?

This case law doesn't even come close to what is applicable in the TiVo v. DISH/SATS case.


----------



## jacmyoung

Greg Bimson said:


> Identical case? Did you even read what this was? The first sentence of the second paragraph:Get it yet? The linked decision is not the result of a challenge of a contempt proceeding. IXYS appealed the verdict and the injunction after the District Court found them guilty.
> 
> In contrast, DISH/SATS only appealed the trial court's order of judgment. They didn't bother (or simply forgot) to appeal the permanent injunction.
> 
> You do realize that injunction in the IR v. IXYS case was never in full force and effect?
> 
> This case law doesn't even come close to what is applicable in the TiVo v. DISH/SATS case.


Why should it matter when the Circuit Court, for whatever the reason, decided to explain the standard as how an injunction must be framed? Are you saying only when someone appeals an junction, the standard shall apply, if someone is not disputing the injunction, the same standard can be ignored?

The above quote of the Circuit Court established a standard for the judges to follow, when they frame their injunctions. Who cares if an injunction was issued, or not issued, appealed or not appealed, in full force or not in full force?

An injunction is an injunction, and the higher court said, when a judge frame an injunction, here is the rule, follow it the injunction is good, not following it the injunction is not good.


----------



## Greg Bimson

jacmyoung said:


> Why should it matter when the Circuit Court, for whatever the reason, decided to explain the standard as how an injunction must be framed? Are you saying only when someone appeals an junction, the standard shall apply, then someone is not disputing the injunction, the same standard must be ignored?


Yes.

IXYS appealed the injunction, stating it was overbroad, so it was overturned. DISH/SATS did not appeal the injunction, so it stands as written.

It's one of those procedural issues. A review of an injunction, if there is an issue, must take place before it is in full force and effect.


----------



## jacmyoung

Greg Bimson said:


> Yes.
> 
> IXYS appealed the injunction, stating it was overbroad, so it was overturned. DISH/SATS did not appeal the injunction, so it stands as written.
> 
> It's one of those procedural issues. A review of an injunction, if there is an issue, must take place before it is in full force and effect.


You keep forgetting one thing, there is another interpretation of this Judge Folsom's injunction, that is "the DVR functions" specifically defines the DVR functions that infringed, not those that do not infringe, as such there was no need to appeal the "prime facie" of the injunction, as far as DISH ws concerned "the DVR functions" specifically proscribed the acts that infringed, not the current acts that do not infringe.

And the Circuit Court during the appeal, thought the same thing, "the DVR functions" specifically proscribed the DVR functions that infringed, not any DVR functions that do not infringe. Therefore there was no need to appeal the language of the injunction, and there was no need for the Circuit Court to correct it.

Only if you can see the logic in the other "prima facie" interpretation.

But even if you are correct , that still does not mean the established standard of how an injunction may be framed should be undermined just so the judge can argue for his injunction for argument sake, no, just so YOU can argue for an outcome YOU wish to see, you know why?

If this will be the case, this injunction will forever establish a new standard of which from now on, a judge can prohibit an act regardless if such act is infringing or not, which will go totally against what the established standard by the higher court.

How likely have you ever read of such situation happened in the past?

I am glad that at least you have finally see my point, and admitted that in this case it is just one of those procedural things, or should I say technicality thing? But have you noticed whenever there is a technicality issue, the benefit always goes to the defendent?


----------



## Greg Bimson

jacmyoung said:


> You keep forgetting one thing, there is another interpretation of this Judge Folsom's injunction, that is "the DVR functions" specifically defines the DVR functions that infringed, not those that do not infringe, as such there was no need to appeal the "prime facie" of the injunction, as far as DISH ws concerned "the DVR functions" specifically proscribed the acts that infringed, not the current acts that do not infringe.


That is your (and DISH/SATS) interpretation of the injunction. I don't see how it could possibly be read that way. DISH/SATS didn't read it that way when they were arguing against the injunction in front of Judge Folsom; DISH/SATS was scared they'd have to disable DVR's from over 3,000,000 households. Or at least that is what they argued.

Then again, no one knows about "the current acts that do not infringe". That is immaterial to the guilty verdict, where a jury ruled that eight of DISH/SATS products infringed upon the Time Warp patent, and TiVo was awarded damages and an injunction.


jacmyoung said:


> And the Circuit Court during the appeal, thought the same thing, "the DVR functions" specifically proscribed the DVR functions that infringed, not any DVR functions that do not infringe. Therefore there was no need to appeal the language of the injunction, and there was no need for the Circuit Court to correct it.


That is not even a statement of fact. DISH/SATS did not ask the Court of Appeals for review of the injunction, and the Court of Appeals certainly didn't give any interpretation why they removed their stay and let the injunction take effect.


jacmyoung said:


> But even if you are correct , that still does not mean the established standard of how an injunction may be framed should be undermined just so the judge can argue for his injunction for argument sake, no, just so YOU can argue for an outcome YOU wish to see, you know why?
> 
> If this will be the case, this injunction will forever establish a new standard of which from now on, a judge can prohibit an act regardless if such act is infringing or not, which will go totally against what the established standard by the higher court.
> 
> How likely have you ever read of such situation happened in the past?


I think kmill14 gave one, where parts were subject to an injunction, even though those parts did not infringe.

By the way, that "standard" you are talking about is for reviewing an injunction upon appeal. Once an injunction is in full force and effect, there is no review. Therefore, there is no standard.


----------



## Greg Bimson

I told you before there is logic, and then there is law.


----------



## jacmyoung

Greg Bimson said:


> ...gave one, where parts were subject to an injunction, even though those parts did not infringe....


Because those parts, while not infringing, the use of such parts aided the infringing products that were in the field, just like the people who aided the continued sell and use... of the infringing products, no good, according to the court.

Here we are talking about the modified products that no longer infringe, whatever the parts used in them can not possibly aid an act of infringement, because the products do not infringe.


----------



## jacmyoung

Greg Bimson said:


> ...By the way, that "standard" you are talking about is for reviewing an injunction upon appeal. Once an injunction is in full force and effect, there is no review. Therefore, there is no standard.


Are you even listening to yourself, that once in a contempt phase there is no standard? Where did that even come from. I guess all the cases I cited which the lower courts' contempt rulings were overturned, all of those should not have happened, because according to you once in a contempt phase, no more standards shall apply?

Contempt rulings are overturned all the time, mostly because the rulings were considered too broad. Others were overturned for not reviewing some facts that were required during a contempt proceeding. All of those overturning decisions relied on some standard or the other, or the combination of them.

If anything, the more I read about a case where the infringer appealed an contempt ruling, the Circuit Court tended to err on the side of the infringer, whenever there is doubt, or technicality issue. As they should, because this is our law, the defendent is innocent until proven guilty, when in doubt, the defendent always gets the benefit of the doubt.

Now we have this so called "prima facie" type of interpretations of this injunction, one side interpreted one way, the other side interpreted the other way, each side has its own validity and logic, it does not matter how silly you think my "prima facie" interpretation is, and it does not matter how silly I think your "prima facie" interpretation is, all we have established is a disagreement, a doubt as which way it might be. And when DISH appeals to the Circuit Court with their interpretation, because the interpretation can go either way, it should go to the defendent, because when in doubt, the benefit of the doubt goes to the defendent.

Not to mention, if DISH's interpretation is upheld, the standard the Circuit Court established will be intact, and if Tivo's interpretation should prevail, such standard will be forever thrown out. Which way do you want to bet it will go?


----------



## Greg Bimson

jacmyoung said:


> Here we are talking about the modified products that no longer infringe, whatever the parts used in them can not possibly aid an act of infringement, because the products do not infringe.


Again, no one knows for certain whether those products infringe. So to say the adjudicated products no longer infringe is not a fact. Besides, at a moment's notice, DISH/SATS could reload the formerly infringing software at the drop of a hat. So here, we are talking about products which can be modified, and can be modified to work exactly as they did in April, 2006, when they were found to infringe.


jacmyoung said:


> Are you even listening to yourself, that once in a contempt phase there is no standard? Where did that even come from. I guess all the cases I cited which the lower courts' contempt rulings were overturned, all of those should not have happened, because according to you once in a contempt phase, no more standard shall apply?


That was because it was a contempt ruling for violation of an injunction by ongoing infringement. None of your rulings address "prima facie" violations.

Not that no more standard shall apply. Once again, reading too much into what I wrote. The standards you have quoted are not related to a contempt ruling for a "prima facie" violation. One doesn't get to bring up whatever standard they want, whenever they want it.


----------



## nobody99

jacmyoung said:


> Because those parts, while not infringing, the use of such parts aided the infringing products that were in the field, just like the people who aided the continued sell and use... of the infringing products, no good, according to the court.


So, does the injunction for parts include *all* companies?

Let's say Pumps Unlimited infringed on a patent of Quality Pumps Inc. An injunction is put in place that prevents Pumps Unlimited from selling spare parts. Does that injunction prevent, say, Pete's Pump Company (a totally unrelated party) from selling spare parts?

Think this one through. Come the logical conclusion.


----------



## jacmyoung

Greg Bimson said:


> Again, no one knows for certain whether those products infringe. So to say the adjudicated products no longer infringe is not a fact.


No one has to know for certain, no one has to know for a fact, as long as a doubt can be established, DISH is not in contempt. The certainty, the fact, can be established, just not during contempt, rather in a new trial.



> None of your rulings address "prima facie" violations.
> 
> Not that no more standard shall apply. Once again, reading too much into what I wrote. The standards you have quoted are not related to a contempt ruling for a "prima facie" violation. One doesn't get to bring up whatever standard they want, whenever they want it.


Once again, you might have missed my "prima facie" part, I did address it above.


----------



## James Long

jacmyoung said:


> Except my "prima facie" interpretation of the injunction told me no the judge did not prohibit *any* DVR functions on the adjudicated DVRs, only *the* DVR functions determined to have infringed.


That is certainly the reading that DISH is hoping for ... but it doesn't seem to be a plain language reading - it is a heavy interpretation.



> It is like saying in a case involving writing bad checks against an account, the injunction can only prohibit the bad check writer from continuing to write bad checks against the same account, but not any good checks against the same account. I know it is hard to believe which is why I have always warned against using any analogy for comparison, why I have always used patent cases for comparison.


Always until now or always since the last time you used a non-patent comparison? 

It is a deeper argument to say that the judge's injunction was not valid due to asking DISH to do something the judge had no right to ask. A very deep argument. That's the argument you are making in this "check" example as well. That the judge said "NO check writing" when the law didn't allow that instruction.

Right or wrong, that's not "plain reading" and _should_ have been appealed before. DISH laundry listed everything else they thought was wrong with the case, why not that?


----------



## James Long

(emphasis added


jacmyoung said:


> Greg Bimson said:
> 
> 
> 
> Again, no one knows for certain whether those products infringe. So to say the adjudicated products no longer infringe is not a fact.
> 
> 
> 
> No one has to know for certain, no one has to know for a fact, *as long as a doubt can be established, DISH is not in contempt*. The certainty, the fact, can be established, just not during contempt, rather in a new trial.
Click to expand...

What was DISH asked to do?
A) Disable the DVR functions on listed "Infringing Products".
B) Change the software on listed "Infringing Products".
C) Cease offering DVR service on any product.
D) Sell their business to Tivo for one penny.

If they didn't do what the court asked them to do they can be held in contempt. The argument of whether or not it was a legitimate request might persuade the judge or an appeals court to not hold DISH in contempt, but contempt is not doing as instructed.

DISH can't be held in contempt for violating the patent. DISH can't be held in contempt for refusing to inform the judge of potential software changes. DISH can't be held in contempt for designing a new DVR. But DISH _CAN_ be held in contempt for not following a judge's order ... all three of those actions could lead to contempt IF (and only if) the judge instructed DISH not to do those things.

That's what contempt is. Not doing as told.


----------



## jacmyoung

James Long said:


> (emphasis addedWhat was DISH asked to do?
> A) Disable the DVR functions on listed "Infringing Products".
> B) Change the software on listed "Infringing Products".
> C) Cease offering DVR service on any product.
> D) Sell their business to Tivo for one penny.
> 
> If they didn't do what the court asked them to do they can be held in contempt. The argument of whether or not it was a legitimate request might persuade the judge or an appeals court to not hold DISH in contempt, but contempt is not doing as instructed.
> 
> DISH can't be held in contempt for violating the patent. DISH can't be held in contempt for refusing to inform the judge of potential software changes. DISH can't be held in contempt for designing a new DVR. But DISH _CAN_ be held in contempt for not following a judge's order ... all three of those actions could lead to contempt IF (and only if) the judge instructed DISH not to do those things.
> 
> That's what contempt is. Not doing as told.


Except the judge only said two of the above four, not three.

And in the latest argument I tried to use the newly researched standard to explain why the "prima facie" Greg insisted may lead to some serious conseqences for the court. I have given up many grounds just so I could ask the other side to see the point, and I think I have been somewhat successful.

But I have never lost sight on my original theory, that is the reason DISH did not have to appeal the injunction itself, and the reason the appeals court did not have to care for it, was not only because the "the DVR functions" term, but also the "Infringing Products" term, two terms combined to get DISH in the clear.

Because if you read the injunction, it first defines the adjudicated devices as "Infringing Products", then referred to those specific Infringing Products' DVR functions as an act to be prohibited. It will be entirely logical to argue in front of the judge, and in front of the appeals court, if necessary, that DISH's interpretation was reasonable when it said it was in compliance with the injunction, once the new software is no longer infringing, then the products are no longer Infringing Products, and the DVR functions on those products, once were infringing, are no longer infringing.

Of course the judge could say otherwise, but you can not say DISH did not make a good effort to reasonably interpret the injunction, then made a good faith effort to come into compliance with it. It is certainly reasonable to say DISH did not ignore the injunction, even if their interpretation was not exactly what the judge had meant to be.

That combined with the fact if the Tivo's interpretation should prevail, the Circuit Court's long held standard will be broken, not just one standard, but pretty much all standards, when it comes to the contempt issue.

Do you really believe this is the route the judge will insist to take, or if so, this is the path the Circuit Court is willing to take? For what? Is Tivo worth so much to them for them to be willing to sacrifice all the uniform standards they all worked so hard to establish, and be relegated to answer those questions whenever a new case arise from now on, that how come you let Tivo do this, but not us?

Let me just remind everyone, neither Tivo, nor DISH were much of paticular interest to the judge. In that status meeting, the judge did not care to listen to Tivo's lead counsel, and after his treatment to the Tivo's lead counsel, DISH's lead counsel almost lost his words. In fact the judge did not even care to squeeze in a mere one and one half hour hearing between then and three months from now. Did you really think if this case is of most important interest where he was planning to take a stand, make an example out of DISH, risking his own reputation as going against the established standards, just to make a point, if this was his intention, he could not find in his schedule to let in this most important but very brief one and one half our meeting? That it has to wait till way back three months from now, when he really will have nothing on the schedule, with no excuse for not wanting to hear these two continue to bicker?

No he did not care for them, as far as he is concerned he could be done with those two a long time ago. To think he is going to raise the stake so high for just these two spoiled brats? Give me a break.


----------



## Greg Bimson

jacmyoung said:


> Because if you read the injunction, it first defines the adjudicated devices as "Infringing Products", then referred to those specific Infringing Products' DVR functions as an act to be prohibited. It will be entirely logical to argue in front of the judge, and in front of the appeals court, if necessary, that DISH's interpretation was reasonable when it said it was in compliance with the injunction, *once the new software is no longer infringing, then the products are no longer Infringing Products, and the DVR functions on those products, once were infringing, are no longer infringing.*


Again. Procedure. No one is examining the new software, to determine its infringement status.

Because if you read the injunction, "Infringing Products" only means eight specific DVR models.


jacmyoung said:


> That combined with the fact if the Tivo's interpretation should prevail, the Circuit Court's long held standard will be broken, not just one standard, but pretty much all standards, when it comes to the contempt issue.


The "standard" is to follow the darn injunction. The "standard" is that if there are any adjudicated devices which have been ordered to be shut down, that one notifies the court so that work can continue on developing a workaround.

The "standard" is not that DISH/SATS gets to do anything they want and plead ignorance of the law. DISH/SATS aren't stupid. This is a legal shell game, where they are trying to find someone and anyone to hear their argument, and delay finality until they somehow have a winning hand. That is very risky.


----------



## jacmyoung

Greg Bimson said:


> Again. Procedure. No one is examining the new software, to determine its infringement status.


The procedure in a contempt proceeding is not to examine the new software to see if it still infringes or not, the infringer only needs to establish the *doubt* that the modified devices may not infringe, in order to avoid a contempt. That is the procedure.



> ...The "standard" is to follow the darn injunction. The "standard" is that if there are any adjudicated devices which have been ordered to be shut down, that one notifies the court so that work can continue on developing a workaround.


Show me such standard, where the *notification* is required, just because Tivo said so is not so, Tivo is not the law, please find such standard for us.



> The "standard" is not that DISH/SATS gets to do anything they want and plead ignorance of the law. DISH/SATS aren't stupid. This is a legal shell game, where they are trying to find someone and anyone to hear their argument, and delay finality until they somehow have a winning hand. That is very risky.


The standards I have discovered are many, all of which are in favor of what DISH is doing:

1) The infringer should be allowed to modify the infringing products and continue as before, as long as the workaround is legitimate.

2) The only acts an injunction may prohibit are infringement of patent by the adjudicated devices...and an injunction must explicitly proscribe only those acts.

3) A contempt proceeding is to determine if facts give rise to fair ground the doubt whether the modified devices are still within the scope of the injunction. If a doubt can be established, a contempt will be inapproppriate, the doubt must be resolved in a new, independent proceeding.

4) During a contempt proceeding, the judge can not just look at the similarities between the modified devices, and the adjudicated devices, but first the differences, and determine based on the differences, not similarity, not sameness, for example, not if the DP501 is still called DP501, but the differences between the current DP501, and the DP501 then. Yes there are differences between the two, and the judge must first look at such differences, in a contempt proceeding.

Show me where any standard says the infringer must notify the court of any modifications?


----------



## nobody99

jacmyoung said:


> Show me where any standard says the infringer must notify the court of any modifications?


Has it occurred to you that no company has ever been so stupid to let it get this far?


----------



## Greg Bimson

jacmyoung said:


> The procedure in a contempt proceeding is not to examine the new software to see if it still infringes or not, the infringer only needs to establish the doubt that the modified devices may not infringe, in order to avoid a contempt. That is the procedure.


That is the procedure for reviewing a contempt motion regarding violations of an injunction regarding ongoing infringement. This does not apply to a contempt motion regarding "prima facie" violations of an injunction.


jacmyoung said:


> 1) The infringer should be allowed to modify the infringing products and continue as before, as long as the workaround is legitimate.


1) And if DISH/SATS released the new 844 ViP DVR with new software, that would be correct. However, you are completely ignoring that the only modification to "Infringing Products" is to disable DVR functions, as the only course of action ordered by the injunction.


jacmyoung said:


> 2) The only acts an injunction may prohibit are infringement of patent by the adjudicated devices...and an injunction must explicitly proscribe only those acts.


The injunction prohibits the infringement of the Time Warp patent by having adjudicated, "Infringing Products" DVR functionality disabled. The injunction does meet this requirement, as this standard is only valid when having the Court of Appeals rule that the injunction is overbroad. The time for challenging the injunction has passed.


jacmyoung said:


> 3) A contempt proceeding is to determine if facts give rise to fair ground the doubt whether the modified devices are still within the scope of the injunction. If a doubt can be established, a contempt will be inapproppriate, the doubt must be resolved in a new, independent proceeding.


The contempt motion Judge Folsom will rule does not determine infringement. The contempt motion filed by TiVo is simply asking the court to find DISH/SATS in contmept for ignoring the clear directive of the injunction order. There will not be any question about what a "modification" does.


jacmyoung said:


> 4) During a contempt proceeding, the judge can not just look at the similarities between the modified devices, and the adjudicated devices, but first the differences, and determine based on the differences, not similarity, not sameness, for example, not if the DP501 is still called DP501, but the differences between the current DP501, and the DP501 then. Yes there are differences between the two, and the judge must first look at such differences, in a contempt proceeding.


Again, the court will not look at differences in modified devices during a contempt proceeding regarding prima facie violations of an injunction.


jacmyoung said:


> Show me where any standard says the infringer must notify the court of any modifications?


Why? So you can simply say it doesn't apply? Even if I show you a clear-cut one, all that will come back is that the meaning of "the" changes the entire ruling in DISH/SATS favor.

TiVo provided one or two in their contempt motion brief.


----------



## kmill14

jacmyoung, why do you continue to ignore an entire section of TiVo's argument:



> "In a civil contempt proceeding, the party seeking an order of contempt need only establish (1) that a court order was in effect, and (2) that the order required certain conduct by the respondent, and (3) that the respondent failed to comply with the court's order." FDIC v. LeGrand, 43 F.3d 163, 170 (5th Cir. 1995)


All 3 of the above elements have been met, since E* hsa failed to *"disable all storage to and playback from a hard disk drive of television data".*

Now, I realize you have spent a LONG time arguing that the above order only applies to specific (yet mysteriously undefined) functions that store and playback data from the hard disk drive. You would expect the Court to say that the plain face order of the injunction is lacking the key verbage that you quote from the CC.
So this leads to Tivo's next argument:



> Having passed up the opportunity to challenge the validity, scope, or specific terms of the injunction on appeal, EchoStar cannot do so now in the guise of arguing that the spirit of the injunction required something different from its literal terms. United States v. Ryan, 402 U.S. 530, 532 n.4


and



> "collateral attack on an injunction during contempt proceedings is prohibited if earlier review of the injunction was available" (citing Ryan, 42 U.S. at 532 n.4)).


And EVEN IF you were right in all your arguments, you cannot get around this particular gem, which by itself will make it very easy for all Courts to find E* in contempt:



> "If a party can make himself a judge of the validity of orders which
> have been issued, and by his own act of disobedience set them aside, then are the courts impotent, and what the Constitution now fittingly calls the 'judicial power of the United States' would be a mere mockery." Gompers, 221 U.S. at 450.


You see, E* decided to take matters into their own hands, and decide themselves whether they were or were NOT in compliance with the Court's order. This is why E*'s decision NOT the appeal the injunction itself will come back to haunt them.

And finally:



> The Supreme Court has affirmed contempt convictions *even where the underlying injunction would "unquestionably be subject to substantial onstitutional questions*." Walker, 388 U.S. at 317. As the Walker court explained,
> "respect for judicial process is a small price to pay for the civilizing hand of law." Id. at 321.


----------



## Greg Bimson

kmill14 said:


> jacmyoung, why do you continue to ignore an entire section of TiVo's argument:
> 
> 
> 
> "In a civil contempt proceeding, the party seeking an order of contempt need only establish (1) that a court order was in effect, and (2) that the order required certain conduct by the respondent, and (3) that the respondent failed to comply with the court's order." FDIC v. LeGrand, 43 F.3d 163, 170 (5th Cir. 1995)
Click to expand...

Because while jacmyoung is wrapped up in what standard should apply, this is the ONLY standard for finding "prima facie" violations of an injunction order.

Here is the big hint why jacmyoung's position doesn't work, from DISH/SATS lead counsel Harold McElhinny:


> McElhinny: And declarations and whatever their showing is for why contempt is appropriate would be helpful. *If we are going down the contempt road to determine where the contempt is, we would prefer to do it in one, you know, fell swoop.* I mean, if they think they can get contempt on the design-around rather than doing, you know, a first hearing to determine whether or not there is a, you know, a prima facie violation, then a second hearing, if the discovery is going to be going on in the same time and if the court is not going to move us in front of everything else on your schedule, then it makes sense to me to have them have one contempt motion and then the court can determine --


DISH/SATS wanted ONE contempt hearing, on both the "prima facie" violations, as well as a status on the software at the same time. This way, DISH/SATS could very well be found in contempt for "prima facie" violations, but if the software was found to be more than colorably different, then there would be no contempt. *By delaying discussion of the new software*, TiVo put DISH/SATS at a big disadvantage. That is EXACTLY why DISH/SATS filed the Delaware lawsuit less than an hour later.


----------



## James Long

jacmyoung said:


> James Long said:
> 
> 
> 
> What was DISH asked to do?
> A) Disable the DVR functions on listed "Infringing Products".
> B) Change the software on listed "Infringing Products".
> C) Cease offering DVR service on any product.
> D) Sell their business to Tivo for one penny.
> 
> 
> 
> Except the judge only said two of the above four, not three.
Click to expand...

With all due respect, what are you smoking and are you willing to share?

The injunction demands ONE SPECIFIC action from that list. And it isn't option B.
Perhaps you're reading too many extra words into the choices?


----------



## jacmyoung

nobody99 said:


> Has it occurred to you that no company has ever been so stupid to let it get this far?


Oh many, many had been found in contempt and only had the Circuit overturned the rulings.


----------



## jacmyoung

James Long said:


> With all due respect, what are you smoking and are you willing to share?
> 
> The injunction demands ONE SPECIFIC action from that list. And it isn't option B.
> Perhaps you're reading too many extra words into the choices?


Well then you can only smoke on A) I think. I was given you too much credit.


----------



## CuriousMark

spear61 said:


> Being in contempt is not the end of the world. The judge could easily find contempt, and the sanction might be as little as awarding legal fees to Tivo with the changed software and infringement question continuing on with more litigation.


I want to investigate this more. At this point I think it is highly likely TiVo will prevail and E*/Dish will be found in contempt. What do people think the likely punishments will be? I see a range of options from the above on the mild end to a full shut down of DVRs on the harsh end. Somewhere in the middle the judge could play match-maker and fine dish lightly or heavily until they either settle or optionally shut the DVRs down. There is a whole range of possibilities here and I would really like to know what people think are likely based on past patent infringement cases they have reviewed.


----------



## Greg Bimson

jacmyoung said:


> Oh many, many had been found in contempt and only had the Circuit overturned the rulings.


In contempt of what?


----------



## jacmyoung

Greg Bimson said:


> ... The contempt motion filed by TiVo is simply asking the court to find DISH/SATS in contmept for ignoring the clear directive of the injunction order. There will not be any question about what a "modification" does.Again, the court will not look at differences in modified devices during a contempt proceeding regarding prima facie violations of an injunction.Why? So you can simply say it doesn't apply? Even if I show you a clear-cut one, all that will come back is that the meaning of "the" changes the entire ruling in DISH/SATS favor.
> 
> TiVo provided one or two in their contempt motion brief.


Let me just give you my scenario as what might happen on 9/4, remember each party has 30 minutes to argue in front of the judge.

Tivo will start by saying look your honor, the DP501 is today as it was back then, still the same name, therefore still within the scope of the injunction, and DISH has been ignoring your order&#8230;

DISH will start by saying your honor, the today's DP501 is different from the DP501 yesterday, and we have the evidence for you in our past filings, you have looked at them&#8230;

After each had their say, the judge has two documents on front of him along with all the filings from the past meeting. I am sure you can agree he will have the time to look at all of them at that point, or at least heard them.

Now the judge will try to clarify his "face of the injunction", but you are telling us there is not a chance the judge can even look at the above arguments, and documents? Why ask for them in the first place?

The law says during a contempt hearing, he *should first* look at the differences between the current DP501s, and the past DP501s, *not* the similarities nor sameness, but the *differences first*. You are telling me he could not possibly even look at the differences DISH described in its filing?

And it is simply not possible that he may follow the rule regarding what he should do in his contempt proceeding? I am not saying he will, I just object to your notion that he cannot follow that rule.

Of course he can, he can use that rule to tell both Tivo and DISH look I am not going to give you anything today, go back and prepare more information for me and I am scheduling another meeting two months from now, by then I will in fact look at the evidence on the new software, because guess what I need to look at such difference, I am telling you Tivo I need to, the law says so.

You mean he absolutely will not be able to tell Tivo that? Of course he can, he can say whartever he wish in the meeting, he can talk on and on about his fly-fishing trips in the past three months if he choose to, and DISH and Tivo will just have to listen to him while they have their underpants in a knot standing there, listening to him go on and on.


----------



## nobody99

CuriousMark said:


> I want to investigate this more. At this point I think it is highly likely TiVo will prevail and E*/Dish will be found in contempt. What do people think the likely punishments will be? I see a range of options from the above on the mild end to a full shut down of DVRs on the harsh end. Somewhere in the middle the judge could play match-maker and fine dish lightly or heavily until they either settle or optionally shut the DVRs down. There is a whole range of possibilities here and I would really like to know what people think are likely based on past patent infringement cases they have reviewed.


I think you're right, and I think that Judge Folsom's reaction will be similar to Judge Spencer's when presiding over RIM/NTP...along the lines of "I can't believe you are leaving a court to make a legal decision. And a legal decision is what you will get."

That was before an injunction ever issued - so this case is farther along. But I think he'll find DISH in contempt, and _strongly_ suggest that the two sides settle before damages are decided and imply that neither side will like the outcome otherwise.


----------



## jacmyoung

Greg Bimson said:


> In contempt of what?


Who cares, he said DISH was the only one stupid enough to go this far, I told him DISH is hardly the only one, a lot of companies had gone far beyond DISH's point before.


----------



## nobody99

nobody99 said:


> So, does the injunction for parts include *all* companies?
> 
> Let's say Pumps Unlimited infringed on a patent of Quality Pumps Inc. An injunction is put in place that prevents Pumps Unlimited from selling spare parts. Does that injunction prevent, say, Pete's Pump Company (a totally unrelated party) from selling spare parts?
> 
> Think this one through. Come the logical conclusion.


Jacmyoung, since you didn't comment, let me just revisit this. You've stated over and over again that the only thing a patent can enjoin is the act of infringement. I've shown you a case that has some similarities to TiVo's case (patent infringement, perm. injunction issued, not obeyed) that you are incorrect in your assertion.

In the case I referenced, a pump manufacturer was prevented from selling replacement parts that were not patented. Any other company in the word could sell those parts, just not the one that sold the infringing pump in the first place.

Could this, I don't know, be a way for the court to prevent the company from profiting as a result of the infringment? (the answer is a resounding "yes" by the way, as noted in the case). Think about it - anyone in the world who made replacement parts for these pumps is allowed to sell them, _except_ for the company who originally sold them pump.

In a similar vein, is it _possible_ that you have misread the injunction, and perhaps the part about shutting down all DVR functionality is about preventing DISH from profiting as a result of the infringement?

I'm not suggesting that's the reason, or that it's legal, or that it makes sense. Do you believe it's possible that the reason for enjoining the _existing_ DVRs in a _seperate_ order on the injunction could be that the court does not want DISH to profit from _those particular_ DVRs?

The rest of the injunction seems to be just like all the others - DISH can design around the patent for _new_ sales, TiVo can still file a motion for contempt on _new_ DVRs without a new trial if it believes the new software is only colorably different.


----------



## Curtis52

Greg Bimson said:


> In contempt of what?


Contempt of court.


----------



## Greg Bimson

Curtis52 said:


> Contempt of court.


For violating what?


----------



## nobody99

Just for fun....here's some of the language from http://www.ll.georgetown.edu/federal/judicial/fed/opinions/94opinions/94-1298.html



> Here, the district court determined, and MMEI does not challenge, that Metaullics *proved entitlement to lost profits for the sale of pumps and what the court referred to as convoyed sales of repair parts.* Although the court held that Metaullics was clearly entitled to lost profits on all spare parts sales, Metaullics did not attempt to obtain damages for future repair parts sales *because the injunction prohibited MMEI from selling parts*. Rather, Metaullics sought and received damages only through April 15, 1994, for past sales of repair parts. *Thus, Metaullics was not fully compensated for the infringement because the damages award did not include future lost sales of repair parts for which Metaullics had established entitlement.*
> 
> Moreover, *the district court's decision not to modify the injunction is further supported by MMEI's failure to object to the scope of the permanent injunction before the damages phase of the trial.* ... Any objection by MMEI to the court's injunction prohibiting the sale of parts should have been raised before the damages phase of the trial. Under all these circumstances, the court did not abuse its discretion when it denied MMEI's motion to modify the injunction.


How about some replacements? Before I'm slammed too bad for this, I know, it's a stretch. But it's less of a stretch than arguing the meaning of "the."



> HYPOTHETICAL! HYPOTHETICAL!
> 
> Here, the district court determined, and DISH does not challenge, that TiVo proved entitlement to lost profits for the sale of DVRs and what the court referred to as monthly DVR fees. Although the court held that TiVo was clearly entitled to lost profits on all monthly DVR fees, TiVo did not attempt to obtain damages for future DVR fees *because the injunction prohibited DISH from enabling the DVR functionality on DVRs that were placed with customers*. Rather, TiVo sought and received damages only through April 16, 2006, for reasonable royalty and lost profit. *Thus, TiVo was not fully compensated for the infringement because the damages award did not include future monthly DVR fees for which TiVo had established entitlement.*
> ...
> Moreover, *the district court's decision not to modify the injunction is further supported by DISH's failure to object to the scope of the permanent injunction before the damages phase of the trial.* ... Any objection by DISH to the court's injunction prohibiting the use of DVR functionality in the enjoined devices should have been raised before the damages phase of the trial. Under all these circumstances, the court did not abuse its discretion when it denied DISH's motion to modify the injunction.
> 
> HYPOTHETICAL! HYPOTHETICAL!


If the glove fits, you must hold in contemp :lol:


----------



## Greg Bimson

jacmyoung said:


> The law says during a contempt hearing, he should first look at the differences between the current DP501s, and the past DP501s, not the similarities nor sameness, but the differences first.


This is the only part of your scenario to which I'll respond:

The law does not say the quoted material. That is your interpretation of the case law. And it does not relate.


jacmyoung said:


> You are telling me he could not possibly even look at the differences DISH described in its filing?


The judge will most likely not look at the differences, because the contempt motion is not based upon ongoing infringement. Watch the game that Curtis52 and I are playing.


----------



## kmill14

jacmyoung said:


> Tivo will start by saying look your honor, the DP501 is today as it was back then, still the same name, therefore still within the scope of the injunction, and DISH has been ignoring your order&#8230;


jacmyoung, you seem to have trouble with reading comprehension, because nowhere in TiVo's motion did they mention anything about the adjudicated devices being the same today as they were back when the injunction was written.



jacmyoung said:


> DISH will start by saying your honor, the today's DP501 is different from the DP501 yesterday, and we have the evidence for you in our past filings, you have looked at them&#8230;


I am STILL not aware of a stipulation in the injunction that said "disable the ability to write TV data to the hard-drive UNLESS the adjudicated product is "different"." That's pretty much the worst argument I have seen you write yet.



jacmyoung said:


> The law says during a contempt hearing, he *should first* look at the differences between the current DP501s, and the past DP501s, *not* the similarities nor sameness, but the *differences first*. You are telling me he could not possibly even look at the differences DISH described in its filing?


Actually, the law doesn't say that at all. You see: during a contempt hearing, all the Judge has to do is see if E* disobeyed the Court's order. If they did, that equals contempt. He doesn't need to look at anything else.



jacmyoung said:


> And it is simply not possible that he may follow the rule regarding what he should do in his contempt proceeding? I am not saying he will, I just object to your notion that he cannot follow that rule.


OH, I am QUITE sure he will follow the rule regarding what 3 elements are requireed to be held in contempt.

But you refuse to address my previous post detailing exactly what Tivo's argument is in terms of THE LAW, as addressed by the Circuit Court AND the Supreme Court. I understand why, but it just forces me to keep repeating myself.


----------



## kmill14

Greg Bimson said:


> This is the only part of your scenario to which I'll respond:
> 
> The law does not say the quoted material. That is your interpretation of the case law. And it does not relate.The judge will most likely not look at the differences, because the contempt motion is not based upon ongoing infringement. Watch the game that Curtis52 and I are playing.


Why would the Judge himself look at the differences? E* agreed to a hearing based on the LAW, not with witnesses or technical experts to determine said differences .

Nope, the Judge is giving TiVo what they want...a hearing based on the fact that E* disobeyed the Court's order to disable the hard-drive functionality such that it cannot store TV data.


----------



## Greg Bimson

kmill14 said:


> Why would the Judge himself look at the differences? E* agreed to a hearing based on the LAW, not with witnesses or technical experts to determine said differences .


I am giving the benefit of the doubt until we see DISH/SATS filing and exactly what the judge determines is valid in the contempt hearing.

I still agree with your statement, but would rather go through the important parts of the procedure before I say the door is slammed shut.


----------



## James Long

nobody99 said:


> Just for fun....here's some of the language from http://www.ll.georgetown.edu/federal/judicial/fed/opinions/94opinions/94-1298.html
> 
> How about some replacements? Before I'm slammed too bad for this, I know, it's a stretch. But it's less of a stretch than arguing the meaning of "the."


Where is the FICTION FICTION FICTION watermark? I hope nobody reads that later and doesn't understand that it is a "word replacement" game.

But on point, I doubt DISH will have any problem paying additional royalties from 2006 through the magic date that their DVRs no longer infringed. Damages for infringement from April through August 2006 has been addressed. Tivo will get what is due them.

Shutting down their DVRs forever? That's still up to the judge.


----------



## kmill14

Interesting timing James on that topic. It appears TiVo has filed a new motion with the Court to get discovery on E*'s DVR statistics specific to calculating damages at the 9/4 hearing. E* does not want to allow discovery, even though that is part of the Paice roadmap the Judge wants them to follow.

Tivo's Motion:

http://www.investorvillage.com/smbd.asp?mb=3928&mn=30389&pt=msg&mid=5001407

E*'s Response:

http://www.investorvillage.com/smbd.asp?mb=3928&mn=30390&pt=msg&mid=5001444


----------



## kmill14

Here is Exhibit B (what documents TiVo requested)

*****
II. DOCUMENTS TO BE PRODUCED

1. Provide documents sufficient to determine on a monthly basis for the Stay Period the total number of placements of models DP-501, 508, 510, 721, 921, 522, 625, and 942.

2. Provide documents sufficient to determine on a monthly basis for the Stay Period the monthly average number of DVR placements per DISH subscriber household and the churn (i.e., turnover) rate for DISH Network subscribing households receiving or using DVR(s).

3. If you contend that TiVo is not entitled to damages during any part of the Stay Period on models DP-501, 508, 510, 721, 921, 522, 625, or 942, based on changes to software, provide documents sufficient to determine the number of units so changed and when the software of each such unit was changed.

4. If you contend that TiVo is not entitled to damages during the Stay Period on placements of any DVR models other than models DP-501, 508, 510, 721, 921, 522, 625, and 942, provide documents sufficient to identify such DVRs by model numbers and to determine on a monthly basis the number of DVRs placed.

5. Provide documents sufficient to determine on a monthly basis during the Stay Period EchoStar's total expenditure on advertising that mentioned TiVo and/or DVRs. 

6. If you contend that TiVo is not entitled to damages during the Stay Period on any EchoStar DVR model because you contend that model is not infringing based on the way it operates, provide all documents describing or relating to its operation.


----------



## nobody99

James Long said:


> Where is the FICTION FICTION FICTION watermark? I hope nobody reads that later and doesn't understand that it is a "word replacement" game.


You're right, and I was actually thinking that as I wrote it. I will edit the post again just to be sure there's no misunderstanding


----------



## James Long

Here are the arguments on "docket control" and the judge's approval of the filed schedule.

1.) * June 13, 2008* TiVo motion and brief for contempt on Issue 1 in June 5, 2008 Order (up to 20 pages, excluding exhibits). EchoStar motion and brief re Advance Exchange Program. Agreed

2.) *June 30, 2008* EchoStar response brief re contempt on Issue 1 (up to 20 pages, excluding exhibits). TiVo response brief re Advance Exchange Program. Agreed

3.) *July 11, 2008* TiVo reply brief re contempt on Issue 1 (up to 10 pages, excluding exhibits). EchoStar reply brief re Advance Exchange Program. Agreed

4.) *July 11, 2008* EchoStar to produce interrogatory responses and documents responsive to TiVo written discovery. Not agreed

5.) *August 4, 2008* TiVo motion and brief on damages incurred during the period that the Permanent Injunction was stayed (up to 20 pages excluding exhibits). Not agreed

6.) EchoStar may depose any witness providing a declaration supporting TiVo's motion for no longer than three hours. Not agreed
To be completed by August 15, 2008

7.) *August 18, 2008* EchoStar response brief on damages motion (up to 20 pages, excluding exhibits). Not agreed

8.) TiVo may depose any witness providing a declaration supporting EchoStar's opposition for no longer than three hours. Not agreed
To be completed by August 28, 2008

9.) *August 29, 2008* TiVo reply brief on damages motion (up to 10 pages, excluding exhibits). Not agreed

10.) *September 4, 2008* Hearing. Each side shall have 30 minutes. Agreed

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


----------



## jacmyoung

nobody99 said:


> Jacmyoung, since you didn't comment, let me just revisit this. You've stated over and over again that the only thing a patent can enjoin is the act of infringement. I've shown you a case that has some similarities to TiVo's case (patent infringement, perm. injunction issued, not obeyed) that you are incorrect in your assertion.
> 
> In the case I referenced, a pump manufacturer was prevented from selling replacement parts that were not patented. Any other company in the word could sell those parts, just not the one that sold the infringing pump in the first place.
> 
> Could this, I don't know, be a way for the court to prevent the company from profiting as a result of the infringment? (the answer is a resounding "yes" by the way, as noted in the case). Think about it - anyone in the world who made replacement parts for these pumps is allowed to sell them, _except_ for the company who originally sold them pump.
> 
> In a similar vein, is it _possible_ that you have misread the injunction, and perhaps the part about shutting down all DVR functionality is about preventing DISH from profiting as a result of the infringement?
> 
> I'm not suggesting that's the reason, or that it's legal, or that it makes sense. Do you believe it's possible that the reason for enjoining the _existing_ DVRs in a _seperate_ order on the injunction could be that the court does not want DISH to profit from _those particular_ DVRs?
> 
> The rest of the injunction seems to be just like all the others - DISH can design around the patent for _new_ sales, TiVo can still file a motion for contempt on _new_ DVRs without a new trial if it believes the new software is only colorably different.


I think you have trouble understanding your own case, in that case, some infringing products were allowed to continue to infringe in the field after the damages paid, and the question was whether a part, any part, patented or not, may be used to repair such still-infringing products, the court said no, not surprisingly to me at all, why? Because it is common to not allow any act to continue to help another act of infringement.

In our case, DISH is trying to prove that the current products no longer infringe, and if successful, then regardless what parts will be used to repair such products, because the products are not infringing products anymore, therefore the act of using any parts to repair such non-infringing products will not be prohibited.

This will be my last response to your above case, if you can not see my logic, I am sorry.


----------



## jacmyoung

kmill14 said:


> jacmyoung, you seem to have trouble with reading comprehension, because nowhere in TiVo's motion did they mention anything about the adjudicated devices being the same today as they were back when the injunction was written....


But that is the fundation of the Tivo's "prima facie" argument isn't it?

The question is can and will the judge even be able to look at the differences between the current DP501s and the past DP501s.

On one side you say no, because Tivo did not ask the judge to look at the differences, and the judge did not grant any discovery to seek the new software, the new software will not be discussed in the next meeting.

Well yes and no. While there will not be information regarding the new software discovery in that meeting, there will be information regarding the differences, why, because DISH provided such info in its filing, and DISH will most certainly provide such differences in the next meeting just as the same or even more so as in their filing.

Each side will have 30 minutes, and I expect the first thing Tivo will tell the judge is look today's DP501s are still yesterday's DP501s, because they have the same name.

And DISH will provide evidence to say no, today's DP501s are not the same as the past DP501s and why.

Now whatever you might believe the judge's goal is in that meeting, you can not possibly insist the judge only looks at Tivo's argument but not DISH's argument. It is simply impossible.

Whether the judge cares for one argument over the other is another question, but he will look at both arguments. After he looks at both sides of arguments, he may say:

1) Look DISH I am sorry, the differences do not matter, I only care for the same names, the similarities of your adjudicated products, to your current products, and found you in contempt because this is my "prima facie" ruling. Noticed by doing so he will have violated one of the above rules, but so what, he was talking "prima facie" so that rule does not apply, so fine if that is what should happen.

2) After he looks at the differences, he decides he wants to look at the differences more, he arranges a limited discovery on the new software and reschedule another meeting just to learn more about the differences.

3) After he looks at the differences, he decided such differences described by DISH are enough for him, DISH will not be in contempt, he will grant Tivo a new trial to determine the new software infringement issue.

Of course you will say only 1) will be possible, 2) and 3) simply cannot happen. But that will just be your opinion. We simply don't know. I say any of the above three is possible.

But regardless, even if 1) will be the only outcome, the judge will still have to first look at the differences, because DISH will have presented such to the judge, therefore the judge will have to look at it. The judge asked both parties to provide arguments so he can listen to them, not so that he can ignore them. He will look at both evidences provided by both Tivo and DISH, that will be his job. A judge can not only listen to just one side of the story, but both sides.


----------



## Herdfan

nobody99 said:


> Has it occurred to you that no company has ever been so stupid to let it get this far?


:uglyhamme

That's hilarious.


----------



## nobody99

jacmyoung said:


> I think you have trouble understanding your own case


Let me check, hang on...nope, that's not it.



jacmyoung said:


> , in that case, some infringing products were allowed to continue to infringe in the field after the damages paid, and the question was whether a part, any part, patented or not, may be used to repair such still-infringing products, the court said no, not surprisingly to me at all, why? Because it is common to not allow any act to continue to help another act of infringement.


_Now_ I'm having trouble understanding. I thought you have said over and over that the only act an injunction can prevent is infringement.

I don't want to put words in your mouth, but here's what it looks like you're saying. The company cannot sell replacement parts because they want the infringement to stop. The court, however, said they cannot sell replacement parts because they *should not be allowed to profit from the original infringement*. Can you see the difference?



> In our case, DISH is trying to prove that the current products no longer infringe,


And if they so prove, it means nothing. The replacement pump parts didn't infringe either.



> and if successful, then regardless what parts will be used to repair such products, because the products are not infringing products anymore, therefore the act of using any parts to repair such non-infringing products will not be prohibited.


And, as the pump case showed, DISH is not entitled to future profits of the infringing device. Because TiVo did not ask for reasonable royalty or lost profits to which it was entitled in the future, it was not fully compensated. And because it was not fully compensated, the injunction can, in fact, stand.



> This will be my last response to your above case, if you can not see my logic, I am sorry.


Why are you sorry? This is certainly one way to lose an argument.


----------



## James Long

kmill14 said:


> Here is Exhibit B (what documents TiVo requested)
> 
> *****
> II. DOCUMENTS TO BE PRODUCED
> 
> 1. Provide documents sufficient to determine on a monthly basis for the Stay Period the total number of placements of models DP-501, 508, 510, 721, 921, 522, 625, and 942.


Logical to access a monthly rate on "Infringing Products" (less the ones that DISH was allowed to leave running).



> 2. Provide documents sufficient to determine on a monthly basis for the Stay Period the monthly average number of DVR placements per DISH subscriber household and the churn (i.e., turnover) rate for DISH Network subscribing households receiving or using DVR(s).


Not specific to the "Infringing Products". If DISH answers this it should only relate to "Infringing Products" and would result in self incrimination on the "new placements" issue.

For the purpose of damages Tivo only needs the count of "Infringing Products" placed. Anything else is a fishing trip for proof of contempt.



> 3. If you contend that TiVo is not entitled to damages during any part of the Stay Period on models DP-501, 508, 510, 721, 921, 522, 625, or 942, based on changes to software, provide documents sufficient to determine the number of units so changed and when the software of each such unit was changed.


A valid request as it affects the calculation of damages.



> 4. If you contend that TiVo is not entitled to damages during the Stay Period on placements of any DVR models other than models DP-501, 508, 510, 721, 921, 522, 625, and 942, provide documents sufficient to identify such DVRs by model numbers and to determine on a monthly basis the number of DVRs placed.


Gone fishing again ... products not ruled Infringing are irrelevant.



> 5. Provide documents sufficient to determine on a monthly basis during the Stay Period EchoStar's total expenditure on advertising that mentioned TiVo and/or DVRs.


Walking off the end of the pier while fishing. While the "Better than Tivo" advertising could be considered harmful to Tivo it has nothing to do with calculating damages that should be based on a number of receivers in use.



> 6. If you contend that TiVo is not entitled to damages during the Stay Period on any EchoStar DVR model because you contend that model is not infringing based on the way it operates, provide all documents describing or relating to its operation.


Deep ocean fishing. What happened to innocent until proven guilty? Tivo is assuming every DVR DISH could ever build is infringing. That is something Tivo needs to PROVE, not assume.

DISH needs to prove "Infinging Products" don't infringe ... Tivo needs to prove any unnamed products infringe. DISH doesn't need to prove their innocence on unnamed products in a contempt/damages process.


----------



## Herdfan

James Long said:


> Deep ocean fishing. What happened to innocent until proven guilty? Tivo is assuming every DVR DISH could ever build is infringing. That is something Tivo needs to PROVE, not assume.
> 
> DISH needs to prove "Infinging Products" don't infringe ... Tivo needs to prove any unnamed products infringe. DISH doesn't need to prove their innocence on unnamed products in a contempt/damages process.


I would think that is just a way of trying to get DISH to the bargaining table. Start accusing every DVR they make as infringing and make them sweat. DISH probably knows if they are or not no matter what they say publicly.

It is as much about gamesmanship as legal argument.


----------



## Greg Bimson

kmill14 said:


> jacmyoung, you seem to have trouble with reading comprehension, because nowhere in TiVo's motion did they mention anything about the adjudicated devices being the same today as they were back when the injunction was written....





jacmyoung said:


> But that is the fundation of the Tivo's "prima facie" argument isn't it?


No.

The "prima facie" argument is...

The injunction order requires DISH/SATS to disable "Infringing Products". Has that been done? No.

That's all.

James Long, I concur with most of your analysis regarding each point in Exhibit B. I do, however, believe there is some validity regarding aggreate data for the "Better than TiVo" (question 5) and the "New Operations" (question 6). The "Better than TiVo" campaign could be seen as confrontational if there were new placements of "Infringing Products". After all, with those ads, the DVRs were "better than" the company they infringed from.

The "New Operations" question is important as it relates to "Infringing Products". If DISH/SATS tries to state TiVo is only entitled to damages for a 522 until June, 2007, then the whole can of worms regarding new software should be brought up. Maybe not discovered at this time, but brought up.


----------



## Curtis52

Judge Folsom signed off on TiVo's proposed discovery schedule without a single change or comment.


----------



## nobody99

Curtis52 said:


> Judge Folsom signed off on TiVo's proposed discovery schedule without a single change or comment.


I wonder how jacmyoung will spin this into a problem for TiVo and a sure sign of impending victory for DISH.


----------



## jacmyoung

nobody99 said:


> ..._Now_ I'm having trouble understanding. I thought you have said over and over that the only act an injunction can prevent is infringement. ...


Yes my friend, in that case, the use of a non-patented part to repair an infringing product so that infringing product could continue to infringe, yes that act of part replacement could be prohibited, because that act itself infringed. Any act that pump factory did to allow that infringing product to continue was infringing act.

The above does not apply to a product that does not infringe. If that pump did not infringe, or if that pump was modified to be non-infringing anymore, then such replacement issue no longer existed.


----------



## jacmyoung

Greg Bimson said:


> No.
> 
> The "prima facie" argument is...
> 
> The injunction order requires DISH/SATS to disable "Infringing Products". Has that been done? No.
> 
> That's all.
> ...


Why? Becasue the DP501s today, are still the *same* DP501s back then, that is how that so called "prima facie" argument can possibly stick.

And accordingly, the counter argument, that the today's DP501s, are *different* than the DP501's back then, will have to be looked at, because the above two counter arguments are the basis for the "prima facie" interpretation.

If the first argument prevails, the Tivo's "prima facie" wins, if the second argument prevails, my "prima facie" wins.


----------



## nobody99

jacmyoung said:


> Yes my friend, in that case, the use of a non-patented part to repair an infringing product so that infringing product could continue to infringe, yes that act of part replacement could be prohibited, because that act itself infringed. Any act that pump factory did to allow that infringing product to continue was infringing act.


Even if the court said it was _not_ to stop the infringing act, but to stop profiting from the original infringing act?


----------



## kmill14

nobody99 said:


> I wonder how jacmyoung will spin this into a problem for TiVo and a sure sign of impending victory for DISH.


jacmyoung, pay attention. Did you not JUST see the Judge's sign-off on Tivo's request for every single thing they requested of Dish???

I personally am very curious to see if there will be a public disclosure of when this supposed "novel" software was downloaded into the existing adjudicated boxes. Its not going to matter for the purposes of the hearing, but it will be interesting to see none-the-less.


----------



## Greg Bimson

jacmyoung said:


> Why? Becasue the DP501s today, are still the same DP501s back then, that is how that so called "prima facie" argument can possibly stick.
> 
> And accordingly, the counter argument, that the today's DP501s, are different than the DP501's back then, will have to be looked at, because the above two counter arguments are the basis for the "prima facie" interpretation.


Acutally, it has nothing to do with "today" and "back then". It simply has to do with the fact there are DP-501's, there is an order to disable that DVR functionality, and nothing has been disabled.

The argument for what a 501 did and what it does now is supposed to be immaterial as it has nothing to do with the language on the face of the injunction, i.e., a "prima facie" violation.


----------



## kmill14

James,

I agree with your comments on the discovery requests. A lot of it is FISHING, and may never have to come up beyond the damages assessment stage. However, the Judge by signing off on the entire request has given TiVo access to a lot of information E* would not give out previously (and even the Judge had said was not necessary). More time for them to shoot holes in it.

Personally, I want to see when this supposedly "novel" software was downloaded to all the adjudicated boxes in the field.


----------



## James Long

Curtis52 said:


> Judge Folsom signed off on TiVo's proposed discovery schedule without a single change or comment.


So that's what I posted a few hours ago?

I wish it was more clear ... especially with all the "Not Agreed" markings (there in Tivo's original).
It looks like the way my boss signs off things without reading them.


----------



## spear61

Looks like the judge will be plowing some new ground here. Looking back at the nearly 3000 posts so far, and some very good arguements provided by both sides, I end up asking myself; How does the court address a situation (now or in the future) where a series of downloaded software changes might rapidy and continuously allow an infringer to avoid the effects of an injunction? This case will likely address part of that issue. I don't see a clear answer since design arounds are allowed. This injunction may be like the rabbit chasing the hare - you never quite get there.


----------



## spear61

James Long said:


> It looks like the way my boss signs off things without reading them.


Time to slip in a purchase order for something you really want badly!


----------



## kmill14

spear61,

Design-arounds are allowed, but all previous case law refers to design arounds on products that never were ruled on previously. 

And even if design-arounds ARE allowed on adjudged devices, the injunction on its face clearly said to disable the ability to store TV data on the hard-drives of those devices. 

E* could have challenged that order if they thought it was unfair, but they did not, and now they are stuck with it.


----------



## spear61

kmill14 said:


> spear61,
> 
> Design-arounds are allowed, but all previous case law refers to design arounds on products that never were ruled on previously.
> 
> And even if design-arounds ARE allowed on adjudged devices, the injunction on its face clearly said to disable the ability to store TV data on the hard-drives of those devices.
> 
> E* could have challenged that order if they thought it was unfair, but they did not, and now they are stuck with it.


Not necessarily. All depends on the "spirit" of the judge.


----------



## kmill14

Well, all signs point to this Judge sticking to his own order. There hasn't been a time yet that he has ruled in E*'s favor, except that he threw out the willfullness portion of the jury verdict (smartly).


----------



## spear61

kmill14 said:


> Well, all signs point to this Judge sticking to his own order. There hasn't been a time yet that he has ruled in E*'s favor, except that he threw out the willfullness portion of the jury verdict (smartly).


If it's in his "spirit" it's in his order


----------



## jacmyoung

Greg Bimson said:


> No.
> 
> The "prima facie" argument is...
> 
> The injunction order requires DISH/SATS to disable "Infringing Products". Has that been done? No.
> 
> That's all.
> 
> ...


Let me ask you this question then, what if DISH decides to mail out new model labels to every owner of the DVR on the list, and ask them to slap the new labels on their DVRs, say the DP501 owners get a new label called DP5011&#8230;and the DVR owners will be given a final date to call in to verify they have replaced the labels, else the DVRs will stop working, and when that happens, the owners will call and they will then be told to replace that label, and the DVR will be turned back on after that.

Would that satisfy the judge? Would that stop the so called "prima facie" contempt? You do realize that is not a very difficult thing to so, don't you? People get notifications in the mail all the time about their products.

What will be your answer? I know it is a little late, but it can still be done, DISH can pay the damages up to the date they replace the labels. After that the DVRs will be allowed to continue because the "prima facie" order will be met.


----------



## jacmyoung

Curtis52 said:


> Judge Folsom signed off on TiVo's proposed discovery schedule without a single change or comment.


I could not see any significance of sigining off on the schedule at all, especially with the agreed and not agreed.

The schedule Tivo provided is one of the most organized and clear doc I have ever seen from Tivo, makes total sense. DISH should provide those information, at least to some degree so the calculations on the enhenced damages during the stay may be performed, whether Tivo prevail on 9/4, or DISH prevail on 9/4, those info will be needed regardless.


----------



## Greg Bimson

Yes, but then we get into the DP-501/DP-5011 debate, and the fact that "Infringing Products" that once were DP-501's are now DP-5011's. Makes it difficult to avoid the issue.


----------



## jacmyoung

But I do want to ask the Tivo fans this question, why did Tivo ask for the info/timing of the new software download onto the DVRs on the injunction list? According to you folks such info is not necessary. It is irrelevant to the assessment of enhanced damages by the DVRs on the list, regardless if the new software was downloaded or not, those DVRs are in violation therefore will have to pay the damages.

Why then ask for such info?


----------



## jacmyoung

Greg Bimson said:


> Yes, but then we get into the DP-501/DP-5011 debate, and the fact that "Infringing Products" that once were DP-501's are now DP-5011's. Makes it difficult to avoid the issue.


DP501/DP501, prima facie;
DP501/DP5011, no prima facie.

Why is it difficult?


----------



## nobody99

jacmyoung said:


> DP501/DP501, prima facie;
> DP501/DP5011, no prima facie.
> 
> Why is it difficult?


On the date of the injunction, there were three million or so DVRs that were enjoined. Let's say the court went out and slapped a bright orange label that said "INFRINGING PRODUCT" on each of these boxes.

The *only* test on September 4 will be "Have the DVR functions been disabled on the boxes with bright orange stickers?"


----------



## Greg Bimson

jacmyoung said:


> DP501/DP501, prima facie;
> DP501/DP5011, no prima facie.
> 
> Why is it difficult?


Because what exactly is a 5011? If one buys a 501, and powers it up, and it has the old infringing software, it is a 501.


jacmyoung said:


> But I do want to ask the Tivo fans this question, why did Tivo ask for the info/timing of the new software download onto the DVRs on the injunction list? According to you folks such info is not necessary. It is irrelevant to the assessment of enhanced damages by the DVRs on the list, regardless if the new software was downloaded or not, those DVRs are in violation therefore will have to pay the damages.


TiVo is trying to stay ahead of the game...

TiVo: tell us how many placements of "Infringing Product" DP-522's there are between August, 2006 and April, 2008.
DISH/SATS: (the number goes down to zero once they've downloaded the new software, because that is central to DISH/SATS argument)
TiVo: Okay. How many placements of a model named the DP-522 are there right now?

TiVo's asking for the world because DISH/SATS had briefed the court about their belief that they aren't subject to the injunction. So TiVo, in expediency, needs to know the numbers from both ends. If DISH/SATS now only wants to provide numbers of DP-522's from beginning to end without factoring in the new software, then TiVo has attained their goal regarding damages. If DISH/SATS does want to provide based upon the new software, there are going to have to be other issues addressed, like the software, etc. But those issue need not be addressed during this proceeding.


----------



## jacmyoung

nobody99 said:


> On the date of the injunction, there were three million or so DVRs that were enjoined. Let's say the court went out and slapped a bright orange label that said "INFRINGING PRODUCT" on each of these boxes.
> 
> The *only* test on September 4 will be "Have the DVR functions been disabled on the boxes with bright orange stickers?"


And DISH covers that orange label with a red label: "DP5011NIP" (non infringing products), the question still is, why is this so difficult? Did that not get DISH out of the so called "prima facie" thing?


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## nobody99

jacmyoung said:


> And DISH covers that orange label with a red label: "DP5011NIP" (non infringing products), the question still is, why is this so difficult? Did that not get DISH out of the so called "prima facie" thing?


The test is not whether the sticker is covered. The test is whether the box ever had the sticker.

yes it did, yes it's in contempt. It doesn't matter if it has new software, old software, new stickers, old stickers. If, at any point in the past, it had a court-ordered orange sticker, and the DVR functions are running, it's in contempt.


----------



## jacmyoung

Greg Bimson said:


> Because what exactly is a 5011? If one buys a 501, and powers it up, and it has the old infringing software, it is a 501.TiVo is trying to stay ahead of the game...


All I know is DP5011 is different than DP501, that is all, to defeat your "prima facie" thing. There will be no more DP501 to buy, all will be relabeled to DP5011.



> TiVo: tell us how many placements of "Infringing Product" DP-522's there are between August, 2006 and April, 2008.
> DISH/SATS: (the number goes down to zero once they've downloaded the new software, because that is central to DISH/SATS argument)
> TiVo: Okay. How many placements of a model named the DP-522 are there right now?
> 
> TiVo's asking for the world because DISH/SATS had briefed the court about their belief that they aren't subject to the injunction. So TiVo, in expediency, needs to know the numbers from both ends. If DISH/SATS now only wants to provide numbers of DP-522's from beginning to end without factoring in the new software, then TiVo has attained their goal regarding damages. If DISH/SATS does want to provide based upon the new software, there are going to have to be other issues addressed, like the software, etc. But those issue need not be addressed during this proceeding.


What issue? According to you the DP501s... must pay damages regardless new software or not, till the time the DVR functions are shut off, I still don't see why the date of which the new software was loaded on to those DVRs on the list is relavent at all.

Run your answer by me again, what exactly will be the difference knowing the date of the download or not?


----------



## jacmyoung

nobody99 said:


> The test is not whether the sticker is covered. The test is whether the box ever had the sticker.
> 
> yes it did, yes it's in contempt. It doesn't matter if it has new software, old software, new stickers, old stickers. If, at any point in the past, it had a court-ordered orange sticker, and the DVR functions are running, it's in contempt.


But that is not the "prima facie" theory, the "prima facie" theory relies 100% on the label, DP501..., did you not realize that?


----------



## nobody99

jacmyoung said:


> What issue? According to you the DP501s... must pay damages regardless new software or not, till the time the DVR functions are shut off, I still don't see why the date of which the new software was loaded on to those DVRs on the list is relavent at all.
> 
> Run your answer by me again, what exactly will be the difference knowing the date of the download or not?


Let me see if I can answer.

At the time of the injunction, they had a bunch of DP501s in a warehouse somewhere. They open the box at the warehouse load the novel new software, re-tape the box, and ship it out to a customer.

That box will be subject to the "more than colorably different" standard.


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## nobody99

jacmyoung said:


> But that is not the "prima facie" theory, the "prima facie" theory relies 100% on the label, DP501..., did you not realize that?


No, it doesn't, and you might have just uncovered why you are having such a hard time with this.

The label, DP501, identified the devices _at the time of the infringement_, not at some random time in the future. I am only speaking with respect to machines that are placed with customers, by the way.


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## jacmyoung

nobody99 said:


> No, it doesn't, and you might have just uncovered why you are having such a hard time with this.
> 
> The label, DP501, identified the devices _at the time of the infringement_, not at some random time in the future. I am only speaking with respect to machines that are placed with customers, by the way.


I am talking "prima facie" here, Greg was the one that came up with such concept, based on his research, so how about let him answer it?

I am sure Greg is capable of answering it.


----------



## Greg Bimson

jacmyoung said:


> What issue? According to you the DP501s... must pay damages regardless new software or not, till the time the DVR functions are shut off, I still don't see why the date of which the new software was loaded on to those DVRs on the list is relavent at all.
> 
> Run your answer by me again, what exactly will be the difference knowing the date of the download or not?


Let's read this very slowly...

It is TiVo's belief that DISH/SATS has not disabled a single "Infringing Product".

Therefore, asking the question, "How many DP-522's are installed, by month" may not be clear enough for DISH/SATS. They may give the answer "none" as of April, 2008.

Again, TiVo is trying to be expedient, expecting cryptic and obtuse replies from DISH/SATS, like many of the arguments here.


----------



## Greg Bimson

jacmyoung said:


> But that is not the "prima facie" theory, the "prima facie" theory relies 100% on the label, DP501..., did you not realize that?


Of course it relies 100% on the label. But just because DISH changes a DP-501 to another model number doesn't remove "prima facie", since all that has to be proven is the new name (DP-5011) is the old name (DP-501), simply trying to get around the injunction. After all, many folks bought a 501. Changing the name doesn't change what they bought.

Now IF DISH/SATS retired the DP-501, and released the DP-5011 with the new, non-infringing software installed, then that is not "prima facie".


----------



## jacmyoung

Greg Bimson said:


> Let's read this very slowly...
> 
> It is TiVo's belief that DISH/SATS has not disabled a single "Infringing Product".
> 
> Therefore, asking the question, "How many DP-522's are installed, by month" may not be clear enough for DISH/SATS. They may give the answer "none" as of April, 2008.
> 
> Again, TiVo is trying to be expedient, expecting cryptic and obtuse replies from DISH/SATS, like many of the arguments here.


I did not ask how many 522s were installed, my question was in what way the date of the new software download onto the DP501s&#8230;may change how the enhanced damage calculations on the DP501s&#8230; as they continue to run as DVRs.


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## jacmyoung

Greg Bimson said:


> Of course it relies 100% on the label. But just because DISH changes a DP-501 to another model number doesn't remove "prima facie", since all that has to be proven is the new name (DP-5011) is the old name (DP-501), simply trying to get around the injunction. After all, many folks bought a 501. Changing the name doesn't change what they bought.
> 
> Now IF DISH/SATS retired the DP-501, and released the DP-5011 with the new, non-infringing software installed, then that is not "prima facie".


What if DISH recall all DP501s, re-label them with DP5011, download the new software, mail them back, is prima facie still working on them?


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## Greg Bimson

jacmyoung said:


> I did not ask how many 522s were installed, my question was in what way the date of the new software download onto the DP501s&#8230;may change how the enhanced damage calculations on the DP501s&#8230; as they continue to run as DVRs.


Let's do this the easy way...

TiVo: How many DP-522's are in the field?
DISH/SATS: None that are infringing.

One could easily imagine this being the answer to the interrogatory.

This interrogatory is being done on a tight schedule. TiVo wants a simple answer that DISH/SATS will have to defend, as they've already bought up the point they have new software. They simply want an answer.

TiVo is allowed to act as if DISH/SATS is obtuse. They didn't disable the plain language of the injunction regarding the "Infringing Products".

If I were in DISH/SATS shoes, I'd simply answer the questions without introducing any discussion regarding the new software, including the date, as truthfully as possible. I'd also file a challenge with the court regarding TiVo questioning the need for info about the new software, because it isn't applicable to a "prima facie" violation.

But realize this: if DISH/SATS does what I describe above, they cannot use "new software" as a defense. And that is most likely why TiVo filed those questions.


----------



## Greg Bimson

jacmyoung said:


> What if DISH recall all DP501s, re-label them with DP5011, download the new software, mail them back, is prima facie still working on them?


I think that truly depends on how DISH/SATS structures their inner control documents regarding their products. But do you really think people will send in their DVR's voluntarily on a recall?


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## phrelin

Greg Bimson said:


> I think that truly depends on how DISH/SATS structures their inner control documents regarding their products. But do you really think people will send in their DVR's voluntarily on a recall?


Well, now if I got a notice to send my two 508's in and they'll send a 722, I'd give it a shot.


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## Curtis52

Greg Bimson said:


> I think that truly depends on how DISH/SATS structures their inner control documents regarding their products. But do you really think people will send in their DVR's voluntarily on a recall?


Why would they need to if the same product change could be accomplished remotely?


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## Greg Bimson

I'm no expert on this part...

So let' say DISH/SATS worked on and completed what would end up being new software that doesn't infringe on a 501. DISH/SATS could then retire the 501's for sale, load up the new, non-infringing software on the 501 shells, reserialize them and call it the 5011. Then those are for sale.

The old, retired installed units would still be 501's, even if you gave them the name 5011 when new software would be loaded upon them. People purchased 501's. And I think that is the basis of the issue about renaming them in the field.

And that is why I stated it has to do with the inner workings how DISH/SATS tracks their models. It has to do with their own control documents.

In other equipment terms, I have a friend that has a PS3 that died. He had to send it back. It gets refurbed, while a different, remanufactured and updated one gets sent back to him. There is most definitely control within the remanufacture.

And I could be wrong about this, but just like cars, isn't it possible to know what the model of a receiver is just by the serial number? If that is the case, DISH/SATS would need to recall, simply to refurb with a new serial and activate new software, to change it from a "501" model to a "5011" model.


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## Curtis52

Greg Bimson said:


> And I could be wrong about this, but just like cars, isn't it possible to know what the model of a receiver is just by the serial number? If that is the case, DISH/SATS would need to recall, simply to refurb with a new serial and activate new software, to change it from a "501" model to a "5011" model.


Regardless of serial number, regardless of which model number label is on top, the fact is that the law allows modifications and modifications have the potential to no longer infringe. There is no requirement to change model numbers with a software change. Serial numbers aren't present "prima facie" in the injunction.



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





> ""Turning first to the question of the judgment of contempt itself, we agree, of course, that the issue in contempt proceedings is violation vel non of the injunction, not patent infringement. Nevertheless, *devices which could not be enjoined as infringements on a separate complaint cannot possibly be deemed enjoined as infringements under an existing injunction in contempt proceedings*. Accord MAC Corp. of America, 767 F.2d at 886, 226 USPQ at 518, " 'fair ground for doubt' on infringement." (emphasis added). *Infringement is the sine qua non of violation of an injunction against infringements*."


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## Greg Bimson

Here we go again...


Curtis52 said:


> Regardless of serial number, regardless of which model number label is on top, the fact is that the law allows modifications and modifications have the potential to no longer infringe.


Yes, but when the injunction is *absolute*, as in disable the "Infringing Products", that is what you do. If the injunction stated "disable the Infringing Products unless new non-infringing software is loaded", then you'd have a case.


Curtis52 said:


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


That's all well and good and even correct, but what "modified device" is TiVo going after? The subset called "Infringing Products", which have a special meaning, as their functions are to be disabled according to the injunction.

TiVo is not questioning whether the Infringing Products may no longer infringe, TiVo is saying the Infringing Products were ordered to be disabled, and they are not.


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## Greg Bimson

I just noticed something. The second "case law" posted by Curtis52, with my emphasis added:


> Turning first to the question of the judgment of contempt itself, we agree, of course, that the issue in contempt proceedings is violation vel non of the injunction, not patent infringement. Nevertheless, devices which could not be enjoined as infringements on a separate complaint cannot possibly be deemed enjoined as infringements under an existing injunction in contempt proceedings. Accord MAC Corp. of America, 767 F.2d at 886, 226 USPQ at 518, " 'fair ground for doubt' on infringement." (emphasis added). Infringement is the sine qua non of *violation of an injunction against infringements*.


Sine qua non means "(a condition) without which it could not be", according to wikipedia, if it matters.

And once again, we have another case law where the standard is about contempt for violations of an injunction by ongoing infringement. Not "prima facie" injunction violations.


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## Curtis52

Greg Bimson said:


> TiVo is not questioning whether the Infringing Products may no longer infringe, TiVo is saying the Infringing Products were ordered to be disabled, and they are not.


The adjudicated devices no longer exist. They were modified as allowed by law into legal products.


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## Greg Bimson

> The adjudicated devices no longer exist. They were modified as allowed by law into legal products.


A co-worker has a 522. They most certainly do exist. That 522 was adjudicated as illegal. The court hasn't received motions to determine if the illegal 522 is now legal. Which doesn't matter, because as an "Infringing Product", it must be disabled.


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## kmill14

Curtis52 said:


> The adjudicated devices no longer exist. They were modified as allowed by law into legal products.


Oh Curtis, you are so funny. So now the adjudicated devices have disappeared?

I want to see E* argue THAT one.

"No Your Honor, we didn't turn off the DVR functionality in those 8 products. We made those 8 products disappear."

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


----------



## Curtis52

Greg Bimson said:


> A co-worker has a 522. They most certainly do exist. That 522 was adjudicated as illegal. The court hasn't received motions to determine if the illegal 522 is now legal. Which doesn't matter, because as an "Infringing Product", it must be disabled.


Which 522 does he have? The adjudicated version or the non adjudicated version?


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## kmill14

Curtis52 said:


> The adjudicated devices no longer exist. They were modified as allowed by law into legal products.


By the way, there is NO such law that says an adjudicated device that has been modified in some way can become a non-adjudicated device. I suppose its possible the Court could provide that allowance for an infringer, but in this case, it was not asked and certainly not granted.


----------



## kmill14

Curtis52 said:


> Which 522 does he have? The adjudicated version or the non adjudicated version? If he has the adjudicated version you might want to advise him of the injunction.


And there is no such thing as a non-adjudicated version of the 522! :hurah:


----------



## James Long

Greg Bimson said:


> If I were in DISH/SATS shoes, I'd simply answer the questions without introducing any discussion regarding the new software, including the date, as truthfully as possible. I'd also file a challenge with the court regarding TiVo questioning the need for info about the new software, because it isn't applicable to a "prima facie" violation.


I've already posted what I think of the questions. If I were DISH I'd only answer questions regarding the "Infringing Devices" ... counts, dates, etc. I'd challenge the questions regarding other receivers, advertising expenses and churn. The court doesn't need to know that information to determine damages. Tivo shouldn't be allowed discovery on additional topics.



> But realize this: if DISH/SATS does what I describe above, they cannot use "new software" as a defense. And that is most likely why TiVo filed those questions.


DISH is reasonably independent ... they'll answer what they want to. They are already facing contempt of court for the injunction ... why not a little contempt of Tivo's questions?


----------



## Richard King

kmill14 said:


> And there is no such thing as a non-adjudicated version of the 522! You are just a funny little man. :hurah:


Let's try to control the personal attacks and keep this on topic.


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## James Long

Greg Bimson said:


> Here we go again...Yes, but when the injunction is *absolute*, as in disable the "Infringing Products", that is what you do.


And if you don't, you pray that the judge is kind enough to reinterpet his own words in your favor.

DISH's reply to the motion for contempt should be interesting and informative.


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## Curtis52

I suppose a non-adjudicated device could go before the court but then guess what? It would no longer be a non-adjudicated device.


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## kmill14

Richard King said:


> Let's try to control the personal attacks and keep this on topic.


Edited for content...


----------



## jacmyoung

Greg Bimson said:


> ...I'd also file a challenge with the court regarding TiVo questioning the need for info about the new software, because it isn't applicable to a "prima facie" violation...


Now we are on to something. What if DISH does not challenge Tivo, rather just give what Tivo asked, the date the new software was downloaded onto the adjudicated DVRs? Is Tivo in trouble? Because Tivo seems to admit the new software in the adjudicated DVRs somehow matters.

Why did Tivo do that? Of course it isn't applicable to a "prima facie" violation, so can you explain why Tivo asked for it?


----------



## jacmyoung

kmill14 said:


> By the way, there is NO such law that says an adjudicated device that has been modified in some way can become a non-adjudicated device. I suppose its possible the Court could provide that allowance for an infringer, but in this case, it was not asked and certainly not granted.


No, what a modification can do is to make an adjudicated device no longer perform an infringing act, and as long as an adjudicated device and its acts do not infringe on the patent, according to the Circuit Court, the injunction can not prohibit such adjudicated device from performing such acts.


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## James Long

Most of what Tivo sought could be used as evidence of contempt ... that is what Tivo is after. It SHOULD be discovery based on calculating damages on already adjudicated devices. Tivo is just fishing.

DISH could provide all sorts of charts showing when code was introduced and the distribution schedule for each series of receiver. Tivo isn't going to let DISH off the hook for those receivers just because DISH claims a change. They just want a count. No harm in asking.


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## Greg Bimson

jacmyoung said:


> Why did Tivo do that? Of course it isn't applicable to a "prima facie" violation, so can you explain why Tivo asked for it?


To force DISH/SATS hand.


----------



## jacmyoung

James Long said:


> Most of what Tivo sought could be used as evidence of contempt ... that is what Tivo is after. It SHOULD be discovery based on calculating damages on already adjudicated devices. Tivo is just fishing.
> 
> DISH could provide all sorts of charts showing when code was introduced and the distribution schedule for each series of receiver. Tivo isn't going to let DISH off the hook for those receivers just because DISH claims a change. They just want a count. No harm in asking.


Not if by asking such questions Tivo lands credibility to DISH's new software argument. You do not give any ground to your opponent at this critical juncture, not on such important issue.

Tivo can always ask such questions later, after DISH is found in contempt, because remember DISH will appeal, so there wil be plenty of time to ask the judge to force DISH to give out such info. Especially when such info really has no use at all for calculating the enhenced damages during the stay by the adjudicated DVRs, if the new software or not is irrelevant.

There must be a reason other than some casual motive or carelessness.


----------



## jacmyoung

Greg Bimson said:


> To force DISH/SATS hand.


Can you elaborate? In what sense? I don't know what that hand is. You mean to force DISH to give out the date? DISH already said some time right before the injunction was in full force. What other info is Tivo seeking?


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## Greg Bimson

jacmyoung said:


> Can you elaborate? In what sense? I don't know what that hand is. You mean to force DISH to give out the date? DISH already said some time right before the injunction was in full force. What other info is Tivo seeking?


The lone footnote to TiVo's docket control order:


> One of these requests relates to EchoStar's allegedly modified software. TiVo is mindful of the Court's June 5, 2008 Order on this subject and seeks the discovery (and may need to seek additional discovery) only to the extent that it relates to damages, _i.e._, if EchoStar contends that damages should not be assessed on these models.


TiVo is making sure DISH/SATS isn't playing games with the numbers.


----------



## jacmyoung

Greg Bimson said:


> The lone footnote to TiVo's docket control order:TiVo is making sure DISH/SATS isn't playing games with the numbers.


Then why let DISH play? Why ask DISH the new software date? The footnote addresses the DISH's argument that the adjudicated models with new software should not be assessed of the enhenced damages.

Tivo should attack such argument whenever DISH brings it up, instead, Tivo asked DISH for the date, basically saying well since you might use that argument, I will just ask for such info so I may save time by calculating the damages based on your argument?

I am a little disconnected here so help me out, what June 5, 2008 order Tivo was concerned of?

From Tivo's footnote:

"One of these requests relates to EchoStar's allegedly modified software. TiVo is mindful of the Court's June 5, 2008 Order on this subject and seeks the discovery (and may need to seek additional discovery) only to the extent that it relates to damages, i.e., if EchoStar contends that damages should not be assessed on these models."

I assume "these models" refer to the DVRs on the list, the adjudicated DVRs? And Tivo is mindful that DISH's argument of the damages not be asessed on these models might be accepted by the judge? Is that why Tivo asked for the new software download info so the only the damages prior to the date of the new software download may be calculated?


----------



## James Long

jacmyoung said:


> Not if by asking such questions Tivo lands credibility to DISH's new software argument. You do not give any ground to your opponent at this critical juncture, not on such important issue.


Tivo isn't helping DISH by asking about counting receivers with the new software ... they certainly are not helping DISH asking for counts of non-adjudicated receivers.

If Tivo asked DISH for a count of "Infringing Receivers" DISH would probably produce a chart showing a few million (three million households with a potential for multiple infringing DVRs) in 2006 and under 190 thousand today. And that would be the end of the chart. Tivo wants a count of "Infringing Receivers" with new software so _when_ they convince the judge that an "Infringing Receiver" is an "Infringing Receiver" regardless of software they don't have to go back and ask for a recount.

Tivo wants a count of the non-adjudicated receivers to start their argument that those receivers are "only colorably different" and ask for specific damages on those receivers as well (plus the disabling of such receivers).

Tivo wants a count of new placements of a "Infringing Receiver" to demonstrate that DISH continued to place "Infringing Receivers" ... although until the injunction took force that was a perfectly legitimate act.

Tivo wants a report of DISH spending on advertising so they can cry louder about how mistreated they are ... that DISH spent x million/billion dollars harrassing Tivo instead of paying Tivo for the patent rights. DISH's advertising spending really has nothing to do with "Infringing Receiver" damages.

I suspect DISH wants to provide as little data as possible ... most of what Tivo asked for is none of Tivo's business.


----------



## Greg Bimson

You need to rate each question separately, but I am only including the three that matter:


> 3. If you contend that TiVo is not entitled to damages during any part of the Stay Period on models DP-501, 508, 510, 721, 921, 522, 625, or 942, based on changes to software, provide documents sufficient to determine the number of units so changed and when the software of each such unit was changed.


So if question one wasn't specific enough, this will be, so the date (and damages) can be verified.


> 4. If you contend that TiVo is not entitled to damages during the Stay Period on placements of any DVR models other than models DP-501, 508, 510, 721, 921, 522, 625, and 942, provide documents sufficient to identify such DVRs by model numbers and to determine on a monthly basis the number of DVRs placed.


We've spend countless days arguing. I cannot remember. Is TiVo going after new placements of infringing products? It does allow for TiVo to ask to walk through the door, as there are documents in the record that state DISH/SATS changed the software on the ViP 622 and 722. I just don't recall if TiVo is going after new placements.


> 6. If you contend that TiVo is not entitled to damages during the Stay Period on any EchoStar DVR model because you contend that model is not infringing based on the way it operates, provide all documents describing or relating to its operation.


And remember, this question has been the basis for DISH/SATS refusal to follow the injunction. So what are the answers?

If DISH/SATS contends TiVo isn't entitled to any damages because of the new software, it opens the door regarding the new software, and DISH/SATS should answer those questions.

If DISH/SATS contends TiVo IS entitled to damages, DISH/SATS doesn't have to give up the new software. But then it is a defacto admission that the new software doesn't matter.


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## James Long

Accusing DISH of infringing with non-adjudicated receivers does not give Tivo the right to that data. DISH has already provided some documentation on their patent pending "Tivo free" DVRs. Will Tivo not be happy until they have enough information that _THEY_ can produce a "Barton Media Switch" free device and infringe on DISH's process?


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## jacmyoung

James Long said:


> Tivo isn't helping DISH by asking about counting receivers with the new software ... they certainly are not helping DISH asking for counts of non-adjudicated receivers.
> 
> If Tivo asked DISH for a count of "Infringing Receivers" DISH would probably produce a chart showing a few million (three million households with a potential for multiple infringing DVRs) in 2006 and under 190 thousand today. And that would be the end of the chart. Tivo wants a count of "Infringing Receivers" with new software so _when_ they convince the judge that an "Infringing Receiver" is an "Infringing Receiver" regardless of software they don't have to go back and ask for a recount.
> 
> Tivo wants a count of the non-adjudicated receivers to start their argument that those receivers are "only colorably different" and ask for specific damages on those receivers as well (plus the disabling of such receivers).
> 
> Tivo wants a count of new placements of a "Infringing Receiver" to demonstrate that DISH continued to place "Infringing Receivers" ... although until the injunction took force that was a perfectly legitimate act.
> 
> Tivo wants a report of DISH spending on advertising so they can cry louder about how mistreated they are ... that DISH spent x million/billion dollars harrassing Tivo instead of paying Tivo for the patent rights. DISH's advertising spending really has nothing to do with "Infringing Receiver" damages.
> 
> I suspect DISH wants to provide as little data as possible ... most of what Tivo asked for is none of Tivo's business.


First off I was only asking why Tivo asked about the new software download date for the adjudicated DVRs, nothing else, I understand asking such question for all other devices.

But for the adjudicated devices, Tivo is asking how many are using the new software, also *when* the new software were downloaded onto those adjudicated DVRs.

Why the when question? It should not matter. Just give me the number, and that will be good enough to calculate the damages, because when has nothing to do with it, for the adjudicated DVRs.


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## jacmyoung

Tivo is basically now treating all DVRs equally, whether the adjudicated DVRs or not.

And yet in the 9/4 hearing, one of the most important things Tivo must do is to convince the judge the adjudicated DVRs are special breed, can not be treated the same as the other DVRs. They must hammer home the notion the new software does not matter, no matter when and how often they are downloaded to those adjudicated DVRs, as long as the DVR functions on those DVRs are still on, DISH is in contempt and must, among a few things, pay the enhenced damages as long as those DVRs are still on.

But before such crucial argument even to begin, Tivo has already begin to treat those adjudicated DVRs the same as all other DVRs. Asking the exact same questions about them when it comes to assessing damages.

Not very wise as far as I am concerned, even Greg thought it was odd for a moment. What kind of excuse do any of you have for such oversight?


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## James Long

jacmyoung said:


> But for the adjudicated devices, Tivo is asking how many are using the new software, also *when* the new software were downloaded onto those adjudicated DVRs.


Please read as I say it again -

Tivo needs to count ALL "Infringing Products" regardless of new software. DISH is likely to provide a count of ONLY the 'old software' "Infringing Products". It is a rolling count as software was updated in the several models over several months. If Tivo simply asked for a count of "Infringing Products" DISH would likely provide a count that would look like this: (assuming a software rollout starting January 2007.)April to December 2006 (8 months): 5 million "Infringing Products"
January 2007: 4 million "Infringing Products"
February 2007: 3 million "Infringing Products"
March 2007: 2 million "Infringing Products"
April 2007: 1 million "Infringing Products"
May 2007 to present: 190 thousand "Infringing Products"​This isn't a full picture of DVRs in service. Tivo wants the other column "Infringing Products" with new software so they can argue for damages on ALL receivers.For example:
April to December 2006 (8 months): 5 million "Infringing Products"
January 2007: 4 million "Infringing Products" plus 1.2 million software updated.
February 2007: 3 million "Infringing Products" plus 2.4 million software updated.
March 2007: 2 million "Infringing Products" plus 3.6 million software updated.
April 2007: 1 million "Infringing Products" plus 4.8 million software updated.
May 2007 to present: 190 thousand "Infringing Products" plus 6 million software updated.​With these numbers (which must mark as FICTION FICTION FICTION as they are just samples for the sake of this post) Tivo would argue the following:
"We want $5 per month per DVR. Dish agrees that they operated adjudicated DVRs for a total of 50 million aggregate months*DVRs. Please award us $250 million for DISH's use of the undisputed DVRs. In addition, DISH operated 90 million aggregate months*DVRs on alleged new software. Should the court rule that these "Infringing Products" remain infringing as they are only colorably different we ask for an additional $450 million for DISH's use of the disputed DVRs.

If Tivo doesn't ASK the full question they won't get the full answer. They probably won't get the full answer anyways, but the certainly won't unless they ASK the question.



jacmyoung said:


> Not very wise as far as I am concerned, even Greg thought it was odd for a moment. What kind of excuse do any of you have for such oversight?


No one _here_ needs an excuse ... we're not Tivo's lawyers.

Tivo is fishing ... and DISH is (in my opinion) unlikely to completely comply with the requested counts. Perhaps by asking for the world and the universe in their request for discovery they will end up with the world ... instead of asking for the world and getting a continent. It is all a high priced game.


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## kmill14

James Long, well stated!

jacmyoung,

Beyond what JL has already said re: damages, have you ever given thought to the idea that E* has never actually downloaded this software to the adjudicated boxes? Regardless of whether TiVo thinks the software changes anything significant, and regardless of the fact that none of this will be specifically used to argue their motion on 9/4, TiVo has asked for Dish to finally provide some definite information on when this supposed fix when into effect.


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## nobody99

jacmyoung said:


> Why the when question? It should not matter. Just give me the number, and that will be good enough to calculate the damages, because when has nothing to do with it, for the adjudicated DVRs.


EDIT: James Long had already posted basically a much more understandable version of what I said below. I just hadn't seen it.

Let's say, for the sake of argument, DISH wins the contempt hearing and Judge Folsom goes against all reason )) and says DVR's with new software do not infringe.

TiVo is entitled to enhanced damages for any DVR that was enabled during the time the injunction was in place. So if DISH says they started downloading the software i September, there's at least four months that all 3 million DVRs were running the infringing software. And if it took until the end of 2007 (as TiVo contents in the contempt motion) to upload all of the DVRs, they will need to know the exact dates that each DVR was changed to be running the new software.

This is what I mentioned a few days back with "Infringing Months." Every month that DISH was running infringing software, TiVo is entitled to enhanced damages, and is allowed to recover profits that DISH made. If DISH charges of $5 a month for DVR fees, TiVo might collect $15 for every DVR that was turned on during the injunction.

I'd like to know what the standard of proof is that new software is downloaded. If DISH says "we downloaded new software on all receivers the day the injunction issued" what then?


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## jacmyoung

James Long said:


> Please read as I say it again -
> 
> ...Tivo is fishing ... and DISH is (in my opinion) unlikely to completely comply with the requested counts. Perhaps by asking for the world and the universe in their request for discovery they will end up with the world ... instead of asking for the world and getting a continent. It is all a high priced game.


The world Tivo is asking should not include items that make them vulnerable in there cricial argument on 9/4.

Asking how many adjudicated DVRs now uses the new software will be sufficient, no need to ask when. What happens if DISH tells Tivo they had 3 milllion adjudicated DVRs that had new software, and downloaded the week before the injunction was to take force, then two months later when the data is used to make calculation, DISH says wait, we have another new new software downloaded just the night before, making the DVRs with the old new software number down to zero?

You see asking when does not help in preventing DISH from playing games. The only effect of asking for such info is to expose Tivo's own admission that DISH might prevail in their argument.

Because if DISH should prevail, then answer to "when" question will indeed be nacessary in order to calculate the correct enhanced damages for the adjudicated DVRs, because if DISH prevails, DISH shall pay no further enhanced damages after the new software download, therefore the dates will be a useful info.


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## jacmyoung

kmill14 said:


> James Long, well stated!
> 
> jacmyoung,
> 
> Beyond what JL has already said re: damages, have you ever given thought to the idea that E* has never actually downloaded this software to the adjudicated boxes? Regardless of whether TiVo thinks the software changes anything significant, and regardless of the fact that none of this will be specifically used to argue their motion on 9/4, TiVo has asked for Dish to finally provide some definite information on when this supposed fix when into effect.


No need to ask such info for the adjudicated DVRs, they can get the info by the next question, when they asked for the non-adjudicated DVRs.

All they need for the adjudicated DVRs is how many are out there that are still alive with DVR functions, that is all, DISH can not play games on this number, the accounting of the actual number of the adjudicated DVRs that are still active with DVR functions is an auditable number, no need to know what, and when, any software was downloaded, nor not downloaded, or if the softeware is new, or old, on those adjudicated DVRs.


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## jacmyoung

nobody99 said:


> EDIT: James Long had already posted basically a much more understandable version of what I said below. I just hadn't seen it.
> 
> Let's say, for the sake of argument, DISH wins the contempt hearing and Judge Folsom goes against all reason )) and says DVR's with new software do not infringe...


Bingo! We have a winner, Tivo is prepared for the possibility that the judge recognize DISH's new software argument and find DISH not in contempt.



> I'd like to know what the standard of proof is that new software is downloaded. If DISH says "we downloaded new software on all receivers the day the injunction issued" what then?


Very good question, but the answer for this question cannot be solved by asking when the new software was downloaded to the adjudicated DVRs. The answer to this question has some clear boundary to fit in, because it was DISH who said at one time the new software was downloaded right before the injunction was to go into full force, so DISH can not make up dates to far off that week, if DISH does, Tivo can easily point it out to the judge.


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## kmill14

jacmyoung said:


> Very good question, but the answer for this question cannot be solved by asking when the new software was downloaded to the adjudicated DVRs. The answer to this question has some clear boundary to fit in, *because it was DISH who said at one time the new software was downloaded right before the injunction was to go into full force, so DISH can not make up dates to far off that week, if DISH does, Tivo can easily point it out to the judge*.


Well, that's interesting. Because the injunction went into effect on April 18th, and Dish had already communicated to shareholders on 1/31 that the new software was downloaded before that. So, when do you think this new software went in?


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## kmill14

jacmyoung said:


> No, what a modification can do is to make an adjudicated device no longer perform an infringing act, and as long as an adjudicated device and its acts do not infringe on the patent, according to the Circuit Court, the injunction can not prohibit such adjudicated device from performing such acts.


The Judge in this case spelled out what functionality the adjudicated devices cannot perform: *"disable all storage to and playback from a hard
disk drive of television data"*

So what other functionality are you talking about that the court is not allowed to prohibit? Are you arguing that these boxes can perform as standard receivers? If so, I agree with you. But if you are arguing that they can do something that results in storing and/or playing TV data to/from a hard disk drive, well, that is where your logic dies.


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## nobody99

jacmyoung said:


> Bingo! We have a winner, Tivo is prepared for the possibility that the judge recognize DISH's new software argument and find DISH not in contempt.


It only makes sense that they are prepared for this.



> because it was DISH who said at one time the new software was downloaded right before the injunction was to go into full force, so DISH can not make up dates to far off that week, if DISH does, Tivo can easily point it out to the judge.


Dish said that they _started_ downloading the new software after the injunction was stayed. TiVo's motion points out that they continued downloading throughout 2007.

And this, more than anything else, is where I think DISH has a problem _even if_ they win on the contempt issue. How can DISH possibly prove that new software is even loaded on these devices? What if the judge says "ok, so you've downloaded new software. Great. No contempt for you. However, since this is the first I've heard of it, I'm awarding damages for Infringing Products through today, 9/4."


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## nobody99

kmill14 said:


> Well, that's interesting. Because the injunction went into effect on April 18th, and Dish had already communicated to shareholders on 1/31 that the new software was downloaded before that. So, when do you think this new software went in?


There are two pieces to this. DISH owes TiVo damages from 2006 when the injunction first went into effect, _even while it was stayed_ since it was upheld. I don't believe contempt would factor in for damages during that period, but they do still owe them.

Since the injunction is in full force and effect as of April 18, 2008, any Infringing Products that still have DVR functions would be in contempt (as TiVo fans believe), or not in contempt (as DISH fans believe)


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## Greg Bimson

jacmyoung said:


> Asking how many adjudicated DVRs now uses the new software will be sufficient, no need to ask when. What happens if DISH tells Tivo they had 3 milllion adjudicated DVRs that had new software, and downloaded the week before the injunction was to take force, then two months later when the data is used to make calculation, DISH says wait, we have another new new software downloaded just the night before, making the DVRs with the old new software number down to zero?
> 
> You see asking when does not help in preventing DISH from playing games. The only effect of asking for such info is to expose Tivo's own admission that DISH might prevail in their argument.


How can you not understand why TiVo is asking for the dates that the new software was implemented? So you understand what is going on with these, TiVo is playing a game, from the very first question:


> 1. Provide documents sufficient to determine on a monthly basis for the Stay Period the total number of placements of models DP-501, 508, 510, 721, 921, 522, 625, and 942.


Here is where it gets tricky. Let's say that DISH/SATS decides that by installing new software on these products that they no longer have to pay damages on those. Of course, TiVo would need to know exactly when DISH/SATS is claiming they changed the software, because it relates to the damages question.


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## kmill14

Greg Bimson said:


> How can you not understand why TiVo is asking for the dates that the new software was implemented?


The same way he can't understand that this contempt hearing is based on the simple wording of the injunction:

to disable the storage and playback capabilites of the adjudicated devices.


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## jacmyoung

Greg Bimson said:


> ...Let's say that DISH/SATS decides that by installing new software on these products that they no longer have to pay damages on those. Of course, TiVo would need to know exactly when DISH/SATS is claiming they changed the software, because it relates to the damages question.


Do you even realize that for that to happen, DISH must first not be in contempt?


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## kmill14

jacmyoung said:


> Do you even realize that for that to happen, DISH must first not be in contempt?


Why?

Dish could be found in contempt and still argue that they don't need to pay damages on those boxes. It makes no sense, but they have argued stranger things.


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## Greg Bimson

Hello? Is this thing on?


Greg Bimson said:


> ...Let's say that DISH/SATS decides that by installing new software on these products that they no longer have to pay damages on those. Of course, TiVo would need to know exactly when DISH/SATS is claiming they changed the software, because it relates to the damages question.





jacmyoung said:


> Do you even realize that for that to happen, DISH must first not be in contempt?


No. TiVo asked what appears to be a straightforward question: what are the placement figures by month of eight models.

If DISH/SATS decides to answer the question by only giving figures up to the point they switched out software, that was the point of TiVo asking when the software was changed in Question 3, so they can also get figures for the same eight models between the stay of the injunction until it was in full force.

It is all dependant upon how DISH/SATS answers the first question.


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## nobody99

jacmyoung said:


> Do you even realize that for that to happen, DISH must first not be in contempt?


Wow, do you even know what the September 4 court date is for?

It is two things:

1) Enforcement of injunction
2) Damages due while injunction was stayed

Contempt has nothing to do with the damages that occurred during the stay.


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## kmill14

Everybody together:

:bang :bang :bang :bang


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## jacmyoung

Greg Bimson said:


> Hello? Is this thing on?No. TiVo asked what appears to be a straightforward question: what are the placement figures by month of eight models.


Yes that is all they need to ask, because the number of those DVRs that are still actively acting as DVRs are auditable, verifiable. But even if DISH plays numbers on this one, asking when the new software is downloaded does not help, it only complicates it.



> If DISH/SATS decides to answer the question by only giving figures up to the point they switched out software, that was the point of TiVo asking when the software was changed in Question 3, so they can also get figures for the same eight models between the stay of the injunction until it was in full force.
> 
> It is all dependant upon how DISH/SATS answers the first question.


If DISH answers that way, Tivo can easily say DISH is playing with the judge, give us the true number, with or without the new software, as long as those DVRs are still actively used as DVRs.

By asking such question, Tivo gives legitimacy to DISH's playing with the new software game. The question is why do so?


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## jacmyoung

nobody99 said:


> ...Contempt has nothing to do with the damages that occurred during the stay.


Contempt or not absolutely has everything to do with how the damages may be calculated for the adjudicated DVRs.

If DISH is in contempt, the damages for the adjudicated DVRs will have to be calculated up to the point DISH turns off the DVR functions on those DVRs, regardless what software they use.

If DISH is not in contempt, the damages for the adjudicated DVRs will only have to be calculated to the point when the new software was downloaded.


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## Greg Bimson

jacmyoung said:


> If DISH answers that way, Tivo can easily say DISH is playing with the judge, give us the true number, with or without the new software, as long as those DVRs are still actively used as DVRs.
> 
> By asking such question, Tivo gives legitimacy to DISH's playing with the new software game. The question is why do so?


If DISH/SATS plays the new software game, adding questions 1 and 3 together gives the correct answer.

If DISH/SATS doesn't play the new software game, DISH/SATS will impeach their own argument. How can DISH/SATS state that TiVo IS entitled to damages on receivers with the newer software?


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## kmill14

jacmyoung said:


> By asking such question, Tivo gives legitimacy to DISH's playing with the new software game. The question is why do so?


How does Tivo give legitimacy to Dish's new software when their argument for contempt has nothing to do with it? The Judge is either going to take his own order at face value, or he isn't. The Judge is well aware of with Dish's position with this new software, and he is not going to be swayed one way or the other simply because TiVo wants Dish to provide more information on their own claims.


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## kmill14

The Judge: "Well, I WAS going to rule E* in contempt, but since TiVo asked for specific dates on this new software download, I am changing my mind. Obviously by TiVo asking for those dates, they think the software is legit and feels their own argument about disregarding Court Orders can itself be disregarded."


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## Greg Bimson

jacmyoung said:


> If DISH is in contempt, the damages for the adjudicated DVRs will have to be calculated up to the point DISH turns off the DVR functions on those DVRs, regardless what software they use.
> 
> If DISH is not in contempt, the damages for the adjudicated DVRs will only have to be calculated to the point when the new software was downloaded.


This has nothing to do with contempt. This has everything to do with placements of models only. It would most likely be DISH/SATS argument since the software was changed that TiVo is not entitled damages. That is why the question was raised in that manner.


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## jacmyoung

kmill14 said:


> How does Tivo give legitimacy to Dish's new software when their argument for contempt has nothing to do with it? The Judge is either going to take his own order at face value, or he isn't. The Judge is well aware of with Dish's position with this new software, and he is not going to be swayed one way or the other simply because TiVo wants Dish to provide more information on their own claims.


But think about this, after both parties make their own arguments, the judge turns to DISH and say, look DISH, I think Tivo has made an air-tight argument, that the new software shall not be in the picture, it does not matter, no consideration should be even given to the new software at all for the adjudicated DVRs, Tivo did not give such consideration, Tivo said themselves such new software shall not matter at all.

DISH responds, but your honor, Tivo did think the new software mattered, Tivo asked us when we downloaded the new software onto the adjudicated DVRs, let me show you your honor, look it is here, question #x, see that? Tivo asked us when did we download the new software onto the adjudicated DVRs right there, it is black white on there.

The judge looks at Tivo and say, well, what is you response Tivo, why did you ask DISH that question? I thought you said the new software did not matter at all, and you asked me to agree with your argument that the new software shall not matter at all, as far as the adjudicated DVRs are concerned. Then why bother to ask DISH when the new software was downloaded onto the adjudicated DVRs? It must have meant something, yes?

Tivo responds: _______(I want you try to fill the blank for me here please...)


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## jacmyoung

Greg Bimson said:


> This has nothing to do with contempt. This has everything to do with placements of models only. It would most likely be DISH/SATS argument since the software was changed that TiVo is not entitled damages. That is why the question was raised in that manner.


But if DISH is in contempt, DISH will not be able to use the new software as an issue anymore, for the adjudicated DVRs. You said it yourself, old software, new software, who cares, all it matters is the fact those adjudicated DVRs are still active with DVR functions, that is all.

Isn't that your so called "prima facie" argument? So why all the sudden when seeking the damages, be so concerned about what the new software game DISH might play? It will be over, who cares when DISH might have downloaded the new software, or at all?

If DISH is in contempt, the only thing needs to be looked at it how many of those adjudicated DVRs are still actively used as DVRs, regardless what software they use, old, new, purple, green, no need to even waste one minute on it.


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## kmill14

jacmyoung said:


> Tivo responds: _______(I want you try to fill the blank for me here please...)


TiVo responds: Judge, we respect your continued wisdom in this matter, and we would expect that our discovery questions related to damage calculation would have no bearing on the matter of whether E* disregarded your order or not.

We are always trying to prepare for that NEXT E* argument that is only intended to prolong this trial and tax the Court's time. It would come as no surprise during the damages discussion that E* (even after being found in contempt) would argue that enhanced damages would not be warranted on devices that they claim have this new software. We disagree, but for sh*ts and giggles, we would like to know when they actually downloaded this software.


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## James Long

nobody99 said:


> TiVo is entitled to enhanced damages for any DVR that was enabled during the time the injunction was in place.


Not specifically more than the DVRs that were enabled prior to when the injunction was written. The injunction was stayed. Retroactively punishing DISH for new placements that were permitted during the stay would not be appropriate. Charge a fee per month per receiver ... but remember WHEN the injunction took effect.



jacmyoung said:


> The world Tivo is asking should not include items that make them vulnerable in there cricial argument on 9/4.


It doesn't. I know you would like it to ... but it doesn't.



jacmyoung said:


> No need to ask such info for the adjudicated DVRs, they can get the info by the next question, when they asked for the non-adjudicated DVRs.


No, they can't. A question asking about non-adjudicated DVRs cannot supply an answer on adjudicated DVRs. And no, changing the software does NOT change an adjudicated DVR into a non-adjudicated DVR. Neither does putting a sticker on it or attempting any of the other scams that you have suggested that would be more likely to lead to contempt that what DISH has already done.



jacmyoung said:


> Bingo! We have a winner, Tivo is prepared for the possibility that the judge recognize DISH's new software argument and find DISH not in contempt.


The question you're arguing over prepares Tivo for the likelyhood that the judge rejects DISH's "software" excuse. As noted, Tivo needs a count of ALL DVRs ... not just the ones DISH wants to count.



kmill14 said:


> Everybody together:
> 
> :bang :bang :bang :bang


:bang :bang :bang :bang



kmill14 said:


> The Judge: "Well, I WAS going to rule E* in contempt, but since TiVo asked for specific dates on this new software download, I am changing my mind. Obviously by TiVo asking for those dates, they think the software is legit and feels their own argument about disregarding Court Orders can itself be disregarded."


That certainly sounds like jacmyoung's dream. 

I believe there is a possibility that the judge won't find DISH in contempt ... but certainly not for that reason.


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## jacmyoung

kmill14 said:


> TiVo responds: Judge, we respect your continued wisdom in this matter, and we would expect that our discovery questions related to damage calculation would have no bearing on the matter of whether E* disregarded your order or not.
> 
> We are always trying to prepare for that NEXT E* argument that is only intended to prolong this trial and tax the Court's time. It would come as no surprise during the damages discussion that E* (even after being found in contempt) would argue that enhanced damages would not be warranted on devices that they claim have this new software. We disagree, but for sh*ts and giggles, we would like to know when they actually downloaded this software.


Why do you want to know, you don't trust me? You don't think if DISH plays with me I will show them who is the boss? Are you trying to play boss? But even if you do, you tried it in a wrong way my boy.

DISH was right, you did think the new software mattered, else you would not have asked that question. In fact you said yourself the reason you asked such question was so there if there is the possibility the enhanced damages might have to be calculated that way, up to the point when the new software was downloaded. If not, you should not have asked that question, it was unnecessary.

If you concede such possibility exists, then for such possibility to come true, I will have to find DISH not in contempt. By asking such stupid question, you just allowed DISH to throw one back at me, when I was almost ready to cite DISH for contempt. Now you and I have to talk. There is inconsistency in your argument DISH just pointed out for me, on one had you told me the new software matters none, absolutely nothing, yet you asked DISH when the new software was downloaded onto thos adjudicated DVRs. Are you nuts? Do you just not want to win?

We were so close and yet look what happened? DISH showed me a legitimate evidence on your inconsistency.


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## scooper

Going by the words of the "strict constructionists" on this thread - Tivo needs NO numbers beyond the 8 "INFRINGING MODELS" on how many are out there. Anything not specifically list on their suit is "irrelevant" - so all the 622s, 722s, and 612s are immune and safe.


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## jacmyoung

James Long said:


> ...I believe there is a possibility that the judge won't find DISH in contempt ... but certainly not for that reason.


I did not say that will be the reason at all, I was only trying to have those folks be honest, and tell the truth, which they refused to say, because they are afraid to say it.

The reason Tivo asked that question was because they knew there is a chance the judge will not find DISH in contempt, and when that happens, such information will be necessary to determine the enchanced damages by the adjudicated DVRs. Because that will be the *only* reason for Tivo to ask that question, all other excuses those folks had tried so hard to come up with, they were just made up to avoid admitting it:

That Tivo, yes Tivo themsleves, is to some degree preparing for such possible outcome that DISH is not in contempt. That's all, that is the only reason, the Tivo fans just did not want to admit it.

Well I take it back a little, at least nobody96 admitted it once.


----------



## Curtis52

scooper said:


> Going by the words of the "strict constructionists" on this thread - Tivo needs NO numbers beyond the 8 "INFRINGING MODELS" on how many are out there. .


Well, it's easy to think so. I mean that would seem to answer everything. One would have thought the injunction order was simple too. It listed the 8 model numbers too, yet here we are.


----------



## Greg Bimson

scooper said:


> Going by the words of the "strict constructionists" on this thread - Tivo needs NO numbers beyond the 8 "INFRINGING MODELS" on how many are out there. Anything not specifically list on their suit is "irrelevant" - so all the 622s, 722s, and 612s are immune and safe.


I agree, unless TiVo is going after "new placements of infringing products", which I thought at one point they were, but I am not so sure.


jacmyoung said:


> Isn't that your so called "prima facie" argument? So why all the sudden when seeking the damages, be so concerned about what the new software game DISH might play? It will be over, who cares when DISH might have downloaded the new software, or at all?


Oh, boy...

Because if on the first question DISH/SATS only gives figures until they changed out the software, TiVo needs the TOTAL AMOUNT OF PLACEMENTS between September, 2006 and 18 April, 2008.

Again reading too much into the question. I think Question 3 starts with the word IF!


> If [DISH/SATS] contend that TiVo is not entitled to damages during any part of the Stay Period [...] based on changes to software


The question directly relates to how DISH plans on answering, not TiVo's belief.


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## jacmyoung

Greg Bimson said:


> I agree, unless TiVo is going after "new placements of infringing products", which I thought at one point they were, but I am not so sure.Oh, boy...
> 
> Because if on the first question DISH/SATS only gives figures until they changed out the software, TiVo needs the TOTAL AMOUNT OF PLACEMENTS between September, 2006 and 18 April, 2008.
> 
> Again reading too much into the question. I think Question 3 starts with the word IF!


And likewise don't try so hard to come up with a reason, all you need to recognize is Tivo did prepare for the possible outcome that DISH may not be found in contempt.


----------



## nobody99

September 8, 2006: permanent injunction issued (in force in 30 days)
October 8, 2006: injunction effective, but stayed during appeal



Appeals Decision on January 31 said:


> The district court's injunction was stayed during the course of these proceedings. The stay that was issued pending appeal will dissolve when this appeal becomes final. At that time, the district court can make a determination as to the additional damages, if any, that TiVo has sustained while the stay of the permanent injunction has been in effect.


April 18, 2008: Injunction in full force and effect after technicalities from appeal

I'm not entirely sure that those dates are correct, but I think they are close. Would the following be accurate? I am speaking only of the DVR's placed with customers. The new placements are a whole different beast, because the "colorably different" standard comes into play. I am focusing solely on the DVRs placed with customers.

The following is true no matter what happens during the contempt hearing

Any DVR that was still running infringing software after October 8 up to _the earlier of_ a) new software loaded or b) April 18 2008 is subject to damages for each month it was running the infringing software. These would not be enhanced damages, but they would be Reasonable Royalty or Lost Profits similar to what had already been awarded for prior infringement. So for each month each DVR was running infringing software after October 8, TiVO might get $1 or $2. It does not matter that they injunction was stayed - since it was upheld, the damages still apply. The stay of the injunction means the cannot be enhanced.

Dish is NOT found in countempt
_This option is provided solely for jacmyoung's benefit and is FICTION FICTION FICTION in the immortal words of James Long _

The judge will then have to determine the "end date" for each DVR's infringement. That might be the date new software was loaded, provided that DISH can show sufficient proof. It might be September 4 (the date of the hearing) since the judge was never informed (regardless of when the new software was loaded). This part of what TiVo is asking for _so they can be prepared for every possible outcome_.

Dish IS found in countempt
In the contempt hearing, if DISH *is* found in contempt, every Infringing DVR (the eight named models) will be subject to "normal" damages through April 18, 2008. They will be subject to enhanced damages after April 18, 2008. In this case, the date the new software was loaded doesn't matter.



jacmyoung said:


> The judge looks at Tivo and say, well, what is you response Tivo, why did you ask DISH that question? I thought you said the new software did not matter at all, and you asked me to agree with your argument that the new software shall not matter at all, as far as the adjudicated DVRs are concerned.


You know, it really is amazing just how far you are twisting things. I suggested, jokingly, how the Judge's acceptance of TiVo's docket control word-for-word would somehow be twisted into something terrible for TIVO and good for DISH. You're almost there now. Even I thought that would be a stretch for you.

They are covering all their bases. That's it.


----------



## jacmyoung

Greg Bimson said:


> I agree, unless TiVo is going after "new placements of infringing products", which I thought at one point they were, but I am not so sure.Oh, boy...


Which is precisely why you should begin to rethink your "prima facie" argument, becasue by insisting down that path, Tivo will be rendered to seek out *only* those adjudicated DVRs. Do you honestly think this is how a winning patent suit should come down to?


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## nobody99

jacmyoung said:


> Which is precisely why you should begin to rethink your "prima facie" argument, becasue by insisting down that path, Tivo will be rendered to seek out *only* those adjudicated DVRs.


Eh, huh?

TiVo can file as many contempt motions as it wants. The injunction is in effect until the expiration of the patent. If, after September 4, it wants to go after new placements, it files a new motion. Simple.


----------



## Greg Bimson

jacmyoung said:


> And likewise don't try so hard to come up with a reason, all you need to recognize is Tivo did prepare for the possible outcome that DISH may not be found in contempt.


Come up with a reason? TiVo wants the amount of all placed receivers. You can stop trying so hard reading that which is not there. The _Paice_ order has a definite time line. It wouldn't surprise me the type of games that DISH/SATS would play with this. DISH/SATS already believes they don't have to provide written discovery, although they already agreed to it.


jacmyoung said:


> Which is precisely why you should begin to rethink your "prima facie" argument, becasue by insisting down that path, Tivo will be rendered to seek out only those adjudicated DVRs. Do you honestly think this is how a winning patent suit should come down to?


Uh, TiVo already WON the patent suit. Otherwise, I AGREE.  I don't know if TiVo is going after the "not more than colorably different" receivers. We've seen so much info over the past few weeks I cannot remember.


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## Greg Bimson

Since I modified my original post, I am reposting this...

Again reading too much into the question. I think Question 3 starts with the word IF!


> If [DISH/SATS] contend that TiVo is not entitled to damages during any part of the Stay Period [...] based on changes to software


The question directly relates to how DISH plans on answering, not TiVo's belief.

The new software point is moot to TiVo, but DISH/SATS sure can answer Question 1 as if TiVo doesn't deserve any damages after the change in software. After all, that is DISH/SATS position.


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## jacmyoung

Greg Bimson said:


> ... TiVo already WON the patent suit. Otherwise, I AGREE.  I don't know if TiVo is going after the "not more than colorably different" receivers...


The reason you responded to Scooper's comment was becaue you have locked yourself in this "prima facie" trap yourself, and as a result it makes Tivo impossible to even consider anything that is not adjudicated, like the 622s, 722s.

That was my point.


----------



## jacmyoung

nobody99 said:


> ...They are covering all their bases. That's it.


Correct, and as I have tried to point out, one of such bases is DISH is not in contempt. And Tivo must have thought such base actually has some good chance to prevail, because if Tivo did not think such base had any real chance, Tivo logically should not ask a question that may point out to their own inconsistency during their argument on 9/4.

You don't give your opponent any chance to point out your weakness in your argument, especially as I said such question is really unnecessary, Tivo can ask for it later, if DISH is not in contempt, and Tivo will never even have to ask for it, if DISH is in contempt.

The logic for asking such question now, rather later, is that maybe Tivo thought the chance for DISH to prevail may not be that bad, and so let's just ask for it, so we can be prepared either way.


----------



## Greg Bimson

jacmyoung said:


> The reason you responded to Scooper's comment was becaue you have locked yourself in this "prima facie" trap yourself, and as a result it makes Tivo impossible to even consider anything that is not adjudicated, like the 622s, 722s.
> 
> That was my point.


I'll admit it is strange that TiVo is fishing for an answer regarding those receivers that don't fit into the "Infringing Product" definition. But as I've said, I'd need to look at TiVo's motion for contempt to see if TiVo did ask somewhere.


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## nobody99

jacmyoung said:


> Correct, and as I have tried to point out, one of such bases is DISH is not in contempt. *And Tivo must have thought such base actually has some good chance to prevail*, because if Tivo did not think such base had any real chance, Tivo logically should not ask a question that may point out to their own inconsistency during their argument on 9/4.


You have now twisted a so-called "fishing expedition" (TiVo's discovery requests) into TiVo's admission that it thinks DISH is not in contempt? You have the mental flexibility of an Olympic gymnast.

How about this (and let's just pretend, for your benefit, that the judge would read _anything_ into a discovery request):

Judge: TiVo, I've read some insightful, thought-provoking message boards posts by a bright young gentleman named 'jacmyoung.' He brilliantly points out that your discovery requests seem to indicate that TiVo thinks DISH isn't in contempt. I'm inclined to believe him. Your respose?

TiVo Lawyers: Judge, DISH is suggesting that they downloaded new software to each receiver. How do we know this? If they cannot provide us with the particular day each box was updated, how do we know it was updated _at all?_ They said they downloaded new software. We want proof, that's all.

Judge: Oh, yeah, that makes sense...

TiVo Laywers: Additionally, it is our responsibility, as lawyers, to be as reasonably prepared as possible for each outcome. Since the first part of today's hearing has only two outcomes, contempt or not contempt, we prepared for each. Since the second part of meeting is to address damages, and the total damages will be based on the outcome of the contempt hearing, it was necessary to have this information to determine damages in either case.

Judge: You're absolutely right. Thank you for the exquisite explanation. DISH, I find you in contempt. Bwahahah. BWAHAHAHA


----------



## jacmyoung

nobody99 said:


> ... You have the mental flexibility of an Olympic gymnast.... BWAHAHAHA


You do realize those gestures of yours do not help your credibility?

And you do realize if my name ever is mentioned in that court room, you will have to begin to pay me to listen to me?


----------



## James Long

jacmyoung said:


> The reason Tivo asked that question was because they knew there is a chance the judge will not find DISH in contempt, ...


You've got that backwards ... do I need to say it myself a FOURTH time? Have I already lost count?

Tivo ansked the question so they can count ALL of the "Infringing Products" regardless of software status. They are thinking ahead of what DISH would provide if not specifically asked for counts of "post alleged new software" receivers.



> Well I take it back a little, at least nobody96 admitted it once.


Who?



jacmyoung said:


> Which is precisely why you should begin to rethink your "prima facie" argument, becasue by insisting down that path, Tivo will be rendered to seek out *only* those adjudicated DVRs. Do you honestly think this is how a winning patent suit should come down to?


It is a good first step. Getting a judgement "on the face of the injunction" does not prohibit Tivo from seeking other judgements later.



jacmyoung said:


> And you do realize if my name ever is mentioned in that court room, you will have to begin to pay me to listen to me?


If we don't pay will you stop talking for free?


----------



## nobody99

jacmyoung said:


> You do realize those gestures of yours do not help your credibility?
> 
> And you do realize if my name ever is mentioned in that court room, you will have to begin to pay me to listen to me?


I know. I have made a terrible mistake! :lol:

But I did think of a better way to explain it.

As Greg has pointed out, each of the requests is predicated with "If you contend..."



> If you contend that TiVo is not entitled to damages during any part of the Stay Period on models DP-501, 508, 510, 721, 921, 522, 625, or 942, based on changes to software, provide the number of units so changed and when the software of each such unit was changed.


What TiVo is saying is simple: *the price of admission* for saying TiVo is not entitled to damages is *information about when they were changed.*

If DISH doesn't want to provide that information, they have to accept that the court find them in contempt.


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## jacmyoung

James Long said:


> You've got that backwards ... do I need to say it myself a FOURTH time? Have I already lost count?
> 
> Tivo ansked the question so they can count ALL of the "Infringing Products" regardless of software status. They are thinking ahead of what DISH would provide if not specifically asked for counts of "post alleged new software" receivers.


There is no need to, if DISH is in contempt, post or prior to the alleged new software, who cares, all they need is how many are those adjudicated DVRs, not when the new software was downloaded. Let me just make it easy for you, just imagine there was never such thing called a software in them, just the DVRs themselves, that was exactly the "prima facie" you and Greg are talking about, pretend software does not even exist, therefore don't need to ask for it, there is nothing about a software to ask for, not on those adjudicated DVRs, because that is precisely what your "prima facie" means.



> Who?


He knew very well



> It is a good first step. Getting a judgement "on the face of the injunction" does not prohibit Tivo from seeking other judgements later.


Precisely why I said it was not necessary to ask such question, they don't have to do it now.



> If we don't pay will you stop talking for free?


What do you think?


----------



## jacmyoung

nobody99 said:


> ...If DISH doesn't want to provide that information, they have to accept that the court find them in contempt.


What if DISH does want to provide that information, do they then not have to accept that they are in contempt? What kind of statement is that?

Are you seriously telling me DISH does not want to provide that information? DISH would love to, because if the court asks DISH for the info on when the new software was downloaded on the adjudicated DVRs, that means DISH is not in contempt, because only when DISH is not in contempt so will such info be necessary.


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## Greg Bimson

jacmyoung said:


> There is no need to, if DISH is in contempt, post or prior to the alleged new software, who cares, all they need is how many are those adjudicated DVRs, not when the new software was downloaded. Let me just make it easy for you, just imagine there was never such thing called a software in them, just the DVRs themselves, that was exactly the "prima facie" you and Greg are talking about, pretend software does not even exist, therefore don't need to ask for it, there is nothing about a software to ask for, not on those adjudicated DVRs, because that is precisely what your "prima facie" means.


In case you missed it, the motion for damages during the stay of the injunction is pending along with the "prima facie" contempt motion. There needs to be discovery on the damages motion. The questions regarding the damages motion have nothing to do with the contempt motion.

So with Question 1:


> 1. Provide documents sufficient to determine on a monthly basis for the Stay Period the total number of placements of models DP-501, 508, 510, 721, 921, 522, 625, and 942.


IN ANTICIPATION that DISH/SATS will not include the new software in the above question, there is Question 3:


> 3. If you contend that TiVo is not entitled to damages during any part of the Stay Period on models DP-501, 508, 510, 721, 921, 522, 625, or 942, based on changes to software, provide documents sufficient to determine the number of units so changed and when the software of each such unit was changed.


DISH/SATS reply is due 11 July (I think). If TiVo doesn't have Question 3, DISH/SATS can simply answer Question 1 that TiVo is entitled to nothing as there is now non-infringing software. Then there will be delays as TiVo will have to get clarification upon clarification from the Court to make DISH/SATS answer the question correctly.


nobody99 said:


> If DISH doesn't want to provide that information, they have to accept that the court find them in contempt.


In contempt for refusal to answer a question judged important to the Court, just like when a reporter doesn't give the name of their source.


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## nobody99

jacmyoung said:


> Are you seriously telling me DISH does not want to provide that information? DISH would love to


Really? Is that your final answer?


----------



## nobody99

jacmyoung said:


> What if DISH does want to provide that information, do they then not have to accept that they are in contempt? What kind of statement is that?
> 
> Are you seriously telling me DISH does not want to provide that information? DISH would love to, because if the court asks DISH for the info on when the new software was downloaded on the adjudicated DVRs, that means DISH is not in contempt, because only when DISH is not in contempt so will such info be necessary.


Here's DISH's desire to NOT give TiVo their info:



Dish Proposed Docket Control Order said:


> In addition, the June 5 Order does not provide for any written discovery. To the contrary, the June 5 Order denies TiVo's request for discovery and states that "TiVo may renew its request to serve written discovery regarding EchoStar's modified software after the Court's decision on the first issue [which is to be considered at the September 4 hearing]."


DISH doesn't want to give them the data.

Maybe this is just a simple ploy on TiVo's part to see if DISH is even planning to use the new software as a defense?


----------



## kmill14

:nono2:


----------



## nobody99

Just for what it's worth, here's part of the May 30th meeting. Sorry about the ALL CAPS, I just copied from the PDF



> MR. CHU: FOR THE QUESTION OF WHETHER THERE IS A VIOLATION ON ITS FACE, WE DON'T NEED ANY DISCOVERY BECAUSE THE ONLY THING PERTINENT IS THE INJUNCTION ITSELF, THE TERMS OF THE INJUNCTION, AND WHETHER THEY IN FACT VIOLATED IT OR NOT. DID THEY DISABLE THE DVR FUNCTIONALITY?
> 
> THE SECOND PART OF THE INJUNCTION QUESTION IS THIS: *IF THE COURT SOMEHOW DECIDED THAT THAT WAS NOT A VIOLATION OF THE INJUNCTION* THEN WE WOULD NEED SOME LIMITED DISCOVERY ABOUT THEIR POSITION ON WHY THEIR SUPPOSED DESIGN-AROUND DOES OR DOESN'T WORK; AND WE COULD TAKE THAT DISCOVERY, AT THE SAME TIME, GOING TO THE SECOND ISSUE, *WE WOULD BE TAKING DISCOVERY WITH RESPECT TO DAMAGES. *
> 
> WE SERVED UPON THEM A STATEMENT OF WHAT DISCOVERY WE WANTED. WE WANT IT TO BE LIMITED DISCOVERY, AND WE ARE REQUESTING THE COURT'S PERMISSION TO GO FORWARD WITH THAT DISCOVERY. WE ARE HOPEFUL THAT WE WILL BE ABLE TO WORK OUT DIFFERENCES OF OPINION IN DISCOVERY ALONG THE WAY. *IF WE ARE GOING DOWN THE DISCOVERY ROUTE, AND WE NEED TO AT LEAST FOR DAMAGES, EVEN IF IT'S NOT FOR THE INJUNCTION*, WE WOULD THINK THAT ALL OF THAT OUGHT TO BE COMPLETED IN FORTYFIVE DAYS, IN THAT TIME PERIOD.


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## Greg Bimson

And now that I think about this...

There are three simultaneous motions:
Motion for contempt for "prima facie" violations of an injunction
Motion for modification regarding warranty replacements
Motion for damages

TiVo can most certainly argue and request any device they'd like for new damages. They may not get all the discovery they want; the judge might not like the fact TiVo is going after devices yet to be adjudicated. But they can ask.


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## jacmyoung

nobody99 said:


> Here's DISH's desire to NOT give TiVo their info:
> 
> Originally Posted by Dish Proposed Docket Control Order
> In addition, the June 5 Order does not provide for any written discovery. To the contrary, the June 5 Order denies TiVo's request for discovery and states that "TiVo may renew its request to serve written discovery regarding EchoStar's modified software after the Court's decision on the first issue [which is to be considered at the September 4 hearing]."
> 
> DISH doesn't want to give them the data.
> 
> Maybe this is just a simple ploy on TiVo's part to see if DISH is even planning to use the new software as a defense?


No, the above statement referred to Tivo's request for a limited discovery on the new software infringement issue, nothing to do with the damage issue, and DISH was correct, the court denied Tivo's such discovery.

The Tivo's discovery on the damages was granted by the judge, I never disputed that, my question is, and is this only:

Tivo of course can seek all kinds of discoveries on the enhanced damage issues, but they should not ask the question on *when* DISH downloaded the new software onto the adjudicated DVRs.

The only reason Tivo asked for that is because they are preparing for the possible outcome in which DISH is not find in contempt. And such Tivo's sentiment is actually evident in your next quote of Tivo's brief in the meeting:

"THE SECOND PART OF THE INJUNCTION QUESTION IS THIS: IF THE COURT SOMEHOW DECIDED THAT THAT WAS NOT A VIOLATION OF THE INJUNCTION THEN WE WOULD NEED SOME LIMITED DISCOVERY ABOUT THEIR POSITION ON WHY THEIR SUPPOSED DESIGN-AROUND DOES OR DOESN'T WORK; AND WE COULD TAKE THAT DISCOVERY, AT THE SAME TIME, GOING TO THE SECOND ISSUE, WE WOULD BE TAKING DISCOVERY WITH RESPECT TO DAMAGES."

Tivo sought a limited discovery (nothing to do with any damages) if DISH is not in violation of the injunction, in the above paragraph, that request was denied.

"WE SERVED UPON THEM A STATEMENT OF WHAT DISCOVERY WE WANTED. WE WANT IT TO BE LIMITED DISCOVERY, AND WE ARE REQUESTING THE COURT'S PERMISSION TO GO FORWARD WITH THAT DISCOVERY. WE ARE HOPEFUL THAT WE WILL BE ABLE TO WORK OUT DIFFERENCES OF OPINION IN DISCOVERY ALONG THE WAY. IF WE ARE GOING DOWN THE DISCOVERY ROUTE, AND WE NEED TO AT LEAST FOR DAMAGES, EVEN IF IT'S NOT FOR THE INJUNCTION, WE WOULD THINK THAT ALL OF THAT OUGHT TO BE COMPLETED IN FORTYFIVE DAYS, IN THAT TIME PERIOD."

Tivo then sought discovery on the damages on the above, and was granted.

And in seeking the damages, Tivo followed the same line of thinking when it sought the discovery in the injunction discussion, that if DISH shall not be in violation of the injunction, then what can Tivo do?

Yes, in the damage discoveries, Tivo shought the info on the timing of the new software download on the adjudicated DVRs, so that if DISH is not in contempt, this info will be used to calculate the enhanced damages by the adjudicated DVRs.

In both cases, Tivo tried to prepare for the possible outcome that DISH may not be in contempt, only that on the discovery of the new software infringement, the request was denied, but on the discovery of the damages by the adjudicated DVRs, the request was granted.

And my point has always been, by making the new software download onto the *adjudicated DVRs* an issue, by asking such question, Tivo has given legitimacy to DISH's new software argument, because Tivo itself is asking such info.

Tivo should not have to ask such question, only needed to ask for the number of the adjudicated DVRs that is active at any given time they want to know about, you know the first part of that question. But not the second part as for *when*, because with the "prima facie" argument, the when is irrelevant, only how many.

Basically those quotes of yours added weight to my accertion, that Tivo wants to prepare for the possible outcome that DISH may not be in contempt.

I never said being prepared is a bad thing, what I said was there is a risk for being too prepared and trying too hard to cover all bases. In doing so you may add to the weight of your opponent's argument.


----------



## Greg Bimson

jacmyoung said:


> Tivo of course can seek all kinds of discoveries on the enhanced damage issues, but they should not ask the question on *when* DISH downloaded the new software onto the adjudicated DVRs.


If DISH/SATS believes TiVo should not be paid because they have new software, it most certainly should be (and is) asked.

Otherwise, keep deluding yourself as to TiVo's intentions. Back to your normal, wild supposition thread...


----------



## Greg Bimson

jacmyoung said:


> No, the above statement referred to Tivo's request for a limited discovery on the new software infringement issue, nothing to do with the damage issue, and DISH was correct, the court denied Tivo's such discovery.


No, the above statement was DISH/SATS proposed docket control, where they are simply stating that there is no written discovery at all. However, even you found that discovery was granted for the damages.


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## jacmyoung

Greg Bimson said:


> If DISH/SATS believes TiVo should not be paid because they have new software, it most certainly should be (and is) asked...


Not if Tivo has a contempt ruling dangling in front of DISH's face where it says the new software does not matter, you are in contempt of continued use of those adjudicated DVRs, shut them off or pay damages up to the day you shut them off.

Where in the above language the date of the new software download should come into play?

No if DISH is in contempt the above question most certainly need not be asked, no matter what DISH believes, end of the game.


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## jacmyoung

BTW, I almost overlooked Curtis' quote since he usually is on Tivo's side so I did not look into his case:

"Turning first to the question of the judgment of contempt itself, we agree, of course, that the issue in contempt proceedings is violation vel non of the injunction, not patent infringement. *Nevertheless, devices which could not be enjoined as infringements on a separate complaint cannot possibly be deemed enjoined as infringements under an existing injunction in contempt proceedings.* Accord MAC Corp. of America, 767 F.2d at 886, 226 USPQ at 518, " 'fair ground for doubt' on infringement." (emphasis added). Infringement is the sine qua non of violation of an injunction against infringements."

Look at the highlighted phrase very carefully. What it said was, if a device cannot be enjoined as infringement on a separate complaint, cannot *possibly* be enjoined under an existing injunction in the contempt proceeding.

let's say that device is the DP501 with the new software, let's not consider the current lawsuit and the Judge Folsom's injunction for a moment, say there is a new *separate* lawsuit against the DP501 with the new software, and after the trial, it is found that the DP501 with the new software does not infringe. I am sure we can agree such possibility do exist?

Now the above Circuit Court's opinion is, the DP501 with the new software, if it can not be enjoined in this separate lawsuit because it is determined non-infringing, then, this DP501 with the new software *can not possibly be enjoined* in the current Judge Folsom's injunction during the contempt proceeding.

From the above opinion, the language of the Judge Folsom's injunction does not even matter, it is not even in the picture. The DP501 with the new software can not even *possibly* be enjoined by this injunction, period, regardless what is said in this existing injunction.

The reason is when the DP501 with the new software is trialed in another separate lawsuit, it maybe found non-infringing. If so, then yes this device can not be enjoined in the current injunction, or any injunction, no matter what is said in the existing injunction.

And the court gave this opinion a name, called "'fair ground for doubt' on infringement."


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## Greg Bimson

Greg Bimson said:


> If DISH/SATS believes TiVo should not be paid because they have new software, it most certainly should be (and is) asked...





jacmyoung said:


> No if DISH is in contempt the above question most certainly need not be asked, no matter what DISH believes, end of the game.


Not even close, and not even related to contempt...

January 2004 to April 2006 - damages assessed
April 2006 to August 2006 - more damages assessed

The motion for this hearing -

September 2006 to 18 April, 2008 - to determine the damages during *the stay* of the injunction. Motion to be heard 4 September, so discovery must be complete by 4 September.

If DISH/SATS only answers Question 1 with the amount of DVR's using the old software, then those are all the damages that will be assessed. It is DISH/SATS that contends they are no longer infringing with new software. So DISH/SATS better contend they don't owe damages for DVR's loaded with the new software.

Answer Question 1 with the total placements, and it blows out their defense in the contempt proceeding regarding new software. After all, if they answer Question 1 with the total placements, that tells the Court that they owe damages on the "Infringing Products", but haven't disabled the "Infringing Products". Which one is it?

Answer Question 1 with only the placements of the old software, and TiVo is entitled to Question 3 regarding all placments with the new software. That also may provide TiVo the door with respect to discovery on the new software.

And now you know why DISH/SATS doesn't want to answer these questions...

Did you notice I said only one word about the contempt issue, and that was to use the questions from the damages discovery to impeach DISH/SATS? So, if DISH/SATS is found in contempt, there will be another round of damages for the contempt violation of the injunction. Those damages will be calculated from the day the injunction started, 18 April 2008.

You need to realize the *damages calculation during the stay of the injunction* is separate from the *contempt motion*.


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## Greg Bimson

jacmyoung said:


> The reason is when the DP501 with the new software is trialed in another separate lawsuit, it maybe found non-infringing. If so, then yes this device can not be enjoined in the current injunction, or any injunction, no matter what is said in the existing injunction.


If SATS starts arguing models which have been adjudicated, there is a Court which already has jurisdiction. If DISH/SATS tries to talk about the DP-501 in Delaware, the entire suit will be moved to Texas and onto Judge Folsom's docket.

Why do you think the only "product" mentioned in the Delaware suit so far is "software". When did SATS become a software company?


----------



## jacmyoung

Greg Bimson said:


> If SATS starts arguing models which have been adjudicated, there is a Court which already has jurisdiction. If DISH/SATS tries to talk about the DP-501 in Delaware, the entire suit will be moved to Texas and onto Judge Folsom's docket.
> 
> Why do you think the only "product" mentioned in the Delaware suit so far is "software". When did SATS become a software company?


No I am not talking about the DE thing at all. In fact now you mentioned it, yes I am talking about the potential Tivo's new trial on the DP501 with the new software, under Judge Folsom's control even, it will be a separate trial (complaint).

And the above opinion of the court is, if the DP501 with the new software may be found non-infringing in this new potential trial, which will be a *"separate complaint"*, then this DP501 with the new software *can not possibly* be enjoined under the current (existing) injunction by Judge Folsom in that contempt hearing.

This opinion goes one step further and disregards what is said in the existing injunction, it says the DP501 with the new software cannot possibly be enjoined, period.


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## James Long

jacmyoung said:


> let's not consider the current lawsuit and the Judge Folsom's injunction for a moment,


In that case the moon is made of cheese and Elvis lives!

Ignoring the subject of the thread doesn't progress the discussion. You seem to be stuck in reverse searching for any hint of hope even beyond reason - and unwilling to listen. Answers are in the thread above ... please read.


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## jacmyoung

Greg, I have for the longest time tried to figure out this "prima facie injunction contempt" concept ever since you introduced it, and only now have I found out the answer.


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## jacmyoung

You admitted yourself you could not find a prior case that described a "prima facie injunction contempt" in a patent case, or any case, but let's stick to the patent cases, because that is the right thing to do.

I could not find one single case that fitted your "prima facie injunction contempt" either, and now I am certain your will not ever find one in the future. There is no such thing as "prima facie injunction contempt" in a patent case, if a judge ever tries to creat one, the Circuit Court will overturned it, and the reason is:

Unlike a contempt, which is a severe punishment, a sentence, a summary judgement, an injunction is not any of the above, the goal of an injunction is to prevent an act of infringement from happening again in the future.

It is precisely of such goal, the judges are allowed to frame the injunction broader, more over-reaching, and appear more severe than what it should be, and according to the Circuit Court, it is ok, because an injunction is not the same as a contempt judgement.

But when considering a contempt, the decision *may not* be broad, or over-reaching, or go beyond the acts that constitute infringement of the patent, regardless what the broader injunction says.

The Circuit Court has been consistent in its opinions all through the history, and shall do the same in the future, including looking at this case, if necessary.

That is why all my researches and prior cases and the opinions found by the court all led to one conclusion, DISH is not in contempt for the acts they are acting on at this moment, DISH is in compliance, because what DISH is doing now, those current acts, give "fair ground for doubt on infringement", and as such, if Tivo must resolve such issues, they must seek a new tiral, whether in DE, or still with Judge Folsom, as long as it is an independent, new, and "separate complaint".

And I challenged you to find just one case to fit your "prima facie injunction contempt", you have yet found one, and I am afraid you will not find one ever. I am afraid not only you may not find one from the past, you will not find one in the future. Keep in mind it is not just what the judge says, but what the Circuit Court says, because the Circuit Court has the final say.

BTW, you have always insisted I must found an *identical* case than this one in order to prevail. That is not a fair demand, because it is impossible to find one other case that may be *identical* to this one. The standard of proof you demand is unreasonably high.

I don't have to meet such unreasonable demand, all the cases I researched before, and all the Circuit Court opinions I have quoted, and hopefully the latest logic I have used, are sufficient to prove my point.

But if they still are not good enough, then that is just fine, we can agree to disagree. However I have said this before and will say it again, even though we have collided, sometimes heavily, I have always enjoyed debating you, you have shown what a debater should conduct himself, and I repsect you for that.


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## Greg Bimson

I am getting sick of this...


jacmyoung said:


> Unlike a contempt, which is a severe punishment, a sentence, a summary judgement, an injunction is not any of the above, the goal of an injunction is to prevent an act of infringement from happening again in the future.
> 
> It is precisely of such goal, the judges are allowed to frame the injunction broader, more over-reaching, and appear more severe than what it should be, and according to the Circuit Court, it is ok, because an injunction is not the same as a contempt judgement.
> 
> But when considering a contempt, the decision may not be broad, or over-reaching, or go beyond the acts that constitute infringement of the patent, regardless what the broader injunction says.


Scenario: What if DISH/SATS started selling DP-721's again?

The Court is supposed to check on the status of every product for which they've already issued a ruling?


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## phrelin

Not being familiar with TiVo systems, I was wondering how this from Media Daily News fits into their software:


> Data released Monday from TiVo, which has a service that tracks second-by-second viewing for live and time-shifted consumption, found that movie trailers drew significant viewer tune-in in April, along with spots in Apple's Mac vs. PC campaign.


Based on my regular reading of ad biz journals I know that TiVo and former TiVo using providers Comcast and DirecTV have systems that track and sell your minute-by-minute viewing habit data. Dish so far doesn't appear to be selling my viewing data which makes me wonder about software differences.

Of course, it may just be that Charlie shares my paranoia while TiVo engineers are designing video camera systems for their next boxes to report what snacks viewers eat while watching TV. I just thought Charlie was part of the "anything for a buck" crowd and would be using the same lucrative systems.


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## jacmyoung

Greg Bimson said:


> I am getting sick of this...Scenario: What if DISH/SATS started selling DP-721's again?
> 
> The Court is supposed to check on the status of every product for which they've already issued a ruling?


If the DP721 infringes, Tivo can bring contempt on it, if DP721 manages to use a new software that does not infringe, the act of using the DP721 again does not constitute a contempt.

BTW, regarding an injunction in a patent case, it is not the court's job to monitor the infringer's acts, it is the patentee. Tivo must monitor DISH's acts, and if found reasons to think DISH is in violation, Tivo must bring up the issue to the judge, not the other way around.


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## jacmyoung

phrelin said:


> Not being familiar with TiVo systems, I was wondering how this from Media Daily News fits into their software: Based on my regular reading of ad biz journals I know that TiVo and former TiVo using providers Comcast and DirecTV have systems that track and sell your minute-by-minute viewing habit data. Dish so far doesn't appear to be selling my viewing data which makes me wonder about software differences.
> 
> Of course, it may just be that Charlie shares my paranoia while TiVo engineers are designing video camera systems for their next boxes to report what snacks viewers eat while watching TV. I just thought Charlie was part of the "anything for a buck" crowd and would be using the same lucrative systems.


DISH has been monitoring the users' habit, why do you think if you hook up the phone line, they will waive the TV2 fee? Because the phoning back offers them a lot of information that are valuable and can make them money.


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## Greg Bimson

jacmyoung said:


> If the DP721 infringes, Tivo can bring contempt on it, if DP721 manages to use a new software that does not infringe, the act of using the DP721 again does not constitute a contempt.


Right.

There was this trial, and the DP-721 was found to infringe. So in order to prove contempt, the DP-721 would have to be found to infringe again, as an injunction order means nothing. I understand completely.


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## Curtis52

Greg Bimson said:


> Right.
> 
> There was this trial, and the DP-721 was found to infringe. So in order to prove contempt, the DP-721 would have to be found to infringe again, as an injunction order means nothing. I understand completely.


Is the model number the hangup? What if Dish started selling it with the new software under a different model number?


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## Greg Bimson

Curtis52 said:


> Is the model number the hangup? What if Dish started selling it with the new software under a different model number?


The DP-721 was found to infringe, and it cannot receive new software (according to DISH/SATS). So they change the model number to the DP-7211. They still both infringe. So after a jury trial and injunction, some people hold the opinion for some odd reason TiVo would need to prove they still infringe before anything else can happen.

Makes complete sense to me. :nono: :grin:


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## phrelin

jacmyoung said:


> DISH has been monitoring the users' habit, why do you think if you hook up the phone line, they will waive the TV2 fee? Because the phoning back offers them a lot of information that are valuable and can make them money.


Yes, but no one seems to have that information. The advertising industry can, and is, buying that info from TiVo, Comcast, and DirecTV.


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## kmill14

Greg, I see you are still fighting the good fight. I needed to take a break..it was getting to feel like I was having a conversation with a 6-year old who likes to ask "why?" after every single thing you say.


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## James Long

Suggestion: Stop fighting. I don't see the value in an argument when it isn't being listened to. State your opinion and move on. It isn't like the last poster in the thread wins. 

Now if there is an actual change in the case that's worth posting and tracking, but 2k of the same old rerun?

Posted as a reader who is just as guilty of responding when dropping it would be a better idea. I happen to be a moderator, but this isn't an instruction of a moderator telling anyone to move on ... it is just the experience of a guy who has been around for a while.


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## Greg Bimson

kmill14 said:


> Greg, I see you are still fighting the good fight. I needed to take a break..it was getting to feel like I was having a conversation with a 6-year old who likes to ask "why?" after every single thing you say.


I was about to take a break, but then we are back to addressing issues that were addressed months ago...


jacmyoung said:


> BTW, regarding an injunction in a patent case, it is not the court's job to monitor the infringer's acts, it is the patentee. Tivo must monitor DISH's acts, and if found reasons to think DISH is in violation, Tivo must bring up the issue to the judge, not the other way around.


Finally. A procedure that is correct.

Keep in mind the below are some FICTION FICTION FICTION scenarios (the first paragraph), while others are TRUE TRUE TRUE (the rest):

If DISH/SATS introduced the new DP-7211, which is simply a DP-721, TiVo would have to file a contempt motion for violation of an injunction, regarding ongoing infringement of a patent. TiVo would simply need to prove that the DP-7211 is "not more than colorably different" than a DP-721.

If DISH/SATS continues to sell the DP-721, TiVo would have to file a contempt motion for violation of an injunction, regarding "prima facie" violations, as DISH/SATS was told to stop selling the DP-721.

So is it any wonder why DISH/SATS has stopped sales of the DP-721? DISH/SATS themselves told their own retailers on 18 April 2008, to stop sales, because they couldn't modify the software. That also means DISH/SATS is adhering the injunction order for this receiver.

And TiVo didn't have to file any motion regarding sales of the DP-721, as it appears DISH/SATS complied with the injunction order for this receiver. However, it is the contention by some of you that if DISH starts sales of this receiver with the old software, TiVo would have to prove infringement AGAIN, even though the software cannot be changed.

No adjudicated device needs to be retried for infringement.


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## jacmyoung

Greg Bimson said:


> Right.
> 
> There was this trial, and the DP-721 was found to infringe. So in order to prove contempt, the DP-721 would have to be found to infringe again, as an injunction order means nothing. I understand completely.


Unfortunately it is incorrect again.

The court does offer the patentee a more convenient tool to bring up the issue again, it is called a summary contempt proceeding, in this proceeding, if the infringer's modified products (say the DP721s with some newsoftware) can be found essentially the same as the old DP721s (only colorably different), then the DP721s will not have to be found to infringe again, the infringer will be in contempt.

Only when evidence may establish fair ground for doubt (more than colorably different) whether the DP721's with the new software are still infringing or not, so must a new trial be needed.


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## jacmyoung

Greg Bimson said:


> I was about to take a break, but then we are back to addressing issues that were addressed months ago......


No true, the case Curtis52 cited was new information, never discussed before here, the opinion that a product that may not be enjoined in a separate trial to be infringing, *can not possibly* be enjoinded in an existing injunction during the contempt proceeding.

This opinion was a new find.


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## jacmyoung

Greg Bimson said:


> ...No adjudicated device needs to be retried for infringement.


Yes and no, first no adjudicated device can be prohibited from performing acts that are not infringing on the said patent.

Second, if an adjudicated device is modified, and the modification clearly makes it more than colorably different compared to the original adjudicated device, then the modified device may no longer be adjudicated device anymore, it all depends on what kind of modification it is.


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## jacmyoung

Greg Bimson said:


> The DP-721 was found to infringe, and it cannot receive new software (according to DISH/SATS). So they change the model number to the DP-7211. They still both infringe. So after a jury trial and injunction, some people hold the opinion for some odd reason TiVo would need to prove they still infringe before anything else can happen.
> 
> Makes complete sense to me. :nono: :grin:


If DISH does not change the software, only change the label of the DP721's, the modification will be only colorable, and DISH will be in contempt, a new trial will not be needed.

Notice you cannot find any holes in this line of logic, not because I am right, but because the courts, after over 100 years, had established the standards and refined them to stand the test of time.


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## kmill14

jacmyoung said:


> No true, the case Curtis52 cited was new information, never discussed before here, the opinion that a product that may not be enjoined in a separate trial to be infringing, *can not possibly* be enjoinded in an existing injunction during the contempt proceeding.
> 
> This opinion was a new find.


Its not a new find. He has posted it before. The big question is...why?

Its not relevant to this case.


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## jacmyoung

Curtis52 said:


> Is the model number the hangup? What if Dish started selling it with the new software under a different model number?


A different model no. has never gotten a single infringer out of contempt, because it is a mere colorable reference. For the same reason, even if the infringer never bothered to change the model no., as long as more than colorable differences have taken place on the device, that is good enough to avoid contempt.


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## Greg Bimson

Ready for this? I *will not post anymore* until there is new documentation from the court case. Everyone feel free to post whatever they want. In other words, continue as normal without me 


jacmyoung said:


> No true, the case Curtis52 cited was new information, never discussed before here, the opinion that a product that may not be enjoined in a separate trial to be infringing, *can not possibly* be enjoinded in an existing injunction during the contempt proceeding.
> 
> This opinion was a new find.


In other words, someone has to file a suit that the DP 501, 508, 510, 522, 625, 721, 921 and 942 don't infringe.

Except there is already ongoing litigation on those products. One cannot start lawsuit proceedings on products regarding the exact same issue which have already been adjudicated. After all, "the courts, after over 100 years, had established the standards and refined them to stand the test of time."


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## jacmyoung

Greg Bimson said:


> ...In other words, someone has to file a suit that the DP 501, 508, 510, 522, 625, 721, 921 and 942 don't infringe...


The DP501s... will not be retried, only the new software. While the DP501s...happened to be adjudicated devices, only the software was determined to infringe. When the software was changed, it give rise to fair ground the doubt whether the DP501s are still infringing on the patent or not.

That is why Tivo asked for a limited discovery on the new software infringement in the event DISH is not in contempt, Tivo did not ask for discovery on the DP501s...if DISH is not in contempt, only on the new software.

If anyone recall the Footprint 2.0 Service case, when the injunction was issued to enjoin the use of that Footprint 2.0 Service, because a very small piece of software used by that service infringed. Therefore the entire service became an "adjudicated device". During the contempt proceeding, the service itself was never an issue, rather the new software patch downloaded onto the adjudicated device--the Footprint 2.0 Service.

The judge did not find the infringer in contempt because she was not convinced the new software still infringed. Although that was the end of it, but if the patentee disagreed, they could have sought a new trial to determined the infringement issue, had they did that, it would be the new software that were on trial for infringement, not the Footprint 2.0 Service.

I know some of you will quickly jump on me to say that case was different, not relevant. My above explanation does not rely on such relevance you were insisting before, the above only explains why an adjudicated device need not be retried, and then what will be really on trial if it is not the adjudicated device? Yes, it will be the software.


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## jacmyoung

And I must agree, when the device is the combination of hardware and software, working together, not separated, the situation is somewhat different than the traditional cases, in which usually only a piece of hardware was the issue, so if the hardware was an adjudicated device, that was it, less complicated.

But even in those traditional cases, the infringers did modifiy those adjudicated devices, and turned them into something different, even though most of the time the modifications did not extend to the adjudicated devices in the field because it was impossible, therefore only for those still in the warehouses, the infringers did modify the adjudicated devices and try to workaround the patents, and the court said that was ok, as long as the workaround was legitimate.


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## James Long

jacmyoung said:


> Yes and no, first no adjudicated device can be prohibited from performing acts that are not infringing on the said patent.


Per the injunction, the "Infringing Products" - which are named receivers - infringe on the patent. Change the label and wink and nod if you like, those DVRs infringe on the patent until DISH _proves_ otherwise. These products do not become entirely different products simply because of a software change. If the "Infringing Product" was "software version Px.xx" then changing the software could end the matter (bringing the software into the realm of only colorably different - or not) but the named products in _this_ case are not software.



Greg Bimson said:


> Ready for this? I *will not post anymore* until there is new documentation from the court case. Everyone feel free to post whatever they want. In other words, continue as normal without me In other words, someone has to file a suit that the DP 501, 508, 510, 522, 625, 721, 921 and 942 don't infringe.
> 
> Except there is already ongoing litigation on those products. One cannot start lawsuit proceedings on products regarding the exact same issue which have already been adjudicated. After all, "the courts, after over 100 years, had established the standards and refined them to stand the test of time."


DISH should be able to file suit that the "Infringing Products" as modified are no longer infringing. If they can prove them non-infringing then the door reopens for DISH to offer them.

At the moment DISH has only filed suit to protect the unnamed DVRs ... I hope they take up the "new software" issue with Judge Folsom on the "Infringing Receivers".


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## spear61

James Long said:


> Per the injunction, the "Infringing Products" - which are named receivers - infringe on the patent.
> At the moment DISH has only filed suit to protect the unnamed DVRs ... I hope they take up the "new software" issue with Judge Folsom on the "Infringing Receivers".


James; I think Dish did address it in their recent filings. They said they had fulfilled the "spirit" of the injunction by developing new non-infringing software, downloading it, and activating same before the injunction came into effect. Now, Tivo can contest it, but Dish really did put in a documented effort that has been provided to the court. If the judge wants to cut Dish some slack on this injunction, there is no way his bosses upstairs are going to reverse him. He can say it was worded "gray" or he can interpret it that Dish is complying. What better person to interpret an injunction than the judge that wrote it.

I just don't see what is to be gained by shutting things down. Dish has new receivers and new software available and there is no way in hell Dish is going to license from Tivo. What would you do if you suddenly lost a couple million DVRs, ramp up your own production or ask your enemy to ramp up his? Tivo will and should get a pile of money for the stayed period and can continue their battle on infringement if they so choose.


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## jacmyoung

James Long said:


> ... but the named products in _this_ case are not software...


I hope I did not imply the named products are software. Greg raised a good question, if an adjudicated device can not be retried, then how one may decide if it no longer infringe? And if one can no longer decide through a trial whether it still infringe or not, then one can only deduct that it will always be infringing. But then Greg also admitted that it is possible that in a new trial, a DP501 with the new software might be found not to infringe.

The above situations are conflicting. Let me just use this example in our very own case to try to explain:

We all agree that once the DVR functions are disabled on those adjudicated devices, they will be allowed to be used as standard receivers. Why? Because once the DVR functions are removed, one can reasonably say they are no longer Infringing Products, otherwise they will not be allowed to be used as standard receivers. So far so good?

The above example clearly demonstrates that the same adjudicated product, while always adjudicated device, can be an Infringing Product at one time, and not an Infringing Product at another time. Agreed?

So it is possible the DP501s...that where one time named as Infringing Products, can in fact become somethings that are no longer the Infringing Products. The only thing left to pounder it, how can such transformation occur?

I will not waste any time to continue, we have made one anothers' interpretations clear many times, we just don't agree with one another, that's all.


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## James Long

From the "not so fast" department ...

An earlier Docket Control Order that does NOT include all of the "not agreed" timetable (including Tivo's requests for discovery) was approved yesterday.

The parties are working on the remainder of the schedule, but have not yet reached agreement. The parties will continue their discussions and will file further agreements, and/or submit remaining disputes, to the Court by Monday, June 16, 2008.​Signed June 18th by Judge Folsom.

This trumps the docket control with all the "not agreed" markings signed June 17th.

(Interesting that the "remaining disputes" timeline passed before the judge signed the docket control timetable.)

Anyways ... more to chew on.


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## James Long

jacmyoung said:


> I hope I did not imply the named products are software.


Well you keep wasting time and words quoting a case where the enjoined product WAS software ... it just seems to be the theme you keep coming back to (the software no longer infringes, so the infringing products are no longer infringing products). The simplest reading of _this_ injunction ... on the face of it ... new software doesn't help stop infringement.

As stated before, I hope that Judge Folsom sees the "good faith" effort from DISH to change their products as an alternative to contempt ... and call for a hearing with evidence to decide if the products still infringe ... it is a long shot, and with his packed schedule I don't believe he could care less if the case went away to the appeals level again for 18 months to contest whatever decision he makes. He'll be glad to have Tivo and DISH out of his court for a while.


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## jacmyoung

James Long said:


> Well you keep wasting time and words quoting a case where the enjoined product WAS software ...


Not true, that case I quoted, indeed the entire service was enjoined, in fact that injunction did not even mention the software if I remember correctly, of course it did specified that entire service which used that piece of infringing software indirectly.

[/quote] it just seems to be the theme you keep coming back to (the software no longer infringes, so the infringing products are no longer infringing products). The simplest reading of _this_ injunction ... on the face of it ... new software doesn't help stop infringement....[/QUOTE]

New software most certainly can help stop infringement, if it later can be found non-infringing, even Greg agreed, the disagreement is whether it is too late for the adjudicated DVRs or not.


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## James Long

Greg has made his interpretations clear ... there is no reason to cloud his statements.



> IT IS HEREBY ORDERED that:
> 
> Defendants, including Digital Island (now known as Cable & Wireless Internet Services, Inc.), their officers, agents, servants, employees, and attorneys are permanently enjoined and prohibited from making, using, selling, offering for sale, or importing into the United States the patented inventions claimed in claims 1, 3, 5 and 9 of the '703 patent, and from active inducement of infringement of these claims of the '703 patent. *This injunction extends to Digital Island's Footprint 2.0 service, as configured and described at trial.*


The service AS CONFIGURED was enjoined. Footprint changed their software and changed the AS CONFIGURED part, as permitted by that injunction. The injunction in _this case_ does not name specific patent claims that need removing. It will be entirely up to the judge whether he accepts that concept after the fact. On the face of the injunction, the products must be disabled. And that is the question for September 4th.

You still have not presented a precedent that would encourage Judge Folsom to not find DISH in contempt.


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## jacmyoung

James Long said:


> Greg has made his interpretations clear ... there is no reason to cloud his statements.
> 
> The service AS CONFIGURED was enjoined. Footprint changed their software and changed the AS CONFIGURED part, as permitted by that injunction. The injunction in _this case_ does not name specific patent claims that need removing. It will be entirely up to the judge whether he accepts that concept after the fact. On the face of the injunction, the products must be disabled. And that is the question for September 4th.
> 
> You still have not presented a precedent that would encourage Judge Folsom to not find DISH in contempt.


You said in the above case the software was enjoined, I corrected you, as one can see, the entire service was enjoined, not the software, but yes the injunction also specified the entire service as being the one referred to in the trial.

Nevertheless, it was the service that was enjoined, not the software. The difference as you pointed out, as well as the others, is that in the above injunction it did specify the enjoined service (not the software) to be the service that used that infringing software.

To that extend I agree in this case, the injunction did not specify "the DVR functions as referred to in the trial", rather "the DVR functions, (i.e. all storage and playback...functions....)", so yes the language is more broad then the other case.

What I am saying is, even with a broad injunction, on contempt, the judge should still stick to the standards his boss has established. His boss said he can frame a broad injunction, but to issue a contempt, those standards must be considered, such standards are:

1) Acts that are not infringment of the patent by the adjudicated devices can not be prohibited;

2) Devices that may be found not infringing in a different trial, can not possibly be enjoined under the current injunction on contempt.

The boss's opinions seemed to be, when considering a contempt charge, the judge may not just literally zero in on the face of his injunction, he must consider the above opinions of his boss.

Such is especially apparent if you consider the entire paragraph Curtis52 cited:

"Turning first to the question of the judgment of contempt itself, *(1)*we agree, of course, that the issue in contempt proceedings is violation vel non of the injunction, not patent infringement. *(2)*Nevertheless, devices which could not be enjoined as infringements on a separate complaint cannot possibly be deemed enjoined as infringements under an existing injunction in contempt proceedings. Accord MAC Corp. of America, 767 F.2d at 886, 226 USPQ at 518, " 'fair ground for doubt' on infringement." (emphasis added). *(3)*Infringement is the sine qua non of violation of an injunction against infringements."

As I have highlighted, (1) was basically admitting that the contempt discussions always seem to be about the language of the injunctions, not infringment of the patent, but on (2), the Circuit Court said nevertheless, it should not be, because if the device in question can be found non-infringing elsewhere, it can not possibly be enjoined in the current injunction, period, regardless what we want to discuss the language of this injunction. And further more the Circuit Court explained why such standard, on (3), because it is indeed the issue of infringement that is essential (not the language of the injunction), meaning no "face of injunction" contempt, rather infringement of patent contempt.


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## James Long

One painful step at a time -

*What does the injunction in THIS case tell DISH to do?*
A) Disable the DVR function on eight named DVRs.
B) Disable all function on eight named DVRs.
C) Disable all function on all DVRs made by on on behalf of Echostar.
D) Disable all receivers made by on on behalf of Echostar.
E) Stop infringing on the claims in the Tivo patent.

The injunction you are hanging your hat on (Footprint 2.0) applies to "the patented inventions claimed in claims 1, 3, 5 and 9 of the '703 patent". The injunction in THIS case applies to eight named models of DVR. Do you agree that the plain reading of the injunction in THIS case would give the answer "A" to the question above? Or would an answer B, C or D be a more appropriate plain reading? If you're answering E you're reading the wrong injunction.

Simple question ... read the injunction and simply state what DISH must do per a plain reading of the injunction.
Step 1.

I don't know if it is a twelve step plan - I do know many of us will need one after this thread.


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## James Long

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

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


----------



## jacmyoung

James, you are simply avoiding the interpretation of the very important Circuit Court's opinion above, one that only if you make an effort to, you will realize I am correct. So let me try to do it for you again:

Let's first look at the three very important terms used above.

i) "Violation *vel non* of the injunction": A term used by the courts in reference to the existence or nonexistence of an issue for determination; for example: "We come to the merits (replaced with "violation") vel non of this appeal (replaced with "the injunction")," means "we come to the merits (replaced with "violation"), or not, of this appeal (replaced with 'the injunction')," and refers to the possibility that the appeal (replaced with 'the injunction') lacks merit (replaced with "violation").

ii) "*Nevertheless*...," here the Circuit Court used an example why the lack of the merit of simply arguing on the face of the injunction.

iii) Then the term "*sine qua non* of violation", meaning a condition (infringement of the patent) without which it (an violation) can not be.

If you simply are willing to look at the above Circuit Court opinion, you will realize yes indeed, all the language you have quoted above about the face of the injunction, has no merit, when it comes to rendering a contempt verdict, if infringement of the patent does not exist.

I know it almost sounds unbelievable, but true, only if you are willing to look at it.

When considering a contempt, the judge must determine if infringement of the patent exists now, not what his injunction says. An average person would insist on the language of his order, likely due to his ego. But a judge is not your average person, he must do what the rule says, find infringement of the patent by the infringer, rendering a contempt, not finding infringement of the patent by the infringer, no contempt, yes he must put his ego behind, put his injunction behind, and answer this very "sine qua non" question first, does DISH infringe on the patent now, before rendering a contempt.


----------



## Herdfan

jacmyoung said:


> James, you are simply avoiding the interpretation


Utinam logica falsa tuam philosophiam totam suffodiant! :lol:


----------



## kmill14

jacmyoung said:


> 1) Acts that are not infringment of the patent by the adjudicated devices can not be prohibited;


And what acts are those?



jacmyoung said:


> 2) Devices that may be found not infringing in a different trial, can not possibly be enjoined under the current injunction on contempt.


Thankfully this isn't relevant to this case. Why bring it up?



> (2)[/b]Nevertheless, devices which could not be enjoined as infringements on a separate complaint cannot possibly be deemed enjoined as infringements under an existing injunction in contempt proceedings. Accord MAC Corp. of America, 767 F.2d at 886, 226 USPQ at 518, " 'fair ground for doubt' on infringement." (emphasis added). *(3)*Infringement is the sine qua non of violation of an injunction against infringements."


Again, not relevant here. Why keep bringing it up?


----------



## kmill14

jacmyoung said:


> When considering a contempt, the judge must determine if infringement of the patent exists now, not what his injunction says.


Well, thats not what the Courts actually say:



> "In a civil contempt proceeding, the party seeking an order of contempt need only
> establish (1) that a court order was in effect, and (2) that the order required certain conduct by the respondent, and (3) that the respondent failed to comply with the court's order." FDIC v. LeGrand, 43 F.3d 163, 170 (5th Cir. 1995)





> "A party commits contempt when he violates a definite and specific order of
> the court requiring him to perform or refrain from performing a particular act or acts with knowledge of the court's order." SEC v. First Fin. Group, 659 F.2d 660, 669 (5th Cir. 1981).





> "If a party can make himself a judge of the validity of orders which
> have been issued, and by his own act of disobedience set them aside, then are the courts impotent, and what the Constitution now fittingly calls the 'judicial power of the United States' would be a mere mockery."





> The Supreme Court has affirmed contempt convictions even where the underlying injunction would "unquestionably be subject to substantial constitutional questions." Walker, 388 U.S. at 317.


----------



## James Long

jacmyoung said:


> James, you are simply avoiding the interpretation of the very important Circuit Court's opinion above, one that only if you make an effort to, you will realize I am correct.


Ask a simple question and get a non-answer.  
The question in my post remains unanswered. Care to try again?

One step at a time ... we're at the step of "simple reading" not "obfuscation".


----------



## Greg Bimson

I wasn't going to be back for a while, but since new documents were posted, hey, I'm within my right!


> Turning first to the question of the judgment of contempt itself, (1)we agree, of course, that the issue in contempt proceedings is violation vel non of the injunction, not patent infringement. (2)Nevertheless, devices which could not be enjoined as infringements on a separate complaint cannot possibly be deemed enjoined as infringements under an existing injunction in contempt proceedings. Accord MAC Corp. of America, 767 F.2d at 886, 226 USPQ at 518, " 'fair ground for doubt' on infringement." (emphasis added). (3)Infringement is the sine qua non of violation of an injunction against infringements.


1) Patent infringement is not the issue in a contempt proceeding. Violating the injunction is the issue.

And the complete misread of the second section:


jacmyoung said:


> Devices that may be found not infringing in a different trial, can not possibly be enjoined under the current injunction on contempt.


2) And I only need to remove a couple of words for this to be correct...

Devices not found infringing in a different trial cannot possibly be enjoined under the current injunction on contempt.

Which devices have not been found infringing in a different trial?

3) If another suit finds that there is no infringement of a device, there is no possible way to have that device enjoined on an existing injunction because infringement is the violation that must exist to have that device enjoined.


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## Greg Bimson

By the way, from that exact same appeal:


> The unreasonableness of a decree incorporating a vague or broad prohibition against "infringement" of a "patent" is alleviated because of the universal rule, to be addressed infra, that *contempt proceedings, civil or criminal, are available only with respect to devices previously admitted or adjudged to infringe*, and to other devices which are no more than colorably different therefrom and which clearly are infringements of the patent.


The "Infringing Products" were previously adjudged to infringe. Contempt proceedings are the way to go.


----------



## jacmyoung

Greg Bimson said:


> ...1) Patent infringement is not the issue in a contempt proceeding. Violating the injunction is the issue....


The Circuit Court said, the only way to have a violation is that there is infringement of the patent. I hope after reading the above we can agree on that one point. To go one step further, if there is any doubt that the device may not infringe (fair ground for doubt on infringement), then there is no violation.

So yes, in a contempt proceeding, whether the adjudicated device infringes or not can not be determined, it takes a new trial to do that, but what the Circuit Court is saying, if in the supposed new trial, such device may be found non-infringing, even if such determination is still unknown because such trial has not started yet, but as long as such possibility exists that this device may not infringe, then there is fair ground for doubt, and as long as such doubt exists, there is no contempt, and there is no violation, even though on the face of the injunction there appears a violation.

Go back and read that paragraph several times and I think you will see that.


----------



## jacmyoung

James Long said:


> Ask a simple question and get a non-answer.
> The question in my post remains unanswered. Care to try again?
> 
> One step at a time ... we're at the step of "simple reading" not "obfuscation".


How many times do I have to say this, all the things you quoted, the language of the injunction, will only apply if the infringer is still infringing the patent, if he no longer infringes on the patent, there will be no contempt, regardless what is said in the injunction.

Of course you can laugh at such notion, but only if you cared to read the Circuit Court's above opinion, several times, you will come to such conclusion. I did not make such claim, in fact I was arguing on other points, wasting all those posts.

Had I initially discovered, or paid attention to the Circuit Court such opinion Curtis52 found, I could have save a lot of time. With this opinion, only if you are willing to understand it, it will be clear that yes in fact there is such thing that the language of the injunction does not even matter anymore, once a doubt can be established whether the infringer is infringing on the patent at this time or not, then there is no contempt.

Very hard to accept such notion, I knew that, which is why I asked everyone to read it several times, pay attention to all the key words.


----------



## kmill14

Where does your beautiful court citation mention anything about doubt?


----------



## kmill14

Straight from jacmyoung's keyboard:



> As I have highlighted, (1) was basically admitting that the contempt discussions always seem to be about the language of the injunctions, not infringment of the patent


----------



## kmill14

And this Circuit Court said this about contempt proceedings, but you don't like to address me anymore it seems:



> "In a civil contempt proceeding, the party seeking an order of contempt need only establish (1) that a court order was in effect, and (2) that the order required certain conduct by the respondent, and (3) that the respondent failed to comply with the court's order." FDIC v. LeGrand, 43 F.3d 163, 170 (5th Cir. 1995)


----------



## jacmyoung

kmill14 said:


> And this Circuit Court said this about contempt proceedings, but you don't like to address me anymore it seems:


Was that case to do with infringement of a patent? How about a link?


----------



## jacmyoung

kmill14 said:


> Straight from jacmyoung's keyboard:


But why did you stop there? Remember the word "nevertheless"?


----------



## jacmyoung

kmill14 said:


> Where does your beautiful court citation mention anything about doubt?


Go read it again, you can find that term called "fair ground for doubt on infringement", not only that, "with emphasis added".


----------



## James Long

jacmyoung said:


> So yes, in a contempt proceeding, whether the adjudicated device infringes or not can not be determined, it takes a new trial to do that, ...


Is there a new trial taking place on September 4th? No.
Is there a contempt proceeding taking place on September 4th? Yes.

Perhaps there will be a new trial some day on the adjudicated "Infringing Products", but that isn't on the schedule of either party yet. It seems best to stick with the case as it is and avoid fictionalizing it.


jacmyoung said:


> How many times do I have to say this, all the things you quoted, the language of the injunction, will only apply if the infringer is still infringing the patent, if he no longer infringes on the patent, there will be no contempt, regardless what is said in the injunction.


Perhaps Judge Folsom will look ahead and agree ... but he is under no compulsion to do so. Other than a routine stay and internet chatter, the validity of the injunction has not been questioned.

The plain reading of the injunction, on the face of the injunction, says something that should be read.



> Go back and read that paragraph several times and I think you will see that.





> Very hard to accept such notion, I knew that, which is why I asked everyone to read it several times, pay attention to all the key words.


Good advice that the poster should himself be following.

So, simple reading of the injunction, what has DISH been told to do and have they done as told? Or are you refusing to answer the question on the grounds that it may ruin your argument?


----------



## kmill14

jacmyoung said:


> Go read it again, you can find that term called "fair ground for doubt on infringement", not only that, "with emphasis added".


You mean this entire quote?



> 2)Nevertheless, devices which could not be enjoined as infringements on a separate complaint cannot possibly be deemed enjoined as infringements under an existing injunction in contempt proceedings. Accord MAC Corp. of America, 767 F.2d at 886, 226 USPQ at 518, " 'fair ground for doubt' on infringement."


I don't discuss it because as I mentioned earlier, this entire line of reasoning is completely irrelevant to this case. There is no discussion on 9/4 about devices that were not enjoined on a seperate complaint. I don't know what devices you are hinting at, but THIS case and hearing will be about the DP-501, etc.


----------



## jacmyoung

James Long said:


> Is there a new trial taking place on September 4th? No.
> Is there a contempt proceeding taking place on September 4th? Yes.
> 
> Perhaps there will be a new trial some day on the adjudicated "Infringing Products", but that isn't on the schedule of either party yet. It seems best to stick with the case as it is and avoid fictionalizing it.Perhaps Judge Folsom will look ahead and agree ... but he is under no compulsion to do so. Other than a routine stay and internet chatter, the validity of the injunction has not been questioned.
> 
> The plain reading of the injunction, on the face of the injunction, says something that should be read.
> 
> Good advice that the poster should himself be following.
> 
> So, simple reading of the injunction, what has DISH been told to do and have they done as told? Or are you refusing to answer the question on the grounds that it may ruin your argument?


I have already answered your question, simple reading of the facr of the injunction is not enough to render a contempt charge:

"Turning first to the question of the judgment of contempt itself, (1)we agree, of course, that the issue in contempt proceedings is violation vel non of the injunction, not patent infringement. (2)Nevertheless, devices which could not be enjoined as infringements on a separate complaint cannot possibly be deemed enjoined as infringements under an existing injunction in contempt proceedings. Accord MAC Corp. of America, 767 F.2d at 886, 226 USPQ at 518, " 'fair ground for doubt' on infringement." (emphasis added). (3)Infringement is the sine qua non of violation of an injunction against infringements."

Read it sir! (1) described exactly your sentiment, that people always tend to look at the face value of the injunction, and the Circuit Court recognized that, but don't stop just there my friend, continue:

(2) Nevertheless, not we are talking about some supposed "separate complaint"--a new trial, which might establish the "fair ground for doubt on infringement".

And still do not stop there, continue onto (3) It is the infringment (not the face of the injunction as mentioned in (1) that people have always gotten cought up with) that is the *sine qua non* of *violation* of an injunction against infringements, meaning without infringement, there cannot be violation, no matter what the injunciton says.


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## Greg Bimson

jacmyoung said:


> The Circuit Court said, the only way to have a violation is that there is infringement of the patent.


From the quoted case law:


> ...the issue in contempt proceedings is violation vel non of the injunction, not patent infringement.


So DISH has modified many adjudicated devices. Those devices were still adjudicated.

And the issue here is that the court ordered in that paragraph the "Infringing Products" to be disabled. There is nothing in that paragraph that mentions infringement. The infringement paragraph is separate.


----------



## Curtis52

> "(c) The Contempt Action
> 
> On October 16, 1984, MAC filed a motion with Judge Hungate for a show cause order and contempt judgment, alleging an infringing sale by Williams to Appleton and that "a shredder made in accordance with the Williams ['400] patent is essentially the same as the Williams RIPSHEAR shredder found to infringe and is therefore in contempt of this Court's judgment."





> "Opinion
> 
> Civil contempt "is a severe remedy, and should not be resorted to where there is a fair ground of doubt as to the wrongfulness of defendant's conduct." California Artificial Stone Paving Co. v. Molitor, 113 U.S. 609, 618, 5 S.Ct. 618, 622, 28 L.Ed. 1106 (1885). In denying MAC's motion, the district court recognized and conscientiously applied this well-settled principle."





> "MAC says its affidavits established "*prima facie* contempt", entitling it to issuance of a show cause order, limited discovery, and an evidentiary hearing. We are not persuaded that a district court's discretion in this case is constrained to determination of whether a prima facie case appears. Nor need we cite MAC's recognition of need for discovery and an evidentiary hearing as confirming the presence of "a fair ground of doubt." Judge Hungate correctly looked to the law in denying MAC's motion on the basis of a "fair ground of doubt". California Artificial Stone Paving Co. v. Molitor, 113 U.S. at 618, 5 S.Ct. at 622; American Foundry & Mfg. Co. v. Josam Mfg. Co., 79 F.2d at 118, 26 USPQ at 339. Our appellate review extends only to whether the record fails to disclose any basis whatever for the "fair ground of doubt" finding.
> 
> Judge Hungate had been deeply versed in the underlying facts and circumstances of the dispute. Before us is his clear, unequivocal statement that he read and considered the briefs and affidavits, that he recognized that there was some difference in the enjoined and now accused shredders, and that a "fair ground for doubt" on infringement existed. That there is some difference in the two shredders is undisputed. MAC bears a heavy burden on appeal from denial of its motion. It has supplied nothing of record that would require or entitle us to gainsay Judge Hungate's finding of a fair ground of doubt.
> 
> MAC protests it has been denied "its day in court". That is untrue. Judge Hungate, having determined that it would not be in the interest of justice to determine the merits of this dispute in summary proceedings for contempt, will give MAC its full day in court when he hears and determines Williams' action for declaratory judgment of non-infringement and MAC's counterclaim for infringement. At the trial of that action, MAC will have the discovery and evidentiary hearing it sought in its present motion. If MAC prevails at trial, it may obtain an injunction against production, use, and sale of the now-accused shredders, and Judge Hungate may award such damages and other remedies provided at law and in equity as to him may appear just under all of the circumstances.
> 
> AFFIRMED."


http://bulk.resource.org/courts.gov/c/F2/767/767.F2d.882.85-883.html


----------



## James Long

jacmyoung said:


> I have already answered your question, simple reading of the facr of the injunction is not enough to render a contempt charge:


Fine. You prefer obfuscation. You have no simple answer.

"Read it sir!" as you said ... and answer the question that was put to you.
Or obfusacate alone. It isn't the poster with the most or last words who is right.


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## Greg Bimson

jacmyoung said:


> And still do not stop there, continue onto (3) It is the infringment (not the face of the injunction as mentioned in (1) that people have always gotten cought up with) that is the sine qua non of violation of an injunction against infringements, meaning without infringement, there cannot be violation, no matter what the injunciton says.


But TiVo is not trying to enjoin a modified product for a violation of an injunction against infringements. TiVo is alleging contempt for a violation of an injunction ordering adjudicated products to be disabled.

The alleged violation of the injunction is that the adjudged products have not been disabled. That is TiVo's (and my "prima facie") argument.

Infringement doesn't come into play, unless the argument is that since DISH/SATS modifed infringing products, that they are no longer adjudicated products. And I disagree with that entirely, because the court has jurisdiction over the adjudicated products (of course). Any changes to adjudicated products must go through the courts in order to have the orders from the court reflect those changes.


----------



## jacmyoung

kmill14 said:


> You mean this entire quote?
> 
> I don't discuss it because as I mentioned earlier, this entire line of reasoning is completely irrelevant to this case. There is no discussion on 9/4 about devices that were not enjoined on a seperate complaint. I don't know what devices you are hinting at, but THIS case and hearing will be about the DP-501, etc.


The 9/4 hearing is a clarification hearing, go back and read the transcripts on that status meeting itself, Tivo asked for clairification, the judge gave it to them, no more no less. Don't get caught up by Tivo's latest motion, it was like others said "fishing", and how much do you want to bet on 6/30, you will see just the same kind of "fishing" response by DISH?

What is *likely* to happen in that 9/4 hearing is, the judge will tell Tivo that look I can not render a contempt ruling on the face of my injunction, because my boss told me before I do so, I must first ask the question, is DISH still infringing on the patent? So let's find out, what do you want to do to find it out Tivo?

Tivo has two ways to find out, one is a discovery on the new software colorable difference issue, compared to the old software. The nature of such request does not require a new trial, the judge only needs to schedule another contempt hearing, and DISH will have to provide more info on the new software, both sides will be allowed to examine the evidence by DISH, produce experts to testify.

The other opion is to seek discovery on the new software infringement issue, if so, the judge will likely arrange a new trial, a separate trial for it.

Now before you start accusing me of making things up, just let me remind you it was Tivo who wanted such discovery, in the event that DISH is not in contempt during the clarification hearing.

Tivo had in more than one occasion said they were preparing for the possible outcome on that 9/4 meeting when DISH walks out free of contempt.


----------



## kmill14

jacmyoung said:


> The 9/4 hearing is a clarification hearing, go back and read the transcripts on that status meeting itself, Tivo asked for clairification, the judge gave it to them, no more no less. Don't get caught up by Tivo's latest motion, it was like others said "fishing", and how much do you want to bet on 6/30, you will see just the same kind of "fishing" response by DISH?


Its not a "clarification hearing"....are you serious? Its actually a contempt hearing. No more, no less. Oh, except for damages, which is what the "fishing" motion was all about.



> What is *likely* to happen in that 9/4 hearing is, the judge will tell Tivo that look I can not render a contempt ruling on the face of my injunction, because my boss told me before I do so, I must first ask the question, is DISH still infringing on the patent? So let's find out, what do you want to do to find it out Tivo?


Actually, his "boss" said this about contempt hearings:



> "In a civil contempt proceeding, the party seeking an order of contempt need only establish (1) that a court order was in effect, and (2) that the order required certain conduct by the respondent, and (3) that the respondent failed to comply with the court's order." FDIC v. LeGrand, 43 F.3d 163, 170 (5th Cir. 1995)


Which of course you refuse to address.


----------



## jacmyoung

Curtis52 said:


> http://bulk.resource.org/courts.gov/c/F2/767/767.F2d.882.85-883.html


Thank you Curtis, your resourcefulness has always been my reason for envy, I think I had mentioned such more than once before, of course now it lands to my support, my such feeling is more intense


----------



## Greg Bimson

From Curtis52's newest case law


> On October 16, 1984, MAC filed a motion with Judge Hungate for a show cause order and contempt judgment, alleging an infringing sale by Williams...


...for a modified product essentially the same as one that was enjoined.

MAC addresses the court:
Topic: Contempt
Reason: Injunction prohibits sale of products "not more than colorably different"
Alleged action: Ongoing sales of a modified product "not more than colorably different"

TiVo addresses the court:
Topic: Contempt
Reason: Injunction orders adjudicated products to be disabled
Alleged action: No adjudicated products have been disabled

Different types of contempt.


----------



## jacmyoung

Greg Bimson said:


> From Curtis52's newest case law...for a modified product essentially the same as one that was enjoined.
> 
> MAC addresses the court:
> Topic: Contempt
> Reason: Injunction prohibits sale of products "not more than colorably different"
> Alleged action: Ongoing sales of a modified product "not more than colorably different"
> 
> TiVo addresses the court:
> Topic: Contempt
> Reason: Injunction orders adjudicated products to be disabled
> Alleged action: No adjudicated products have been disabled
> 
> Different types of contempt.


No it is the same if you had read another of the Circuit Court opinions I quoted before, that indeed an adjudicated device is treated the *same* as a non-adjudicated device that may be only colorably different than the adjudicated device, I will re-post it after I go back to find it.

The fact of the matter is Tivo, yes Tivo themselves has been preparing the possible outcome that DISH may walk out of that 9/4 hearing without a contempt, in fact Tivo has tried very hard on such preparation.


----------



## Curtis52

Greg Bimson said:


> From Curtis52's newest case law...for a modified product essentially the same as one that was enjoined.
> 
> MAC addresses the court:
> Topic: Contempt
> Reason: Injunction prohibits sale of products "not more than colorably different"
> Alleged action: Ongoing sales of a modified product "not more than colorably different"
> 
> TiVo addresses the court:
> Topic: Contempt
> Reason: Injunction orders adjudicated products to be disabled
> Alleged action: No adjudicated products have been disabled
> 
> Different types of contempt.


Shredder injunction:



> "from directly or indirectly infringing or inducing infringement of claims 8 or 101 of Letters Patent 4,034,918 by making, *using*, or selling, or *causing to be* made, *used*, or sold, shredders covered by such claims and any infringing equivalents thereof."


----------



## jacmyoung

Curtis52 said:


> Shredder injunction:


Why didn't you post it earlier?

It seems MAC had just as strong a "prima facie" case as Tivo has now, but as I have concluded lately, there is simply no such thing as "prima facie" argument for contempt in a patent case. Because the unique requirement by the court, that in a contempt proceeding, the *doubt* of whether the device in question is still infringing on the patent must be totally removed, in order for the patentee to prevail on a contempt charge.


----------



## nobody99

Curtis52 said:


> Shredder injunction:


Just as another exercise in futility, will you do me the favor of reading the injunction again? Notice it uses the term "colorably different." That's the remedy for future sales.

Look at the paragraph to "disable the DVR functionality." Notice "colorably different" is not in the paragraph.

Just sayin'.


----------



## nobody99

jacmyoung said:


> the *doubt* ...must be totally removed


You are aware of the very basic differences between civil and criminal threshholds of doubt, right?


----------



## jacmyoung

nobody99 said:


> Just as another exercise in futility, will you do me the favor of reading the injunction again? Notice it uses the term "colorably different." That's the remedy for future sales.
> 
> Look at the paragraph to "disable the DVR functionality." Notice "colorably different" is not in the paragraph.
> 
> Just sayin'.


There is no "colorable difference" in that MAC injunction section either, did you notice that?

That injunction enjoined all shredders, even those that were equivalent of the ones that infringed, meaning all those shredders were "adjudicated devices" in that case, a very broad injunction.

The infringer brought back a shredder equivalent for sell and use, such shredders were also adjudicated devices under that injucntion..., just like DISH brought back the DVR functions on those adjudicated DVRs, and MAC argued on "prima facie" of the injunction that those shredders were adjudicated and could not be brought back for use, just like Tivo is saying, on prima facie of the injunction, the DVR functions can not be brought back.

But not so said the judge, and affirmed by the Circuit Court.

Was there any "attack" on that MAC injunction? Not that I could tell. An injunction can be broad, but a contempt can not be broad.


----------



## kmill14

Once again Curtis posts something completely irrelevant to this case, because it is not even within the same ballpark as the TiVo case.

jacmyoung, you can say something is relevant all you want, it does not make it so.


----------



## nobody99

jacmyoung said:


> There is no "colorable difference" in that MAC injunction section either, did you notice that?


Not surprisingly, you are completely missing the point.

The fact that Judge Folsom _included_ it in one paragraph and _excluded_ it in the next paragraph, in my mind, shows intent. If he intends the DVRs to be shut off, he's certainly not going to change his mind. If, in your words, "his boss told him" to do something, his boss _actually_ told him to write the injunction to include the "colorably different" term, where applicable, to avoid the problem in the first place.


----------



## jacmyoung

kmill14 said:


> Once again Curtis posts something completely irrelevant to this case, because it is not even within the same ballpark as the TiVo case.
> 
> jacmyoung, you can say something is relevant all you want, it does not make it so.


If relevance is your only defense, I have a bridge to sell you, and that bridge is not even relevant because it crosses over a piece of dry land.


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## James Long

Obfuscation. Perhaps you could be found in contempt of thread?


----------



## kmill14

jacmyoung said:


> If relevance is your only defense, I have a bridge to sell you, and that bridge is not even relevant because it crosses over a piece of dry land.


Its not my only argument, but you ignore all those.


----------



## kmill14

> "In a civil contempt proceeding, the party seeking an order of contempt need only establish (1) that a court order was in effect, and (2) that the order required certain conduct by the respondent, and (3) that the respondent failed to comply with the court's order." FDIC v. LeGrand, 43 F.3d 163, 170 (5th Cir. 1995)


jacmyoung, still waiting for you to actually tell me how the Circuit Court got this wrong.


----------



## kmill14

" However, the CAFC here held that there is no interlocutory jurisdiction for an appeal of a contempt finding that does not itself modify the injunction. In addition, even though Pall must pay the contempt fine immediately, *under Supreme Court precedent, a contempt decision is not considered an appealable final judgment*"

http://www.patentlyo.com/patent/2007/06/no_appellate_ju.html


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## Greg Bimson

Curtis52 said:


> Shredder injunction:
> 
> 
> 
> "from directly or indirectly infringing or inducing infringement of claims 8 or 101 of Letters Patent 4,034,918 by making, using, or selling, or causing to be made, used, or sold, shredders covered by such claims and any infringing equivalents thereof."
Click to expand...

Echostar injunction:


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


Nothing about continuing infringement. All case laws brought up deal with a contempt order regarding a violation of an injunction regarding ongoing infringements. Too bad this alleged violation is against simply ignoring the disable clause.

Which means the "case law", used loosely in this term, is not relevant to contempt motion that TiVo has filed, regarding the disabling of the adjudicated receivers.


----------



## Curtis52

Greg Bimson said:


> Echostar injunction:Nothing about continuing infringement. All case laws brought up deal with a contempt order regarding a violation of an injunction regarding ongoing infringements. Too bad this alleged violation is against simply ignoring the disable clause.
> 
> Which means the "case law", used loosely in this term, is not relevant to contempt motion that TiVo has filed, regarding the disabling of the adjudicated receivers.


It sounds like you are talking about violation vel non (it means "or not") of the injunction.



> "Turning first to the question of the judgment of contempt itself, we agree, of course, that the issue in contempt proceedings is *violation vel non of the injunction*, not patent infringement. Nevertheless, devices which could not be enjoined as infringements on a separate complaint cannot possibly be deemed enjoined as infringements under an existing injunction in contempt proceedings. Accord MAC Corp. of America, 767 F.2d at 886, 226 USPQ at 518,"


----------



## jacmyoung

Greg Bimson said:


> Echostar injunction:Nothing about continuing infringement. All case laws brought up deal with a contempt order regarding a violation of an injunction regarding ongoing infringements. Too bad this alleged violation is against simply ignoring the disable clause.
> 
> Which means the "case law", used loosely in this term, is not relevant to contempt motion that TiVo has filed, regarding the disabling of the adjudicated receivers.


Let's first establish Tivo fans' own argument of prima facie contempt concept. If I am wrong Greg please correct me.

According to you an adjudicated device may not be modified and be used as before, if it's use is prohibited in the injunction as an adjudicated device. Only those devices that are colorably different than the adjudicated devices may be modified. For such reason, DISH is in prima facie contempt because DISH did modify the adjudicated devices and continued to use them.

So far so good?

But in that MAC injunction, all shredders were considered adjudicated devices, even those that were equivalent. So in the same spirit, MAC argued the infringer was in prim facie contempt because an adjudicated shredder was again used and sold.

Not so said the judge, confirmed by the higher court.


----------



## kmill14

Here is an interesting case where contempt was found for a company for failing to retrieve items in retail stores that were found to infringe. Very similar to disabling of products found to infringe.

http://depatentlaw.morrisjames.com/...defendant-for-failure-to-abide-by-injunction/



> In addition, the Court holds defendant in contempt having found defendants' efforts to retrieve infringing products lacking


----------



## jacmyoung

You know it is of course difficult to argue if one insists that somehow this particular injunction is written so differently than all the others that the standards applied on other cases simply do not fit here, because the judge wanted a different result.

Even if such is true, even if in this case the judge did seek a different result, even if he meant to punish DISH severely, if you simply read the entire Circuit Court opinion Curtis quoted, one has to recognize that a judge, any judge, simply can not prevail in such attempt, he could of course try, and find DISH in contempt, but the Circuit Court will have to overturn it in order to keep all the standards intact. Because there must be acts that infringe on the patent, at the time of the contempt hearing, in order to find the infringer in contempt, period, regardless what is said in the injunction.

The bottom line is, there is this tendency to view your favorite company in a special light, and try to frame a mindset that this case is different, that the judge said something that no one else did before, and therefore the judge has the final say. But in the real world, it is the Circuit Court that has the final say, not the judge. This case is no different than all other patent infringement cases. Insisting that it is different, that all others are irrelevant, is just that, wish for an outcome that favors your favored company.


----------



## jacmyoung

kmill14 said:


> Here is an interesting case where contempt was found for a company for failing to retrieve items in retail stores that were found to infringe. Very similar to disabling of products found to infringe.
> 
> http://depatentlaw.morrisjames.com/...defendant-for-failure-to-abide-by-injunction/


This one talked about the exact same product, no effort was made to modify those products, so yes they must be stopped, even pulled off the shelves.

In this case, and in MAC case, the products in questions are of course different than the infringing products, they were both modified. I know you can not accept the fact a software download may constitute a modification, but at least you have to admit, the DVRs before and after the download are *different* in some way, not exactly the same, can you at least agree on that?

According to the Circuit Court in the MAC case, it was precisely such *difference* that cleared the infringer of a contempt charge.


----------



## kmill14

Who says they are different products? How do I know they are really any different? Regardless, it is irrelevant in this case, since the order was NOT to modify the adjudicated devices. It was to disable them.

The MAC case is like comparing apples to cars.


----------



## jacmyoung

kmill14 said:


> Who says they are different products? How do I know they are really any different? Regardless, it is irrelevant in this case, since the order was NOT to modify the adjudicated devices. It was to disable them.


I didn't say they are different products, I only asked you if you can admit there are differences between them, aren't they? You can't possibly insist there is simply no difference between them?



> The MAC case is like comparing apples to cars.


I knew this is what you would say, which was why I only discussed the "adjudicated devices" concept, as I recall you raised such argument before, that because DP501s... are adjudicated devices they can not be modified to avoid contempt, but in the MAC case, all shredders were adjudicated devices, and the infringer was not in contempt when he modified an adjudicated device. That is all I was trying to say.


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## jacmyoung

Can we at least agree “disabling the DVR functions (i.e. all storage and playback…)” was to stop on-going infringement? I think Greg you said so. If we can’t even agree that then yes we can’t debate on it, if you believe the above is judge’s punishment for DISH, and so such order is not subject to all the standards we have quoted, that of course make our debate moot.

But if you can at least say that the above order was to stop on-going infringement, then I hope you can see the logic that if there is no more on-going infringement at this moment, DISH should not be in contempt of such order?


----------



## jacmyoung

Or should I ask this simple question, given the MAC case, can an adjudicated device be modified to avoid contempt charge?


----------



## kmill14

jacmyoung said:


> Can we at least agree "disabling the DVR functions (i.e. all storage and playback&#8230" was to stop on-going infringement? I think Greg you said so. If we can't even agree that then yes we can't debate on it, if you believe the above is judge's punishment for DISH, and so such order is not subject to all the standards we have quoted, that of course make our debate moot.
> 
> But if you can at least say that the above order was to stop on-going infringement, then I hope you can see the logic that if there is no more on-going infringement at this moment, DISH should not be in contempt of such order?


jacmyoung, no, I do not think that was the reason. Why would he need to further address those products and on-going infringement since the injunction already covered that in an earlier order?



> Each Defendant, its officers, agents, servants, employees and attorneys, and those persons in active concert or participation with them who receive actual notice hereof, are hereby restrained and enjoined, pursuant to 35 U.S.C. § 283 and Fed. R. Civ. P. 65(d), from making, using, offering to sell, selling, or importing in the Untied States, the Infringing Products,


The purpose of this part of the order, like the earlier case I posted, was the removal those products deemed to have infringed that were already in the hands of the end users. Just like the other case said to go get the products out of retail stores, this Judge said to go get those products and disable them, but do it with a software update. If the software update had not been available, the Judge would have forced E* to recall all those products.


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## Greg Bimson

jacmyoung said:


> According to you an adjudicated device may not be modified and be used as before, if it's use is prohibited in the injunction as an adjudicated device. Only those devices that are colorably different than the adjudicated devices may be modified. For such reason, DISH is in prima facie contempt because DISH did modify the adjudicated devices and continued to use them.
> 
> So far so good?


For the most part, yes.


jacmyoung said:


> But in that MAC injunction, all shredders were considered adjudicated devices, even those that were equivalent.


I don't think that is correct...


> from directly or indirectly infringing or inducing infringement of claims 8 or 10 of Letters Patent 4,034,918 by making, using, or selling, or causing to be made, used, or sold, shredders covered by such claims


I am thinking there is a list of shredders (not just all shredders), because...


> and any infringing equivalents thereof.


That last statement is the "colorably different" issue.


----------



## jacmyoung

Greg Bimson said:


> For the most part, yes.I don't think that is correct...I am thinking there is a list of shredders (not just all shredders), because...That last statement is the "colorably different" issue.


Below is the full injunction part as quoted by the appeals court, in the Curits' link:

"IT IS HEREBY FURTHER ORDERED AND ADJUDGED that defendants Williams Patent Crusher & Pulverizer Co. and Robert M. Williams, their officers, agents, servants and employees, and those persons in active concert or participation with them, who receive notice hereof, are hereby permanently enjoined and restrained, from and after the date hereof, and until July 12, 1994, (the date of expiration of said patent) from directly or indirectly infringing or inducing infringement of claims 8 or 101 of Letters Patent 4,034,918 by making, using, or selling, or causing to be made, used, or sold, shredders covered by such claims and any infringing equivalents thereof."

No the "and any infringing equivalents thereof" is clearly part of the enjoined devices statement, not "colorably different" devices statement. There was nothing more in that case that related to the language of the injunction. All shredders during the trial, and all shredders that were equivalents were adjudicated devices in that case.


----------



## nobody99

jacmyoung said:


> No the "and any infringing equivalents thereof" is clearly part of the enjoined devices statement, not "colorably different" devices statement. There was nothing more in that case that related to the language of the injunction. All shredders during the trial, and all shredders that were equivalents were adjudicated devices in that case.


If the injunction had an _additional_ paragraph that said

"The defendant is FURTHER ORDERED to recall all shredders with model #'s ABC and XYZ that are placed with customers."

Simple yes or no question: if the company didn't recall the shredders, would it be in contempt?


----------



## Greg Bimson

jacmyoung said:


> All shredders during the trial, and all shredders that were equivalents were adjudicated devices in that case.


Impossible. It is impossible for a new product to be an "adjudicated device".

Pursuant to the civil court rule, contempt can only be affirmed on "new devices" they are "not colorably different". Adjudicated devices are not so honored.


----------



## jacmyoung

Greg Bimson said:


> For the most part, yes.I don't think that is correct...I am thinking there is a list of shredders (not just all shredders), because...That last statement is the "colorably different" issue.


Actually Greg, I forgot a case I researched myself that answers this question: Can an adjudicated device be modified to avoid a contempt? Or better yet, can an adjudicated device already used in the field be modified to avoid a contempt?

The answer is yes. If you recall that case about the Footprint 2.0 Service? I know you all insisted it was "irrelevant" because the injunction referred to the Serivce described during the trial.

But that is not the point of contention now, right now all I am trying to point out is, yes indeed an adjudicated device already in the field may be modified to avoid injunction. That Footprint 2.0 Service was indeed an adjudicated device (service), and it was used by the end users in the field, and it never stopped, the infringer only downloaded a software patch to replace the infringing software, and they were found not in contempt afterwards.

Now again it is true that that injunction specified the Footprint 2.0 Service as described during the trial. A little different than our injunction in which there is no reference to the disabling of the DVR functions described during the trial.

But nevertheless, the Footprint 2.0 case still demonstrated that an adjudicated device can indeed be modified right in the field, to avoid a contempt. Can you agree with this statement?


----------



## Greg Bimson

jacmyoung said:


> But that is not the point of contention now, right now all I am trying to point out is, yes indeed an adjudicated device already in the field may be modified to avoid injunction.


Only if the injunction allows for it.

Did you know the final outcome of all of this? C&W settled with Akamai in 2004.


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## jacmyoung

Greg Bimson said:


> Only if the injunction allows for it.
> 
> Did you know the final outcome of all of this? C&W settled with Akamai in 2004.


Yes, this injunction did not "allow" it, nor was that injunction. In fact very few injunctions "allow" anything, they only prohibit. If you continue to insist any modification must be "allowed" first, then you will have to throw out at least 75% of the Circuit Court rulings.

The settlement has noting to do with it, the point was the infringer was not in contempt.

How about another question, what do you call that Footprint 2.0 Service after the software download? Do you call it a new service, or the same service, or a modified service, or something else?


----------



## James Long

jacmyoung said:


> Let's first establish Tivo fans' own argument of prima facie contempt concept. If I am wrong Greg please correct me.
> 
> According to you an adjudicated device may not be modified and be used as before, if it's use is prohibited in the injunction as an adjudicated device. Only those devices that are colorably different than the adjudicated devices may be modified. For such reason, DISH is in prima facie contempt because DISH did modify the adjudicated devices and continued to use them.
> 
> So far so good?


I'm not Greg nor a Tivo fan, but you're wrong. That's not the argument.

The argument isn't that only colorably different devices may be modified. The argument is that ALL adjudicated devices, including those "only colorably different" than the named "Infringing Products" are in the same pool.

What can be done with devices in that pool is a second question ... but your separation of devices is incorrect. "Only colorably different" devices are included in the initial injunction and ANY use, sale, etc. is subject to contempt.

BTW: You seem to keep posting questions ... yet you have firmly avoided the simplest of all questions ...

What does the injunction SPECIFICALLY tell DISH to do?
Have they done what SPECIFICALLY was done in the injunction?


----------



## jacmyoung

James Long said:


> I'm not Greg nor a Tivo fan, but you're wrong. That's not the argument.
> 
> The argument isn't that only colorably different devices may be modified. The argument is that ALL adjudicated devices, including those "only colorably different" than the named "Infringing Products" are in the same pool.
> 
> What can be done with devices in that pool is a second question ... but your separation of devices is incorrect. "Only colorably different" devices are included in the initial injunction and ANY use, sale, etc. is subject to contempt.
> 
> BTW: You seem to keep posting questions ... yet you have firmly avoided the simplest of all questions ...
> 
> What does the injunction SPECIFICALLY tell DISH to do?
> Have they done what SPECIFICALLY was done in the injunction?


I have said so myself, there is really no distinction between adjudicated devices and only colorably different devices, you are barking on the wrong tree. It was the Tivo fans somehow in their defense of this "special" injunction came up with the idea the adjudicated devices should be treated differently.

And as far as your question, I have answered it twice already, but in the interest of clarity, let me try it again:

DISH does not have to do the exact things *specifically* described in the injunction in order to avoid a contempt, the only thing, and the only essential thing DISH has to do is to ensure they, at the current time, no longer infringe on the Tivo's patent, that is enough to get them out of a contempt, any contempt.

Have you read that paragraph Curtis52 quoted and paid attention to the 3 highlighted items?

BTW Greg, I am still waiting for your answer on the "same product", "new product", "modified product"...clarification.

Ok I see what you are insisting I say, yes, I said it many times before too, yes, DISH did disable the DVR functions on those DVRs, during the new software download, all DVRs were 100% disabled, then the new software took place of the old, and the DVR functions, which were based on the new, non-infringing software, took over and started again.


----------



## James Long

jacmyoung said:


> I have said so myself, there is really no distinction between adjudicated devices and only colorably different devices, you are barking on the wrong tree. It was the Tivo fans somehow in their defense of this "special" injunction came up with the idea the adjudicated devices should be treated differently.


No, they didn't. In your intellectual dishonesty you are misrepresenting your opponent's viewpoint. Perhaps by erecting a straw man it is easier to argue against yourself playing both sides of the issue?

KNOW what the "Tivo fans" are saying. ALL "Infringing Products" and those only colorably different are adjudicated.


> And as far as your question, I have answered it twice already, but in the interest of clarity, let me try it again:
> 
> DISH does not have to do the exact things *specifically* described in the injunction in order to avoid a contempt, the only thing, and the only essential thing DISH has to do is to ensure they, at the current time, no longer infringe on the Tivo's patent, that is enough to get them out of a contempt, any contempt.


That answers neither question. Obfuscation continues!

And then the edit --- finally addressing the question?


> Ok I see what you are insisting I say, yes, I said it many times before too, yes, DISH did disable the DVR functions on those DVRs, during the new software download, all DVRs were 100% disabled, then the new software took place of the old, and the DVR functions, which were based on the new, non-infringing software, took over and started again.


Ah, so close to actually answering the question ... but not quite! And just like your "let's mail out stickers" scheme, more likely to get DISH in trouble. You HONESTLY believe DISH 100% disabled those DVRs? Unbelieveable!

*What does the injunction SPECIFICALLY tell DISH to do?*
Pay Tivo damages.
Stop selling the named products and those only colorably different.
Disable the DVR function on the named products already placed.
Not enable the DVR function on any new placements of the named products.
Tell their agents etc about the injunction so THEY can also follow it.

*Have they done what SPECIFICALLY was done in the injunction?*
No. No. No. No. Sort of.

Would it be so hard for you to say that? And then move on to your "explainations" of why "No. No. No. No. Sort of." is an acceptable answer?

Step One ... Start with the truth.


----------



## phrelin

James Long said:


> *Have they done what SPECIFICALLY was done in the injunction?*
> No. No. No. No. Sort of.
> 
> Would it be so hard for you to say that? And then move on to your "explainations" of why "No. No. No. No. Sort of." is an acceptable answer?
> 
> Step One ... Start with the truth.


I'm having a problem remembering the details here. Wasn't the injunction the result of two decisions by the jury, the first dealing with the software and the second the hardware, with the latter being rejected and sent back by the appellate court?


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## James Long

Correct. But the appeals court, with full knowledge of their decision, disolved the stay on the injunction and allowed it to go into effect.
In sum, because of a failure of proof of literal infringement, we reverse the judgment of infringement of the hardware claims with respect to all of the accused devices. We remand for any further proceedings that may be necessary with respect to those claims. We affirm the judgment of infringement of the software claims with respect to all of the accused devices. Because the damages calculation at trial was not predicated on the infringement of particular claims, and because we have upheld the jury's verdict that all of the accused devices infringe the software claims, we affirm the damages award entered by the district court.

The district court's injunction was stayed during the course of these proceedings. The stay that was issued pending appeal will dissolve when this appeal becomes final. At that time, the district court can make a determination as to the additional damages, if any, that TiVo has sustained while the stay of the permanent injunction has been in effect.​If the appeals court felt the injunction needed adjustment they would have stated so.


----------



## phrelin

James Long said:


> If the appeals court felt the injunction needed adjustment they would have stated so.


Or maybe they felt the trial judge could figure it out on his own after dealing with all the issues arising subsequent to and because of their stay?


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## James Long

That is the hope ... but we're working the steps here, and perhaps it is appropriate that the first step is:
* Admit we are powerless that our lives had become unmanageable.
Or in this case, admit that the injunction has not been followed as instructed.

_Then_ we can move on to the second step:
* Came to believe that a Power greater than ourselves could restore us to sanity.
That would be Judge Folsom. 

Some would like to skip the first step and jump right to pleading with the judge for tolerance and forgiveness ... some are arrogant enough to demand forgiveness as if it is some right. You're not putting your life in the hands of the judge if you try to control his decision by telling him what to do.

Make a good argument, yes. Show where you've made good faith efforts, yes. But don't skip the first step ... admitting that you were wrong.


----------



## jacmyoung

James Long said:


> No, they didn't. In your intellectual dishonesty you are misrepresenting your opponent's viewpoint. Perhaps by erecting a straw man it is easier to argue against yourself playing both sides of the issue?
> 
> KNOW what the "Tivo fans" are saying. ALL "Infringing Products" and those only colorably different are adjudicated.That answers neither question. Obfuscation continues!
> 
> And then the edit --- finally addressing the question?Ah, so close to actually answering the question ... but not quite! And just like your "let's mail out stickers" scheme, more likely to get DISH in trouble. You HONESTLY believe DISH 100% disabled those DVRs? Unbelieveable!
> 
> *What does the injunction SPECIFICALLY tell DISH to do?*
> Pay Tivo damages.
> Stop selling the named products and those only colorably different.
> Disable the DVR function on the named products already placed.
> Not enable the DVR function on any new placements of the named products.
> Tell their agents etc about the injunction so THEY can also follow it.
> 
> *Have they done what SPECIFICALLY was done in the injunction?*
> No. No. No. No. Sort of.
> 
> Would it be so hard for you to say that? And then move on to your "explainations" of why "No. No. No. No. Sort of." is an acceptable answer?
> 
> Step One ... Start with the truth.


You know I can't begin to say how clueless you are abolut my positions. The Tivo fans I was arguing with absolutely had insisted the adjudicated DVRs (those on the list) are different than those other DVRs (622s...), they insist the adjudicated DVRs can not be modified ever, they will always be Infringing Products, but not the colorably different DVRs, those are different, go read again, I know you are busy person as a moderator so I never insisted you read them all, it is in fact difficult to track all our mindless posts, but at least when you can't do it, don't act as if you knew everyone's postion, let the Tivo fans respond to my questions, they are more than capable of responding to me.

Did I ever argue about the damages? I never cared about them, I only cared about the injunctions. As far as I am concerned DISH should pay all the damages deserved by Tivo.

Have you even tried to read where I said "let's mail out the stickers?" It was me trying to use the rediculous relabeling suggestion made by the Tivo fans to try to turn on them to show just how wrong it would be, because I said over and over, model number change, label change... are only colorable, useless to avoid contempt.

But have you really read carefully? I don't blame you, becuase if I were in your shoes, I wouldn't have so much time to read it all. But you know what, I sure would not pretend that I had read carefully and barge in trying to come to the defense of one side, not even understanding which position which side is taking.

Sorry James, I know you are not happy with my tenacious style, and I admit I have been going on and on a little too much, but you can certainly PM me at least make sure what my positions are before attacking me.


----------



## jacmyoung

phrelin said:


> Or maybe they felt the trial judge could figure it out on his own after dealing with all the issues arising subsequent to and because of their stay?


There is no need to, based on the paragraph Curtis52 quoted of the Circuit Court's opinion, which I made it into the three parts, it does not matter what the injunciton is saying what specific things DISH must do, DISH only needs to make sure they currently no longer infringe on the Tivo patent, as lonag as they can do that, DISH is clear of trouble, as far as the injunciton is concerned.

Of course James does not have to agree with my interpretation, but if so, I think it is a good thing that you offer your own interpretation of that opinion of the Circuit Court as a courter argument.

I never insisted you have to agree with my interpretation, what I am saying is, based on my interpretation, all those things you have listed DISH did not do (not the damages because as I said I don't care, only the injunction part), to me they don't have to do any of those. All DISH needs to make sure is they now finally are not infringing on the Tivo's patent, as long as DISH is sure of that, and they better be sure about it, then DISH is safe from any contempt charge, period.

That is why your repeated questioning was very much uncesessary, if you only understood my position, you would not have asked them in the first place.


----------



## jacmyoung

Now I have also used that Footprint 2.0 Service case to demonstrate why an adjudicated product, used in the field, may still be modified by a software download, to be turned into something that is no longer an infringing product, whether you call it the same product, a new product, or a modified product, or whatever you like to call it, the bottom line is, based on that case, it is possible to modify an adjudicated product right in the field, while still being used by the end users, and change it to something that no loner infringes, and therefore avoiding a contempt.

I hope you Tivo fans don't come back and say this again, but that injunction is not the same, it specified the product as discussed during the trial...Who cares? My above conclusion was purely based on that case, and that case only. I am not even discussing this current case now, only the Footprint 2.0 case.


----------



## Greg Bimson

jacmyoung said:


> I hope you Tivo fans don't come back and say this again, but that injunction is not the same, it specified the product as discussed during the trial...Who cares?


Well, the injunction only prohibited the specified product as discussed during the trial. That means any other product could be used, as long as it was more than colorably different.

Of course, no one has seen the entire order from the Akamai v. C&W trial.


jacmyoung said:


> I never insisted you have to agree with my interpretation, what I am saying is, based on my interpretation, all those things you have listed DISH did not do (not the damages because as I said I don't care, only the injunction part), to me they don't have to do any of those. All DISH needs to make sure is they now finally are not infringing on the Tivo's patent, as long as DISH is sure of that, and they better be sure about it, then DISH is safe from any contempt charge, period.


But now you are having a problem understanding procedure...

TiVo has filed a motion with the court regarding "prima facie" violations of the injunction, which will be heard 4 September. TiVo is not arguing continuing infringement of merely colorably different products (I think).

So, in your opinion, DISH/SATS will raise a defense so strong that it ignores the pending motion of "prima facie" contempt in front of the court, in deference to finding whether products adjudicated infringing are still infringing. Wasn't there a trial, where DISH/SATS was found guilty of infringement?

You need to go back and take a look at DISH/SATS brief for the 30 May hearing. They stated they have new software, they have obtained opinion from outside counsel that the new software does not infringe, and they are not infringing. According to DISH/SATS, that is all that is needed to prove they do not infringe and that their current course of action is lawful. I thought that was what a trial determines.

In the same vein, two years ago, they stated the had software, they had obtained opinion from outside counsel that the software did not infringe, and that they weren't infringing. Yet in a trial, DISH/SATS was found guilty of patent infringement. And those adjudicated devices are still under the jurisdiction of Judge Folsom's court, in the form of an injunction.

So, procedurally, this is incorrect. Somehow you believe DISH/SATS can start a contempt proceeding against itself, so they can address the operation of the new software, and obtain a ruling regarding infringement. For some reason, you believe that a finding of contempt requires infringement, when the VERY FIRST SENTENCE of the Court of Appeals case you love destroys your own case:


> Turning first to the question of the judgment of contempt itself, we agree, of course, that the issue in contempt proceedings is violation vel non of the injunction, not patent infringement.


Contempt has nothing to do with infringement, unless the contempt motion alleges ongoing infringement. I don't believe TiVo brought up unadjudicated products in this motion, so the only products TiVo appears to be questioning are the "Infringing Products". It is those products that are supposed to be disabled. Judge Folsom's order was to disable the "Infringing Products". TiVo's motion for contempt is simply an allegation that DISH/SATS is not following the court's order, which was to disable the "Infringing Products".


----------



## James Long

Greg Bimson said:


> For some reason, you believe that a finding of contempt requires infringement, when the VERY FIRST SENTENCE of the Court of Appeals case you love destroys your own case:
> 
> 
> 
> Turning first to the question of the judgment of contempt itself, we agree, of course, that the issue in contempt proceedings is violation vel non of the injunction, not patent infringement.
> 
> 
> 
> Contempt has nothing to do with infringement, unless the contempt motion alleges ongoing infringement. I don't believe TiVo brought up unadjudicated products in this motion, so the only products TiVo appears to be questioning are the "Infringing Products". It is those products that are supposed to be disabled. Judge Folsom's order was to disable the "Infringing Products". TiVo's motion for contempt is simply an allegation that DISH/SATS is not following the court's order, which was to disable the "Infringing Products".
Click to expand...

Very well put ... I can already see it bouncing off of deaf ears.

The big issue for September 4th is if the injunction is being followed. Specifically in Judge Folsom's order he states that he will be making that specific decision. Anything less than contempt is leniency that DISH is not _required_ to be offered.

Have they disabled the "Infringing Products"? No. They may have an excuse, and the judge may grant a miracle of leniency, but _on the face of the issue_ they are in contempt. May Judge Folsom have mercy on their corporate soul!


----------



## Curtis52

Greg Bimson said:


> Contempt has nothing to do with infringement, unless the contempt motion alleges ongoing infringement.


The injunction is an infringement injunction.



> "Rule 65(d) "requires an injunction to prohibit only those acts sought to be
> restrained," namely, "infringement of the patent by the devices adjudged to infringe and
> infringement by devices no more than colorably different therefrom." International Rectifier,
> 383 F.3d at 1317. "


That is what the injunction seeks to do: stop infringement. It's an infringement injunction.



> "*Infringement is the sine qua non of violation of an injunction against infringements*. The authorities are uniform that the modified device must be an infringement to find contempt of such an injunction. See, e.g., Panther Pumps Equipment Company, Inc. v. Hydrocraft, Inc.,"





> "devices which could not be enjoined as infringements on a separate complaint cannot possibly be deemed enjoined as infringements under an existing injunction in contempt proceedings. Accord MAC Corp. of America, 767 F.2d at 886"


----------



## Greg Bimson

Curtis52 said:


> The injunction is an infringement injunction.


No, the injunction is a "Final Judgment and Injunction Order", which
1) orders DISH/SATS to pay $97 million
2) restrains and enjoins DISH/SATS from selling DVR's that were found to violate the TiVo Time Warp patent and those not colorably different (where ongoing infringement must be proven)
3) orders DISH/SATS to disable the DVR's that were found to violate the TiVo TIme Warp Patent

The way some make it sound, DISH/SATS is now clear of the entire Final Judgement and Injunction Order (all three points above). I mean, if DISH/SATS is now the judge and jury to state they no longer infringe, and the judgment is part of an "Injunction against Infringements", why should DISH/SATS now even have to pay a dime if they no longer infringe?


----------



## jacmyoung

Greg Bimson said:


> ...So, in your opinion, DISH/SATS will raise a defense so strong that it ignores the pending motion of "prima facie" contempt in front of the court, in deference to finding whether products adjudicated infringing are still infringing. Wasn't there a trial, where DISH/SATS was found guilty of infringement?...


That is exactly what I am saying now, after the latest Circuit Court's opinion Curtis52 posted.

Yes, DISH was found infringing, and yes if DISH no longer infringes, they are not in contempt of anything, regardless what the injunction says.

I know it is a very radical thought, one even I only most recently began to say.

Please read the highlighted sentence Curtis52 just posted:

"Infringement is the *sine qua non of violation* of an injunction against infringements"

Meaning: infringement on the patent is the *essential act*, without it, violation of an injunction (any injunction, regardless what it says) of infringements simply *does not exist*.

DISH will not be clear of the injunction, this sword of injunction will always hang over DISH's head for the duration of the patent, unless if later it is lifted for some reason. But that sword will not drop (not in contempt), as long as DISH does not infringe on the Tivo's patent.

Yes even if on the sword it says DISH you must turn left, or walk around this rock, DISH can ignore the actual instructions on that sword, as long as whatever the path DISH is taking does not trespass on the Tivo's patent.


----------



## Greg Bimson

> Infringement is the sine qua non of violation of an injunction against infringements.


But there is a second section of the injunction where infringement isn't even mentioned. That would be the section that states to disable the "Infringing Products". Just because they might no longer be infringing doesn't require countless trials and motions and hearings to determine if there is still infringement; that was what the original trial adjudicated.


jacmyoung said:


> I know it is a very radical thought, one even I only most recently began to say.


At least you are now admitting it is radical. Most observers don't give DISH/SATS much of a shot. You have them winning this at about 99 percent.


----------



## Curtis52

Greg Bimson said:


> But there is a second section of the injunction where infringement isn't even mentioned. That would be the section that states to disable the "Infringing Products".


You are interpreting the injunction wrong.

"Rule 65(d) "requires an injunction to prohibit only those acts sought to be
restrained," namely, "infringement of the patent by the devices adjudged to infringe and
infringement by devices no more than colorably different therefrom." International Rectifier,
383 F.3d at 1317. "


----------



## Herdfan

James Long said:


> Make a good argument, yes. Show where you've made good faith efforts, yes. But don't skip the first step ... admitting that you were wrong.


Do you really ever see Charlie or his attorneys doing this?


----------



## James Long

Curtis52 said:


> Greg Bimson said:
> 
> 
> 
> Contempt has nothing to do with infringement, unless the contempt motion alleges ongoing infringement.
> 
> 
> 
> The injunction is an infringement injunction.
> 
> 
> 
> 
> "Rule 65(d) "requires an injunction to prohibit only those acts sought to be
> restrained," namely, "infringement of the patent by the devices adjudged to infringe and
> infringement by devices no more than colorably different therefrom." International Rectifier,
> 383 F.3d at 1317. "
> 
> Click to expand...
> 
> That is what the injunction seeks to do: stop infringement. It's an infringement injunction.
Click to expand...

It is a shame that DISH did not point out this error of Judge Folsom when they went to appeal. If it is as clear cut as quoted, where the injunction _must_ only prohibit infringement the wording of injunction should have been challenged.

It wasn't. DISH asked for better wording from Judge Folsom but never appealed the wording of the injunction. They accepted it.


----------



## jacmyoung

Greg Bimson said:


> ... Just because they might no longer be infringing doesn't require countless trials and motions and hearings to determine if there is still infringement; ...


Here is where you seem to refuse to understand why there is a summary contempt judgment process, such process is to avoid countless trials to determine if there is still infringement.

And the rules for such summary contempt proceedings are very clear, if DISH can convince the judge at a minimum, there is doubt as whether there is still on-going infringement, a new trial will be needed to determine that, but if Tivo can point to DISH's evidence and convince the judge DISH is still infringing, another new trial will not be needed, DISH can be found in contempt.


----------



## James Long

Herdfan said:


> James Long said:
> 
> 
> 
> Make a good argument, yes. Show where you've made good faith efforts, yes. But don't skip the first step ... admitting that you were wrong.
> 
> 
> 
> Do you really ever see Charlie or his attorneys doing this?
Click to expand...

Not in simple language ...

But they have changed software and made some concessions that show they are accepting that they did infringe. The appeals process has not ended so they do need to be careful not to jeopardize any hope they have there.


----------



## jacmyoung

James Long said:


> It is a shame that DISH did not point out this error of Judge Folsom when they went to appeal. If it is as clear cut as quoted, where the injunction _must_ only prohibit infringement the wording of injunction should have been challenged.
> 
> It wasn't. DISH asked for better wording from Judge Folsom but never appealed the wording of the injunction. They accepted it.


DISH did not have to, of course it would be better had DISH asked to clarify, but as I said DISH could interpret the Infringing Products as the products actually infringed at the time, not any of the DVRs on the list that no longer infringe, and DISH could interpret "the DVR functions" as *the* DVR functions discussed in the trial that infringed, not the current DVR functions that do not infringe, then there was no need to dispute the language of the injunction.

But even if DISH had interpreted wrong, the Circuit Court had a rule made just for such occasion, the rule says, if during a contempt proceeding it can not establish an on-going infringement, then a contempt can not exist, regardless what the injunction says.

No attack on the injunction ever needs to happen. The judge can simply clarify his injunction in DISH's way, one may not agree, one may even scream and yell at the judge for not clarifying the other way, but one can not refute such interpretation, because this interpretation fits logic too.


----------



## nobody99

Curtis52 said:


> You are interpreting the injunction wrong.
> 
> "Rule 65(d) "requires an injunction to prohibit only those acts sought to be
> restrained," namely, "infringement of the patent by the devices adjudged to infringe and
> infringement by devices no more than colorably different therefrom." International Rectifier,
> 383 F.3d at 1317. "


Are you sure it's Greg that's interpreting the injuntion wrong?



> Each Defendant, its officers, agents, servants, employees and attorneys, and those persons in active concert or participation with them who receive actual notice hereof, *are hereby restrained and enjoined, pursuant to 35 U.S.C. § 283 and Fed. R. Civ. P. 65(d), from making, using, offering to sell, selling, or importing in the Untied States, the Infringing Products, either alone or in combination with any other product and all other products that are only colorably different therefrom* in the context of the Infringed Claims, whether individually or in combination with other products or as a part of another product, and from otherwise *infringing or inducing others to infringe the Infringed Claims of the '389 patent.*
> 
> Defendants are hereby *FURTHER ORDERED* to, within thirty (30) days of the issuance of this order, *disable the DVR functionality (i.e., disable all storage to and playback from a hard disk drive of television data) in all but 192,708 units* of the Infringing Products that have been placed with an end user or subscriber. The DVR functionality, i.e., disable all storage to and playback from a hard disk drive of television data) shall not be enabled in any new placements of
> the Infringing Products.


Note that the first paragraph prevents ongoing infringement pursuant to Rule 65(d). It even mentions "only colorably different" and references which patents were infringed.

The second paragraph makes mention of neither Rule 65(d), colorable difference, and it doesn't even mention infringement!


----------



## James Long

jacmyoung said:


> And the rules for such summary contempt proceedings are very clear, if DISH can convince the judge at a minimum, there is doubt as whether there is still on-going infringement, a new trial will be needed to determine that, but if Tivo can point to DISH's evidence and convince the judge DISH is still infringing, another new trial will not be needed, DISH can be found in contempt.


We are not near that stage yet. With no discovery what "evidence" are you referring to? We've seen a couple of statements filed where DISH claims to be non-infringing ... but evidence?

September 4th is not an evidence based infringement hearing. It is a VERY SIMPLE hearing on the concepts. It is focused solely on the law ... whether or not the injunction has been followed as written. Both parties agreed that particular question in this case can be argued without discovery, without evidence, without proving the question of whether or not DISH continues to _infringe_. The question is simply are they following the injunction ... or are they in contempt.

Tivo wishes that were not true and their attempts to change the timeline and bring in evidence beyond what they need for the damages question shows their lack of understanding of the judge's plan for this case. They need to focus on the actual question on the table and not jump ahead or go fishing.

DISH seems to be more focused on the judge requested for September 4th ... the simple injunction/contempt question and the calculation of damages from August 1st, 2006 to present. They do want the issue of repair replacement receivers dealt with (where an "Infringing Product" with currently infringing software can replace an existing placement of an "Infringing Product" with currently infringing software without being counted as a new placement that would violate the injunction).

But the simple question ... the concept of how the injunction SHOULD be followed not whether or not there is actual new non-infringing software ... is the question for September 4th.

And the answer will be - either yes to Tivo's claim that DISH can't leave DVR functionality active on "Infringing Products" and that they are in contempt or yes to DISH's claim that a theoretical software change allows DISH to leave DVR functionality active on "Infringing Products".

_End simple reading, wild speculation follows ---_
If Tivo wins DISH will certainly appeal ... despite what Judge Folsom's "boss" has said in previous cases it isn't like he has to worry about being fired. He'll make a judgment based on what he sees in this case with the best knowledge of these circumstances --- something his "boss" didn't know when ruling in some other case.

It isn't over in Texas with a DISH win September 4th. A DISH win on September 4th is only the beginning ... because the actual infringement issue will then come into play. If the court agrees with the concept on September 4th we will then see additional hearings to discover whether or not the receivers currently infringe.

On damages ... a bill will be written for every receiver from August 1st, 2006, until a) September 4th, 2008 (if Tivo wins) or b) DISH's claimed software change dates (if DISH wins). This assumes that the software change dates are eventually accepted via discovery.


----------



## Greg Bimson

Thank you, nobody99. I had a copy of the injunction to point out that exact issue.

There is a paragraph of the injunction which enjoins sales and the rest of the terms of eight models of DVR's and those not more than colorably different. That paragraph also prohibits infringing the Time Warp patent, but as per Fed. R. Civ. P. 65(d), it can only be used on the adjudicated products and those merely colorably different. TiVo is not asking for a finding of contempt for ongoing infringement.

Then there is this second paragraph, which simply orders DISH/SATS to disable adjudicated infringing DVR's. DISH/SATS can change the software all they want on those receivers. However, they will always be "Infringing Products" until someone gets the court to modify the term "Infringing Products". It would be up to DISH/SATS to inform the court that they would like a modification of the injunction because the "DP-501; DP-508; DP-510; DP-522; DP-625; DP-721; DP-921 and DP-942" no longer infringe. That motion has NEVER been filed.

Understand the frustration here. From the 30 May status hearing:


> Judge Folsom: What do you think the correct procedure is?
> 
> McElhinny: The cases are quite clear that the correct procedure is that TiVo files a new suit accusing the next product of infringement. *That's the way the questions about whether products that have not previously been before the court are resolved.*
> 
> So answering directly Your Honor's question, if they intend to proceed through contempt, we think it would be very helpful for them to file a motion. I think we made it clear that we are not really clear -- it's not clear to us what their summary contempt arguments are. The first one seems to be that we are in -- well --
> 
> Judge Folsom: Well, then obviously the filing of a motion might clarify that.
> 
> McElhinny: And declarations and whatever their showing is for why contempt is appropriate would be helpful. *If we are going down the contempt road to determine where the contempt is, we would prefer to do it in one, you know, fell swoop. I mean, if they think they can get contempt on the design-around rather than doing, you know, a first hearing to determine whether or not there is a, you know, a prima facie violation, then a second hearing,* if the discovery is going to be going on in the same time and if the court is not going to move us in front of everything else on your schedule, then it makes sense to me to have them have one contempt motion and then the court can determine --
> 
> Judge Folsom: And do the discovery on that issue and determine that issue in one --
> 
> McElhinny: If that's the way it's going to go, then that's fine. *Our, just so that it's clear for the record, we think -- we think it's certainly in our best interest, but we think it's the way the court should proceed in terms of its time, that the court, based on whatever they do file, based on, you know, what is now in the record in terms of our letters, the opinions of counsel, the court can make a very preliminary determination that the nature of the issues that are going to be disputed are not appropriate under the Federal Circuit guidelines for a summary hearing, and that they should be resolved in a more traditional fashion.*


So for everyone, according to DISH/SATS lead counsel Harold McElhinny, now that the software has been changed, every product in the trial from two years ago no longer exists. It is also opnion of Mr. McElhinny that the documents generated from the new software should be enough to find some "difference" that matters. However, those documents need to be adjudicated (that was how a guilty verdict was handed down by a jury) and also need to be examined by the other party. If there is no discovery on these documents or other related items, then even discussing "differences" and "infringement" at this hearing is not an issue.

It is simply my opinion that maybe the software no longer infringes, maybe it still infringes, but those products do exist and they are still under jurisdiction of the court. The order is to disable those products.


----------



## Greg Bimson

James Long said:


> Tivo wishes that were not true and their attempts to change the timeline and bring in evidence beyond what they need for the damages question shows their lack of understanding of the judge's plan for this case. They need to focus on the actual question on the table and not jump ahead or go fishing.


DISH/SATS doesn't want to answer the questions from the damages interrogatory, because any misstep in answering could reflect back to the contempt motion. Answer Question 1 with the amount of "Infringing Products" in the field, where TiVo deserves damages, to include all of those with new software, and TiVo can point that DISH/SATS still believes the "Infringing Products" exist, so they need to be disabled as per the injunction. Answer Question 3 with the amount of "Infringing Products" that contain the new software and the date they received the new software, it is again an admission the "Infringing Products" exist, and once again, subject to the disable term of the injunction.

I told everyone when I saw those questions TiVo was playing a game. DISH/SATS is trying to convince the court that the game should not be played, which is also another game. Legal maneuvering at its finest.


----------



## Curtis52

Greg Bimson said:


> Thank you, nobody99. I had a copy of the injunction to point out that exact issue.
> 
> There is a paragraph of the injunction which enjoins sales and the rest of the terms of eight models of DVR's and those not more than colorably different. That paragraph also prohibits infringing the Time Warp patent, but *as per Fed. R. Civ. P. 65(d), it can only be used on the adjudicated products and those merely colorably different*. TiVo is not asking for a finding of contempt for ongoing infringement.


Rule 65(d)



> "(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)."


Also, please note that there is no requirement to reference Rule 65(d) even once anywhere in an injunction. It only needs to be complied with. If you comply with the speed limit it isn't necessary to have a sign in the window saying that you comply.

There is no reason to believe that the injunction does not comply. An interpretation that says Judge Folsom violated Rule 65 is simply a misinterpretation.

That means this is what the injunction does:



> Rule 65(d) "requires an injunction to prohibit only those acts sought to be
> restrained," namely, "infringement of the patent by the devices adjudged to infringe and
> infringement by devices no more than colorably different therefrom." International Rectifier,
> 383 F.3d at 1317


----------



## Greg Bimson

Curtis52 said:



> That means this is what the injunction does:
> 
> 
> 
> Rule 65(d) "requires an injunction to prohibit only those acts sought to be restrained," namely, "infringement of the patent by the devices adjudged to infringe and infringement by devices no more than colorably different therefrom." International Rectifier, 383 F.3d at 1317
Click to expand...

The devices have already been found adjuged to infringe. If DISH/SATS wants that injunction and any ruling to change, they first must file a motion to modify the injunction if the adjudicated devices no longer infringe.


Curtis52 said:


> Also, please note that there is no requirement to reference Rule 65(d) even once anywhere in an injunction. It only needs to be complied with. If you comply with the speed limit it isn't necessary to have a sign in the window saying that you comply.


And it appears in this case a party has not complied, which has caused TiVo to file a contempt motion for prima facie violations of the injunction.


----------



## Curtis52

Greg Bimson said:


> The devices have already been found adjuged to infringe. If DISH/SATS wants that injunction and any ruling to change, they first must file a motion to modify the injunction if the adjudicated devices no longer infringe.


 The modified devices have never been adjudicated. The injunction is an infringement injunction. Case law covers infringement injunctions and modified devices:



> "*Infringement is the sine qua non of violation of an injunction against infringements*. The authorities are uniform that the modified device must be an infringement to find contempt of such an injunction. See, e.g., Panther Pumps Equipment Company, Inc. v. Hydrocraft, Inc.,"


If there is no infringement, the modified devices are not enjoined.



> "devices which could not be enjoined as infringements on a separate complaint cannot possibly be deemed enjoined as infringements under an existing injunction in contempt proceedings. Accord MAC Corp. of America, 767 F.2d at 886"





Greg Bimson said:


> And it appears in this case a party has not complied, which has caused TiVo to file a contempt motion for prima facie violations of the injunction.


Huh? Which party has not complied with Rule 65(d) ?


----------



## Greg Bimson

Curtis52 said:


> The modified devices have never been adjudicated.


Wrong, as a friend of mine has a DP-522 which he has owned for four years. That device was certainly adjudicated.

The adjudicated devices were modified. The adjudicated devices have been modifed dozens of times over the course of their lifespan. They are still adjudicated devices.


----------



## nobody99

Curtis52 said:


> Rule 65(d)
> Also, please note that there is no requirement to reference Rule 65(d) even once anywhere in an injunction. It only needs to be complied with. If you comply with the speed limit it isn't necessary to have a sign in the window saying that you comply.
> 
> There is no reason to believe that the injunction does not comply. An interpretation that says Judge Folsom violated Rule 65 is simply a misinterpretation.
> 
> That means this is what the injunction does:


When you quote this:



> Rule 65(d) "requires an injunction to prohibit only those acts sought to be restrained," namely, "infringement of the patent by the devices adjudged to infringe and infringement by devices no more than colorably different therefrom." International Rectifier, 383 F.3d at 1317


Remember, that's not the _actual_ law, it's an interpretation of the law specific to a particular case. And in that particular case, it was, again, new products being sold.

Here's the _actual_ law:



> 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).


I don't see any reference to an injunction being required to only apply to infringement.

Can you explain to me how an injunction, upheld by the appeals court, preventing the sales of unpatented repair parts for a pump fits into your definition "requires an injunction to prohibit only those acts sought to be restrained," namely, "infringement of the patent by the devices adjudged to infringe and infringement by devices no more than colorably different therefrom."


----------



## Curtis52

Greg Bimson said:


> The adjudicated devices have been modifed dozens of times over the course of their lifespan. They are still adjudicated devices.


I must have missed it.  What did the court say about the modified devices? Did they say they are more than colorably different? Is there going to be a separate lawsuit?


----------



## nobody99

Curtis52 said:


> I must have missed it.  What did the court say about the modified devices? Did they say they are more than colorably different? Is there going to be a separate lawsuit?


You're missing the point. Until the court says otherwise, they are *not* modified. Until the court says otherwise, they are the same devices they were when originally adjudicated.


----------



## Greg Bimson

> Rule 65(d) "requires an injunction to prohibit only those acts sought to be restrained," namely, "infringement of the patent by the devices adjudged to infringe and infringement by devices no more than colorably different therefrom." International Rectifier, 383 F.3d at 1317


Besides, that quote is from International Rectifier v. IXYS, and this was relating to an appeal of the judgment and the injunction, not contempt.

We are now full on at the contempt phase.

Everyone can fully bypass the collateral attacks on the injunction now. Nothing to see here.


----------



## scooper

nobody99 said:


> You're missing the point. Until the court says otherwise, they are *not* modified. Until the court says otherwise, they are the same devices they were when originally adjudicated.


No - YOU'RE missing the point. They ARE modified, whether the court says so or not. The only thing to decide is whether it is "colorably different" or not, and then if found to be "more than colorably different" - new trial.


----------



## nobody99

scooper said:


> No - YOU'RE missing the point. They ARE modified, whether the court says so or not. The only thing to decide is whether it is "colorably different" or not, and then if found to be "more than colorably different" - new trial.


Can you explain to me how a court placed an injunction against selling an *UNPATENTED PART* and it was upheld by the appeals court? Where does the injunction say that the DVRs are to be disabled because they are infringing?


----------



## James Long

nobody99 said:


> Where does the injunction say that the DVRs are to be disabled because they are infringing?


The entire first section (everything up to the second paragraph "IT IS THEREFORE ORDERED") says why the DVRs are being disabled ... because they infringed. But that isn't the issue.

"Where does the injunction say that only DVRs that continue to infringe are to be disabled?" is a better question. The injunction says the eight named models defined as "Infringing Products" in the injunction _must_ be disabled ... no "as long as they continue to infringe" ... no "until the next blue moon" ... it is until the patent expires (or the injunction is changed by further order of the court, of course).


----------



## spear61

James Long said:


> The entire first section (everything up to the second paragraph "IT IS THEREFORE ORDERED") says why the DVRs are being disabled ... because they infringed. But that isn't the issue.
> 
> "Where does the injunction say that only DVRs that continue to infringe are to be disabled?" is a better question. The injunction says the eight named models defined as "Infringing Products" in the injunction _must_ be disabled ... no "as long as they continue to infringe" ... no "until the next blue moon" ... it is until the patent expires (or the injunction is changed by further order of the court, of course).


Finally --- a coherent summary of where things stand!!


----------



## BNUMM

I agree with James. but having witnessed some cases I know that even if the evidence is totally supporting one side as being right a judge may rule something that totally makes no sense. I believe that Tivo has been damaged and should be compensated but I don't want to see Dish blocked from selling legal DVRs.


----------



## nobody99

BNUMM said:


> I don't want to see Dish blocked from selling legal DVRs.


I don't think a single person wants to see that. The biggest disagreement in this thread has been with the DVRs that are already in customers homes (specifically, eight different models).


----------



## scooper

nobody99 said:


> I don't think a single person wants to see that. The biggest disagreement in this thread has been with the DVRs that are already in customers homes (specifically, eight different models).


That is NOT the impression I'm getting from most of the Tivo posters - rather - I get the feeling that some of them would LOVE to see all the "Infringing products" completely bricked , i.e. not even usuable as non-DVR satellite receivers. If your quoted statement IS the case, some words to that effect would be certainly appreciated.


----------



## nobody99

scooper said:


> That is NOT the impression I'm getting from most of the Tivo posters - rather - I get the feeling that some of them would LOVE to see all the "Infringing products" completely bricked , i.e. not even usuable as non-DVR satellite receivers. If your quoted statement IS the case, some words to that effect would be certainly appreciated.


I am truly sorry if my position has not come across accurately. I won't speak for anyone else, but I believe:

1) DISH has every right to sell new receivers and DVRs. Unless the software is awfully similar to the infringing DVRs, TiVo would be wasting its time (but has the right to) asking for a contempt hearing. At such a hearing for these new receivers, the court would have to decide that the receivers were only colorably different for an injunction to apply to the new receiver.

2) There are somewhere between three and four million DVRs that were enjoined by the injunction. Any of these must have the DVR functionality turned off. DISH already told the court that they could turn DVR functionality off while leaving the "receiver only" functionality intact.

I have absolutely no problem with DISH selling new DVRs if their new software doesn't infringe.


----------



## Greg Bimson

I've stated it from the beginning...

The most likely event, one that I'd like to see, is a settlement. However:

DISH/SATS doesn't want to pay any more money than ordered, and is going to try to work around the patent so they don't have to pay a monthly fee to license DVR technology from TiVo.

TiVo only wants a licensing agreement with monthly fees as their main business model going forward.

These are two diametrically opposing views, which means the courts will have to rule. And anyone that has been paying attention to this thread can figure which poster sides with which party. However, the motives behind that aren't as clear.

My main motive is simply information. I'm not trying to "save" anyone, but just point out what is there and why it should be interpreted in one fashion. An injunction is nothing to be messed with. And when the injunction states clearly that eight models of DVR's are to be disabled, and that hasn't happened, it is clearly a game of "chicken". Once again, if not careful, innocent subscribers _may_ be caught in the middle.

It's happened before.


----------



## nobody99

Greg Bimson said:


> And anyone that has been paying attention to this thread can figure which poster sides with which party. However, the motives behind that aren't as clear.


You bring up an excellent point - motivation. As I have previously mentioned, I am a TiVo shareholder (and have been for a loooong time). I do not believe that any conversation on this thread would even budge the share price, so I hope no one thinks that has anything to do with my involvement.

I find this case fascinating, and the discussion on this board has been great. My only motivation for being involved at all is a little mental stimulation, and a little bit on how I treat my TiVo investment. I want to stay informed, and perhaps with the excellent conversation here, a little ahead of the market.


----------



## jacmyoung

You know it is most interesting Tivo fans continued to avoid answering my question about that product called "Footprint 2.0 Service", remember that case I cited? The entire service as described in the trial was adjudicated product and ordered to be enjoined, shut off.

The infringer downloaded a software patch, and that was it, no more contempt because the new software patch was no longer infringing, so the Footprint 2.0 Service itself was non-infringing, even though the service was never stopped while being used by the end users in the field all that time.

Now again my question: if we compare the Footprint2.0 Service right after the new software patch download, to the Footprint 2.0 Service described in the trial that was enjoined, what do you call that Footprint 2.0 Service?

A new product? A modified product? The same product? Or something else?

Dare to answer this question?

Please don't come back with well it was irrelevant, I am not asking you whether that case was relevant to this one or not, imagine the current case never happened, we were only talking about that Footprint 2.0 case.

Was the Footprint 2.0 with the new software a new product, a modified product, the same product, or something else?


----------



## jacmyoung

Now while you are trying to come up with an answer that does not get you into trouble, let me ask another one, this time actually look at this case.

Remember when you all said? Had DISH actually downloaded a new software, yes downloaded a new software to all those DVRs in the field, and disabled the DVR functions, then those receivers would be used as standard receivers, yes?

The question is similar, those DP501s... that are without the DVR functions and used as standard receivers, what do you call them? New products? Modified products? The same products, or something else?


----------



## Greg Bimson

jacmyoung said:


> The entire service as described in the trial was adjudicated product and ordered to be enjoined, shut off.
> 
> The infringer downloaded a software patch, and that was it, no more contempt because the new software patch was no longer infringing, so the Footprint 2.0 Service itself was non-infringing, even though the service was never stopped while being used by the end users in the field all that time.
> 
> Now again my question: if we compare the Footprint2.0 Service right after the new software patch download, to the Footprint 2.0 Service described in the trial that was enjoined, what do you call that Footprint 2.0 Service?
> 
> A new product? A modified product? The same product? Or something else?


Doesn't matter, and is irrelevant, because the injunction only enjoined the specified product adjudicated at the time of the trial. The adjudicated product was a service, and that product was only software-related. Change the product so it is more than colorably different, and the Defendant is free and clear of the injunction.

In this case, the products are not software, though the infringement is. The adjudicated products are enjoined from sales, etc., and also subject to a disable order. DISH/SATS wish they had the wording from the Digital Island injunction, because they'd be free and clear.

As a matter of fact, because this injunction lacks the "product enjoined as configured at the time of the trial" statement, this example would be great for TiVo to use. Injunctions are specific. And because the DISH/SATS injunction does not enjoin products as configured at the time of the trial, a plain reading suggests all "Infringing Products", modified or not, have to be disabled within 30 days of the injunction's full force and effect.


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## Greg Bimson

jacmyoung said:


> The question is similar, those DP501s... that are without the DVR functions and used as standard receivers, what do you call them? New products? Modified products? The same products, or something else?


Adjudicated, court-order modified products. They certainly aren't new. They certainly aren't simply "modified".


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## kmill14

It sure sounds like people are trying to add meaning to this injunction. Certainly if Dish had problems with the wording, they would have appealed it. But at the end of the day, they STILL didn't follow the order of the court, and thats all the Judge needs to hold them in contempt. (even if the injunction itself was erroneous in its wording to begin with)


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## kmill14

jacmyoung, you never said anything else in regards to my response of your questions:

********

Quote:
Originally Posted by jacmyoung View Post
Can we at least agree "disabling the DVR functions (i.e. all storage and playback&#8230" was to stop on-going infringement? I think Greg you said so. If we can't even agree that then yes we can't debate on it, if you believe the above is judge's punishment for DISH, and so such order is not subject to all the standards we have quoted, that of course make our debate moot.

But if you can at least say that the above order was to stop on-going infringement, then I hope you can see the logic that if there is no more on-going infringement at this moment, DISH should not be in contempt of such order?

*jacmyoung, no, I do not think that was the reason. Why would he need to further address those products and on-going infringement since the injunction already covered that in an earlier order?
*
Quote:
Each Defendant, its officers, agents, servants, employees and attorneys, and those persons in active concert or participation with them who receive actual notice hereof, are hereby restrained and enjoined, pursuant to 35 U.S.C. § 283 and Fed. R. Civ. P. 65(d), from making, using, offering to sell, selling, or importing in the Untied States, the Infringing Products,

*The purpose of this part of the order, like the earlier case I posted, was the removal those products deemed to have infringed that were already in the hands of the end users. Just like the other case said to go get the products out of retail stores, this Judge said to go get those products and disable them, but do it with a software update. If the software update had not been available, the Judge would have forced E* to recall all those products.*


----------



## jacmyoung

Greg Bimson said:


> Adjudicated, court-order modified products. They certainly aren't new. They certainly aren't simply "modified".


Good, at least we have a definition, "adjudicated, court-ordered modified products". So they are *modified products*, just a special kind of them, confined to what this particular injunction allows, yes?

My next question is, why would the court allow such modified products to be used? Out of the good heart of the judge, or the good heart of Tivo? Why?


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## kmill14

jacmyoung said:


> Good, at least we have a definition, "adjudicated, court-ordered modified products". So they are *modified products*, just a special kind of them, confined to what this particular injunction allows, yes?
> 
> My next question is, *why would the court allow such modified products to be used?* Out of the good heart of the judge, or the good heart of Tivo? Why?


They haven't.


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## jacmyoung

kmill14 said:


> They haven't.


I thought you Tivo folks agreed they would be able to be used as stardard receivers, are they or are they not?

Had DISH disabled the DVR functions, and rendered those DVRs non-DVRs, would they be allowed to continue be used as standard receivers or not?


----------



## jacmyoung

kmill14 said:


> ...If the software update had not been available, the Judge would have forced E* to recall all those products.[/B]


But the software update is available, and the judge must also be aware that a software update can not only disable the DVR functions, but also kill the DVRs completely, yes?

Why not? You just said he would have recalled all those DVRs, so if that was his intention, if the software download was not possible, then now it is possible, why not order DISH to use a software update to kill all those DVRs period?


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## Greg Bimson

jacmyoung said:


> My next question is, why would the court allow such modified products to be used? Out of the good heart of the judge, or the good heart of Tivo? Why?


So customers can still watch TV?


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## James Long

jacmyoung said:


> Please don't come back with well it was irrelevant,


Why not? It is the truth ... and I hope you're trying to seek the truth.

The injunction against Footprint 2.0 was against the service _as configured_. Not the service "period" the service with a major caveat. There is no such caveat in the DISH/Tivo injunction.

You're trying to twist one case with different rules into supporting your odd viewpoint in this case. Give it up ... it's irrelevant!


----------



## kmill14

jacmyoung said:


> But the software update is available, and the judge must also be aware that a software update can not only disable the DVR functions, but also kill the DVRs completely, yes?
> 
> Why not? You just said he would have recalled all those DVRs, so if that was his intention, if the software download was not possible, then now it is possible, why not order DISH to use a software update to kill all those DVRs period?


I don't know. Is this where you give me the answer?


----------



## jacmyoung

James Long said:


> Why not? It is the truth ... and I hope you're trying to seek the truth.
> 
> The injunction against Footprint 2.0 was against the service _as configured_. Not the service "period" the service with a major caveat. There is no such caveat in the DISH/Tivo injunction.
> 
> You're trying to twist one case with different rules into supporting your odd viewpoint in this case. Give it up ... it's irrelevant!


Good then how about you tell the truth, why would those "adjudicated modified products" (DP501s without DVR functions) be allowed to continue to be used in the field?


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## jacmyoung

kmill14 said:


> I don't know. Is this where you give me the answer?


I have an answer, but I am sure you can at least speculate one yourself, how about try it? Anything you can come up with.


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## Greg Bimson

Again, so customers can still watch TV?


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## James Long

jacmyoung said:


> Good then how about you tell the truth, why would those "adjudicated modified products" (DP501s without DVR functions) be allowed to continue to be used in the field?


Greg has answered that accurately.

If you don't like his answer you can contact Judge Folsom.


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## jacmyoung

Greg Bimson said:


> Again, so customers can still watch TV?


Despite the fact those adjudicated products are forever infringing products and forever going to infringe on Tivo's patent? Why?

Kmill14 said had software download been not available, those adjudicated products would be recalled, meaning DISH would have to replace all of them with "new products" that do not infringe. That made total sense did it not?

So why not do everyone a big favor and kill all those DVRs? Especially from a legal standpoint, since those DVRs will always be infringing products, allowing them to be used in any shape or form will mean allowing DISH to continue to infringe, isn't this against the goal of the injunction in the first place?

The judge already said, so was the appeals court, that disabling was not a big of deal, the inconvenience to the customers in this case did not out-weigh the harm to Tivo if those infringing products were allowed to continue to infringe.


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## Curtis0620

Can the guarantee that all DVR's received the revised software?


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## jacmyoung

Curtis0620 said:


> Can the guarantee that all DVR's received the revised software?


The judge must thought so, otherwise why order a software download to kill the DVR functions? Why not just order them recalled?

Order a software to kill the DVR functions, or order a software to kill the receivers, the verification process will be exactly the same.


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## James Long

jacmyoung said:


> Despite the fact those adjudicated products are forever infringing products and forever going to infringe on Tivo's patent? Why?


"Infringing Products" that have had their DVR functionality disabled per the injunction are acceptable to the court and Tivo. They will always be referred to as "Infringing Products" because they meet the legal definition. They will always be adjudicated products because a court has ruled on their legal status. It doesn't matter in they actually infringe or not ... they meet the definition and will _always_ be adjudicated "Infringing Products".

Even if DISH's way of disabling the DVR functionality required exchanging the receivers and DISH physically exchanged all "Infringing Products" for modified "Infringing Products" those products would remain legally defined "Infringing Products". Perhaps it doesn't make sense, but actual continued infringement is not part of the court's definition of "Infringing Products". Understand that.

It is like a person who commits a felony losing their right to vote. They are forever labeled a felon. They may earn the title of ex-convict by getting released from jail. They may actually stop committing felonies. But they will always be a felon and treated as such. Ceasing crime doesn't change the label. (Voting rights may be restored by a court or pardon, but unless the conviction is overturned the label stands.)

"Infringing Products" will remain "Infringing Products" and adjudicated.


jacmyoung said:


> The judge must thought so, otherwise why order a software download to kill the DVR functions? Why not just order them recalled?
> 
> Order a software to kill the DVR functions, or order a software to kill the receivers, the verification process will be exactly the same.


Inaccurate reading on the injunction leads to statements like these. The judge didn't order a software download. He ordered a result. It doesn't matter how DISH gets to that result as long as they follow the injunction. DISH could send techs into the field with sledgehammers for all the judge cares ... as long as the DVR functions are disabled as ordered and not enabled on new placements. (Technically the injunction does not _require_ that 192k units remain DVRs nor that the "Infringing Products" are usable for any purpose ... as long as the DVR functions are somehow disabled as ordered.)

Read the injunction, it might help.


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## nobody99

James Long said:


> It is like a person who commits a felony losing their right to vote. They are forever labeled a felon. They may earn the title of ex-convict by getting released from jail. They may actually stop committing felonies. But they will always be a felon and treated as such. Ceasing crime doesn't change the label. (Voting rights may be restored by a court or pardon, but unless the conviction is overturned the label stands.)
> 
> "Infringing Products" will remain "Infringing Products" and adjudicated.


That is the clearest analogy anyone has come up with, by far.


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## Greg Bimson

jacmyoung said:


> Despite the fact those adjudicated products are forever infringing products and forever going to infringe on Tivo's patent? Why?


Not forever. The patent expires.


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## James Long

Greg Bimson said:


> Not forever. The patent expires.


The patent expiration still doesn't change the definition of "Infringing Products". The DVR functions may be restored to the "Infringing Products" when the patent expires (per the injunction) but the definition doesn't change.

(Actual infringement can end any time ... but the legal definition remains the same. "Infringing Products" for the purpose of this injunction has been defined. Only a court can change that definition.)


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## Greg Bimson

Agreed, but the sentence to which I was responding didn't have the "Infringing Products" terminology. I should have been more clear that my "not forever" statement reflects on TiVo's patent, so forever infringing "on TiVo's patent" is only defined as the length of the patent's term. One cannot infringe on a patent that no longer exists.


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## nobody99

jacmyoung, quick and simple question.

If DISH released a new receiver, call it the DP-8080, and it used software that was later found to be only colorably different, would this be an "Infringing Product" in context of the injunction?


----------



## James Long

Greg Bimson said:


> Agreed, but the sentence to which I was responding didn't have the "Infringing Products" terminology. I should have been more clear that my "not forever" statement reflects on TiVo's patent, so forever infringing "on TiVo's patent" is only defined as the length of the patent's term. One cannot infringe on a patent that no longer exists.


The receivers can stop infringing at any time ... if you believe DISH they stopped infringing a long time ago. But "Infringing Products" remain defined as "Infringing Products" regardless of if they infringe.


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## Greg Bimson

Absolutely.


----------



## James Long

nobody99 said:


> jacmyoung, quick and simple question.
> 
> If DISH released a new receiver, call it the DP-8080, and it used software that was later found to be only colorably different, would this be an "Infringing Product" in context of the injunction?


It isn't the software that is the problem ... it is the product. The product is a DVR.

If the DP-8080 is similar to one or more of the "Infringing Products" the court may decide that it is "only colorably different" and be under the current injunction. It would be up to DISH to prove that the DP-8080 is more than colorably different.

If the DP-8080 is not similar to any of the "Infringing Products" it would be more than colorably different and a new trial would be required to figure out if that product infringes.

The argument over whether or not the DP-8080 is or is not only colorably different probably would get a mention of the software by both sides ... but the injunction isn't against software that is only colorably different, it is against products that are only colorably different.


----------



## nobody99

James Long said:


> It isn't the software that is the problem ... it is the product. The product is a DVR.
> 
> If the DP-8080 is similar to one or more of the "Infringing Products" the court may decide that it is "only colorably different" and be under the current injunction. It would be up to DISH to prove that the DP-8080 is more than colorably different.
> 
> If the DP-8080 is not similar to any of the "Infringing Products" it would be more than colorably different and a new trial would be required to figure out if that product infringes.
> 
> The argument over whether or not the DP-8080 is or is not only colorably different probably would get a mention of the software by both sides ... but the injunction isn't against software that is only colorably different, it is against products that are only colorably different.


It was sort of a trick question. It wouldn't be an "*I*nfringing *P*roduct" under any circumstance. It could be an *i*nfringing *p*roduct, though.


----------



## jacmyoung

Greg Bimson said:


> Not forever. The patent expires.


Of course everything we are discussing is within the context of a valid patent, we are not discussing anything after the expiration.

"So that the customers can still watch TV" is not a good enough answer because the judge should not allow an infringing product in the field to continue to infringe, according to you at least in this case.

So allowing the DP501s to continue as non-DVRs to be used in the field is allowing DISH to continue to infringe the Tivo patent, according to you, why?

The customers can still watch TV, in fact they can still use DVRs, as soon as DISH replace them with "new products", why would the judge allow the infringing products to continue to infringe?


----------



## Greg Bimson

jacmyoung said:


> So allowing the DP501s to continue as non-DVRs to be used in the field is allowing DISH to continue to infringe the Tivo patent, according to you, why?


I missed this. Where did I say that?


----------



## James Long

nobody99 said:


> It was sort of a trick question. It wouldn't be an "*I*nfringing *P*roduct" under any circumstance. It could be an *i*nfringing *p*roduct, though.


The DP-8080 would be treated an "Infringing Product" if the product was only colorably different from a named "Infringing Product". Something that looked like a DP-501 with a cheap sticker on the front and similar menus could be considered "only colorably different" ... regardless of if the software actually infringed.

But yes, although the injunction covers products only colorably different the definition of "Infringing Product" doesn't change. The DP-8080 would not be an "Infringing Product" ... it would just be treated as if it were an "Infringing Product". Even if a DP-8080 never infringed.



jacmyoung said:


> "So that the customers can still watch TV" is not a good enough answer because the judge should not allow an infringing product in the field to continue to infringe, according to you at least in this case.
> . . .
> The customers can still watch TV, in fact they can still use DVRs, as soon as DISH replace them with "new products", why would the judge allow the infringing products to continue to infringe?


Who said he is? The judge is allowing use of "Infringing Products" ... he is not allowing infringement.

It is simple once you figure that out!


----------



## jacmyoung

Greg Bimson said:


> I missed this. Where did I say that?


If you did not say that, then did you mean the DP501s in the field will no longer infringe on the Tivo patent as long as they are used as non-DVRs?

In another word it is possible to download a software, and modify the adjudicated products, into some sort of modified products that no longer infringe on the patent?


----------



## Greg Bimson

jacmyoung said:


> If you did not say that, then did you mean the DP501s in the field will no longer infringe on the Tivo patent as long as they are used as non-DVRs?
> 
> In another word it is possible to download a software, and modify the adjudicated products, into some sort of modified products that no longer infringe on the patent?


Isn't that in essence what Judge Folsom's injunction does? The order states to disable the "Infringing Products". By disabling the DVR functionality, how could the product infringe any longer? Anything other than disabling the DVR functionality is not complying with the court's order, which is why TiVo has a pending motion for contempt.

I did re-read TiVo's contempt motion. The only issue TiVo has brought before this court is simply a motion to find contempt regarding the disable section only. TiVo did not address any other receivers, nor did they address ongoing sales of "Infringing Products".


----------



## kmill14

jacmyoung said:


> If you did not say that, then did you mean the DP501s in the field will no longer infringe on the Tivo patent as long as they are used as non-DVRs?
> 
> *In another word it is possible to download a software, and modify the adjudicated products, into some sort of modified products that no longer infringe on the patent*?


This seems like a familiar path. Let me complete your statement for you, since you left out a few key words:

*****
In another word it is possible to download a software, and modify the adjudicated products into some sort of modified products *that no longer have DVR functionality*.

*****


----------



## kmill14

kmill14 said:


> Originally Posted by jacmyoung View Post
> Can we at least agree "disabling the DVR functions (i.e. all storage and playback&#8230" was to stop on-going infringement?
> 
> 
> 
> 
> *jacmyoung, no, I do not think that was the reason. Why would he need to further address those products and on-going infringement since the injunction already covered that in an earlier order?
> *
> 
> Quote:
> Each Defendant, its officers, agents, servants, employees and attorneys, and those persons in active concert or participation with them who receive actual notice hereof, are hereby restrained and enjoined, pursuant to 35 U.S.C. § 283 and Fed. R. Civ. P. 65(d), from making, using, offering to sell, selling, or importing in the Untied States, the Infringing Products,
> 
> *The purpose of this part of the order, like the earlier case I posted, was the removal those products deemed to have infringed that were already in the hands of the end users. Just like the other case said to go get the products out of retail stores, this Judge said to go get those products and disable them, but do it with a software update. If the software update had not been available, the Judge would have forced E* to recall all those products.*
Click to expand...

jacmyoung, I still didn't get a response to the major part of your earlier question. You asked whether I thought the "disable DVR functionality" was to stop on-going infringement, and you see my response above. Do you agree or disagree that the "disable DVR functionality" order is completely seperate to the on-going infringement order?


----------



## Herdfan

James Long said:


> "Infringing Products" that have had their DVR functionality disabled per the injunction are acceptable to the court and Tivo.


As much as I hate to admit it, jacmyoung brings up a valid point. How is an adjudicated infringing receiver that has the DVR functions disabled that different than one that has new not-yet-to-be-found-infringing software.

I know the injunction states to disable the playback from a hard drive. But it doesn't state they have to disabel the receiver entirely. I don't see that far of a jump from receiver to DVR with new software.

As I am not familiar with the DISH receivers, do any of them have a USB port? If so, what would stop dish from sending its customers some sort of USB solid state (think huge thumb drive) storage device that is not disk based? Would that be in compliance?

Or disable the DVR functions, but "leak" a method for allowing an external drive to be enabled via a backdoor? They would still be in technical compliance as they disabled the hard drive. What customers do is out of their control.


----------



## Greg Bimson

Herdfan said:


> As much as I hate to admit it, jacmyoung brings up a valid point. How is an adjudicated infringing receiver that has the DVR functions disabled that different than one that has new not-yet-to-be-found-infringing software.


I'll admit it isn't too much of a jump. However, the injunction order states to disable DVR functions. Not load new DVR software.


----------



## nobody99

Greg Bimson said:


> I'll admit it isn't too much of a jump. However, the injunction order states to disable DVR functions. Not load new DVR software.


But was the intent to stop infringement, or to stop profit from the original infringement?

What reason would a judge prevent a company from selling a non-patented reapir part (in the case I mentioned a few days ago)?


----------



## jacmyoung

Greg Bimson said:


> Isn't that in essence what Judge Folsom's injunction does? The order states to disable the "Infringing Products". By disabling the DVR functionality, how could the product infringe any longer? ...


I don't know, according to some of you:

1) The adjudicated products in this case can not be modified, but accroding to your latest statement it seems yes they can be modifed, because the injunction ordered them to be modified.

2) A software download can not possibly modify the adjudicated products in the field, yet you just admitted indeed a software download now appears able to modify the adjudicated products in the field, without a recall.

3) The adjudicated products can not possibly become "modified products" with a software download, but now it seems you just agreed it is possible, as long as it is "allowed" by the court.

4) The adjudicated products, once infringed on the patent, always do, but now you also admitted after certain court-permitted software download in the field, they indeed can become products that no longer infringe on the patent.

5) And once the adjudicated products, after a software download in the field, modified to no longer infringe on the patent, they can continue to be used, as long as they do not infringe on the patent again.

So far so good?


----------



## Greg Bimson

Talk about adding terms together:


jacmyoung said:


> 1) The adjudicated products in this case can not be modified, but accroding to your latest statement it seems yes they can be modifed, because the injunction ordered them to be modified.


*As per the order given in the injunction, the order was to disable, not modify. Always been my position.*


jacmyoung said:


> 2) A software download can not possibly modify the adjudicated products in the field, yet you just admitted indeed a software download now appears able to modify the adjudicated products in the field, without a recall.


See reply to Point 1.


jacmyoung said:


> 3) The adjudicated products can not possibly become "modified products" with a software download, but now it seems you just agreed it is possible, as long as it is "allowed" by the court.


In order to get the "Infringing Products" moved off of the list, DISH/SATS must request a modification of the injunction. That is what they've done with their motion for consideration regarding the Advanced Exchange Program.


jacmyoung said:


> 4) The adjudicated products, once infringed on the patent, always do, but now you also admitted after certain court-permitted software download in the field, they indeed can become products that no longer infringe on the patent.


No, they are ruled infringing until there is a modification of the court order.


jacmyoung said:


> 5) And once the adjudicated products, after a software download in the field, modified to no longer infringe on the patent, they can continue to be used, as long as they do not infringe on the patent again.


See reply to Point 1.


----------



## kmill14

I think its a good time to bring up this real-world example again:


1. John Doe has the DP-501 with DVR capabilities

2. Court order states that John's DP-501 must have its DVR capabilities disabled.

3. E* send a software update to John's DP-501, but the DVR capabilities still work.

4. Court finds E* in contempt for not disabling the DVR capabilities of John's DP-501.



jacmyoung, how would you alter this assuming you don't agree with it?


----------



## jacmyoung

Greg Bimson said:


> Talk about adding terms together:*As per the order given in the injunction, the order was to disable, not modify. Always been my position.*...


Didn't you just say:



Greg Bimson said:


> *Adjudicated, court-order modified products*. They certainly aren't new. They certainly aren't simply "modified".


Then what do you call them, the same products, or what? Can you find a definition for them?

I am talking about these DP501s..., that after a software download, in the field, changed to some standard receivers, and allowed to continue, and you are insisting that they are not modified products?

Give me a name Greg. You already said they are not new products, they of course can not possibly be the same products, otherwise they will not be allowed to be used yes? You seemed to agree at one point they were modified prodcuts, just a special kind, and now they again are not modified products, so help me to find a correct term for them, my English is limited.


----------



## jacmyoung

kmill14 said:


> I think its a good time to bring up this real-world example again:
> 
> 1. John Doe has the DP-501 with DVR capabilities
> 
> 2. Court order states that John's DP-501 must have its DVR capabilities disabled.
> 
> 3. E* send a software update to John's DP-501, but the DVR capabilities still work.
> 
> 4. Court finds E* in contempt for not disabling the DVR capabilities of John's DP-501.
> 
> jacmyoung, how would you alter this assuming you don't agree with it?


1. John has a DP501 with DVR functions;
2. Court order states that DP501 must have its DVR functions disabled;
3. E* sends a software to that PD501 that no longer infringes on the patent, therefore the use of its continued DVR fucntions by that software no longer infringe on Tivo's patent;
4. Court therefore can not find DISH in contempt because the higher court said so. The higher court said if there is no infringement of the patent, there is no violation of an injunction on infringements, any injunction on infringements, no matter what that injunction says, period.

"Infringement is the *sine qua non* of violation of *an* injunction against infringements," meaning infringement on the patent is an essential act, without such act, violation (contempt) of an injunction agaisnt infringements simply can not be.

The term "*an* injunction agaisnt infringements" refers to *all* injunctions in the patent infringement cases, including this one. The above rule is universal in all patent cases.

An injunction can not anticipate nor should it try to anticipate what might happen in the future so the infringer will no longer infringe on the patent, therefore an injunciton only proscribe acts that it can rule as infringing at the time, to ensure no future infringement of the patent.

But if anything, anything at all that may be unanticipated back then, happens in the future that allows the infringer to no longer infringe on that patent, then the infringer can not possibly be in violation of any injunction, period.


----------



## Greg Bimson

Talking about a definition of the "Infringing Products", if they were disabled:


Greg Bimson said:


> Adjudicated, court-order modified products. They certainly aren't new. They certainly aren't simply "modified".





jacmyoung said:


> Then what do you call them, the same products, or what? Can you find a definition for them?
> 
> I am talking about these DP501s..., that after a software download, in the field, changed to some standard receivers, and allowed to continue, and you are insisting that they are not modified products?


They are the same products. A DP-501 from four years ago is the same as it was two years ago, and is the same now, simply running different software at each point. It would still be a DP-501 if the software is disabled.

A DP-501 is one of the "Infringing Products". It is also an "adjudicated, court-order modified products".

As an "Infringing Product", a DP-501 is subject to the injunction order for its length. That order states to disable the DVR functionality. Is that a "modification"? It sure is; it is the only modification that follows the directive of the court. Is changing the DVR software allowed? Sure is, as long as DVR functionality is removed.

This is a cat-and-mouse game, where you are trying to slip someone up, once, and use it to prove your point. The only issue is that the clear directive of the injunction order is to disable the DVR functionality, for the length of the injunction.

Judge Folsom ordered DISH/SATS to disable the DVR functionality, by disabling storage and playback of television data. If disabling is due to a modification, so be it. But it is the only modification that matters. All else but disabling the DVR functionality can be considered contempt.


jacmyoung said:


> 3. E* sends a software to that PD501 that no longer infringes on the patent, therefore the use of its continued DVR fucntions by that software no longer infringe on Tivo's patent;


No longer infringes? Says who?


----------



## Greg Bimson

jacmyoung said:


> "Infringement is the sine qua non of violation of an injunction against infringements," meaning infringement on the patent is an essential act, whith out such act, violation (contempt) of an injunction agaisnt infringements simply can not be.
> 
> The term "an injunction agaisnt infringements" refers to all injunctions in the patent infringement cases, including this one. The above rule is universal in all patent cases.


How do the courts know that the infringement has ended? What facts have been presented to the court, for their consideration, to state that adjudicated products _might_ no longer infringe?


----------



## kmill14

jacmyoung said:


> 1. John has a DP501 with DVR functions;
> 2. Court order states that DP501 must have its DVR functions disabled;
> 3. E* sends a software to that PD501 that no longer infringes on the patent, therefore the use of its continued DVR fucntions by that software no longer infringe on Tivo's patent;
> 4. Court therefore can not find DISH in contempt because the higher court said so. The higher court said if there is no infringement of the patent, there is no violation of an injunction on infringements, any injunction on infringements, no matter what that injunction says, period.


And yet you forget that the higher court said that the only thing needed to be found in civil contempt is to disregard a court order.

*Why are there 2 seperate orders in the Injunction...one talking about on-going infringement, and the other talking about disable the functionality of adjudicated products already in end user hands?*


----------



## James Long

Herdfan said:


> As much as I hate to admit it, jacmyoung brings up a valid point. How is an adjudicated infringing receiver that has the DVR functions disabled that different than one that has new not-yet-to-be-found-infringing software.


The first _is_ in compliance with the injunction ... the second (if it has DVR functionality) _is not_ in compliance with the injunction. Infringement is irrelevant. The injunction says "disable the DVR functionality". Not "change the software" but "disable the DVR functionality".



> I know the injunction states to disable the playback from a hard drive. But it doesn't state they have to disabel the receiver entirely. I don't see that far of a jump from receiver to DVR with new software.


That is what DISH is hoping for ... that the judge will be kindly and accept the concept of new software as compliance and not hold DISH in contempt.



> As I am not familiar with the DISH receivers, do any of them have a USB port? If so, what would stop dish from sending its customers some sort of USB solid state (think huge thumb drive) storage device that is not disk based? Would that be in compliance?


No. The hard drive was an example of items involved in DVR functionality ... it isn't the end. Even if DISH did disable the DVR functionality completely they would need the hard drive in those receivers for EPG and non-DVR functions. I believe the court would allow the hard drive to remain active as long as it was not being used for DVR functionality. The key isn't to brick the receiver or do any more than what the injunction specifies ... the key is to disable the DVR functionality.



> Or disable the DVR functions, but "leak" a method for allowing an external drive to be enabled via a backdoor? They would still be in technical compliance as they disabled the hard drive. What customers do is out of their control.


Wink wink ... yeah, the court would go for that.


----------



## James Long

jacmyoung said:


> 1) The adjudicated products in this case can not be modified, but accroding to your latest statement it seems yes they can be modifed, because the injunction ordered them to be modified.


The injunction ordered a specific modification. It didn't say how that modification should be carried out (via software, via recall, via sledgehammer) it just plainly said disable the DVR functionality. Is that hard to understand?



> 2) A software download can not possibly modify the adjudicated products in the field, yet you just admitted indeed a software download now appears able to modify the adjudicated products in the field, without a recall.


The products remain adjudicated and under the injunction that says that their DVR functionality must be disabled. Software modifications are irrelevant. The order remains "disable the DVR functionality". Get r done.



> 5) And once the adjudicated products, after a software download in the field, modified to no longer infringe on the patent, they can continue to be used, as long as they do not infringe on the patent again.


They can only be used with their DVR functionality disabled - until a court says otherwise - not "until the defendant feels like it" but until there is a ruling that says they can use those products as DVRs. Simple.



jacmyoung said:


> 1. John has a DP501 with DVR functions;
> 2. Court order states that DP501 must have its DVR functions disabled;
> 3. E* sends a software to that PD501 that no longer infringes on the patent, therefore the use of its continued DVR fucntions by that software no longer infringe on Tivo's patent;


DISH is in contempt for not following the injunction.

Simple.

May Judge Folsom have mercy on their corporate soul!


----------



## Curtis52

Greg Bimson said:


> How do the courts know that the infringement has ended? What facts have been presented to the court, for their consideration, to state that adjudicated products _might_ no longer infringe?


Ended? These are not the adjudicated devices. These devices replaced the adjudicated devices. TiVo has to show that there is infringement.


----------



## kmill14

Curtis52 said:


> Ended? These are not the adjudicated devices. These devices replaced the adjudicated devices. TiVo has to show that there is infringement.


:hurah: :hurah: :hurah: :lol: :lol: :lol:

You mean John Doe doesn't have his DP-501 anymore? Did someone come pick it up for him? TiVo doesn't have to show anything. John Doe still has his adjudicated DP-501 with working DVR functionality, and that is going against what the Court ordered.


----------



## kmill14

:lol: :lol: :lol: 


Sorry, that last post was just so funny I had to dedicate an entire post just to laughing about it.


----------



## brettbolt

Curtis52 said:


> Ended? These are not the adjudicated devices. These devices replaced the adjudicated devices. TiVo has to show that there is infringement.


If Tivo has to prove that there is still infringement, then that could lead to an endless cycle of the following:
1) Trial to prove infringement
2) Injunction
3) Dish changes software and says it doesn't infringe.
4) Go to step 1

If this is true, then how could a software patent holder ever get patent protection? Each cycle could take years.

I think Greg Bimson is right, that Dish is in contempt.

I own a 501, a 508, and (gasp) a Tivo Series 3 which I use for local channels and online podcasts.

I really don't care who wins the contempt hearing. I think that Tivo's patent is too broad and the US patent system grants far too many patents for obvious ideas. On the other hand, losing my 501 and 508 would force me to get a new receiver or cable.

After 2500+ posts, I think this topic has been beat to death. We can speculate all we want, or simply wait till September 4th and just watch what happens.


----------



## Curtis52

brettbolt said:


> If Tivo has to prove that there is still infringement, then that could lead to an endless cycle of the following:
> 1) Trial to prove infringement
> 2) Injunction
> 3) Dish changes software and says it doesn't infringe.
> 4) Go to step 1


Not at all. The cycle could end with the court saying that Dish doesn't infringe.

On the other hand, if there is a series of "only colorably different" findings in contempt hearings the appeals court would support adding a clause to the injunction requiring pre-approval of changes. They've done it in the past in exceptionally egregious cases.


----------



## nobody99

brettbolt said:


> I think that Tivo's patent is too broad and the US patent system grants far too many patents for obvious ideas.


And I think far too many say this exact thing without having the faintest idea what was actually patented.


----------



## Greg Bimson

Curtis52 said:


> Ended? These are not the adjudicated devices. These devices replaced the adjudicated devices. TiVo has to show that there is infringement.


Friend has had a DP-522 for four years and running. His DP-522 hasn't been replaced. A DP-522 is an adjudicated product. If it made coffee and toast and didn't have DVR functionality, it would be fine.

They were "modified" by DISH/SATS. Fine. Doesn't change the fact the 522 was found to infringe.


----------



## brettbolt

Curtis52 said:


> Not at all. The cycle could end with the court saying that Dish doesn't infringe.


Reread my post. I said it _could_ lead to an endless cycle.

My point was that if a situation occurs where its impossible for a product to be modified to avoid infringement (not necessarily this case), then the infringer could create an endless loop and never pay the plaintiff a dime.


----------



## James Long

Curtis52 said:


> Ended? These are not the adjudicated devices. These devices replaced the adjudicated devices. TiVo has to show that there is infringement.


Sounds like a Jedi mind trick ... 'these are not the "Infringing Products" covered by the injunction'. 

The trouble (for DISH) is that those eight models _are_ the adjudicated devices. That leaves them trying to convince Judge Folsom that the concept of changing software to avoid infringement is acceptable when DISH was specifically told to simply disable DVR functionality.

What DISH has done is not permitted by the injunction. I look forward to reading their explaination of why they thought their actions were appropriate.


----------



## brettbolt

nobody99 said:


> And I think far too many say this exact thing without having the faintest idea what was actually patented.


The patent deals with pre-processing the input stream before it is stored on a hard drive. (With the goal being able to easily skip around during playback).

I've been a self-employed software developer for 18 years and that seems pretty obvious to me.

I could give many more examples of obvious patents. I think you have underestimated the intelligence of people who complain about the patent system.


----------



## Curtis52

brettbolt said:


> The patent deals with pre-processing the input stream before it is stored on a hard drive. (With the goal being able to easily skip around during playback).
> 
> I've been a self-employed software developer for 18 years and that seems pretty obvious to me.


It's even more broad than that. The steps in the patent don't have to be done in any particular order. The parsing (analysis) doesn't necessarily have to be done before storage.


----------



## nobody99

brettbolt said:


> The patent deals with pre-processing the input stream before it is stored on a hard drive. (With the goal being able to easily skip around during playback).
> 
> I've been a self-employed software developer for 18 years and that seems pretty obvious to me.
> 
> I could give many more examples of obvious patents. I think you have underestimated the intelligence of people who complain about the patent system.


And I've been a software development for 18 years as well. Started with Omnis 3 for the Mac, went to dBase III, foxbase, foxpro, visual foxpro, and for the last seven or so years, ms-sql. Your point? Have you released a DVR based on your code? I don't think it's reasonable for someone who sums up the patent in *one sentence* to generalize about the whole patent system. And there are countless times that someone (not you) have said "patenting a DVR is ridiculous." Well, TiVo didn't patent a DVR, the patented a very particular way of doing a very particular thing that was not obvious.

That's all beside the point. They have the patent. That patent grants them certain rights.


----------



## brettbolt

nobody99 said:


> And I've been a software development for 18 years as well. Started with Omnis 3 for the Mac, went to dBase III, foxbase, foxpro, visual foxpro, and for the last seven or so years, ms-sql. Your point? Have you released a DVR based on your code?


My point is that development teams working independently are likely to come up with similar methods for accomplishing a given task. If a team needs to design a DVR, who wouldn't store an index to quickly locate a given video frame?

And no, I have not developed DVR software. I don't want to get sued. But if I wanted to develop one I do have the technical capability.



> I don't think it's reasonable for someone who sums up the patent in *one sentence* to generalize about the whole patent system. And there are countless times that someone (not you) have said "patenting a DVR is ridiculous." Well, TiVo didn't patent a DVR, the patented a very particular way of doing a very particular thing that was not obvious.
> 
> That's all beside the point. They have the patent. That patent grants them certain rights.


I did it in *one sentence* so as not to clog up this thread even more. We agree that we disagree. I am among the many who think that patenting a DVR or any particular implementation of it, no matter how you accomplish the goal, is indeed ridiculous. It is not in the best public interest. Again, I know you disagree and we'll leave it at that.


----------



## jacmyoung

James Long said:


> The injunction ordered a specific modification. It didn't say how that modification should be carried out (via software, via recall, via sledgehammer) it just plainly said disable the DVR functionality. Is that hard to understand?


Oh James please, I dont think you need to bend over backwards to help out the Tivo fans, even they will not deny that the judge knew and implied very well the "disabling of the DVR functions" was to be carried out by a software download.



> The products remain adjudicated and under the injunction that says that their DVR functionality must be disabled. Software modifications are irrelevant. The order remains "disable the DVR functionality". Get r done.
> 
> They can only be used with their DVR functionality disabled - until a court says otherwise - not "until the defendant feels like it" but until there is a ruling that says they can use those products as DVRs. Simple.
> 
> DISH is in contempt for not following the injunction.
> 
> Simple.
> 
> May Judge Folsom have mercy on their corporate soul!


The point I was trying to make, and no one on the other side could admit it, was that the adjudicated DVRs, once having the DVR functions disabled, and become standard receivers, they are then *modified products*, and the only reason the judge will allow them to be used as standard receivers, was because those *modified products*, once without the DVR functions, would no longer infringe on the Tivo patent.

The above fits perfectly with the uniform standards, once the DP501s are modified to be non-DVRs, they will no longer infringe on the patent, and therefore the court can not prohibit their use as non-DVRs. The court can not prohibit acts that do not infringe on the patent.

That is the only reason those receivers will be allowed to be used as standard receivers, no more no less. The answer is very straight forward, the reason the Tivo fans can not give such straight answer was because by admitting the above, they would have their own theory all messed up.

That is the truth.

Judge Folsom knows the rules, he knows his limits, he did not go beyond his power when framing his injunction, his ordered the infringing products to have the DVR functions disabled so they no longer infringe, and he stopped right there, because he knew once the DVR functions were disabled, there would no longer be acts of infringement by those modified products, and that he could not go beyond that point to order the DP501s without DVR functions to stop working, because they would not infringe on the patent.

For the very same reason, once DISH's evidence establishes clear doubt in the judge's mind, whether the modified products, through a software download, with or without any DVR functions, still infringe on the patent or not, once that doubt can be established, he will not be able cite DISH in contempt.

Well he could of course, but he should know very well that the Circuit Court would not allow it to pass.


----------



## nobody99

jacmyoung said:


> The court can not prohibit acts that do not infringe on the patent.


And I'll ask again (I know, everyone's getting sick of it). How does a court issue an injunction that is upheld on appeal, that prohibits the sale of unpatented parts?

You seem to be way too hung up on the idea that injunctions can only be used to prohibit infringement.


----------



## jacmyoung

nobody99 said:


> And I'll ask again (I know, everyone's getting sick of it). How does a court issue an injunction that is upheld on appeal, that prohibits the sale of unpatented parts?
> 
> You seem to be way too hung up on the idea that injunctions can only be used to prohibit infringement.


That is what an injunction is, to prohibit infringement, you don't have to agree with it, but continue to ask the question is not helpful when my answer was given many times.


----------



## kmill14

jacmyoung said:


> That is what an injunction is, to prohibit infringement, you don't have to agree with it, but continue to ask the question is not helpful when my answer was given many times.


jacmyoung, I am still waiting for your answer on why there are two very clear orders in this injunction. "Stop selling, using etc the Infringing Products and those only colorably different" ...and then a completely separate order to disable the ones in the hands of end users.

Why the two orders?


----------



## nobody99

jacmyoung said:


> That is what an injunction is, to prohibit infringement, you don't have to agree with it, but continue to ask the question is not helpful when my answer was given many times.


What infringement? The part is upatented! Any other company can sell a replacement part. You don't find it odd that only one single company is prohibited from selling an upatented part, but everyone else can sell the part?


----------



## kmill14

James Long said:


> Sounds like a Jedi mind trick ... 'these are not the "Infringing Products" covered by the injunction'.
> 
> What DISH has done is not permitted by the injunction. I look forward to reading their explaination of why they thought their actions were appropriate.


Wouldn't it be funny if they actually used this defense?

"Your honor, we didn't turn off the DVR functionality of those 8 products because we made them disappear from existence, with just a software update. Poof!!"


----------



## James Long

jacmyoung said:


> That is what an injunction is, to prohibit infringement,


No, no, no, no, no. An injunction is intended to modify behavior. It is a way for a judge to firmly instruct under penalty a party to perform or not to perform an action.

You don't like to admit it ... and you _should_ as it is the first step toward the solution ... that DISH was instructed by Judge Folsom to perform certain tasks and cease performing others. While it is true that _IF_ DISH followed those instructions to the letter they would no longer infringe ... they were instructed by the court to do _much more_ than cease infringing.

Fair or not fair the instruction of the court was clearly written and not challenged during the appeals.


----------



## kmill14

Hence the two completely separate orders (which I am still waiting for jacmyoung to address.

Well said James.


----------



## Greg Bimson

jacmyoung said:


> The above fits perfectly with the uniform standards, once the DP501s are modified to be non-DVRs, they will no longer infringe on the patent, and therefore the court can not prohibit their use as non-DVRs. The court can not prohibit acts that do not infringe on the patent.


Fifteen yard penalty for delay of game...

I cannot believe I have to explain this one.

The order is to disable DVR functionality. According to your statement, the order should only be to disable "Time Warp" functionality. The DVR should be able to play a recorded program (but not record or play to another TV at the same time). The DVR should be able to record a program (but not record nor play another program).

In other words, it should be able to behave like a single deck VCR, because it wouldn't infringe on the Time Warp patent.

But that is not what is written.

So this now blows your theory about what can and cannot be enjoined or prohibited.


----------



## jacmyoung

kmill14 said:


> Wouldn't it be funny if they actually used this defense?
> 
> "Your honor, we didn't turn off the DVR functionality of those 8 products because we made them disappear from existence, with just a software update. Poof!!"


Complete distortion of what DISH said, and you have done so many times.


----------



## jacmyoung

James Long said:


> No, no, no, no, no. An injunction is intended to modify behavior. It is a way for a judge to firmly instruct under penalty a party to perform or not to perform an action....


That I agree, to modify behavior, from infringement of the patent to no infringement of the patent, and once the infringer does modify his behavior to achieve no infringement of the patent, he is no longer in contempt, regardless what the language of the injunction.


----------



## James Long

jacmyoung said:


> Complete distortion of what DISH said, and you have done so many times.


Perhaps you missed the joke?
Lighten up dude - it was in response to a comment about Jedi mind powers.
If that isn't enough of a clue ... 



jacmyoung said:


> That I agree, to modify behavior, from infringement of the patent to no infringement of the patent, and once the infringer does modify his behavior to achieve no infringement of the patent, he is no longer in contempt, regardless what the language of the injunction.


I hope the judge interprets it that way and I'm sure DISH is hoping the same. But that isn't what it says in the injunction and such arrogant belief that the injunction *must* be modified or ignored by the judge does not reflect the case noted in this thread where the company was required to stop selling non-patented repair parts (items that did not infringe at all) under an infringement injunction.

The behavior modification specifically ordered by the court was (everybody together now) "disable the DVR functionality". Infringement or not, DISH was ordered to take that specific action and has failed.


----------



## Greg Bimson

kmill14 said:


> Wouldn't it be funny if they actually used this defense?
> 
> "Your honor, we didn't turn off the DVR functionality of those 8 products because we made them disappear from existence, with just a software update. Poof!!"





jacmyoung said:


> Complete distortion of what DISH said, and you have done so many times.


Coming from the person that has for the most part completely distorted the injunction...

Actually, kmill14 isn't far off. Remember DISH/SATS lead counsel Harold McElhinny's response about procedure?


> Judge Folsom: What do you think the correct procedure is?
> 
> McElhinny: The cases are quite clear that the correct procedure is that TiVo files a new suit accusing the next product of infringement. That's the way the questions about whether products that have not previously been before the court are resolved.


DISH/SATS expects TiVo to file a lawsuit alleging infringement on "products that have not previously been before the court". So DISH/SATS expects TiVo to file suit against the newer models, as well as the DP-501, 508, 510, 522, 625, 721, 921 and 942 *again* . That cannot legally happen, as those products are under jurisdiction of Judge Folsom and his injunction.


> McElhinny: Good morning, Your Honor. Harold McElhinny, Damon Young, John Pickett and my partner, Joe Patino, who I think is new to the court.
> ..Without repeating any of the argument in our letter, *our position is that this case, for all practical purposes, is concluded and should be concluded relatively quickly.* Obviously, we are not particularly interested in a rolling series of contempt hearings determining on if they lose the first one, then we roll into the second. And we think that the federal circuit has made it clear that a person who in good faith is attempting to design around a patent shouldn't be held to a series of contempt hearings, that that's not the appropriate way.


But what about the adjudicated products?

They are gone, according to DISH/SATS.


----------



## jacmyoung

James Long said:


> Perhaps you missed the joke?
> Lighten up dude - it was in response to a comment about Jedi mind powers.
> If that isn't enough of a clue ...


Guilty as charged. Hope you are happy.



> ...such arrogant belief that the injunction *must* be modified or ignored by the judge does not reflect the case noted in this thread where the company was required to stop selling non-patented repair parts (items that did not infringe at all) under an infringement injunction....


Interesting that you brought up this concept of the judge modifying his own injunction, by my interpretation of the injunction, "the DVR functions" refer to the DVR functions discussed in the trial, though not as explicit as the Foontprint2.0 case, still will hold on its own. And by such interpretation, the judge does not find DISH in contempt because the DVR functions now, are not the same as the DVR functions then, one is based on the software that no longer infringe, one was based on the software that infringed, just like that Footprint 2.0 case.

You only choose to ignore my interpretation, that is all. But that is fine. You don't have to give a damn about my interpretation.

But getting back to the new concept you just raised, can a judge modify his own injunction? Guess what the answer is yes, he actually has the power to modify his existing injunction, especially when, due to changing circumstances, the original injunction would have apparently prohibited acts that do not infringe on the patent, which goes against the uniform standards, even the Tivo fans do not seem to dispute that.

Just that they are all saying, that is just too bad, the judge had his injunction written this way, he will just have to rule a contempt without any other option.

Which is incorrect, the judge does have another option, that is to modify his own injunction when he sees compelling reasons to do so. He does have the power to do so.

I am not saying he will, I don't even think it is necessary with my interpretation of his injunction, but the fact is it is not "too bad no other choice", not true, there is another option actually exists.


----------



## Greg Bimson

jacmyoung said:


> But getting back to the new concept you just raised, can a judge modify his own injunction? Guess what the answer is yes, he actually has the power to modify his existing injunction, especially when, due to changing circumstances, the original injunction would have apparently prohibited acts that do not infringe on the patent, which goes against the uniform standards, even the Tivo fans do not seem to dispute that.
> 
> Just that they are all saying, that is just too bad, the judge had his injunction written this way, he will just have to rule a contempt without any other option.
> 
> Which is incorrect, the judge does have another option, that is to modify his own injunction when he sees compelling reasons to do so. He does have the power to do so.


And what procedure needs to occur in order for the judge to consider a "modification" to his injunction order?


----------



## James Long

jacmyoung said:


> Guilty as charged. Hope you are happy.


Not really ... this is supposed to be fun. Not catching the jokes and getting angry doesn't add to the fun ... neither do false accusations.


> You only choose to ignore my interpretation, that is all. But that is fine. You don't have to give a damn about my interpretation.
> 
> But getting back to the new concept you just raised, can a judge modify his own injunction? Guess what the answer is yes, he actually has the power to modify his existing injunction, especially when, due to changing circumstances, the original injunction would have apparently prohibited acts that do not infringe on the patent, which goes against the uniform standards, even the Tivo fans do not seem to dispute that.
> 
> Just that they are all saying, that is just too bad, the judge had his injunction written this way, he will just have to rule a contempt without any other option.


That is the SIMPLE interpretation ... and the one that needs to be respected before moving on to ask the Judge to dig deeper into the issue. The judgment that Tivo has requested is for contempt based on the simple reading of the injunction. That is where we start.

We have not seen DISH's side of the argument ... only a hint in the pre-conference filings. DISH's reply brief is due next Monday ... along with Tivo's reply brief on the replacement receiver "new placement" issue. Be patient.

Or continue repeating the same old argument over and over until this is the largest thread on the forum (the second largest just passed 11,000 posts - so you have a way to go).

Can you accept that the simple reading of the injunction as written is what nearly everyone else (including an often accused DISH "fanboy" like me) is saying? Can you say "yes" in less than 25 words?


----------



## jacmyoung

James Long said:


> ...Can you accept that the simple reading of the injunction as written is what nearly everyone else (including an often accused DISH "fanboy" like me) is saying? Can you say "yes" in less than 25 words?


Why should I? Because my reading dug deeper? Are you kidding me?

My interpretation is "*The* DVR functions" refers to *the* DVR functions discussed during the trial, not *all* DVR functions, regardless if the software upon which they rely on infringes or not.

You interpretation is "*The* DVR functions" refers to *all* DVR functions, whether discussed in the trial or later popped up in some other non-infringing form, all of them, any DVR functions at all.

And you really believe your interpretation is a "simple reading" and mine is "digging deeper"?

And please you Tivo fanboys don't use that (i.e. disable *all* storage and playback...) as your proof, to mean *all* DVR functions, no that does not prove it.

I will give you an example, I have a birthday party during which three kids left to finish their proscribed salad in their plates. I tell one kid look you need to finish *the* salad offered to you, i.e. *all* of the salad, every bit of it, before you may leave the table and play.

The above i.e. clarification most certainly does not mean the use of *all* means he must eat *all* salads, whether in his plate, or in the other two kids' plates. No the word *all* after the i.e. means all of the items in *the* specific plate described--his plate. He dose not have to eat other's salad, only his salad.

The i.e. statement can clarify the original statement, but not change its meaning, from *the* DVR functions, to *all* DVR functions, the *all* in that i.e. statement, refers to only *all* the specific items that performed in *the* DVR fucntions described during the trial.

Any reasonable person will agree my interpretation of "the DVR functions" is more simplified, and your interpretation of the same term is over-reaching, a little too much digging.


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## jacmyoung

Greg Bimson said:


> And what procedure needs to occur in order for the judge to consider a "modification" to his injunction order?


If his injunction, on its face, will have prohibited acts that are not allowed to be prohibited by law, in an injunction of infringement.

Modification of an injunction happens quite often, rarely to do with any procedural needs, rather due to change of circumstances.

Again, I am not saying this will happen in this case, because it is my belief there is no need to modify the injunction, DISH is not in contempt on the face of the injunction because of my "simple reading" of the injunction. You don't have to agree of course. But below is a case where change of circumstances merited the denial of a contempt request, and modification of an injunction:

http://www.ded.uscourts.gov/SLR/Opinions/Dec2002/01-294.pdf

The reason as cited by the judge for such outcome was because the infringer's act, after the injunction was issued and went into full force, was deemed a legal act. As a result, the language of the original injunction was modified to exclude such legal act.

I hope we all agree that if DISH can prove the new software no longer infringes, the act of downloading it on to the DVRs, any DVRs for use, most certainly is a legal act. Again it has nothing to do with what the injunction says, as long as the act itself is *legal*, and if the injunction appears to prohibit such legal act, then the injunction should be modified.


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## Curtis0620

I believe the intent of the injunction was for ALL of DISH's DVR's to be deactivated. Those listed specifically were all the DVR's that DISH had at the time of the trial (Except the DISHPlayer).

In other words, for DISH to get out of the DVR business all together. The Judge will come down hard on them. I hope TiVo shows mercy on them and still offers a licensing agreement.


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## nobody99

Curtis0620 said:


> I believe the intent of the injunction was for ALL of DISH's DVR's to be deactivated. Those listed specifically were all the DVR's that DISH had at the time of the trial (Except the DISHPlayer).
> 
> In other words, for DISH to get out of the DVR business all together. The Judge will come down hard on them. I hope TiVo shows mercy on them and still offers a licensing agreement.


I don't believe that's it at all (just my opinion).

I believe the first part of the injunction referencing rule 65(d), mentioning the "Infring Products" those only colorably different, and referencing the infringement. This seems to the customary way an injunction is written. DISH has every right to design around the patent for new products. TiVo also has the right to bring a contempt motion if DISH introduces a new DVR that TiVo believes is only colorably different.

The next paragraph that specifically turns off DVR functions for existing receivers is, I think, the most important one for TiVo, and the one that DISH most needs to deal with.

But I certainly don't believe the intent was ever to have DISH get out of the DVR business.


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## Greg Bimson

jacmyoung said:


> The reason as cited by the judge for such outcome was because the infringer's act, after the injunction was issued and went into full force, was deemed a legal act. As a result, the language of the original injunction was modified to exclude such legal act.


From the linked court opinion, first paragraph, last sentence:


> Presently before the court is defendant's motion to modify the injunction and plaintiff's cross-motion for order to show cause why defendant is not in contempt of the injunction.





jacmyoung said:


> Modification of an injunction happens quite often, rarely to do with any procedural needs, rather due to change of circumstances.


There is procedure in the linked case. Where's DISH/SATS motion to modify the injunction?


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## nobody99

jacmyoung said:


> Any reasonable person will agree my interpretation of "the DVR functions" is more simplified, and your interpretation of the same term is over-reaching, a little too much digging.


This is really funny. You're interpretation is simplified, and ours is over-reaching and too much digging? Hilarious!

Please go back and see how many words you just posted trying to contort the meaning of the word "the" into something it's not. And you say this is the "simplified" interpretation. We should get together and do a "who's on first" routine :lol:


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## jacmyoung

Greg Bimson said:


> From the linked court opinion, first paragraph, last sentence:There is procedure in the linked case. Where's DISH/SATS motion to modify the injunction?


First off we haven't seen DISH's motion yet. Secondly I personally do not think DISH has to motion such yet.

The above link serves to only dispel the false notion that once an injunction is in full force, too bad, tough luck, too late, sorry you poor loser...

The judges know their injunctions can not prohibit acts that the law says they can not prohibit. In the event their injunctions appear to do just that, prohibiting acts that do not infringe on the patent, it will be their duty to ensure such does not happen. One way of ensuring it is to modify their own injunctions, like the above case.

That is all the purpose of my above case law was serving, to let you know there is no such thing as it is too late to act within the legal means, it is never too late to behave in a proper and legal fashion, in a civil case.

As long as DISH pays the necessary damages for the past wrong doing, and proves to the court they no longer continue to do wrong, DISH is and should be free to do the things that are legal and proper, unless somehow it can be found later those things are not the case.

Tivo will not be deprived of its rights if DISH is found not in contempt, Tivo will have its day in court to prove the new software is still infringing, if it wants to, just like the MAC case Curtis52 cited when the Circuit Court rebuffed the patentee's argument that if the infringer was not in contempt, they would be wronged by the court.


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## James Long

jacmyoung said:


> James Long said:
> 
> 
> 
> ...Can you accept that the simple reading of the injunction as written is what nearly everyone else (including an often accused DISH "fanboy" like me) is saying? Can you say "yes" in less than 25 words?
> 
> 
> 
> Why should I? Because my reading dug deeper? Are you kidding me?
Click to expand...

So the answer is no. Remainder of post unread.

One of the things I learned a long time ago in debate was to try to understand both sides of an issue ... and be ready to argue either. Fortunately here we get to choose our own sides ... but limiting oneself to accepting only one side of the argument doesn't make anyone a winner.


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## Greg Bimson

jacmyoung said:


> The above link serves to only dispel the false notion that once an injunction is in full force, too bad, tough luck, too late, sorry you poor loser...
> 
> The judges know their injunctions can not prohibit acts that the law says they can not prohibit. In the event their injunctions appear to do just that, prohibiting acts that do not infringe on the patent, it will be their duty to ensure such does not happen. One way of ensuring it is to modify their own injunctions, like the above case.
> 
> That is all the purpose of my above case law was serving, to let you know there is no such thing as it is too late to act within the legal means, it is never too late to behave in a proper and legal fashion, in a civil case.


I'll give you the benefit of the doubt on this...

I have stated over and over and over again that in order to get the "Infringing Products" off the injunction, one party has to do something. That party is DISH/SATS, which has to file a motion with Judge Folsom's court for a modification of the injunction.

If "case law" were so clear that the injunction should not prohibit the "disable DVR functionality" section of the order, why is DISH/SATS pending motion addressing a modification of the injunction for the Advanced Exchange Program? If this was such a slam-dunk case, why hasn't DISH/SATS filed that motion addressing the DVR functionality?

Maybe it is because Judge Folsom's act is quite legal.


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## kmill14

jacmyoung said:


> "the DVR functions" refer to the DVR functions discussed in the trial


Do they? How do you come by that opinion? The Judge just said that the boxes were to have NO DVR functionality. Period. And EVEN IF that is the case, what are these specific DVR functions?



> And by such interpretation, the judge does not find DISH in contempt because the DVR functions now, are not the same as the DVR functions then, one is based on the software that no longer infringe, one was based on the software that infringed, just like that Footprint 2.0 case.


[/QUOTE]

Says who? E*? Lets clarify this again, because you seem confused. E*'s products performed operations combining BOTH software and hardware that infringed on TiVo's patents . Replacing the software does not mean they have changed the operations (which still combine software and hardware).

Also, its irrelevant to a contempt hearing that is not going to discuss technical issues. This contempt hearing is simply to discuss the fact that E* disregarded a clear Court Order.


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## Greg Bimson

This is the reason this topic is on its way to 4000 posts in the next month:


jacmyoung said:


> Any reasonable person will agree my interpretation of "the DVR functions" is more simplified, and your interpretation of the same term is over-reaching, a little too much digging.


This is baiting. I don't think "any reasonable person" would interpret this statement like you have:


> Defendants are hereby FURTHER ORDERED to, within thirty (30) days of the issuance of this order, disable the DVR functionality (i.e., disable all storage to and playback from a hard disk drive of television data) in all but 192,708 units of the Infringing Products that have been placed with an end user or subscriber.


The "i.e." is the clarification of the term, and works just like "Infringing Products", which can simply be interchanged with the eight adjudicated models.

There are no conditions attached to the type of DVR functionality, other than to disable all storage to and playback from a hard disk drive of television data.

This injunction by making the simple, equivalent replacements reads:
Defendants are hereby FURTHER ORDERED to, within thirty (30) days of the issuance of this order, disable all storage to and playback from a hard disk drive of television data in all but 192,708 units of models DP-501, DP-508, DP-510, DP-522, DP-625, DP-721, DP-921 and DP-942, that have been placed with an end user or subscriber.


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## nobody99

Greg Bimson said:


> This is the reason this topic is on its way to 4000 posts in the next month:This is baiting. I don't think "any reasonable person" would interpret this statement like you have:The "i.e." is the clarification of the term, and works just like "Infringing Products", which can simply be interchanged with the eight adjudicated models.
> 
> There are no conditions attached to the type of DVR functionality, other than to disable all storage to and playback from a hard disk drive of television data.


It should also be pointed out that DISH told the appeals court that three million innocent families would lose DVR services if it did not get a stay during appeal.

So DISH knows exactly what the injunction means.


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## James Long

It's getting warm in here. Any objection to a one week cooling off period?
Close the thread (with no new thread) until the next round of actual filings?

It seems that we're getting nowhere at the moment except further entrenched.


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## kmill14

jacmyoung said:


> Why should I? Because my reading dug deeper? Are you kidding me?
> 
> My interpretation is "*The* DVR functions" refers to *the* DVR functions discussed during the trial, not *all* DVR functions, regardless if the software upon which they rely on infringes or not.
> 
> You interpretation is "*The* DVR functions" refers to *all* DVR functions, whether discussed in the trial or later popped up in some other non-infringing form, all of them, any DVR functions at all.


What are these different DVR functions you are talking about? If you think they can be specifically parsed (hmm...thats a funny) then you should be able to tell me what they are.


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## nobody99

James Long said:


> It's getting warm in here. Any objection to a one week cooling off period?
> Close the thread (with no new thread) until the next round of actual filings?
> 
> It seems that we're getting nowhere at the moment except further entrenched.


I'm not sure what I'd do with myself for the next week :lol:


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## Greg Bimson

I'm leaving until more documents are posted. It is those documents that will show DISH/SATS thinking, although we received an inkling of it at the 30 May status hearing.

I think that is why TiVo waited until the hearing to file a motion for contempt. TiVo's brief for the status hearing had three separate points, and after seeing DISH/SATS argument, TiVo simply went straight for the "prima facie" violations of apparent refusal to disable "Infringing Products". TiVo hasn't even addressed "prima facie" violations of continuing sales of "Infringing Products" and those "merely colorably different".

I am gone from this thread, again, until another update is posted from the court. I am hoping it is DISH/SATS brief, but it could be the amended order for docket control, which lays out the rest of the _Paice_ order.


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## kmill14

Greg Bimson said:


> I am gone from this thread, again, until another update is posted from the court.


I'll give you 24 hours. :grin:


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## Herdfan

Curtis0620 said:


> I hope TiVo shows mercy on them and still offers a licensing agreement.


I think they will. At least as far as future licensing goes. The more DISH fights, the more they have to pay as damamges for past infringement.

The reason I think TiVo will be reasonable is so once this suit is behind them, they can go calling on the Cablecos (less Comcast & Cox) for licensing. They have a better shot at getting it with less fight if they are reasonable with DISH.


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## jacmyoung

Greg Bimson said:


> I'll give you the benefit of the doubt on this...


Thank you! I hope none of us are on trial here

I agree we should look carefully what DISH's motion will be after 6/30. If DISH does not initiate such motion to change the language of the injunction, IMHO the outcome should not be that different simply because the universal rules governing the finding of a contempt of an injunction of infringement are quite clear, there must be acts of infringement of the patent for any violation (contempt) to even be possible.

There are many contempt rulings that were overturned before, some of them due to the judge's error in applying the injunction itself, some due to the fact the injunction was considered too broad, others because the judge did not correctly apply the uniform standards. While one cannot easily cite a prior case that is identical to this case, the more you research, the more cases you read, the more it becomes apparent why the Circuit Court said the following:

An injunction can not prohibit acts that are not infringement of the patent by the adjudicated devices, and&#8230;

Infringement of the patent is the essential act, without which, the violation (contempt) of an injunction simply cannot be.

Devices that may not be enjoined by a separate complaint (a new trial), can not possibly be enjoined under the existing injunction in the contempt proceeding.

The infringer should be allowed to modify his products to work around the patent, as long as the workaround is legitimate.

The above opinions are universal, not specific to any one case, but all patent infringement cases.


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## Jason Nipp

James Long said:


> It's getting warm in here. Any objection to a one week cooling off period?
> Close the thread (with no new thread) until the next round of actual filings?
> 
> It seems that we're getting nowhere at the moment except further entrenched.


I agree. There's some people in here that need to take a break and cool down.

Until there is a new filing, or a real update to this issue, this thread will remain closed.

Do not open a similar thread.

Regards,
Jason


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## James Long

Full disclosure ... today's filing. Nothing too exciting, just an agreement on costs ... this thread remains *closed* until something real happens. (Once approved the signed version will be attached to this post.)

1. On September 22, 2006, TiVo submitted its Amended Bill of Costs in the amount of $333,600.03 (Docket No. 810).

2. EchoStar objected to $116,628.23 of the costs submitted by TiVo (Docket Nos. 811 and 814).

3. The parties have agreed to the following resolution: (a) EchoStar will pay TiVo the amount of $275,286.00, payment to be received by TiVo within thirty (30) calendar days of entry of the proposed order submitted herewith, and (b) if, as a result of a petition for certiorari, the U.S. Supreme Court makes a determination pursuant to which EchoStar is no longer liable for infringement, then TiVo will refund this same amount to EchoStar within thirty (30) calendar days upon request, and if as a result of a petition for certiorari the U.S. Supreme Court makes a determination pursuant to which the issue of EchoStar's liability for infringement is remanded to the District Court for further proceedings, TiVo will refund this same amount to EchoStar within thirty (30) calendar days upon request, but without prejudice to TiVo's right to request its full costs if TiVo prevails in any remand proceedings.


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## James Long

June 30th filings ...
DISH's response was sealed ... Tivo's is available in a new thread.
http://www.dbstalk.com/showthread.php?p=1663838#post1663838


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