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.

[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.

[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.

[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.

[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.

[Greg Bimson]

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.

[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)))."

[jacmyoung]

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.

[jacmyoung]

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.

[Greg Bimson]

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: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.

[jacmyoung]

...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.

[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.

[Greg Bimson]

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.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.

[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.

[jacmyoung]

...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 [i]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...

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...

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...

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.

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]

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]

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]

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.

[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.

[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.

[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).

[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?

[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

[peak_reception]

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.

[Curtis52]

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.

[peak_reception]

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:

[peak_reception]

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].

[Curtis52]

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."

[Greg Bimson]

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.

[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.

[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.

[Curtis52]

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.

[peak_reception]

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*

[James Long]

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

[spear61]

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"

[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]

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]

...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?

[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

[jacmyoung]

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 , 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 [I]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.

[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.

[spear61]

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

[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.

[Greg Bimson]

[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).

[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.

[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.

[jacmyoung]

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.

[jacmyoung]

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.

[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.

[Greg Bimson]

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.

[Greg Bimson]

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.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.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.

[Greg Bimson]

The biggest misunderstanding of all: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.

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

[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.

[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.

[jacmyoung]

...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.

[peak_reception]

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. :D 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.

[Greg Bimson]

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.

[jacmyoung]

...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.

[Greg Bimson]

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.

[jacmyoung]

...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.

[James Long]

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.

[Greg Bimson]

***THE GLOVES ARE NOW OFF***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.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?

[James Long]

***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?

[Greg Bimson]

Look two posts up.

[Curtis52]

Don't make me stop the car.

[jacmyoung]

***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.

[James Long]

... yet the Court of Appeals simply agreed with Judge Folsom by lifting the injunction ...Oh, the Court of Appeals lifted the injunction? Who knew? :rolleyes:

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. :(

[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.

[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?

[Herdfan]

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.

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.

[jacmyoung]

...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.

[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.

[Greg Bimson]

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.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]

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.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]

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]

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. :rolleyes:

[jacmyoung]

...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.

[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.

[jacmyoung]

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?

[dgordo]

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.

[Greg Bimson]

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.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 (http://www.dbstalk.com/showpost.php?p=1566872&postcount=642) 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.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.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]

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.

[dgordo]

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?

[jacmyoung]

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.

[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]

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]

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?

[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.

[jacmyoung]

...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]

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]

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]

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]

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.

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]

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]

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.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.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.

[HobbyTalk]

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

[Greg Bimson]

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]

[QUOTE=Curtis52;1604514]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]

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. :)

[HobbyTalk]

It doesn't.

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

[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.

[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".

[HobbyTalk]

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]

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]

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.

[jacmyoung]

...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]

...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?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.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.

[Greg Bimson]

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...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.

[Curtis52]

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.

[Greg Bimson]

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.

[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.

[Greg Bimson]

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.

[jacmyoung]

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.

[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.

[spear61]

[QUOTE=jacmyoung;1608650] 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.

[Greg Bimson]

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.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.

[jacmyoung]

...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.

[jacmyoung]

...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.

[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.

[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.

[nobody99]

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?

[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.

[Curtis0620]

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.

[jacmyoung]

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.

[nobody99]

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!

[Greg Bimson]

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.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.

[Greg Bimson]

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.

[Curtis52]

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."

[jacmyoung]

...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?

[Curtis0620]

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.

[jacmyoung]

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.

[Curtis0620]

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.

[jacmyoung]

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.

[Curtis0620]

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.

[Greg Bimson]

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?

[HobbyTalk]

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:

[jacmyoung]

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.

[Curtis0620]

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.

[nobody99]

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.


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!



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?




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.

[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?

[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 ...

[jacmyoung]

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?

[Curtis0620]

(reply removed, not worth it).

[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.

[phrelin]

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

[Curtis52]

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.

[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).

[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.

[Herdfan]

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.

[Herdfan]

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.

[spear61]

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.

[Herdfan]

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.

[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.

[dgordo]

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.

[spear61]

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.

[Curtis52]

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. "

[Greg Bimson]

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.

[spear61]

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?

[scooper]

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....

[jacmyoung]

... 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.

[spear61]

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

[Curtis52]

the appeals court did ask the parties to address the hardware issue No they didn't.

[dgordo]

It was the same appeals court which overturned the hardware verdict

No they didn't.

[Curtis52]

1) It was the same appeals court which overturned the hardware verdict, which changed the circumstances in which the injunction was based onNope. Judge Folsom knew that some claims might be overturned but not all the claims. He said so. He was right.

[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. :)

[jacmyoung]

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:)

[jacmyoung]

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.

[Kheldar]

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? :confused: :grin:
That one might get overturned on appeal based on the impossibility of the request.

[Greg Bimson]

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.

[jacmyoung]

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.

[Greg Bimson]

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?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?

[Greg Bimson]

Let me try again, it is not appeals court's job to help the judge modify his injunctionI respectfully differ. Want one example?

Dish Network's distant network case.

[dgordo]

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.

[James Long]

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.

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.

[jacmyoung]

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.

[jacmyoung]

... 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.

[dgordo]

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.

[Curtis52]

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.

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.

[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.

[Greg Bimson]

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

[jacmyoung]

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]

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

No they didn't.

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]

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]

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.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. 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]

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]

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]

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

[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]

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]

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]

... 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]

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]

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.

[Greg Bimson]

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.

[Curtis52]

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.

[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]

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: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]

the appeals court told Tivo they might request parties be briefed on the equivalents issueThey 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.

[jacmyoung]

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]

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]

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]

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:

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]

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.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]

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]

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]

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.because the purpose of a contempt hearing is usually to determine the colorable difference of a new device claimThe 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]

We just have to agree to disagree.That just isn't possible. At least not how the Court of Appeals works.

[Curtis52]

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]

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]

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]

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]

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]

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]

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]

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]

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]

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]

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]

...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]

...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]

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.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]

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.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]

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]

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]

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]

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]

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]

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]

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]

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]

...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]

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]

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]

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]

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]

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.