Tivo vs. Dish: Petition for rehearing en banc granted [Archive]

davemayo

05-14-10, 09:38 AM

Here's some of the order:

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

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

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

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

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

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

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

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

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

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

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

davemayo

05-14-10, 09:43 AM

Here's the order.

davemayo

05-14-10, 09:46 AM

TiVo Statement:

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

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

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

Kheldar

05-14-10, 09:54 AM

The ruling (http://www.cafc.uscourts.gov/opinions/09-1374o.pdf) has some interesting points in it, page 2:
(4) The parties are requested to file new briefs addressing the following issues:
a) Following a finding of infringement by an accused device at trial, under what circumstances is it proper for a district court to determine infringement by a newly accused device through contempt proceedings rather than through new infringement proceedings? What burden of proof is required to establish that a contempt proceeding is proper?
b) How does “fair ground of doubt as to the wrongfulness of the defendant’s conduct” compare with the “more than colorable differences” or “substantial open issues of infringement” tests in evaluating the newly accused device against the adjudged infringing device? See Cal. Artificial Stone Paving Co. v. Molitor, 113 U.S. 609, 618 (1885); KSM Fastening Sys., Inc. v. H.A. Jones Co., 776 F.2d 1522, 1532 (Fed. Cir. 1985).
c) Where a contempt proceeding is proper, (1) what burden of proof is on the patentee to show that the newly accused device infringes (see KSM, 776 F.2d at 1524) and (2) what weight should be given to the infringer’s efforts to design around the patent and its reasonable and good faith belief of noninfringement by the new device, for a finding of contempt?
d) Is it proper for a district court to hold an enjoined party in contempt where there is a substantial question as to whether the injunction is ambiguous in scope?

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

Part (b) suggests that, if they agree in part (a) that the newer models should be included in the contempt proceeding, what kind of test should be applied to determine whether or not the "newly accused device" infringes -- the much-discussed "more than colorable differences", or the “substantial open issues of infringement” test, which is described in a book on patent law (http://books.google.com/books?id=tVBj2LxOOxkC&pg=RA6-PA90&lpg=RA6-PA90#v=onepage&q&f=false) this way:
http://www.dbstalk.com/attachment.php?attachmentid=22046&stc=1&d=1273852089

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

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

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

spear61

05-14-10, 09:56 AM

Here's the next chapter:

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

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

phrelin

05-14-10, 09:57 AM

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

Kent Taylor

05-14-10, 10:17 AM

Earning interest on that money every day.

phrelin

05-14-10, 10:25 AM

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

(4) The parties are requested to file new briefs addressing the following
issues:
...d) Is it proper for a district court to hold an enjoined party in contempt where there is a substantial question as to whether the injunction is ambiguous in scope?

AND

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

Am I reading that the Court thinks it's possible that "there is a substantial question as to whether the injunction is ambiguous in scope?"

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

ATARI

05-14-10, 11:27 AM

and the lawyers on both sides continue to make money

Voyager6

05-14-10, 11:30 AM

dgordo

05-14-10, 11:40 AM

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

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

davemayo

05-14-10, 11:50 AM

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

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

jacmyoung

05-14-10, 12:09 PM

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

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

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

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

dgordo

05-14-10, 12:19 PM

What is the village?

Paul Secic

05-14-10, 12:27 PM

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

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

jacmyoung

05-14-10, 01:08 PM

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

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

phrelin

05-14-10, 01:31 PM

Earning interest on that money every day.and the lawyers on both sides continue to make money"It's only money." - Charlie Ergen

Charlie really needs to settle this and move on! Or Buy Tivo. I'm starting to think he's listening to his legal team too much.Well, when justice moves at this speed, delay really is on Charlie's side. As you may remember I keep a record of posts on threads on this subject (only the ones I think are worth looking back at as many with only a few posts offer no information). It looks like this:

http://www.phrelin.com/Dish/TiVo_v_E_posts.jpg

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

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

jacmyoung

05-14-10, 01:32 PM

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

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

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

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

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

James Long

05-14-10, 01:41 PM

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

phrelin

05-14-10, 02:35 PM

ENGLEWOOD, CO, May 14, 2010 (MARKETWIRE via COMTEX News Network) -- DISH Network L.L.C., a subsidiary of DISH Network Corporation (NASDAQ: DISH), and EchoStar Technologies L.L.C., a subsidiary of EchoStar Corporation (NASDAQ: SATS), issued the following statement regarding recent developments in TiVo vs. EchoStar Communications Corporation:

"DISH Network and EchoStar are pleased that the full Federal Circuit Court of Appeals has granted their petition for rehearing en banc.

We believe the issues that will be considered by the full court on rehearing will have a profound impact on innovation in the United States for years to come."If it does have a "profound impact on innovation", of course the loser will appeal to the Supreme Court which might actually take it up, particularly if it does have a "profound impact on innovation.":sure:

phrelin

05-14-10, 02:46 PM

By the way, just to get it clear here, in the quarterly call according to Reuters (http://www.reuters.com/article/idUSTRE6492MW20100510): On a call with analysts, Ergen shrugged off, but did not dismiss, the takeover chatter. Instead, he praised TiVo's legal strategy, and said it is in the best interest of both companies to reach some kind of amicable agreement.

"We are joined at the hip in the sense that if we don't get a deal done, those fees will go away for them, and obviously we'll lose customers," he said. "A strong Dish Network is probably beneficial to TiVo if we're utilizing their technology."

As for buying TiVo, Ergen said: "I haven't really thought about it too much, but I guess those are always options. It's not something that I've thought a lot about."And, of course, today after the markets closed we have a wry comment in a Forbes article TiVo Plummets On Patent Case Review (http://www.forbes.com/2010/05/14/tivo-dish-network-markets-equities-ergen.html?boxes=marketschannelnews): TiVo investors learned the hard way that patent infringement cases are never over until the big court sings.

James Long

05-14-10, 03:34 PM

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

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

It certainly was a better day for DISH than Tivo.

dgordo

05-14-10, 04:21 PM

I thought stock talk wasn't allowed here? :)

James Long

05-14-10, 04:30 PM

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

jacmyoung

05-14-10, 05:57 PM

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

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

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

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

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

Slamminc11

05-14-10, 06:13 PM

and the lawyers on both sides continue to make money

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

phrelin

05-14-10, 06:23 PM

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

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

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

The above issues had been argued so many times here they became circular and almost considered spam. Not that I want to resurrect them, I am sick of talking about them too, but it is interesting to know that our en banc panel is now asking the very same questions for the first time, from the court perspective, precisely two years after we started debating such issues.Actually, as I noted Dish's comment above: We believe the issues that will be considered by the full court on rehearing will have a profound impact on innovation in the United States for years to come.I thought to myself, this actually could get interesting. Maybe not, maybe we'll end up with a vary narrow, same old stuff, ruling. But they really have opened up the can of worms at the outset.

jacmyoung

05-14-10, 06:31 PM

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

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

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

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

am7crew

05-14-10, 06:36 PM

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

jacmyoung

05-14-10, 06:39 PM

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

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

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

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

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

scooper

05-14-10, 07:44 PM

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

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

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

James Long

05-14-10, 08:00 PM

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

I think that one salient fact is one that alot of the Tivo posters fail to grasp when they come here, and try to bring up the stockholders putting pressure on Charles Ergen. Of course, most of us know it is an empty point.True that. People forget who the major stockholder is. It isn't some company who hired a CEO from some other company. The lead owners of DISH/SATS started the company and remain in daily control. We're talking a Bill Gates type of person, although in DISH's case, the creator is still running the show.

dgordo

05-14-10, 08:31 PM

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

James Long

05-14-10, 08:35 PM

jacmyoung

05-14-10, 08:35 PM

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

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

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

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

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

jacmyoung

05-14-10, 08:37 PM

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

What were the answers?

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

scooper

05-14-10, 08:49 PM

jacmyoung

05-14-10, 09:08 PM

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

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

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

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

FarmerBob

05-14-10, 09:48 PM

http://www.reuters.com/article/idUSTRE64D3Z820100514?feedType=RSS&feedName=technologyNews&utm_source=feedburner&utm_medium=feed&utm_campaign=Feed:%20reuters/technologyNews%20%28News%20/%20US%20/%20Technology%29

jacmyoung

05-14-10, 10:09 PM

phrelin

05-14-10, 11:30 PM

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

I just read this TiVo's statement, am I correct that TiVo should have said "the district court's ruling" instead of "the Federal Circuit's ruling" because "the Federal Circuit's ruling" has been vacated, i.e. no longer exists?I think they mean the vacated ruling - this was a PR piece for shareholder protection saying "hey we already won here before", not a note to the attorneys.

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

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

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

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

jacmyoung

05-15-10, 07:40 AM

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

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

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

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

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

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

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

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

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

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

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

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

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

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

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

James Long

05-15-10, 07:47 AM

Now there will be about 4 months of filing briefs, probably a minimum of 6 months to a decision. That decision can be appealed to the Supreme Court.The way this case is going, I'd consider that as additive. ie: Minimum 10 months before a decision.

And I'm still puzzling over the language "Is it proper for a district court to hold an enjoined party in contempt where there is a substantial question as to whether the injunction is ambiguous in scope?" What ambiguity in scope in the injunction language exists as a substantial question?That is a good question. The problem I see with the injunction was apparently not raised in prior appeals. It is too broad. Instead of saying "remove that infringing process" it says "remove the entire function". Barring the ability to have the function even if a non-infringing process is used. This ambiguity was raised in later rounds but not when DISH appealed the initial decision.

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

Are they accepting as a given Judge Rader's pointing to the contradiction in TiVo's statements about what constitutes disabling? Are they preparing to accept a reasonable argument that contempt is not appropriate under these circumstances?This is a messy case. It is a shame that we all have jobs or obligations that keep us from solving it for the courts. We would have had an answer years ago ... two answers actually - one where Tivo wins and one where DISH wins. :)

jacmyoung

05-15-10, 08:16 AM

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

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

phrelin

05-15-10, 10:20 AM

We would have had an answer years ago ... two answers actually - one where Tivo wins and one where DISH wins. :)My answer is where both "win" - order Dish to pay a license fee for continued use of the listed DVRs based on the average license fee paid by others plus a 50% penalty.

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

Greg Bimson

05-15-10, 11:23 AM

It just so happens that the court also says, if the other guy happens to be the one subject to the injunction, the court must rule in the way most favorable to him.That is not exactly the standard. The problem is that the interpretation of the injunction by DISH/SATS holds no plausibility, and I'm not going into that again.

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

jacmyoung

05-15-10, 11:39 AM

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

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

We will have to continue to agree to disagree.

jacmyoung

05-15-10, 11:52 AM

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

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

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

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

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

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

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

Paul Secic

05-15-10, 12:21 PM

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

Oh OK.

Jhon69

05-15-10, 01:20 PM

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

jacmyoung

05-15-10, 04:58 PM

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

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

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

FogCutter

05-15-10, 05:28 PM

phrelin

05-15-10, 05:46 PM

OK, let's say Charlie loses and is pinned to the wall without further appeal -- at the risk of sounding self-centered -- what happens to my 3 DVRs? Do they come and get them? Do they quit working? Does someone charge me more?It's all speculation, of course, but I think the February 1, 2010 rate structure is a start to covering any costs Dish might have to pay for the listed devices.

Just my opinion.

scooper

05-15-10, 07:07 PM

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

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

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

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

peak_reception

05-15-10, 08:15 PM

No matter how unambiguous one believes the injunction is saying, as long as the other guy has interpreted it differently, the question becomes, how much weight should the court give to the other guy's interpretation? It just so happens that the court also says, if the other guy happens to be the one subject to the injunction, the court must rule in the way most favorable to him. How about this: If "either guy" has a question about a court injunction, it is his responsibility to ask the judge for a clarification. Otherwise he takes responsibility for any misinterpretation he may make, and bears consequences for any such misinterpretation going forward.

kcolg30

05-15-10, 08:31 PM

Can someone please ID which DVR models are in question.

jacmyoung

05-15-10, 09:31 PM

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

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

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

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

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

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

FogCutter

05-15-10, 11:11 PM

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

Ext 721

05-16-10, 12:38 AM

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

TIVO is far too small to aquire DISH or Echostar.

lparsons21

05-16-10, 09:25 AM

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

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

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

phrelin

05-16-10, 10:21 AM

Can someone please ID which DVR models are in question.Sure, as I can't imagine trying to go through 14,000+ posts to find it. From the June 2, 2009 Amended Final Judgment and Permanent Injunction:

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

James Long

05-16-10, 10:22 AM

Can someone please ID which DVR models are in question.The named receivers are the DP 501, 508, 510, 522, 625, 721, 921 and 942.

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

jacmyoung

05-16-10, 10:50 AM

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

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

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

James Long

05-16-10, 11:01 AM

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

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

lparsons21

05-16-10, 11:59 AM

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

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

Greg Bimson

05-16-10, 12:59 PM

dgordo asked a great question, why did the en banc panel ask the 4 questions that they themsleves had already answered before, more than once already?It appears that if more than one standard can be applied, the CAFC wants to make sure there isn't anything missing. And it is quite possible that the CAFC wants to create a standard for this. One can see that by looking at the questions themselves:a) Following a finding of infringement by an accused device at trial, under what circumstances is it proper for a district court to determine infringement by a newly accused device through contempt proceedings rather than through new infringement proceedings? What burden of proof is required to establish that a contempt proceeding is proper?This is the "KSM" question. But it appears that this is worded to either separate the models found infringing that only received the new software, or all of the model numbers originally found infringing. And I am guessing it all depends on TiVO's brief, as we already know DISH/SATS stance.b) How does “fair ground of doubt as to the wrongfulness of the defendant’s conduct” compare with the “more than colorable differences” or “substantial open issues of infringement” tests in evaluating the newly accused device against the adjudged infringing device? See Cal. Artificial Stone Paving Co. v. Molitor, 113 U.S. 609, 618 (1885); KSM Fastening Sys., Inc. v. H.A. Jones Co., 776 F.2d 1522, 1532 (Fed. Cir. 1985).This question is new. I'll need to look this one up.c) Where a contempt proceeding is proper, (1) what burden of proof is on the patentee to show that the newly accused device infringes (see KSM, 776 F.2d at 1524) and (2) what weight should be given to the infringer’s efforts to design around the patent and its reasonable and good faith belief of noninfringement by the new device, for a finding of contempt?This of course is jacmyoung's point that TiVo only used DISH/SATS' defense that they no longer infringe and TiVo only addressed those arguments when finding infringement, yet the rest of the claims weren't necessarily addressed.d) Is it proper for a district court to hold an enjoined party in contempt where there is a substantial question as to whether the injunction is ambiguous in scope?To me, this appears to be asking TiVo why the disable order should have been followed. TiVo needs to answer that the injunction is not ambiguous, irrespective of DISH/SATS strained interpretation, and that it should have been followed. This appears to be giving TiVo to address Judge Rader's mistake.

jacmyoung

05-16-10, 01:31 PM

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

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

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

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

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

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

jacmyoung

05-16-10, 03:09 PM

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

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

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

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

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

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

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

FogCutter

05-16-10, 06:55 PM

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

I can't imagine watching TV without one.

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

JWKessler

05-16-10, 08:00 PM

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

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

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

BobaBird

05-16-10, 09:37 PM

Maybe this is one of those small number of the en banc review cases which the reason for review is not that it is an important case, rather that the en banc panel simply thought the prior court rulings were likely wrong.Are arguments limited to the 4 topics the panel asked the parties to file briefs on? If as you imply they can revisit the whole decision, are they bound by what was set as "the law of the case" that led to that decision? I'm thinking specifically of the court's applying the single term "parse" to 2 distinct processes (1. read the multi-channel satellite stream to identify and direct the desired video signal, 2. analyze and possibly index said video signal for use by DVR functions).

jacmyoung

05-16-10, 10:16 PM

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

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

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

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

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

david_jr

05-17-10, 05:25 AM

Nick

05-17-10, 06:26 AM

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

http://www.mediabiz.com/media/content/TIVO-DISH-051410.JPG
Graphic: Morningstar.com

James Long

05-17-10, 08:09 AM

CBS headlines this morning reported that Tivo stock was down a "stunning 41 %" after losing a key ruling in its ongoing battle with Dish Network over its DVR technology. They really didn't give any other details of the case or the ruling.To be fair it was an artificial high after a similar high volume jump back in March when it appeared Tivo would win this thing this year. Look at a full year and you'll see the massive jump up and now back again.

jacmyoung

05-17-10, 08:47 AM

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

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

James Long

05-17-10, 08:56 AM

Of course no surprise the analysts are back pumping TiVo again.They are not. Perhaps later today when they are sure that the stock is leveling off but no new analysis.

Kheldar

05-17-10, 09:26 AM

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

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

phrelin

05-17-10, 09:27 AM

Well, while I know we aren't supposed to discuss this in detail. But this morning from the Motley Fool Time to Get Back On the TiVo Roller Coaster? (http://www.fool.com/investing/general/2010/05/17/time-to-get-back-on-the-tivo-roller-coaster.aspx): Investing in TiVo (Nasdaq: TIVO) is not for the faint of heart. Another reversal in the long-running patent infringement case TiVo has going against DISH Network (Nasdaq: DISH) and EchoStar (Nasdaq: SATS) cut TiVo's stock at the ankles on Friday.

...Dish CEO Charles Ergen recently noted that this kind of case review isn't granted often, so it's a bit of a shocker. Then again, it's a very material case for both sides of the battle -- maybe the Appeals Court simply felt that it was only fair to give it the full treatment rather than a cursory, three-judge review. I'm not a lawyer, but that would make sense.I'd hardly call the article a "buy, buy" article, but it seems to say it might be a good time to buy in.

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

Maybe I could put together some Tivo derivatives.;)

Greg Bimson

05-17-10, 10:40 AM

So the only possible conclusion one can make is, the en banc panel's 4 questions are based on the premise that the modified DVRs likely no longer infringed, and E* did not waive any rights in this appeal just because supposedly E* did not appeal the last time. Only then one can explain why the en banc panel asked the 4 questions, but not the other "more important and historical questions".That's a stretch. Each jurist may have completely different reasons to vote for an en banc rehearing. The four questions certainly make it appear that there is a lot more than one train of thought to have the rehearing.

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

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

jacmyoung

05-17-10, 12:05 PM

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

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

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

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

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

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

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

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

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

Greg Bimson

05-17-10, 12:39 PM

Yet neither of the main points raised by TiVo and Judge Folsom was addressed. I hate to repeat them but the most important argument made by TiVo was, E* had waived its right to appeal the injunction when it did not do so last time. This is a very important question of application of law, if the answer to this question is not clarified, E* cannot be held in violation, period, because the en banc panel does not seek to clarify the status of the current DVRs either.1) It wasn't "the most important argument".
2) It appears the en banc doesn't need clarification of this point.

The actual issue isn't with the waiver of appeal, but only DISH/SATS interpretation of the injunction, i.e., that the injunction is valid and it cannot enjoin non-infringing activity. I'd beg to differ with the fact that the law allows for equitable relief, and that was in the form of disabling the DVR's.The main point Judge Folsom’s made was that even if the DVRs no longer infringed, he may still hold E* in contempt for not following his order, because as he argued, when it comes to the determination of violation, his Fifth Circuit local rule applies, not the federal (CAFC) rule. Again this is a very important question of application of law. If this question is not clarified, once again E* cannot be held in contempt because the federal (CAFC) rule does not allow it if the products’ status is not certain.You need to re-read en banc Question 4:d) Is it proper for a district court to hold an enjoined party in contempt where there is a substantial question as to whether the injunction is ambiguous in scope?The only "ambiguity" relates to the disable order. And those products' status is far from "not certain": they are subject to the disable order and they were modified. There isn't a rule that takes precedence, so both rules apply. Or at least that is the tact I'd take when arguing.

jacmyoung

05-17-10, 02:56 PM

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

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

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

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

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

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

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

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

jacmyoung

05-17-10, 06:09 PM

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

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

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

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

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

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

jacmyoung

05-17-10, 11:50 PM

This one is interesting:

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

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

Forbes did make a mistake by saying:

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

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

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

Voyager6

05-18-10, 07:57 AM

jacmyoung

05-18-10, 08:21 AM

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

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

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

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

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

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

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

James Long

05-18-10, 08:24 AM

What could the Appeals Court possibly order that would change Folsom's mind?Simple - state that: "Infringment must be found in order to order the disablement of a modified product." If Judge Folsom disagrees the appeals court will overturn his rulings.

jacmyoung

05-18-10, 08:36 AM

Voyager6

05-18-10, 09:19 AM

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

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

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

Greg Bimson

05-18-10, 09:48 AM

One question that needs to be raised is, Can E* get a fair hearing with Judge Folsom? Folsom has already decided that the DVR's must be disabled even if they no longer infringe.Isn't that the basis for CAFC Question d?d) Is it proper for a district court to hold an enjoined party in contempt where there is a substantial question as to whether the injunction is ambiguous in scope?If the CAFC can be convinced that the order to disable was not ambiguous in scope (contrary to Judge Rader's belief) then contempt can simply stand. The reality is that TiVo needs to argue in their brief as if they are talking directly to Judge Rader, to get him to change his mind. The way Judge Rader's dissention was written I'd think TiVo could write 45 pages simply to counter many of the mistakes within that document.

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

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

jacmyoung

05-18-10, 10:08 AM

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

No, they will just vacate it.

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

James Long

05-18-10, 10:40 AM

No, they will just vacate it.They will be more specific than that. Judge Folsom will be remanded to take whatever action the appeals court feels is needed.

I know Greg continues to believe the en banc panel is giving TiVo an opportunity to argue that the injunction is not ambiguous, but one only needs to read the 4th Q to know the en banc panel had already viewed the injunction ambiguous, the Q is what the court should do about an ambiguous injunction.There is no order adjudicating the injunction as ambiguous.

Greg Bimson

05-18-10, 10:50 AM

I know Greg continues to believe the en banc panel is giving TiVo an opportunity to argue that the injunction is not ambiguous, but one only needs to read the 4th Q to know the en banc panel had already viewed the injunction ambiguous, the Q is what the court should do about an ambiguous injunction.Getting ahead of yourself...d) Is it proper for a district court to hold an enjoined party in contempt where there is a substantial question as to whether the injunction is ambiguous in scope?As a reminder:

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

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

phrelin

05-18-10, 12:40 PM

Hmmm. I read it like this:

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

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

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

Lake Lover

05-18-10, 01:10 PM

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

Greg Bimson

05-18-10, 01:10 PM

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

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

jacmyoung

05-18-10, 01:22 PM

jacmyoung

05-18-10, 01:36 PM

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

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

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

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

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

James Long

05-18-10, 02:56 PM

They will be more specific than that. Judge Folsom will be remanded to take whatever action the appeals court feels is needed.Of course if they remand the case, there will be specific instructions, but as far as the amended injunction is concerned, they can only affirm it or vacate it, they will not try to redefine it.I suppose we'll know for sure next year some time. Appeals court remands CAN be specific. It is possible that a particular wording will be recommended in the remand.

jacmyoung

05-18-10, 07:54 PM

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

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

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

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

jacmyoung

05-20-10, 01:31 PM

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

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

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

jacmyoung

05-24-10, 11:16 PM

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

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

And

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

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

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

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

Lake Lover

05-25-10, 02:26 PM

phrelin

05-25-10, 03:30 PM

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

http://www.stockwatch.com/newsit/newsit_newsit.aspx?bid=U-i0623830-U:TIVO-20100525&symbol=TIVO&news_region=UIt is true that the SEC filing shows $215,404,000 current assets less current liabilities and little debt, which means they have cash to waste. Dish only had $305,111,000 current assets less current liabilities and a lot of debt, so they don't have cash to waste.

But according to the news release: For the first quarter, service and technology revenues were $43.2 million, compared with $48.5 million for the same period last year and $45.3 million in the prior quarter. Additionally, first quarter net revenue was $61.4M; up compared to $55.1M in the year-ago quarter and the highest Q1 net revenue in three years. Adjusted EBITDA was ($6.7) million, compared to guidance of ($9) million to ($11) million, and $5.3 million in the same period a year ago. Increased legal spend as well as research & development expenses relating to new products and distribution were a significant driver in the year-over-year Adjusted EBITDA decline. TiVo reported a net loss of ($14.2) million, compared to guidance of a net loss of ($19) million to ($21) million, and a ($3.9) million net loss in the year-ago quarter. Net loss per share this quarter was ($0.13). And from the Wall Street Journal (http://online.wsj.com/article/BT-CO-20100525-713166.html?mod=WSJ_latestheadlines): On Monday, Lazard Capital Markets said TiVo's earnings news isn't really meaningful now, and instead said the stock will swing on major possible deals with other operators that will likely hinge on litigation success against Dish. The next major ruling is not likely for up to a year, and in the firm's opinion, may go against TiVo.

...Subscriber acquisition costs grew 26%. The monthly churn, or cancellation rate, was 2% for TiVo-owned subscribers, up from 1.4% a year ago. Total subscriptions fell 21%. So the company has yet to make any money from operations. Do they have anything going for them other than "major possible deals" and the Dish lawsuit (why don't they mention the other lawsuits???). If Dish or Direct had that churn rate increase and subscription losses, the results would be considered disastrous, so I have no idea how to measure what's going on at TiVo.:confused:

jacmyoung

05-25-10, 03:39 PM

jacmyoung

05-25-10, 03:48 PM

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

But according to the news release: And from the Wall Street Journal (http://online.wsj.com/article/BT-CO-20100525-713166.html?mod=WSJ_latestheadlines): So the company has yet to make any money from operations. Do they have anything going for them other than "major possible deals" and the Dish lawsuit (why don't they mention the other lawsuits???). If Dish or Direct had that churn rate increase and subscription losses, the results would be considered disastrous, so I have no idea how to measure what's going on at TiVo.:confused:

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

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

Lake Lover

05-25-10, 07:44 PM

jacmyoung

05-25-10, 08:05 PM

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

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

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

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

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

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

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

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

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

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

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

jacmyoung

05-26-10, 12:16 AM

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

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

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

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

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

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

phrelin

05-26-10, 03:24 PM

Over in another thread discussing Dish June rate changes, I posted this: Not at all. You're paying $2 more for SD, not HD.Yes, so it doesn't make any sense not to have HD as the revenue loss for the HD fee is now being recovered from SD customers. Your first receiver or DVR is included whether it's HD or SD. And since February 1, whether HD or SD the monthly fee is the same for additional receivers or DVRs.

Anyone want to speculate why those changes are occurring now?It sure looks to me like Charlie is doing everything to get people out of the listed boxes.;)

jacmyoung

05-26-10, 04:40 PM

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

Connecting the dots is what you and I do the best:)

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

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

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

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

James Long

05-26-10, 08:01 PM

Over in another thread discussing Dish June rate changes, I posted this: It sure looks to me like Charlie is doing everything to get people out of the listed boxes.;)Hopefully this thread can get back to the case at hand and wild speculation about the case ... I mean, news about the case. (Well at least discussion.)

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

You can disagree with me in the appropriate thread (http://www.dbstalk.com/showthread.php?p=2475271#post2475271) ...

Now back to Tivo vs DISH.

jacmyoung

05-26-10, 08:54 PM

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

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

jacmyoung

05-27-10, 08:58 PM

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

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

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

Kheldar

05-27-10, 09:57 PM

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

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

jacmyoung

05-28-10, 01:42 AM

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

It is a known fact here that I am nobody.

phrelin

05-28-10, 10:39 AM

It is a known fact here that I am nobody.Frequently I've thought you were not only somebody but maybe a committee....;)

jacmyoung

05-28-10, 10:54 AM

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

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

Below is my post in the GoogleTV/Dish thread:

http://www.engadget.com/2010/05/28/the-next-apple-tv-revealed-cloud-storage-and-iphone-os-on-tap/

Not surpisingly, but I still see one big piece of the puzzle missing from this future AppleTV, that is a full service cable provider (such as DISH, but not Netflix) as an anchor. Maybe they will enlist DirecTV? I would not be surprised to see a similar rumor about Microsoft, they already have ATT/Uverse in their fold.

Let the game begin.

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

jacmyoung

06-01-10, 11:58 AM

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

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

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

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

jacmyoung

06-03-10, 03:48 PM

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

david_jr

06-03-10, 08:47 PM

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

scooper

06-03-10, 09:22 PM

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

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

HiDefGator

06-03-10, 09:49 PM

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

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

jacmyoung

06-03-10, 09:55 PM

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

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

david_jr

06-04-10, 05:37 AM

jacmyoung

06-04-10, 08:54 AM

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

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

Some important decisions by the Appeals Court:

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

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

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

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

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

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

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

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

jacmyoung

06-04-10, 11:57 AM

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

Details should be available soon.

HiDefGator

06-04-10, 04:28 PM

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

jacmyoung

06-04-10, 04:48 PM

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

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

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

phrelin

06-04-10, 05:36 PM

See the bold statement:) on the USPTO PAIR site, no details yet, but we should be able to read the actual doc next week:Do you have an application/control/patent/pct/publication number for this that you'd share with someone who's never used that site (http://portal.uspto.gov/external/portal/!ut/p/kcxml/04_Sj9SPykssy0xPLMnMz0vM0Y_QjzKLN4gPMATJgFieAfqRqC LGpugijnCBIH1vfV-P_NxU_QD9gtzQ0IhyR0UAtkbpAA!!/delta/base64xml/L0lDU0lKQ1RPN29na21DU1Evb0tvUUFBSVFnakZJQUFRaENFSV FqR0VKemdBIS80SkZpQ28wZWgxaWNvblFWR2hkLXNJZDJFQSEh LzdfMF8xOEwvNC9zYS5nZXRCaWI!#7_0_18L) before?

jacmyoung

06-04-10, 05:49 PM

Do you have an application/control/patent/pct/publication number for this that you'd share with someone who's never used that site (http://portal.uspto.gov/external/portal/!ut/p/kcxml/04_Sj9SPykssy0xPLMnMz0vM0Y_QjzKLN4gPMATJgFieAfqRqC LGpugijnCBIH1vfV-P_NxU_QD9gtzQ0IhyR0UAtkbpAA!!/delta/base64xml/L0lDU0lKQ1RPN29na21DU1Evb0tvUUFBSVFnakZJQUFRaENFSV FqR0VKemdBIS80SkZpQ28wZWgxaWNvblFWR2hkLXNJZDJFQSEh LzdfMF8xOEwvNC9zYS5nZXRCaWI!#7_0_18L) before?

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

scooper

06-04-10, 06:59 PM

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

RasputinAXP

06-04-10, 08:58 PM

wow. Yeah. Looks like it.

jacmyoung

06-04-10, 09:47 PM

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

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

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

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

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

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

Curtis52

06-05-10, 05:13 AM

So, if we are to surmise correctly - this means that Tivo's patent is essentially DEAD now ? And all further cases have to listen to this ?Not really. The USPTO issued a final rejection of TiVo's patent in 2007. TiVo responded to the rejection and the examiner withdrew the rejection and blessed the patent without a single word of the patent being revised.

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

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

jacmyoung

06-05-10, 09:58 AM

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

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

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

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

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

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

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

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

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

phrelin

06-05-10, 10:41 AM

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

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

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

What I take from this is that in addition to the nearly one year delay caused by the en banc hearing, when and if the case ever gets back to the Circuit Court:

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

Is that an accurate summary of the current situation as you see it?

jacmyoung

06-05-10, 10:59 AM

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

Ok, jacmyoung, so you are DBSTalk's most prolific analyst.

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

Here's what I understand you have summarized is the result of the June 4, 2010 PTO rejection of TiVo's lastest reexamination of two software patents which TiVo attempted to amend:

TiVo will have to prove literal infringement of the Time Warping patent in any future action.

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

The doctrine of equivalents will be unavailable to TiVo in any future action.

Same as the above.

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

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

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

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

What I take from this is that in addition to the nearly one year delay caused by the en banc hearing, when and if the case ever gets back to the Circuit Court:

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

Is that an accurate summary of the current situation as you see it?

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

phrelin

06-05-10, 11:29 AM

Curtis52

06-05-10, 02:29 PM

jacmyoung

06-05-10, 03:53 PM

Uh, ok.

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

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

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

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

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

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

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

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

phrelin

06-05-10, 04:06 PM

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

jacmyoung

06-05-10, 04:19 PM

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

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

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

Curtis52

06-05-10, 04:43 PM

Ok. Thanks, I think I now understand your point.No problem.

jacmyoung

06-05-10, 11:14 PM

No problem.

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

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

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

James Long

06-05-10, 11:52 PM

jacmyoung

06-06-10, 08:47 AM

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

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

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

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

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

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

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

jacmyoung

06-06-10, 08:41 PM

Some new items on the CAFC Pacer site:

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

ACTION: Entry 105:Granted. Appellants may file an opening en banc brief by July 26, 2010. Filed: 6/1/2010

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

jacmyoung

06-07-10, 07:41 AM

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

HiDefGator

06-07-10, 10:59 AM

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

dgordo

06-07-10, 11:29 AM

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

HiDefGator

06-07-10, 11:35 AM

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

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

Curtis52

06-07-10, 11:42 AM

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

HiDefGator

06-07-10, 11:49 AM

The hearing date hasn't changed.

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

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

jacmyoung

06-07-10, 06:09 PM

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

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

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

tsmacro

06-08-10, 02:05 PM

DISH Network and EchoStar Statement Regarding PTO Ruling

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

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

About DISH Network

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

About EchoStar Corporation

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

SOURCE DISH Network Corporation

Matt9876

06-08-10, 02:05 PM

Copy of PTO ruling from another Dishnetwork forum:

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

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

Great news for Dish and your DVR :)

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

harsh

06-08-10, 02:42 PM

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

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

jacmyoung

06-08-10, 02:44 PM

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

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

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

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

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

Curtis52

06-08-10, 02:58 PM

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

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

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

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

tsmacro

06-08-10, 03:08 PM

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

jacmyoung

06-08-10, 03:28 PM

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

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

James Long

06-08-10, 03:33 PM

What's interesting is, every news outlet considers this a big news today, when in fact we had made the news first available here last Friday.Major companies issuing press releases tends to make the news. :)

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

scooper

06-08-10, 03:40 PM

Major companies issuing press releases tends to make the news. :)

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

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

James Long

06-08-10, 03:50 PM

So any "big" market impact should be seen tomorrow , if any.I'm not sure how much is left for Tivo ... I mentioned the artificial high that they were at until the en banc review was granted. Now they are back to the level they were before the jump last June. Stockholder reaction seems almost moody.

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

jacmyoung

06-08-10, 03:58 PM

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

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

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

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

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

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

HiDefGator

06-08-10, 04:28 PM

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

not this year...

jacmyoung

06-08-10, 04:35 PM

not this year...

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

A settlement with E* would:)

jacmyoung

06-08-10, 05:41 PM

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

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

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

phrelin

06-09-10, 12:23 PM

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

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

It's hard to imagine that the original post (http://www.dbstalk.com/showthread.php?t=22013&highlight=Tivo) on this case was January 5, 2004.:nono2:

jacmyoung

06-09-10, 02:45 PM

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

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

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

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

scooper

06-09-10, 03:28 PM

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

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

HiDefGator

06-09-10, 04:38 PM

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

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

jacmyoung

06-09-10, 09:34 PM

Matt9876

06-10-10, 12:59 AM

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

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

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

jacmyoung

06-11-10, 06:11 PM

http://www.law.com/jsp/article.jsp?id=1202462614121&PTO_Invalidates_TiVo_Patent_Claims_but_Case_Agains t_EchoStar_Is_Far_From_Over

but Case Against EchoStar Is Far From Over

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

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

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

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

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

phrelin

06-12-10, 12:07 AM

What this statement has indicated is, it is likely there is still no settlement possibility, neither side is willing to compromise at this time.Ah yes....
http://www.phrelin.com/Dish/2mules.jpg

david_jr

06-12-10, 04:51 AM

Ah yes....
http://www.phrelin.com/Dish/2mules.jpg

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

jacmyoung

06-12-10, 07:44 AM

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

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

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

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

jacmyoung

06-12-10, 09:44 PM

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

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

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

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

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

jacmyoung

06-14-10, 08:59 PM

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

phrelin

06-15-10, 12:07 AM

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

James Long

06-15-10, 01:20 AM

The gamblers weighed in heavily today in the options arena and the sentiment is bullish. But unless someone hears a rumblings of a low buyout price, I can't see much happening.The poison pill remains regardless of the low price, but it would be better to buy the company when the price is low than when it is high.

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

jacmyoung

06-15-10, 08:05 AM

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

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

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

People will believe anything.

Kent Taylor

06-15-10, 08:23 AM

People will believe anything.

Some people. :)

jacmyoung

06-15-10, 10:15 AM

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

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

jacmyoung

06-15-10, 03:40 PM

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

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

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

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

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

harsh

06-16-10, 07:43 AM

The poison pill remains regardless of the low price, but it would be better to buy the company when the price is low than when it is high.Didn't someone once mention a sunset on the poison pill?

jacmyoung

06-16-10, 07:59 AM

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

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

Poison pill is only good when you have leverages.

jacmyoung

06-24-10, 01:36 PM

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

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

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

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

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

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

spear61

06-25-10, 11:24 AM

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

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

jacmyoung

07-10-10, 04:09 PM

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

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

jacmyoung

07-12-10, 08:09 PM

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

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

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

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

phrelin

07-12-10, 11:46 PM

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

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

Curtis52

07-13-10, 07:26 AM

jacmyoung

07-13-10, 07:43 AM

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

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

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

jacmyoung

07-13-10, 07:49 AM

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

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

jacmyoung

07-14-10, 03:16 PM

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

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

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

http://www.law.com/jsp/article.jsp?id=1202462614121&PTO_Invalidates_TiVo_Patent_Claims_but_Case_Agains t_EchoStar_Is_Far_From_Over

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

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

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

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

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

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

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

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

HiDefGator

07-28-10, 12:51 PM

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

jacmyoung

08-03-10, 10:56 AM

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

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

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

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

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

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

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

HiDefGator

08-03-10, 01:59 PM

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

jacmyoung

08-03-10, 02:38 PM

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

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

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

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

HiDefGator

08-03-10, 04:26 PM

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

Entertaining summer reading?

jacmyoung

08-03-10, 10:18 PM

Entertaining summer reading?

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

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

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

phrelin

08-04-10, 10:03 AM

Why? No one here is even interested in this case anymore.I beg your pardon! I'm someone here!:D

jacmyoung

08-05-10, 11:41 AM

I beg your pardon! I'm someone here!:D

You and I are nobody, remember?:)

Here is another piece:

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

Separately, in June the U.S. Patent and Trademark Office ruled that TiVo's "Time Warp" DVR patent was invalid in light of two prior-art references. TiVo called that "just one of several steps in the review process."

But courts should consider the PTO finding that the TiVo patent is invalid in considering the enforcement of an injunction through contempt proceedings, Verizon Communications argued in an amicus brief with with the appeals court last month. The telco is itself engaged in patent litigation with TiVo.

"Where the PTO has cast doubt on the validity of an issued patent, enforcement of the patent through an injunction -- even more than enforcement through payment of money damages -- can deprive the public not only of legitimate competition and the benefits that such competition brings, but also of further innovation that comes through continued participation in the market," Verizon said in its brief dated July 2.

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

jacmyoung

08-10-10, 01:45 PM

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

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

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

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

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

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

domingos35

08-10-10, 03:36 PM

jacmyoung

08-13-10, 02:14 PM

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

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

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

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

Lake Lover

08-18-10, 02:32 AM

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

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

jacmyoung

08-28-10, 07:18 AM

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

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

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

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

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

jacmyoung

08-30-10, 07:52 AM

Just saw this on Yahoo today:

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

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

Parsing TiVo's...

Did he read too much of the TiVo software claims?:)

jacmyoung

08-30-10, 09:18 PM

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

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

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

CuriousMark

09-08-10, 01:40 PM

jacmyoung

09-09-10, 10:49 AM

Looking Ahead to TiVo v. Dish at the Federal Circuit (http://ipwatchdog.com/2010/09/07/tivo-v-dish-at-federal-circuit/id=12390/)

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

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

rocatman

09-09-10, 12:33 PM

Looking Ahead to TiVo v. Dish at the Federal Circuit (http://ipwatchdog.com/2010/09/07/tivo-v-dish-at-federal-circuit/id=12390/)

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

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

Curtis0620

09-09-10, 12:36 PM

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

Because it's irrelevant.

RasputinAXP

09-09-10, 01:48 PM

Because it's irrelevant.

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

Greg Bimson

09-09-10, 02:02 PM

If it invalidates the patents they're suing over, then I hardly see how it's irrelevant.It's hard to understand, so bear with me...

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

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

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

jacmyoung

09-09-10, 02:20 PM

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

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

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

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

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

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

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

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

RasputinAXP

09-09-10, 06:48 PM

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

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

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

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

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

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

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

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

Greg Bimson

09-09-10, 07:24 PM

So by your measuring stick, the patent isn't yet invalid because they haven't exhausted all of their appeals. By the same measure, then, Dish isn't guilty because they haven't exhausted all of their appeals.Technically, when taking an appeal, the decision stands. That is why those decisions are "reversed" when the Court of Appeals finds an error.

So, Judge Folsom in Texas found Dish Network in contempt. That is the acutal answer, until it is affirmed or reversed by a higher court.That sounds horribly pedantic to me. Dish is guilty because they infringed on an illegally awarded patent.That's a bit elementary. Just because a patent is invalidated doesn't mean it was awarded illegally. For example, I believe it was in 2007 that the Supreme Court ruled that a combination of two patents is not patentable. And that is exactly why claims 31 and 61 of the Time Warp patent were invalidated.

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

jacmyoung

09-09-10, 09:18 PM

Technically, when taking an appeal, the decision stands.

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

jacmyoung

09-09-10, 09:28 PM

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

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

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

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

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

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

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

So who is the bad guy now?:)

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

Curtis52

09-10-10, 04:22 PM

Dish is further guilty because they designed around the patent in a way Tivo and the judge didn't like. The judge said Dish did not design around the patent.

CuriousMark

09-10-10, 06:45 PM

The judge said Dish did not design around the patent.

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

jacmyoung

09-10-10, 06:54 PM

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

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

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

dgordo

09-13-10, 02:17 PM

TiVo (TIVO) shares have spiked on speculation that the company may have reached a settlement of its long-standing patent infringement lawsuit against Dish Network (DISH). As both Briefing.com and TheFlyOnTheWall.com report, the chatter has been spurred in part by an SEC filing showing that TiVo has received approval from the SEC for confidential treatment of two exhibits in its 10-Q.

That sounds interesting, but I would note that the SEC has granted confidential treatment to TiVo more than two dozen times since May 2008.

TIVO is up 58 cents, or 6.8%, to $9.08.

Could it be?

James Long

09-13-10, 05:18 PM

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

jacmyoung

09-13-10, 09:48 PM

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

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

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

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

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

jacmyoung

09-17-10, 08:54 PM

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

Now that is something one can speculate on:)

HiDefGator

09-20-10, 12:10 PM

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

jacmyoung

09-20-10, 01:12 PM

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

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

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

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

HiDefGator

09-20-10, 04:05 PM

jacmyoung

09-20-10, 09:06 PM

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

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

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

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

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

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

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

jacmyoung

09-21-10, 07:15 PM

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

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

jacmyoung

09-22-10, 12:54 PM

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

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

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

HiDefGator

09-23-10, 01:23 PM

jacmyoung

09-23-10, 02:07 PM

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

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

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

Curtis52

09-23-10, 02:55 PM

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

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

jacmyoung

09-23-10, 03:57 PM

If history repeats itself, TiVo will sail through this.

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

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

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

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

Clearly he felt compelled to correct this one.

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