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TiVo vs. Echostar: Judge grants TiVo motion to disallow patent invalidity defense


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#1 OFFLINE   Curtis52

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Posted 04 February 2009 - 02:47 PM

Thanks Mainer.

O R D E R

Before the Court is TiVo’s Motion to Strike “Invalidity” Contentions from Dr. Rhyne’s Expert Report and to Exclude Evidence and Argument Concerning “Invalidity” at the February 2009 Hearing. Dkt. No. 887. Also before the Court are EchoStar’s response and TiVo’s reply. Dkt. Nos. 889 & 891. For the reasons set forth below, TiVo’s Motion is hereby GRANTED.

This Court has scheduled a hearing on February 17-18, 2009 to address TiVo’s motion requesting that EchoStar be found in contempt for violation of this Court’s permanent injunction. See Dkt. Nos. 832, 864, 869, 870, and 880. Specifically, this hearing will address “(1) whether the software downloaded to EchoStar’s DP-501, DP-508, DP-510, DP-522, DP-625, DP-721, DP-921, and DP-942 is no more than colorably different from the adjudged software; and (2) whether these receivers continue to infringe claims 31 and 61 of U.S. Patent No. 6,233,389, either literally or under the doctrine of equivalents.” Dkt. No. 870 at 1.

TiVo now requests that all “invalidity contentions” be stricken from the expert report of Dr. V. Thomas Rhyne, EchoStar’s expert for the upcoming hearing. Dkt. No. 887. In addition, TiVo argues that EchoStar should be precluded from introducing any evidence or argument concerning
validity at the hearing. Id.

The expert report of Dr. Rhyne contains 42 paragraphs under the heading “The ’389 Patent is invalid under TiVo’s attempted new application of the software claims.” Rhyne Report at ¶¶ 225-67 (Dkt. No. 887, Ex. B). In those paragraphs, Dr. Rhyne opines that TiVo’s expert has expanded the scope of claims 31 and 61 such that the patent is now invalid for multiple reasons, including obviousness and a lack of written description. Id.

TiVo contends that any such argument is improper because the validity of the ’389 Patent is the law of this case and cannot be challenged during contempt proceedings. Dkt. No. 887 at 2-4 (citing KSM Fastening Sys., Inc. v. H.A. Jones Co., 776 F.2d 1522, 1529 (Fed. Cir. 1985); Additive Control & Measurement Sys., Inc. v. Flowdata, Inc., 154 F.3d 1345, 1350 (Fed. Cir. 1998)). In addition, TiVo contends that its own expert testimony and argument properly relies on this Court’s claim construction and does not depart from it. Id. at 5.

In response, EchoStar contends that TiVo has created new infringement theories not argued at trial by expanding the scope of the “parsing” and “automatic flow control” limitations in claims 31 and 61. Dkt. No. 889 at 5-7. As a result, EchoStar argues that it is entitled to defend against these new theories as they “give rise to substantial new invalidity issues.” Id. at 8-11 (citing Robert Tyer and Assoc., Inc. v. Envtl. Dynamics, Inc., No. 95-1270, 96-1324, 96-1541, 1997 U.S. App. LEXIS 19101 (Fed. Cir. Jul. 14, 1997) (unpublished); Bass Pro Trademarks, L.L.C. v. Cabela’s, Inc., 485 F.3d 1364, 1369 (Fed. Cir. 2007)).

Federal Circuit precedent is clear on this issue: “Whether there is infringement may not be challenged in contempt proceedings on the basis that the patent is invalid. The validity of the patent is the law of the case in such proceedings.” KSM Fastening, 776 F.2d at 1522. The Federal Circuit elaborated on this position in Additive Control, stating:

The judgment against [the infringer], however, established for purposes of this litigation that [the patentee’s] patent was valid and that the [infringer’s device] infringed the patent. In a contempt proceeding to enforce the injunction entered as a part of that judgment, the only available defenses for anyone bound by the injunction was that the [modified device] did not infringe (or that it was more than a colorable variation of the first [device], thus requiring that the issue of infringement be resolved through a separate infringement action). Validity and infringement by the original device were not open to challenge.

Additive Control, 154 F.3d at 1529. EchoStar does not distinguish the present case from these holdings. Instead, EchoStar relies on (1) a non-precedential opinion and (2) an inapposite opinion in which the Federal Circuit reversed on a claim construction issue rather than a validity issue.

This Court is bound by the Federal Circuit’s clear holdings in KSM Fastening and Additive Controls. Therefore, all statements or arguments regarding the validity of the ’389 Patent, specifically paragraphs 225-67, must be stricken from Dr. Rhyne’s expert report. In addition, the parties shall be precluded from presenting evidence or argument concerning the validity of the ’389 Patent at the upcoming hearing.
IT IS SO ORDERED.

Edited by Curtis52, 04 February 2009 - 03:30 PM.


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#2 OFFLINE   Greg Bimson

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Posted 04 February 2009 - 03:17 PM

There was another motion filed regarding discovery and interrogatories. Below are DISH/SATS interrogatories, and the joint stipulation on what some of those answers will be...

1. TiVo’s awareness of EchoStar’s effort to design-around the ‘389 Patent or modify the Infringing Products in response or relating to the ‘389 patent, including TiVo’s awareness of the existence of the Design-Around Software or any updates, modifications, or changes to EchoStar’s DVRs, whether software, functionality, or user experience, from April 13, 2006, to the present.
2. Whether EchoStar’s efforts to design-around the ‘389 Patent or modify the Infringing Products in response or relating to the ‘389 patent were made in good faith, including any evidence TiVo believes indicates or suggests EchoStar’s efforts were in bad faith.
3. TiVo’s responses or actions related to (i) EchoStar’s effort to design-around the ‘389 patent or modify the Infringing Products in response or relating to the ‘389 patent, or (ii) the Design-Around Software, including TiVo’s decision not to seek court involvement prior to the Federal Circuit’s mandate issued in this case.
4. TiVo’s evaluation, testing, analysis, or discussion of (i) the Design-Around Software or (ii) any updates, modifications, or changes to EchoStar’s DVRs, whether software, functionality, or user experience,from April 13, 2006, to the present.
5. Communications regarding or relating to EchoStar’s effort to design-around the ‘389 patent or modify the Infringing Products in response or relating to the ‘389 patent, including communications with analysts or investors, from April 13, 2006 to the present.
6. Communications regarding or relating to changes or differences in EchoStar’s Infringing Products from April 13, 2006, to the present.
7. Communications between TiVo and any third party relating to the changes or differences in EchoStar’s Infringing Products from April 13, 2006, to the present.
8. Communications relating to EchoStar, EchoStar products, EchoStar technology, or the ‘389 Patent from April 13, 2006, to the present.
9. Communications relating to the Design-Around Software or EchoStar’s efforts to design-around the ‘389 Patent or modify the Infringing Products in response or relating to the ‘389 patent.
10. Communications relating to this lawsuit and the Court’s permanent injunction.
11. The consultations with engineers referenced by Tom Rogers in his statement in a March 2008 Bears Stearns conference that it is “highly, highly unlikely” that EchoStar had designed around the ‘389 patent.
12. The factual and legal bases of TiVo’s contention that EchoStar’s DVR Products with Design-Around Software infringe the ‘389 Patent.
13. The infringement or non-infringement of the ‘389 Patent by all DVR Products currently on the market of which TiVo is aware, excluding any EchoStar DVR Product and
excluding any DVR Product licensed under the '389 Patent. For purposes of this deposition Topic only, “on the market” means available for sale or lease in the United States, either as a standalone device that a consumer can use with any television service, or as a device offered by a provider of television programming services to its subscribers.
14. Any statements in the Declaration of Dan Minnick in Support of EchoStar’s Opposition to Contempt Motion, filed June 30, 2008 that TiVo contends or believes are inaccurate or incorrect and the basis for any such contention or belief.
15. Any statements in Fish & Richardson’s three opinion letters dated August 24, 2006, and September 1, 2006, relating to the Design-Around Software that TiVo contends or believes are inaccurate or incorrect, and the basis for any such contention or belief.
16. Any information in TiVo’s possession indicating or suggesting that the combined total number of Exempt Devices remaining in the field since September 8, 2006, exceeds
192,708.

NOW THEREFORE, for purposes of the pending contempt proceedings, the parties
stipulate and agree as follows:
1. All non-privileged fact testimony responsive to topic 4 in EchoStar’s Deposition Notice, to the extent any exists, will be presented at the hearing only through James Barton.
2. TiVo will provide non-privileged information responsive to topic 2 in EchoStar’s Deposition Notice, to the extent any exists, by responding to EchoStar’s Interrogatory No. 1.
3. TiVo contends that the information sought by topics 1, 3, and 5-11 in EchoStar’s Deposition Notice is irrelevant and includes information that is subject to TiVo’s attorney client and/or work product privilege, which TiVo declines to waive. To eliminate any need for further discovery relating to such topics, TiVo stipulates that TiVo became aware of EchoStar’s design-around efforts on or about the date the first EchoStar Statement was made, specifically August 9, 2006; and TiVo became aware of other EchoStar Statements on or about the dates they were made, specifically November 7, 2006, March 1, 2007, May 10, 2007, August 9, 2007, November 9, 2007, February 26, 2008 and May 12, 2008.
4. EchoStar accepts this Stipulation in lieu of further 30(B)(6) testimony regarding all of the topics in EchoStar’s Deposition Notice.
5. Nothing herein shall be deemed a waiver of attorney-client privilege or work product protection.
6. This stipulation is without prejudice to the parties’ positions regarding what issues are relevant for the upcoming hearing.



#3 OFFLINE   Greg Bimson

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Posted 04 February 2009 - 03:28 PM

The order:

Federal Circuit precedent is clear on this issue: “Whether there is infringement may not be challenged in contempt proceedings on the basis that the patent is invalid. The validity of the patent is the law of the case in such proceedings.” KSM Fastening, 776 F.2d at 1522. The Federal Circuit elaborated on this position in Additive Control, stating:

The judgment against [the infringer], however, established for purposes of this litigation that [the patentee’s] patent was valid and that the [infringer’s device]infringed the patent. In a contempt proceeding to enforce the injunction entered as a part of that judgment, the only available defenses for anyone bound by the injunction was that the [modified device] did not infringe (or that it was more than a colorable variation of the first [device], thus requiring that the issue of infringement be resolved through a separate infringement action). Validity and infringement by the original device were not open to challenge.

Additive Control, 154 F.3d at 1529. EchoStar does not distinguish the present case from these holdings. Instead, EchoStar relies on (1) a non-precedential opinion and (2) an inapposite opinion in which the Federal Circuit reversed on a claim construction issue rather than a validity issue.
This Court is bound by the Federal Circuit’s clear holdings in KSM Fastening and Additive Controls. Therefore, all statements or arguments regarding the validity of the ’389 Patent, specifically paragraphs 225-67, must be stricken from Dr. Rhyne’s expert report. In addition, the parties shall be precluded from presenting evidence or argument concerning the validity of the ’389 Patent at the upcoming hearing.
IT IS SO ORDERED.



#4 OFFLINE   CuriousMark

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Posted 04 February 2009 - 03:34 PM

So in summary, Dish tried to change the subject to patent validity in their expert witness's report. TiVo cried foul. The judge agreed. The subject will be infringement, and only infringement.

#5 OFFLINE   jacmyoung

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Posted 04 February 2009 - 03:38 PM

This is a clear loss for E* due in part to the fact that the judge refused to address the point E* raised, that TiVo is now expanding the claim limitations beyond what the court had construed during the trial.

At this point I must agree with Greg, that the judge is making history out of this case, however whether he is indeed trying to make history or not will have to be answered when his final ruling is out.

The petentee is not allowed to expand the patent claim limitations during the contempt proceeding, the Judge simply side-stepped this particular point. There are many cases in which the contempt was denied when the Court had determined that the patentees had expanded the claim constructions.

#6 OFFLINE   Greg Bimson

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Posted 04 February 2009 - 03:44 PM

So in summary, Dish tried to change the subject to patent validity in their expert witness's report. TiVo cried foul. The judge agreed. The subject will be infringement, and only infringement.

And the evaluation of colorable difference.

Here's one statement that piques my interest:

Validity and infringement by the original device were not open to challenge.

If Judge Folsom is of the belief that the "Infringing Products" are the "original devices", DISH/SATS is in for a world of hurt.

Here is the other statement that makes me wonder what DISH/SATS is thinking:

3. TiVo contends that the information sought by topics 1, 3, and 5-11 in EchoStar’s Deposition Notice is irrelevant and includes information that is subject to TiVo’s attorney client and/or work product privilege, which TiVo declines to waive. To eliminate any need for further discovery relating to such topics, TiVo stipulates that TiVo became aware of EchoStar’s design-around efforts on or about the date the first EchoStar Statement was made, specifically August 9, 2006; and TiVo became aware of other EchoStar Statements on or about the dates they were made, specifically November 7, 2006, March 1, 2007, May 10, 2007, August 9, 2007, November 9, 2007, February 26, 2008 and May 12, 2008.

TiVo admits they knew of a workaround through DISH/SATS SEC filings. What TiVo did not admit was they knew DISH/SATS would apply the workaround to the "Infringing Products", which is completely counter to the questions DISH/SATS raised in their interrogatories.

#7 OFFLINE   peak_reception

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Posted 04 February 2009 - 04:04 PM

Here's one statement that piques my interest:If Judge Folsom is of the belief that the "Infringing Products" are the "original devices", DISH/SATS is in for a world of hurt.

Why? Either/Both were modified. The modification is what needs adjudication. Colorably different or not? It's the multi-million dollar question.

p.s. I should say "colorably different, or more than colorably different. " That is the critical question now before the court.

Edited by peak_reception, 04 February 2009 - 06:54 PM.


#8 OFFLINE   the judge

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Posted 04 February 2009 - 04:10 PM

Here is the other statement that makes me wonder what DISH/SATS is thinking:TiVo admits they knew of a workaround through DISH/SATS SEC filings. What TiVo did not admit was they knew DISH/SATS would apply the workaround to the "Infringing Products", which is completely counter to the questions DISH/SATS raised in their interrogatories.

Here is E*'s notice in August, 2006 from their 10-Q. Could you explain the nuance that Tivo did not admit the workaround would apply to the Infringing Products?

During 2004, Tivo Inc. (“Tivo”) filed a lawsuit against us in the United States District Court for the Eastern District of Texas alleging that our satellite receivers equipped with digital video recorder technology infringe Tivo’s United States Patent No. 6,233,389 (the ‘389 patent). During April 2006, a jury concluded most of our digital video recorders infringe the ‘389 patent, that our infringement was willful, and awarded Tivo approximately $74.0 million in damages, plus interest for past infringement. Consequently, the judge will be required to make a determination whether to increase the damage award to as much as approximately $230.0 million and whether to award attorney fees and interest.

As a result of our objection to Tivo’s demand to review certain privileged documents, the trial court judge prohibited us from mentioning during trial the non-infringement opinions we had obtained from outside counsel, and, allowed Tivo to tell the jury we never obtained such an opinion. On May 2, 2006, the Court of Appeals concluded that the District Court abused its discretion in requiring us to provide the privileged documents to Tivo. On July 5, 2006, the Court of Appeals denied Tivo’s petition for rehearing of that decision. While we believe this is a significant development, the extent to which this ruling will affect the jury verdict or the remainder of the case is not yet clear.

During July 2006, the trial judge heard additional testimony regarding, among other things: i) proposed “supplemental damages” for continued infringement from the date of the jury award through our appeal of the verdict (which could substantially exceed damages awarded to date); ii) Tivo’s request that we be required to disable the functionality of our digital video recorders in consumer homes; iii) Tivo’s request that we be prohibited from offering infringing digital video recorders to consumers in the future; and iv) our defenses of laches, estoppel and inequitable conduct. On July 24, 2006, we filed our request that the jury verdict be set aside by the judge and that a new trial be granted. It is not possible to predict when the matters to be determined by the judge will be resolved or the outcome of those issues. If the judge confirms the jury verdict, an injunction prohibiting future distribution of infringing DVRs by us is likely. In that event, we have requested that the trial judge stay the injunction pending our appeal, and we will make the same request to the Court of Appeals if the trial judge does not grant our request.

We intend to continue our vigorous defense of this case and believe that, for a number of reasons, the verdict should be reversed either through post-trial motions or on appeal. However, there can be no assurance that a stay will be issued or that we will ultimately be successful in overturning the verdict. While we are working on modifications to our DVRs intended to avoid future infringement, there can be no assurance we will be successful. Absent such modifications, we may need to materially modify or eliminate certain user-friendly features that we currently offer to consumers and we could be forced to discontinue offering DVRs to our customers. In that event we would be at a disadvantage to our competitors and, while we would attempt to provide that functionality through other manufacturers, the adverse affect on our business could be material.

In accordance with Statement of Financial Accounting Standards No. 5: “Accounting for Contingencies” (“SFAS 5”), during the six months ended June 30, 2006, we recorded a total reserve of $88.2 million in “Tivo litigation expense” on our Condensed Consolidated Statements of Operations to reflect the jury verdict and estimated supplemental damages that may be awarded by the judge through June 30, 2006. The reserve does not include any amount for attorney fees and interest which might be awarded, for increased damages based on the finding of willfulness, or for supplemental damages subsequent to June 30, 2006 and consequently may increase substantially in future periods.

On April 29, 2005, we filed a lawsuit in the United States District Court for the Eastern District of Texas against Tivo and Humax USA, Inc. alleging infringement of U.S. Patent Nos. 5,774,186 (the ‘186 patent), 6,529,685 (the ‘685 patent), 6,208,804 (the ‘804 patent) and 6,173,112 (the ‘112 patent). These patents relate to digital video recorder (“DVR”) technology. Tivo filed requests for reexamination of the patents during May 2006. During July 2006 the case was stayed pending the reexamination process, which could take many years.



#9 OFFLINE   Greg Bimson

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Posted 04 February 2009 - 04:47 PM

Could you explain the nuance that Tivo did not admit the workaround would apply to the Infringing Products?

While we are working on modifications to our DVRs intended to avoid future infringement, there can be no assurance we will be successful.

Because DISH/SATS didn't admit their workaround would apply to the receivers that were already found to infringe, counter to the language of the injunction...

#10 OFFLINE   the judge

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Posted 04 February 2009 - 05:01 PM

Because DISH/SATS didn't admit their workaround would apply to the receivers that were already found to infringe, counter to the language of the injunction...

I get it. At that time the workaround was going to include both software and hardware which would have required them to swap out the boxes, i.e. entirely new devices. Once the hardware claims were remanded, they were off that hook and realized that they could try the software-only download. Check out their change in tune in their 10Q filing before and after the Appeal:

From Echostar Sep-2006 10-Q:

If the verdict is upheld on appeal, we would be required to pay additional amounts from August 1, 2006 until such time, if ever, as we successfully implement alternative technology. Those amounts would be approximately $5.7 million, $5.9 million and $6.0 million for August, September and October 2006, respectively, and would increase each month as the number of our DVR customers increases and as interest compounds. If the verdict is upheld on appeal and we are not able to successfully implement alternative technology (including the successful defense of any challenge that such technology infringes Tivo’s patent), we could also be prohibited from distributing DVRs, or be required to modify or eliminate certain user-friendly DVR features that we currently offer to consumers. In that event we would be at a significant disadvantage to our competitors who could offer this functionality and, while we would attempt to provide that functionality through other manufacturers, the adverse affect on our business could be material.

Then, from their Sep-2008 10-Q:

In accordance with Statement of Financial Accounting Standards No. 5, “Accounting for Contingencies” (“SFAS 5”), we recorded a total reserve of $132 million on our Condensed Consolidated Balance Sheets to reflect the jury verdict, supplemental damages and pre-judgment interest awarded by the Texas court. This amount also includes the estimated cost of any software infringement prior to implementation of our alternative technology, plus interest subsequent to the jury verdict.

When they would have had to pay for hardware and software infringement, they calculated $6M plus per month! Afterwards they claimed the total reserve (including the $104M already paid) was only $28M.

#11 OFFLINE   jacmyoung

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Posted 04 February 2009 - 05:01 PM

Why? Either/Both were modified. The modification is what needs adjudication. Colorably different or not? It's the multi-million dollar question.


Exactly, this is why no one can convince the other because we will just interpret whatever the way we like, and it goes both ways.

The way I interpret it is that when the judge said "the original device" he was referring to the unmodified DVRs, not the modified DVRs. Because if he believes the modified DVRs are the same as "the original DVRs" there would be no point to again determine if the modified DVRs still infringe.

Now I had said the reason the claim invalidity might be argued was because the judge ordered an infringement analysis, but E* did not argue that way, instead E* said the reason they should be allowed to argue the claim invalidity was that TiVo was trying to expand the claim limitations. But whether TiVo is trying to expand the claim limitations (which I think they clearly are) has not been determined by the judge.

TiVo ran into a similar problem on 9/4 when they cited two cases in which the defendants were already found in violation and therefore in contempt, and that two cases did not help TiVo a bit to obtain a contempt ruling, because whether there was a violation or not had not been determined by the judge in this case.

E* is now doing the same, saying TiVo is trying to expand the patent claim limitations, therefore...

Except whether TiVo is indeed trying to expand its claim limitations will be for the judge to decide after the hearing.

I say yes because TiVo is arguing that since the modified DVRs still use PID filters, therefore they still infringe. If true, all MPEG receivers, DVRs or non-DVRs, all infringe, because they all use PID filters.

A clear expansion of the TiVo's patent claim limitations in which at the very first description it defines a DVR process.

#12 OFFLINE   Curtis52

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Posted 04 February 2009 - 05:15 PM

And the evaluation of colorable difference.

Here's one statement that piques my interest:

Validity and infringement by the original device were not open to challenge.

Judge Folsom didn't say that. He was quoting from case law. That part isn't really applicable to this case. Dish isn't arguing that the original devices didn't infringe.

#13 OFFLINE   CuriousMark

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Posted 04 February 2009 - 05:46 PM

I say yes because TiVo is arguing that since the modified DVRs still use PID filters, therefore they still infringe. If true, all MPEG receivers, DVRs or non-DVRs, all infringe, because they all use PID filters.

A clear expansion of the TiVo's patent claim limitations in which at the very first description it defines a DVR process.


A clever debating tactic. To paraphrase you: "Since the modified parakeet still has wings, it can fly. If true, all birds, of any size or shape that have wings can fly." it sounds reasonable, but every child can think of an example that proves it wrong. Think Ostrich. In the same way your posted logic fails.

First, PID filtering is only one step of the claim. All those other devices would have to also meet ALL the other steps before they could be found to infringe. You know as well as I do that all MPEG receivers that are not DVRs cannot meet all the other steps, they don't even have a hard drive, or the ability to do trick play. So their PID filters don't even begin to turn them into infringing devices. So PID filtering can be used to help show that these particular DVRs still infringe, so long as they also meet the other steps of the claim.

Second, PID filtering was shown at the original trial as an action that meets the first step of the claim as many quotes here have shown. Thus it is not an expansion of the claim at all.

Edited by CuriousMark, 04 February 2009 - 06:38 PM.
clarifying my argument


#14 OFFLINE   Greg Bimson

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Posted 04 February 2009 - 06:10 PM

Validity and infringement by the original device were not open to challenge.

Judge Folsom didn't say that.

I never said Judge Folsom said that.

He was quoting from case law. That part isn't really applicable to this case. Dish isn't arguing that the original devices didn't infringe.

But DISH/SATS has been arguing because they made a modification to the original devices (the adjudged ones subject to the disable order), there are no longer any adjudged devices over the almost 193K receivers allowed by the injunction.

I believe the court will clarify that soon.

#15 OFFLINE   Curtis52

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Posted 04 February 2009 - 06:42 PM

DISH/SATS has been arguing because they made a modification to the original devices (the adjudged ones subject to the disable order), there are no longer any adjudged devices over the almost 193K receivers allowed by the injunction.

I believe the court will clarify that soon.

If there is more than a colorable difference they are correct. Estoppel prevents the trying of the same devices twice but the court requires a new trial if there is more than a colorable difference. QED, they aren't considered the same devices if there is more than a colorable difference.

#16 OFFLINE   jacmyoung

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Posted 04 February 2009 - 08:10 PM

A clever debating tactic. To paraphrase you: "Since the modified parakeet still has wings, it can fly. If true, all birds, of any size or shape that have wings can fly." it sounds reasonable, but every child can think of an example that proves it wrong. Think Ostrich. In the same way your posted logic fails.

First, PID filtering is only one step of the claim. All those other devices would have to also meet ALL the other steps before they could be found to infringe. You know as well as I do that all MPEG receivers that are not DVRs cannot meet all the other steps, they don't even have a hard drive, or the ability to do trick play. So their PID filters don't even begin to turn them into infringing devices. So PID filtering can be used to help show that these particular DVRs still infringe, so long as they also meet the other steps of the claim.

Second, PID filtering was shown at the original trial as an action that meets the first step of the claim as many quotes here have shown. Thus it is not an expansion of the claim at all.


It is if PID filter is the only thing TiVo is using to try to again prove infringement.

I know TiVo is using E*'s own words against them. For one thing, TiVo cannot use E*'s previous admission which may or may not be correct, to prove infringement, TiVo must prove with clear and convincing evidence that the modified DVRs still infringe, based on literal and/or equivalents doctrine.

Also E* is saying the "parsing" as described by the claim limitations is no longer formed, that is to say while there may still be parsing, as long as such parsing is done to perform a different function, or is operated in a different way, or is to achieve a different result, there is no infringment.

TiVo does not even contest that, only that it still parses.

Edited by jacmyoung, 04 February 2009 - 11:15 PM.


#17 OFFLINE   jacmyoung

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Posted 04 February 2009 - 08:13 PM

... QED, they aren't considered the same devices if there is more than a colorable difference.


They aren't considered the same devices even if the differences are only colorable, however, in such case the patentee shall not be forced to go through another new trial, the contempt proceeding shall be enough to end the infringer's effort.

#18 OFFLINE   jacmyoung

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Posted 04 February 2009 - 08:40 PM

The link below is a very good read, I think it had been cited some time ago but most people may not have read it:

http://www.law.com/j...id=900005504899

In summary, right around 2005 this district court of Taxes had become a magnet for patentees to file lawsuits against their alleged infringers to forced them to settle, the reason was, for a few years 100% of the cases in that court ended in favor of the patentees, that was most notably marked by TiVo’s win over E* for $74 million, Microsoft’s loss of $133 million in another case, and DirecTV's loss of $78 million yet in another case. At that point most lawyers had concluded that it was too risky to go through a jury trial in that court, and advised their clients to rather settle.

A few months after E* lost $74 million to TiVo, Forgent filed a similar lawsuit against E*, D*, Time Warner on DVR infringement. At that time E* and D* worked together to defend themselves. But two weeks before the jury trial, Time Warner chickened out and settled with Forgent for $20 million, and one day before the jury trial, D* chickened out and settled to pay Forgent $8 million.

E* was the only one went ahead through the jury trial, right after they just lost $74M to TiVo, and managed to convince the jury that the Forgent DVR patent was invalid. E* won that case and tossed Forgent out, but not before Time Warner and D* each wasted $20M and $8M to Forgent, respectively.

That Forgent case along with one other case were the first two that began to turn the tide in that courtroom, from the previous 100% win by the patentees, to a 7 out of 12 won by the defendants afterwards.

You never know when parties will decide to settle, the above history can offer some indication as far as the likelihood of any settlement from this case.

Edited by jacmyoung, 04 February 2009 - 09:09 PM.
Time Warner not Comcast


#19 OFFLINE   Greg Bimson

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Posted 05 February 2009 - 08:09 AM

I know TiVo is using E*'s own words against them. For one thing, TiVo cannot use E*'s previous admission which may or may not be correct, to prove infringement, TiVo must prove with clear and convincing evidence that the modified DVRs still infringe, based on literal and/or equivalents doctrine.

Sure TiVo can use the previous admission; once again, just like the trial, it is the law of the case. Of course, TiVo was gung-ho to use claim charts, measuring the differences between the receivers as configured when infringement was found against the same receivers with a software modification. So since the differences between the two are being measured, TiVo will simply need to prove infringement on points that could only exist due to the modification.

QED, they aren't considered the same devices if there is more than a colorable difference.

Let's remember that the devices are not being tested for colorable difference:

The Court will hold an additional evidentiary hearing on this matter on February 17-18, 2009 to determine (1) whether the software downloaded to EchoStar’s DP-501, DP-508, DP-510, DP-522, DP-625, DP-721, DP-921, and DP-942 is no more than colorably different from the adjudged software;

The colorable difference is only about the software. And we still do not know why evaluating colorable difference was ignored in Judge Folsom's original order for a bench trial, even though he stated it was always his intention to evaluate for colorable differences. It could be that Judge Folsom had no reason to measure colorable difference on the receivers originally found to infringe, but colorable difference determination is definitely needed for all models sold with the new software.

I still believe Judge Folsom is creating a standard, as neither KSM nor Additive Controls address a device found infringing that can be modified by software download.

#20 OFFLINE   jacmyoung

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Posted 05 February 2009 - 08:27 AM

Sure TiVo can use the previous admission; once again, just like the trial, it is the law of the case.


No they can't, because in the original trial if you ever read the appeals court decision, none of the evidence had to do with E*'s "admission", and the PID was never a part of argument in rendering and upholding infringement verdict.


Of course, TiVo was gung-ho to use claim charts, measuring the differences between the receivers as configured when infringement was found against the same receivers with a software modification.


It was not gung-ho rather a standard requirement to produce such claims charts during the trial, the courts administrating such patent trials have standardized claims charts for the patentee to fill out to prove infringement.

even though he stated it was always his intention to evaluate for colorable differences.


When did he say that? If in his latest order I missed that.

It could be that Judge Folsom had no reason to measure colorable difference on the receivers originally found to infringe, but colorable difference determination is definitely needed for all models sold with the new software.


The judge cannot do that, because all other DVR models beyond the 8 are not at issue in front of him. The next hearing is only about the 8 named DVRs. Just read his order.

I still believe Judge Folsom is creating a standard, as neither KSM nor Additive Controls address a device found infringing that can be modified by software download.


Again devices found infringing had been modified many many times in the past to avoid contempt, including the use of software download.

If software download cannot be used, then there is no point wasting time to determine the colorable differences between the old software and the new software.

Edited by jacmyoung, 05 February 2009 - 08:35 AM.





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