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TiVo vs. Dish: Judge orders Feb. 2009 hearing on infringement

Discussion in 'General DISH™ Discussion' started by Curtis52, Nov 20, 2008.

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  1. Dec 3, 2008 #481 of 1907
    Ergan's Toupe

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    They certainly did open the door. They also said publicly that "they were pleased to be able to prove that they no longer infringed".

    Funny how a week later Chuckles is whining about fairness and his constitutional rights. It's almost like he's afraid of something....:eek2:
     
  2. Dec 3, 2008 #482 of 1907
    jacmyoung

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    Sure they did, E* can act like a big kid, so can TiVo, in fact Judge Folsom said himself they both acted like big kids could not agree on anything.

    That is not to say the judge can just act like their dad and slap them around then put them in the dog house in the back yard until they come out like adults.

    The judge must follow proper procedures, otherwise any hiccups can be used by either one of the spoiled kids to get away with something he should not be getting away with.
     
  3. Dec 3, 2008 #483 of 1907
    jacmyoung

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    Start with James' PDF file of E*'s filing and go from there. Then wait for TiVo's filing in response, if it will come. Then you can make your own decision who is likely to win this stay of the order argument.
     
  4. Dec 3, 2008 #484 of 1907
    Ergan's Toupe

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    That was not my question. My question was according to who is a bench trial "inappropriate"?

    I don't care about making my own decision on " who is likely to win" or what Tivo's response will be. I just asked who said a bench trial is "inappropriate"?

    It's a simple question answerable with a simple link. Care to supply one, or should we just chalk this up to you making stuff up again?
     
  5. Dec 3, 2008 #485 of 1907
    dgordo

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    I told you this was appealable. ;)
     
  6. Dec 3, 2008 #486 of 1907
    dgordo

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    Perfectly normal.
     
  7. Dec 3, 2008 #487 of 1907
    phrelin

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    Northern...
    Although I did say I thought the judge ought to find Dish in contempt up to the day the subject of new code was brought up in the court process, I don't favor Dish getting off if the new code infringes. None of us know whether it does legally infringe.

    But yes, generally that is what deep pockets gets in court cases. That's generally the way it works in the good old USofA. Not always, though. Sometimes folks can wait out the system right along with their deep pocket opponent.
     
  8. Dec 3, 2008 #488 of 1907
    James Long

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    No. The bench trial is a step in this contempt proceeding. It is not a separate thing. There is just the one thing.

    Then your definition is wrong or you are misapplying the definition. Read the words of the great and powerful Judge Folsom and take heed! He did not say "before me I have a motion, but to hell with that motion I want to have a trial about something else". He said "before me I have a motion The Court will hold an additional hearing on this matter in the form of a Bench Trial." The matter is the motion for contempt.

    Linked to the question of contempt. There was no link to a finding noted.

    Yep.
     
  9. Dec 3, 2008 #489 of 1907
    jacmyoung

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    Well then I guess all the posts since the new E* filing was a total waste because what we have been arguing is no longer about who interpreted the judge's order correctly, rather if his order was correct.

    I thouhgt we had passed the point of arguing how to interpret his order:)

    Even TiVo seemed to agree his order was not proper by modifying it to save it.

    We shall find out soon since this is an emergency motion for stay of the order.
     
  10. Dec 3, 2008 #490 of 1907
    jacmyoung

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    I thought interlocutory orders are usually not appealable, is this not one of them?
     
  11. Dec 3, 2008 #491 of 1907
    Curtis52

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    Interlocutory orders can be appealed if the district court judge certifies to the appeals court that a question of law needs their guiding hand.
     
  12. Dec 3, 2008 #492 of 1907
    dgordo

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    correct, 28 U.S.C.A. § 1292
     
  13. Dec 3, 2008 #493 of 1907
    jacmyoung

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    What question of law is at issue here? Not the question of infringement I don't think.
     
  14. Dec 3, 2008 #494 of 1907
    Curtis52

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    I'm pretty sure that Dish isn't too happy with Folsom's interpretation of procedural requirements.
     
  15. Dec 3, 2008 #495 of 1907
    jacmyoung

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    That was not my question though, the question is what kind of question of law does this order seek to answer?

    I see none. The question this order seeks to answwer is a question of infringement, not a question of law, therefore may not be appealable.

    I will not be surprised if TiVo's response is just that, E* may not appeal this order.
     
  16. Dec 3, 2008 #496 of 1907
    James Long

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    Your question was:
    Curtis52 was referring to the appeals process ... an interlocutory order can be appealed if the judge wants guidance on a question of law. (Curtis52 will have to answer whether or not the order can be appealed without the judge's certification.)

    Your second question was "what kind of question of law does this order seek to answer?" which isn't in regards to the appeal.
     
  17. Dec 3, 2008 #497 of 1907
    jacmyoung

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    Below is the case E* cited in its filing, I wanted to quote a few from it but thought it may be better just to post the whole thing because each and every paragraph seemed very telling, and the whole doc is not very long, I have highlighted some and will use them later:

    55 F.3d 1567


    34 U.S.P.Q.2d 1670


    ARBEK MANUFACTURING, INC., Plaintiff-Appellant,
    v.
    Sasan MOAZZAM, Defendant-Appellee.


    No. 94-1484.


    United States Court of Appeals,
    Federal Circuit.


    May 8, 1995.
    Robert A. Sheldon, Sheldon & Scillieri, Santa Monica, CA, argued for plaintiff-appellant. With him on the brief was John A. Scillieri.

    Sasan Moazzam, Oak Land Co., Chula Vista, CA, argued pro se.

    Before PLAGER, RADER, and SCHALL, Circuit Judges.

    RADER, Circuit Judge.

    In 1991, the United States District Court for the Southern District of California enjoined Sasan Moazzam from infringing Arbek Manufacturing, Inc.'s design patent. In 1994, Arbek requested the district court to hold Moazzam in contempt, contending that a new Moazzam design violated the injunction. The trial court denied Arbek's motion and made a finding of noninfringement. Arbek Mfg., Inc. v. Moazzam, No. 90-1814 (S.D.Cal. July 26, 1994) (Arbek ). Because the trial court, in effect, found substantial open issues about whether Moazzam's new design infringed Arbek's patent, it could not find noninfringement in a summary contempt proceeding. Accordingly, this court affirms the denial of the contempt motion and vacates the noninfringement finding.


    BACKGROUND

    Arbek and Moazzam make and sell furniture. Arbek owns U.S. design patent No. 313,323 (the '323 patent), titled "Cabinet or Similar Article." The '323 patent claims "the ornamental design for a cabinet or similar article, as shown and described" in eight figures. Two figures show the patented design: NOTE: OPINION CONTAINS TABLE OR OTHER DATA THAT IS NOT VIEWABLE

    The cabinet is called a "pier" in the furniture art. Usually a pier rests on either side of a bed's headboard. Arbek's patented design features a slanted top.

    In 1990, Moazzam sold piers that Arbek claimed infringed the '323 patent. On April 4, 1991, the parties filed a stipulated Consent Judgment and Order, in which Moazzam admitted to infringing the '323 patent. Arbek Mfg., Inc. v. Moazzam, No. 90-1814 (S.D.Cal. Apr. 8, 1991) (Order). The Order enjoined Moazzam from any future infringement.

    In March 1994, Arbek learned that Moazzam was marketing a second pier that Arbek believed infringed the '323 patent. Moazzam's second pier is a modification of the first. The top of the second pier is not entirely slanted. Instead, Moazzam's new pier features a horizontal portion which extends across approximately half of the top. Neither the first Moazzam pier nor the claimed design has a horizontal top portion. The Arbek design has two rounded angles separating the top and sides of the pier; the new Moazzam pier has three sharp angles separating the sides, the horizontal top portion, and the slanted top portion.

    Arbek filed a contempt motion to enforce the Order. The motion accused Moazzam of again infringing the '323 patent. The trial court denied the motion. The trial court found: "defendant's design DOES NOT infringe on plaintiff's patented pier design." Arbek, slip op. at 2. Arbek appeals.


    DISCUSSION

    In KSM Fastening Systems, Inc. v. H.A. Jones Co., 776 F.2d 1522, 227 USPQ 676 (Fed.Cir.1985), this court sets forth a standard for deciding whether an accused infringer is in contempt of an injunction prohibiting infringement. To show contempt, the patent owner must prove by clear and convincing evidence that "the modified device falls within the admitted or adjudicated scope of the claims and is, therefore, an infringement." Id. at 1530.

    A trial court may decide contempt motions "on affidavits and exhibits without the formalities of a full trial." Id. at 1524. Additionally, in summary proceedings, an accused infringer may face fines, damages, or even imprisonment. Accordingly, this court counsels caution in contempt proceedings.

    In sum, contempt is a shield protecting the patentee against an infringer's flagrant disregard for court orders. Contempt, however, is not a sword for wounding a former infringer who has made a good-faith effort to modify a previously adjudged or admitted infringing device to remain in the marketplace. See id. at 1525-26. Rather, the modifying party generally deserves the opportunity to litigate the infringement question at a new trial, "particularly if expert and other testimony subject to cross-examination would be helpful or necessary." Id. at 1531.

    In balancing protections for the patentee and the former infringer, this court stated:

    If there are substantial open issues with respect to infringement to be tried, contempt proceedings are inappropriate. The presence of such disputed issues creates a fair ground for doubt that the decree has been violated.

    Id. at 1532 (citation omitted). This safeguard, the KSM court reasoned, accommodates due process with "the usual summary nature of contempt proceedings." Id. Thus, during summary contempt proceedings, before reaching the ultimate question of "whether an injunction against infringement has been violated," the trial court must first consider a threshold question, namely whether "substantial open [infringement] issues must be litigated." Id.

    The district court in this case found that Moazzam's second, modified pier does not infringe the '323 patent. Thus, in the words of KSM, the trial court in effect discerned "a fair ground for doubt" that Moazzam violated the order. See id. In other words, the trial court, in effect, detected substantial open infringement issues to be litigated before reaching the question of whether Moazzam had violated the 1991 injunction. This court reviews the trial court's finding for an abuse of discretion. Id.

    Design patent infringement only occurs when "the accused design is substantially the same as the claimed design." L.A. Gear, Inc. v. Thom McAn Shoe Co., 988 F.2d 1117, 1124, 25 USPQ2d 1913, 1918 (Fed.Cir.), cert. denied, --- U.S. ----, 114 S.Ct. 291, 126 L.Ed.2d 240 (1993). That is, "if the resemblance is such as to deceive ... an [ordinary] observer, inducing him to purchase one supposing it to be the other, the first one patented is infringed by the other." Gorham Co. v. White, 81 U.S. (14 Wall) 511, 528, 20 L.Ed. 731 (1871). The accused product must also "appropriate the novelty in the patented device which distinguishes it from the prior art." Litton Sys., Inc. v. Whirlpool Corp., 728 F.2d 1423, 1444, 221 USPQ 97, 109 (Fed.Cir.1984) (quoting Sears, Roebuck & Co. v. Talge, 140 F.2d 395, 396, 60 USPQ 434, 434-35 (8th Cir.1944)).

    As the trial court observed, the top of the Arbek pier is a continuous slope, while the top of the Moazzam pier is part sloped and part horizontal. In addition, the Arbek pier contains two rounded angles at the top of the pier, while the Moazzam pier contains three sharp angles at the top. These differences support what was, in effect, a finding by the trial court of substantial open infringement issues. In sum, substantial record evidence supports the trial court's finding.

    With substantial open issues of infringement on the record, "contempt proceedings are inappropriate." KSM, 776 F.2d at 1532. The trial court properly denied Arbek's motion for contempt. This court affirms that denial.

    The trial court chose, however, to undertake a substantive infringement analysis. This inquiry was premature. Once the trial court found the modified pier substantially different on its face from the patented design, KSM required denial of the motion and dismissal of the case because there could be no "finding that the modified [Moazzam pier fell] within the admitted ... scope of the ['323 patent]." Id. at 1530. On a summary record, the district court could proceed no further. Accordingly, this court vacates the noninfringement finding.


    CONCLUSION

    This court affirms the denial of the contempt motion and vacates the noninfringement finding. COSTS

    Each party shall bear its own costs.

    AFFIRMED-IN-PART and VACATED-IN-PART.
     
  18. Dec 3, 2008 #498 of 1907
    jacmyoung

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    The Court argued that, in a summary contempt proceeding, the district court may not even attempt to find non-infringement by the modifed devices, only to answer the question if substantial open issues have been raised by the modified devices.

    What the judge's current order is in fact to determine if the modified devices are infringements or not, therefore it is not appropriate, as long as it is deemed a part of the sumamry contempt proceeding.
     
  19. Dec 3, 2008 #499 of 1907
    jacmyoung

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    I am still waiting for Curtis, or dgordo to answer my question, what kind of question of law does this bench trial seek to answer?
     
  20. Dec 3, 2008 #500 of 1907
    dgordo

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    Dish is claiming that their due process rights are being violated for one thing. Application of due process is a question of law.
     
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