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. jacmyoung

    jacmyoung Hall Of Fame

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    You cited another part of the injunction which is none of the business this next hearing is trying to address, the hearing will address one thing and one thing only, whether E* had violated the "second order" of this injunction, that is the order to "disable the DVR functionalities" in the 8 named DVRs.

    I knew perfectly what it means. Now you are saying E* did not try to challenge the scope of the injunction, then why did you even bring that point up in the first place?
     
  2. jacmyoung

    jacmyoung Hall Of Fame

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    The fat lady has yet sung, so I suggest we all wait to see what the judge will do next.

    My point was initially the judge did not want to do any colorable difference analysis, he simply ordered a bench trial to try the infringement. After E*'s objection, he added the colorable difference anaylsis and called it an evidentiary hearing.

    The ground is now laid for E*, if the judge finds more than colorable difference, he must find no contempt, if he refuses and still tries to find an infringement and a contempt, E* can now appeal to have that overturned, because once the difference is more than colorable, the contempt motion must be denied.

    We don't know E*'s response yet, and do not know judge's response after that either. All we know at this time is the judge allowed 2.5 more hours for E* to talk about the claim invalidity.
     
  3. the judge

    the judge Duplicate User (Account Closed)

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    You claim that "the hearing will address one thing and one thing only".

    But according to Folsom: The Court will hold an additional evidentiary hearing ...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...; and (2) whether these receivers continue to infringe claims 31 and 61...either literally or under the doctrine of equivalents.

    Clearly the hearing will address two things and two things only.

    Once again you are dead wrong.

    I brought it up to establish that Echostar is foreclosed from trying to argue the validity of the injunction, like they are trying to challenge the validity of the patent.

    Although after further reflection, they could still try to argue the validity of the Eastern District of Texas, the validity of the State of Texas itself, the validity of the USPTO, the validity of the United States of America, the validity of democracy and capitalism, the validity of the solar system, the milky way galaxy and the universe. And if that all fails they might argue the validity of space/time itself.
     
  4. the judge

    the judge Duplicate User (Account Closed)

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    What part of the CAFC ruling in KSM where they stated that "Substantial discretion must be permitted to the trial court to determine the extent of further proceedings" do you not understand?

    It's almost unbelievable that you are arguing that you are more informed on patent law than Judge Folsom himself, a man who was just appointed Chief Justice of the Eastern District of Texas. For my money, Folsom is the smartest man in the room.
     
  5. jacmyoung

    jacmyoung Hall Of Fame

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    No, both items in the hearing are to address only one thing in the injunction, the second order in the injunction (disabling the DVR functions in the 8 named DVRs), not the other part you quoted.

    Wrong, while E* may not challenge the scope of the injunction, whether E* may address the validity of the patent is still unknown, please wait to hear from the judge, not just take what TiVo is saying. TiVo said a lot, they still has not gotten anything yet.
     
  6. jacmyoung

    jacmyoung Hall Of Fame

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    If I understand you correctly, you are saying that 1983 case you cited was regarding KSM? Well the KSM case we have been talking about was issued in 1985 by the appeals court, which overturned the previous KSM decision by the lower court.

    Now you know why I told you it is preferable to cite the cases post KSM, meaning post the 1985 KSM ruling by the Federal Circuit?

    Besides, what was the point were you making anyway? Of course the district judge is given wide latitude to frame his decisions and his proceedings. My point was, in doing so, Judge Folsom has so far modified his hearing format according to what E* has asked him to:

    1) Initially, he ordered a "bench trial", E* objected, saying a "bench trial" was not proper, he could not order a bench trial in a contempt proceeding and he must order a colorable difference analysis instead, later he modified his bench trial to the current "evidentiary hearing" and added the colorable difference analysis as the first order of his hearing.

    2) In response to E*'s latest motion, he added 2.5 more hours to allow E* to discuss the TiVo patent invalidity issue.

    The above was to dispute your notion that E* nor TiVo could do anything to change the judge's mind, that somehow the judge will do whatever he wishes.
     
  7. Greg Bimson

    Greg Bimson Hall Of Fame

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    No, all we know is Judge Folsom granted another two and a half hours for arguments. We do not know if Judge Folsom will allow a challenge to the validity of the patent.
     
  8. Greg Bimson

    Greg Bimson Hall Of Fame

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    Actually, we don't know that, either. Because TiVo is accusing ALL of the eight models that were originally found infringing, including all of those which have been sold since modifications were made and the injunction became active, the information from this hearing can also make the determination of say, whether or not the 625's currently being sold are infringing and merely colorably different or not.
     
  9. the judge

    the judge Duplicate User (Account Closed)

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    The Order portion of the injunction has three parts:

    "IT IS THEREFORE ORDERED THAT Plaintiff shall have and recover from Defendants, jointly and severally, the total sum of $73,991,964.00, together with prejudgment interest at the rate of prime, said prejudgment interest in the total sum of $5,367,544.001, together with supplemental damages in the amount of $10,317,108.00, together with post-judgment interest on the entire sum calculated pursuant to 28 U.S.C. § 1961. The amounts awarded in this judgment shall bear interest from the date of judgment at the lawful federal rate."

    "IT IS FURTHER ORDERED THAT Each Defendant, its officers, agents, servants, employees and attorneys, and those persons in active concert or participation with them who receive actual notice hereof, are hereby restrained and enjoined, pursuant to 35 U.S.C. § 283 and Fed. R. Civ. P. 65(d), from making, using, offering to sell, selling, or importing in the United States, the Infringing Products, either alone or in combination with any other product and all other products that are only colorably different therefrom in the context of the Infringed Claims, whether individually or in combination with other products or as a part of another product, and from otherwise infringing or inducing others to infringe the Infringed Claims of the' 389 patent."

    Defendants are hereby FURTHER ORDERED to, within thirty (30) days of the issuance of this order, disable the DVR functionality (i.e., disable all storage to and playback from a hard disk drive of television data) in all but 192,708 units of the Infringing Products that have been placed with an end user or subscriber. The DVR functionality, i.e., disable all storage to and playback from a hard disk drive of television data) shall not be enabled in any new placements of the Infringing Products.
    Defendants shall forthwith provide written notice of this judgment, and the injunction ordered herein, to: their officers, directors, agents, servants, representatives, attorneys, employees, subsidiaries and affiliates, and those persons in active concert or participation with them, including any and all manufacturers, distributors, retailers, and service providers who have been involved in the making, using, selling, offering for sale or importing of any Infringing Products; and to all other persons or entities involved in any way with the making, using, selling, offering for sale or importing of any Infringing Products. Defendants shall take whatever means are necessary or appropriate to ensure that this order is properly complied with."

    So there it is, all three parts. Yet you claim that both "items" in the hearing are to address only one thing in the injunction, the second order in the injunction (disabling the DVR functions in the 8 named DVRs).

    It goes without saying that you're dead wrong that the "disable the DVR functionality" is in the second order, it's in the third.

    And you are dead wrong that the hearing will address only one thing in the injunction. Clearly the hearing will address Order part 2: "making, using...the Infringing Products...and all other products that are only colorably different therefrom in the context of the Infringed Claims...and from otherwise infringing or inducing others to infringe the Infringed Claims of the' 389 patent." AND Order Part 3: "within thirty (30) days of the issuance of this order, disable the DVR functionality...in all but 192,708 units of the Infringing Products that have been placed with an end user or subscriber. The DVR functionality...shall not be enabled in any new placements of the Infringing Products.

    Looks like you didn't even read it.
     
  10. the judge

    the judge Duplicate User (Account Closed)

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    I didn't say "that Echostar nor Tivo could do anything to change the judge's mind".

    I said "Neither Tivo nor Echostar will get to decide the kind of hearing they want."

    Do you understand the difference, or do you just want to have inane arguments?
     
  11. the judge

    the judge Duplicate User (Account Closed)

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    Yet yesterday you claimed that:
    So today you're agreeing that the district court is given wide latitude to frame his decision and proceedings. But yesterday you said whatever he does if he finds more than colorable differences, any" decision on infringement will be tossed out".

    So which it? Wide latitude to frame his decisions or no latitude to frame his decisions? For everyone's sake, pick one and stick with it.
     
  12. tracyball

    tracyball Cool Member

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    Thanks for everyone's input.

    It seems to me that the Judge HAS to determine the infringement status of Echos DVRs both past present and future, in order to do the damage calculation. Could someone address this issue for those of us interested, and inexperienced in the law.

    Also, I get the impression that Tivo's strategy is brilliant to "stick to" the simply request for the finding of contempt "on the face", and to resist getting drawn into a game of semantics and technicalities that could weaken their case before the "hearing".

    Comments?
     
  13. Greg Bimson

    Greg Bimson Hall Of Fame

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    That is correct.

    However, let's throw out some scenarios...

    Judge Folsom's original order for additional information regarding contempt mentions nothing about finding the status of colorable difference. It simply was to be a bench trial to find continuing infringement. So it is definite that Judge Folsom felt that the infringement test was key to having the contempt issue draw to a close.

    However, because TiVo had asked to find contempt for sales of modified yet still infringing receivers (in TiVo's mind) within both the technical arguments and the damages, colorable difference would have to be determined. Judge Folsom mentioned during the emergency motion filed by DISH/SATS that it was always his intent to test colorable difference.

    The following is my opinion: I seem to recall that a few cases where a workaround on enjoined products was available that some judges had mentioned they expected their order to be followed while the workaround was evaluated. In other words, Judge Folsom most likely expected that DISH/SATS would disable the DVR's as listed in his order, until DISH/SATS was able to prove that their workaround no longer infringed. Therefore, I believe that Judge Folsom will find DISH/SATS in contempt for the violation of the injunction on its face. The problem is what Judge Folsom can then order:

    DISH/SATS, you did not shut down the receivers like I said. Therefore I'll order you to disable them again.

    The problem is specifically that Judge Folsom cannot order a device disabled without testing for infringement (thanks to KSM). So that is why these devices are being evaluated again. If they infringe, they will be ordered disabled again. If not, DISH/SATS may still be in violation of the injunction on its face, but the status of non-infringement will allow those devices to remain in service.
    I am one of the few here that would say this. TiVo seems to have most, if not all, of their bases covered. Their main argument has been the violation of the injunction on its face. Their next argument is that the modified devices still infringe, and are merely colorably different.

    Now they must concentrate on the second argument. The only issue TiVo has had with the evidentiary hearing (besides possibly being a bit deficient on their disclosures) is that DISH/SATS is trying to question the validity of the patent within their expert testimony. The time for patent validity evaluations is during a trial. This is no trial, but an evidentiary hearing, to determine the outcome of a contempt motion using an evaluation of colorable difference and infringement.

    TiVo has mentioned a few times the technicality that these devices cannot be "retried" and that the trial and all appeals are "the record of the case" while DISH/SATS attempt to relitigate what is already on record. So TiVo is also trying to use technicalities to have DISH/SATS found in contempt.
     
  14. tracyball

    tracyball Cool Member

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    "It seems to me that the Judge HAS to determine the infringement status of Echos DVRs both past present and future, in order to do the damage calculation. Could someone address this issue for those of us interested, and inexperienced in the law."

    "That is correct."

    So there is no argument from jacy that this is indeed what is going to happen?

    The Judge will examine all of Echo's DVRs both past, present, and future, and determine if they infringe or continue to infringe the 389 patent, and use that determination to send the damages bill to Echo?
     
  15. tracyball

    tracyball Cool Member

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    by future DVRs I should say I mean a pre-liminary injunction placed upon any new DVRs until they are cleared by the court
     
  16. Curtis52

    Curtis52 Hall Of Fame

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    Interesting Federal Circuit ruling in Hallco v. Foster:

     
  17. Greg Bimson

    Greg Bimson Hall Of Fame

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    That would not happen for a while. DISH/SATS would have to be found in contempt for making infringing DVR's at least twice. DISH/SATS has yet to be found in contempt (or not).
     
  18. Greg Bimson

    Greg Bimson Hall Of Fame

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    Cool find.

    At issue in the Court of Appeals decision is claim preclusion. Within that decision is simply the colorable difference test. If Hallco I and Hallco II were merely colorably different, claim preclusion applies, and of course a finding of merely colorable difference would be a win for Foster.

    Of course, applying that here, TiVo would be free to file contempt motions on any of the newer DVR's not subject to this current suit.
     
  19. James Long

    James Long Ready for Uplink! Staff Member Super Moderator DBSTalk Club

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    Have you bothered to read the past threads as requested? We all know the injunction ... likely better than you do.

    The February 17th-18th hearing is being held to assist Judge Folsom with gathering information to decide a Motion that is before him. That Motion asks Judge Folsom to decide ONE SIMPLE ISSUE ... whether Echostar is in contempt of the injunction for not disabling the DVR functionality.

    That's it ... nothing else. There is no other Motion for Contempt in front of the court.

    That sounds more like an admission than an accusation. We've been over this all before. Do try to keep up.
     
  20. James Long

    James Long Ready for Uplink! Staff Member Super Moderator DBSTalk Club

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    I wouldn't give Tivo credit for sticking to the "on the face" request. Last May they tried to do everything, laying out the multiple steps, but were stopped by Judge Folsom who decided to take it one step at a time. Tivo had trouble staying on that focus in their filings (always setting up the next step - or drifting ahead of the court).

    I can see where DISH would file to keep the February 17th-18th hearing focused on the issue at hand (step 1 - contempt on the face) instead of drifting into further issues (a negative ruling beyond failure to disable would not be good) and why Tivo would file to keep the hearing away from challenging the patent. A ruling against their patent would be devastating.

    Neither party wants to lose ... both would accept a win beyond their requests ... but they do not want to lose more than the issue at hand.

    The best loss for Tivo would be a simple "they're not in contempt ... DISH obeyed the spirit of the injunction by changing the DVR functionality" without ruling the new functionality non-infringing. A long shot but the "best loss". I expect that if Tivo loses they would lose more.

    Just like for DISH ... the best loss for DISH would be being found in contempt based on Walker vs Birmingham and have no ruling on infringement against them. Again a long shot (I don't believe Judge Folsom would waste 15 hours in court and not rule on the infringement issues) but still DISH's "best loss".

    It is a weird poker game ... both sides want to win based on more than they bet but not lose any more than they bet. :)
     
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