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Discussion in 'General DISH™ Discussion' started by dfd, May 14, 2010.
There's this thing called jurisdiction...
Precisely. If this case is no longer a patent case, the fifth circuit would have had the jurisdiction over it, not CAFC.
In fact to some degree Judge Folsom said the same thing you said, he said when it came to the issue of contempt, the regional law (i.e., the fifth circuit law) should govern, not patent law, despite the fact the patent law has specific rule in governing contempt of an injunction against infringement, basically that no infringement, no violation, period.
So you are correct that Judge Folsom tried to move away from patent law to justify his contempt holding. While I am not in the position to question such approach, I had pointed out that Judge Folsom had not found a meaningful form of sanction that was not based on infringement. Therefore even if he could be correct, there would be no punishment to fit the "crime" so to speak. As such it would only make the court look weak for having no mechanism to enforce an injunction against infringement, if infringement does not exist.
One thing to point out is, Judge Rader in his dissent stated that no one could have even interpreted the injunction to mean anything other than what E* had interpreted. If you notice I had never held such a strong argument, I always said TiVo could have its interpretation, E* could have its own. TiVo could even have more reason to argue its interpretation was more reasonable, and the court could even agree with TiVo, but as long as E*'s interpretation had some merit, even if the merit was not as strong, E* still should win.
But here, we have the Chief Judge on the record of taking the position that TiVo's interpretation (therefore Judge Folsom's interpretation) simply was not possible, not my words. But how could that happen that TiVo and Judge Folsom did not know how to interpret their own injunction? I think the key here is what TiVo had told the court at the time the injunction was framed and issued to E*, as Judge Rader pointed out, TiVo told both Judge Folsom and E* at the time that its proposed injunction was to prevent further infringement, nothing more, nothing less. In such context, of course one simply cannot interpret the injunction to mean E* was still in violation even if the infringement had stopped.
On 3/16/11 the CAFC decided on a case that was very interesting. The case is linked below:
Judge Mayer issued the opinion. Correct me if I am wrong, Judge Mayer was one of the two judges who sided with TiVo during the last panel review, of which the majority ruling was later vacated by the en banc panel.
In any event the above case had the opposite results, the patent holder accused the defendants of infringement, after the trial the district court invalidated the relevant patent claims. On appeal the CAFC upheld the lower court decision to invalidate the claims. What was interesting was at the meantime there was a PTO reexamination resulted in the PTO reaffirming the relevant claims. But after the PTO learned the CAFC decision affirming the invalidity finding, the PTO withdrew its final certification of the reexamination.
At the same time after the CAFC affirmed the case, the winning party (the defendant) sought reward of attorney fees and cost against the losing patent holder, and the district court sided with the defendant again, awarded the costs.
On appeal, as linked above, the CAFC panel reversed the award. One of the major reasons of the reversal of the sanctions, was because the CAFC panel had taken judicial notice of the PTO reexamination, and in part relied on such PTO reexamination to demonstrate that the losing party, i.e. the patent holder, had good reasons to bring on the original patent case, as such no sanctions were warranted. The winning party argued in part that the PTO reexamination was irrelevant since it was after the courts had made those decisions. But Judge Mayer disagreed.
Recall in this TiVo v. E* case we have a similar situation where E* had motioned the CAFC to take judicial notice of the PTO reexamination in support of E*'s contention that the modified DVRs no longer infringed. The CAFC granted such motion, although the CAFC panel at that time did not rely on the PTO reexamination, in part probably because the PTO proceeding was still in its infancy.
Lately however after the PTO concluded the reexamination, E* again argued to the en banc panel how the PTO examiner's own definitions of the claims clearly supported E*'s contention that the modified DVRs no longer infringed. TiVo did not dispute such contention, TiVo only argued that the court had performed its own review already, the PTO reexamination was irrelevant and E* was only trying to delay the process.
If the same opinion Judge Mayer issued in the above case is applied here, it is reasonable to argue that the PTO's reexamination, which supports E*'s non-infringement arguments (which TiVo does not even dispute, TiVo only argues that it was irrelevant), should have the same significance here.
Now if we can revisit this issue a bit. Since last majority decision, Judge Mayer went into semi retirement status, probably for that reason he did not participate in the en banc hearing. But it had been pointed out by some, especially the TiVo supporters that the rules allow Judge Mayer to cast his vote in the en banc decision since he is still an eligible cafc judge. In fact lately a newly appointed cafc judge actively participated in several decisions even though she wasn't present in those hearings.
Of course the TiVo supporters wanted to see Judge Mayer participate in the final vote, but given this latest decision, issued by Judge Mayer himself, I wonder if they still wish the same? It seems to me if the same standard is appllied, at a minimum Judge Mayer would vacate the sanctions imposed by Judge Folsom.
I decided to dig even deeper on the issue of the PTO reexamination.
Recall in a recent decision to lift the stay of a case E* filed against TiVo by a judge in the E. TX court? That was a countersuit file by E* after TiVo filed this case several years ago. TiVo got the PTO to invalidate those claims E* used in that case, while the E. TX court stayed the case. On appeal E* finally after years managed to get one of the several claims reaffirmed by the board of appeals. E* then asked the court to lift the stay of that case, TiVo opposed, presumably arguing that the appeal was not over. My guess is TiVo was appealing that board decision to affirm that last claim, to the CAFC.
But the judge at the E. TX court disagreed with TiVo, in part she quoted Judge Folsom in one of his latest rulings that the PTO reexamination process often complicated the issue, not simplifying it, therefore it would not serve any purpose to continue to stay the case if staying the case was to simplify the potential issues for court economy.
The reason I mentioned the above most recent development is, we now have two judges who were instrumental in supporting TiVo, came out to address the PTO reexamination process, implying that such issue may land support to E*. Keep in mind we all agree that in a civil case, judges want parties to settle, not having to make decisions for them. Even though this might be to far fetched, I like to think the judges are sending parties signals.
Charlie was quoted to offer a settlement with TiVo right before the en banc review decision. While clearly TiVo did not accept that offer (a pretty low offer I agree, and who knows after the en banc maybe Charlie even decided to put that offer on hold), but TiVo stated in the past they always wanted to settle with E*.
I have always said E* and TiVo are two like-minded companies, should have worked together. Both of them are now in difficult positions due to competitions, they need to work together more so than ever. Working together is good for everyone, including us consumers.
But hey what do I know?
It appears Judge Folsom has begun to transfer his cases in anticipation of his retirement. He recently transferred duties in both the TiVo v. ATT and v. Verizon cases to a magistrate judge. Since parties have to consent to have a magistrate judge to preside over a civil case, one might assume the parties did consent to let the magistrate judge take over from Judge Folsom.
This will likely lead to the complaint by the TiVo supporters how justice is not served due to the delay in the TiVo v. E* case, if a new action is ordered Judge Folsom will not be there for TiVo, no one can again, like the majority on the merits panel, simply trust the judge's expertise rather than doing their own independent denovo review.
But before we hear such complaint, let me point out the fact that the delay was mostly caused by the court and TiVo. Recall it was Judge Folsom who wanted a hearing, which TiVo did not object, in fact TiVo made suggestions as to how the colorable difference issues could be handled in that hearing.
In the end TiVo argued, and Judge Folsom agreed, it did not matter, E* was in contempt on the face of the order anyway. They did not need those analyses. The delay was TiVo's own doing. More significant is that the delay had allowed the PTO reexamination to reach its conclusion, now the PTO patent prosecution history clearly supports E*'s contention that the modified DVRs no longer infringe.
That's like saying that you broke out of jail and then the law changed that put you in jail so you can't be re-incarcerated for jail breaking.
That's not like it at all.
The PTO reexamination is not about the law, it is about what the patent really means. E* succeeded in getting the PTO to clarify what does the term "parse audio and video data" means, it turns out it means exactly what E* said in court, not what TiVo said in court.
Such clarification clearly supports E*'s contention that the new software and the modified DVRs do not infringe. This much TiVo does not even dispute, TiVo only says but it is irrelevant.
Now ask yourself, if after the PTO clarification, there is no dispute that the modified DVRs no longer infringe, how the court may apply the law, which still is the same, not changed? Should the court nevertheless insists E*'s modified DVRs still infringe?
Who was the one that issued the patent? The PTO correct? Where did TiVo gain the legally patent protected exclusion right? From the PTO, not the court. Therefore when the PTO supports E* that the modified DVRs no longer infringe, the court needs to take notice, or else maybe the court can now start issuing patents instead.
But doesn't Judge Folsom want the DVR's shut down "even if they no longer infringe"? That quote is what really set Judge Rader off. No wonder Folsom has not found the time to review the new software E* sent many moons ago. Or was it over a year ago? He has already determined that it doesn't matter to him what the new software does. He'll just reject it outright. The appeals court is going to have to slap Folsom down hard in order for E* to get a fair review of it's existing software and also the new software.
That was not why Judge Folsom did not review the new software, in fact he said he agreed with E* and recognized the urgency in reviewing the new software, just that the court had no time to do it, not because he did not care, nor because the order was stayed, rather that he had no time.
In response, it helps to point out the above fact to demonstrate why the preapproval provision is unenforceable, therefore the injunction should be vacated.
I think the above approach is better than trying to second guess the judge. He might have tried very hard to encourage E* to settle, yet when he realized it would not work, he might have decided he had done all he could, instead offered E* an opening to get the order vacated. You never know so I would not try to second guess him.
It is of course up to E* to drive such point through.
It's not the patent or validity of the patent that should put E* in contempt, it's the attempt to thwart the injunction that Folsum issued. Any other issues and arguments do not allow E* to ignore the disabling injunction. Once the court issued an injunction that E* failed to follow to the letter, E* is in contempt. Once E* was in contempt, there is no "get out of jail free" card available. This is in spite of all the creative spins by the E* legal team.
On the surface, the en blanc panel is faced with a dilemma, enforce the injunction even though the new software may not infringe, or allow a potential infringer to abuse the legal system. I don't expect such a black and white decision.
I predict a middle of the road finding. The panel could find E* in contempt of Folsum's valid injunction, and remand the new software for a new trial if E* is willing to pay TiVo extra damages and/or obey the original injunction while the new trial takes place. The panel also has the option of finding a period of contempt from the date of the injunction until the PTO issued new patent findings for the TiVo patent. If that decision is handed down, the injunction has been validated, and then new software can be contested only from the date of the PTO finding forward.
In other words, it's the infringement at the time of various points in the proceeding, not the legality as it exists now.
Of course I was talking about the infringement issue not the contempt issue, I stated too many times why there was no contempt I do not intend to repeat it.
Once the PTO clarifies a claim term, the meaning of it of course has been true going all the way back to the day the patent was issued. If such meaning clearly demonstrates that the modified DVRs no longer infringe, of course it means they longer infringed on the day the modification was done, not at the time the PTO made such clarification.
And we finally have a decision. Contempt is upheld on disablement provision but remanded for a new hearing on infringement based upon a "new standard."
nevermind didnt' se the link b4 do you guys view this as a win/win or a win for tivo?
Does Dish still need to shut down their DVRs? it says they have 30 days to do so for a bunch of DVRs in the ruling at the end? or am i misreading?
Split the baby
That's a pretty interesting dissent. It boils down to Dish winning one and losing on two, 6-5. The dissent calls a lot of the Opinion into question with respect to equating the VIP series DVRs with the Infringing Products, and specifically questions why there seem to be two definitions of Infringing Products when they initially spelled it out with model numbers.