TiVo's contempt motion is out

[Thomas22]

Here's some of it:

"EchoStar’s argument that the Court can no longer exert its authority over the DVRs once EchoStar has modified their software is not only an improper collateral attack on the injunction (as discussed above), it is wrong. The Federal Circuit has approved the district courts' authority to rule upon and to enjoin so-called “design arounds” in injunctions in patent infringement cases. For example, in Additive Controls & Measurement Systems, Inc. v. Flowdata, Inc., the district court issued an order enjoining the defendant “from making, using, and/or selling any positive displacement flowmeter” and prohibiting the defendant from engaging in commercial activities for any allegedly redesigned flowmeter product without obtaining the court’s permission in advance. 32 U.S.P.Q.2d 1747, 1757 (S.D. Tex. July 12, 1994), aff’d in part and rev’d in part on other grounds, 154 F.3d 1345, 1356 (Fed. Cir. 1998). The Federal Circuit affirmed this portion of the order, finding that “the district court reasonably concluded that such measures were necessary in this case to compel compliance with the court’s orders.” 154 F.3d at 1356. The Federal Circuit approved a similar provision, prohibiting the defendant from selling any allegedly redesigned device without obtaining the court's permission in advance, in Spindelfabrik Suessen-Schurr v. Schubert & Salzer Maschinenfabrik Aktiengesellschaft, 903 F.2d 1568, 1577 (Fed. Cir. 1990). In each of these cases, the defendants engaged in precisely the same tactic that EchoStar has here, claiming to have redesigned a product to avoid infringement and, in each case, the court determined that it had authority over the allegedly modified product. Spindelfabrik, 903 F.2d at 1571; Additive Controls, 32 U.S.P.Q.2d at 1755, 1757.

Here, EchoStar knew that it was modifying its software when the injunction issue was being briefed and argued before this Court. EchoStar could have and should have requested a “pre-clearance” provision like the ones above. EchoStar made the decision to go ahead in secrecy without any Court approval instead. But that did not make EchoStar's modified products automatically exempt from the Court's injunction. To the contrary, under the language of the injunction, they remained subject to the disablement requirement. To exempt them would require a decision by this Court, not by EchoStar. As EchoStar’s behavior confirms, the Court’s decision to issue a simple and unambiguous order, “disable the DVR functionality (i.e., disable all storage to and playback from a hard disk drive of television data) in [DP-501, DP-508, DP-510, DP-522, DP-625, DP-721, DP-921 and DP-942]” was a wise one. EchoStar’s decision to be less than candid with this Court and with the Federal Circuit – by seeking a stay of the injunction without disclosing its efforts to modify the software and then, if necessary in the future, using the software modifications as an argument for disregarding the injunction’s disablement provision – was made deliberately. While EchoStar may now be arguing that the spirit of the injunction allows for modified software, its previous positions with this Court and with the Federal Circuit coupled with its conduct show that it was attempting to circumvent the injunction, not comply with it. Such conduct constitutes contempt of court. "

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"TiVo respectfully requests that the Court issue an Order holding EchoStar in contempt of the Permanent Injunction and requiring EchoStar to comply by disabling the DVR functionality within seven calendar days in the DVR receivers specified in the injunction (i.e., DP-501, DP- 508, DP-510, DP-522, DP-625, DP-721, DP-921 and DP-942). "

[Jim S.]

Meanwhile, the patent is still stupid.

[riffjim4069]

Meanwhile, the patent is still stupid.

I agree the TiVo patents are "stupid", but I also feel that way about the speed limits placed on many rural highways. However, I still obey them! TiVo is going to shutdown the infringing DVRs, receive licensing fees 2-3 times those offered law-abiding companies, or both! At this point, E* needs to open their wallet and pay the TiVo their bribe before they go after the ViP series of DVRs.

[nsafreak]

Didn't respond to the post when it started so I'll have to alter what I should have posted at the beginning:

Wild speculation about the future of E*'s DVRs continues after this post.

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[Cyclone]

So why in plain english does the old Dish DVR's violate the Tivo patent, but the new ones do not? I know dish "worked around" the violations, but what exactly is the violation?

[jimboeau]

TiVo is going to shutdown the infringing DVRs, receive licensing fees 2-3 times those offered law-abiding companies, or both!

And the earth is flat!

[iwc5893]

[Thomas22]

So why in plain english does the old Dish DVR's violate the Tivo patent, but the new ones do not? I know dish "worked around" the violations, but what exactly is the violation?

There has been no determination that the new model number DVRs do not infringe the patent. The new model numbers didn't exist at the time of the trial so it's no surprise they aren't specifically named in the injunction. However, the injunction prohibits slight variations.

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 or selling in the Untied 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.

If I was a retailer I would get legal advice.

[juan]

So why in plain english does the old Dish DVR's violate the Tivo patent, but the new ones do not? I know dish "worked around" the violations, but what exactly is the violation?

Maybe because Tivo didn't have a working MPEG-4 model?

[Thomas22]

Maybe because Tivo didn't have a working MPEG-4 model?

Irrelevent. TiVo's patent would be just as valid if TiVo had never built or sold a DVR. Also, TiVo's patent doesn't mention a particular version of MPEG.