TIVO vs E*

[Greg Bimson]

KSM applies to all contempt rulings in patent infringement cases when design around is an issue, the Circuit Court established their standard when they made the decision in KSM and asked all district courts to apply such standard, and it will have to be applied, that is not my words but the words of the Circuit Court, until such time a new standard is establised to supersede it.

Not at all. Not every modified device is subject to KSM. From KSM:

Under the standard we adopt, a judgment of contempt against an enjoined party for violation of an injunction against patent infringement by the making, using or selling of a modified device may not be upheld without a finding that the modified device falls within the admitted or adjudicated scope of the claims and is, therefore, an infringement.

This is the standard from KSM. In order for it to apply, TiVo must ask for "a judgment of contempt against an enjoined party for violation of an injunction against patent infringement by the making, using or selling of a modified device". If TiVo does not accuse DISH/SATS of this action, then it doesn't apply, and therefore KSM doesn't apply.

TiVo's first real action is to have DISH/SATS follow the disable order. That way, DISH/SATS would have to come to the bargaining table with their tails between their legs and bargain from a position of weakness.

TiVo's second real action of course was the damages. But within the damages motion, TiVo is asking for Judge Folsom to find contempt upon all models that have been sold since the software change, since TiVo believes those are still infringing. Therefore, TiVo has accused and asked for "a judgment of contempt against an enjoined party for violation of an injunction against patent infringement by the making, using or selling of a modified device".

If Judge Folsom does not grant contempt for violations of the disable order (although after reading the KSM standard I can't help but wonder why), he can still find contempt for selling products that are not colorably different and still infringe upon the patent at hand. After all, TiVo has asked for a finding of contempt on the modified devices that have been sold, so KSM's standard should be used on these devices.

[jacmyoung]

Now again please stop arguing on that over and over, it is a waste of time, we clearly disagree.

My point of the earlier post was, it is not simply sufficient for TiVo to dismiss anything and hope they can win.

TiVo as the mover in a summary contempt proceeding must prove, by citing of cases where mere violation of the face of the injunction was enough, even when a legit design around was an issue.

There is none of such case. E* on the other hand cited the StarBrite case to prove their case, in StarBirte, the violation on the face was clearly true, but that was not enough to issue a contempt because of the design around.

Again stop arguing that, "but the StarBrite was for 'new products' so it does not apply." The whole point about the StartBrite was to ask the question, is "mere violation on the face enough to rule a contempt?" Because that is exactly what TiVo's argument is, and E* offered their case to give the answer provided by StarBrite, which is a clear "No".

But if TiVo disagree, that is fine, except don't just dismiss StarBrite, please let's find a case where it proves "mere violation on the face is enough, even if there is a legit design around". Did TiVo offer such case? No.

So TiVo was left to argue that E* violated the order, and E* is disagreeing with the order, and it is too late to disagree with the order.

Let me put it this way, TiVo is using the following logic:

We interpreted the order to be one way, E* interpreted the order the other way, based on our interpretation, E* is in violation, therefore E* is in violation, E* should have contested the order, and therefore E* is contesting the order. See the problem?

Remember, the judge has not said if TiVo's interpretation is right, or if E*s is right, he noted in his agenda that is not determined, that his next ruling will have to make that decision.

And he may agree with TiVo, or E*, or neither, and offer his own explanation.

TiVo has already assumed the judge will agree with their interpretation, and started their argument under such assumption. Not too fast, all I am saying.

[jacmyoung]

I have long said we should stop the circular argument, and agree to disagree. Thomas tried it and decided to stop too It is no use, only the judge can settle it.

I am only pointing out other factors, such as what the judge said on 9/4, what TiVo had failed to do what the judge asked them to do, to "cite another case for me". Those in my view are signs pointing to a likely outcome. You don't even have to agree with my such way of guessing the outcome.

The judge on 9/4, asked TiVo what if he did not find violation on the face, meaning what if he did not agree with TiVo's interpretation of his order? No the judge had not agreed with TiVo, he tried to make that point clear to TiVo's lawyer by asking the above question.

The problem is TiVo's entire argument is based on the assumption the judge has already agreed with their interpretation. And because of that, TiVo's whole argument may be out of the window if the judge disagrees with TiVo's interpretation.

[Greg Bimson]

Now again please stop arguing on that over and over, it is a waste of time, we clearly disagree.

My point of the earlier post was, it is not simply sufficient for TiVo to dismiss anything and hope they can win.

No, but if TiVo can dismiss the arguments from DISH/SATS, it means DISH/SATS has no defense to the contempt charge...

TiVo as the mover in a summary contempt proceeding must prove, by citing of cases where mere violation of the face of the injunction was enough, even when a legit design around was an issue.

Why? There hasn't been any case law found which supports DISH/SATS' position that any modification automatically invokes KSM as the standard. Especially now that I've spelled out that standard, as it does not apply to all "modified products".

This is the standard for civil contempt:
"To prove civil contempt, the moving party must show by clear and convincing evidence that “(1) a valid court order existed, (2) the defendant had knowledge of the order, and (3) the defendant disobeyed the order.”

The judge simply has to rubber-stamp this to be found in contempt...

We interpreted the order to be one way, E* interpreted the order the other way, based on our interpretation, E* is in violation, therefore E* is in violation, E* should have contested the order, and therefore E* is contesting the order. See the problem?

Yep. DISH/SATS didn't follow the order, hoping to pull a fast one by arguing a reading of the injunction that is counter to law:

We obeyed the order when we downloaded software, as we had to disable the receivers. Except that disable lasted for an instant before the injunction was ever active.

We don't have to obey an order against "Infringing Products", because it does violence to the natural meaning of the phrase "Infringing Products" to argue, as TiVo does, that it encompasses units supplied with Echostar's non-infringing software. Except "Infringing Products" has been defined in the injunction as the eight models of DVR found infringing. Once a definition, it is not a "natural phrase".

E* on the other hand cited the StarBrite case to prove their case, in StarBirte, the violation on the face was clearly true, but that was not enough to issue a contempt because of the design around.

Again stop arguing that, "but the StarBrite was for 'new products' so it does not apply." The whole point about the StartBrite was to ask the question, is "mere violation on the face enough to rule a contempt?" Because that is exactly what TiVo's argument is, and E* offered their case to give the answer provided by StarBrite, which is a clear "No".

Hmm.

In StarBrite v. Gavin, the defendant was enjoined from the making, using or selling of six named products. Gavin, the defendant, started selling products with the exact same name given in the injunction, but with a differing, modified formula. StarBrite, the patentee, filed contempt charges, and lost. The conclusion was that if the product being sold is not the same "infringing formulation" as what was covered by the injunction, the injunction could not prohibit it. The name may be the same, but it is not the same product.

And once again, in TiVo v. Echostar the product in question has been adjudged as infringing, unlike the modified formula in StarBrite v. Gavin. Besides, because of the accusation by StarBrite that Gavin was selling product prohibited by the injunction, we all know that once Gavin introduced that the formulation was modified, it is a modified product, and that, "a judgment of contempt against an enjoined party for violation of an injunction against patent infringement by the making, using or selling of a modified device may not be upheld without a finding that the modified device falls within the admitted or adjudicated scope of the claims and is, therefore, an infringement." At least that is what KSM states.

Unless a modification changes the status of the product from an adjudged infringement to never adjudged, these DVR's are in trouble.

[jacmyoung]

Again you continue to ignore my request not to keep going circular on our disagreement. You know I do not agree with the above of your statement, please drop them, let's not waste our time.

My question is, did TiVo cite any relevant case for the judge to prove TiVo's case?

You know the judge did not ask the E* lawyer to cite him another case did he?

If TiVo cannot cite a prior case to support their contempt argument, then by definition TiVo is asking the judge to produce a precedent-setting rule, to do so means this case will have to be precedent-setting. Except the judge had already said this case is not unique nor special.

Please do not ignore my question, I am not going to respond to any of the other items.

Just tell me whether TiVo has provided the judge, as he asked to, a case in which an infringer was found to be in contempt, even though he designed around the patent, and the design around was more than colorable?

My argument is if TiVo had failed to cite one of such cases, TiVo stands little chance. You can disagree of course, but at least stick to this point of mine, not going back to argue all the previous points, because they have been stated too many times already, just repeating them does not make them more true.

The only case, the closest case as the judge called it, is a case which the infringer did not design around, rather continued to infringe, and contested the legality of the injunction itself instead.

I don't know why you continue to say E* is doing the same? E* did not dispute the injunction, quote me where E* said the injunction was wrong. What E* argues is because they designed around and the design around is more than colorable, they have obeyed the order. You can of course disagree, but please do not continue to say E* is disputing the injunction. You can have your opinion, what you should not do is to mis-state the fact to help your argument.

[Greg Bimson]

My question is, did TiVo cite any relevant case for the judge to prove TiVo's case?

To prove civil contempt, the moving party must show by clear and convincing evidence that “(1) a valid court order existed, (2) the defendant had knowledge of the order, and (3) the defendant disobeyed the order."

This is all TiVo needs to prove for contempt.

Every case since KSM which involved any modification in fact all use KSM as standard, show me one that did not.

No, every case which involved a modification and an accusation of violating the making, selling or using of said enjoined product uses KSM as the standard. Big difference.

Especially now that I've spelled out that standard, as it does not apply to all "modified products".

Yours is wrong, but again we can agree to disagree, let's not continue on "your standard" or "my standard".

Then how about THE standard, from KSM:

Under the standard we adopt, a judgment of contempt against an enjoined party for violation of an injunction against patent infringement by the making, using or selling of a modified device may not be upheld without a finding that the modified device falls within the admitted or adjudicated scope of the claims and is, therefore, an infringement.

It does NOT apply to all modified products. It only applies to contempt accusations by making, using or selling of a modified device. TiVo is only asking about the products ordered disabled.

If the judge is to rubber-stamp he must found no contempt, because the standard (which is one of the many based on KSM BTW) says, mere violation of the order is not enough, infringement must also be found. This is a specific standard for the patent cases.

Good. Infringement was found in April, 2006. Therefore a mere violation of the order is good enough.

No E* did not argue the injunction is counter to law, this is a clear fact you refuse to admit, E* said the injunction is correct, quote me where E* said the injunction is wrong. E* said they followed the order, the fact you think they did not follow the order does not mean they did not follow the order.

Just because DISH/SATS said they followed the order does not mean they actually did.

You run into the same problem as TiVo, assuming E* was wrong in interpreting the order, when the judge has not ruled if E* is wrong or not.

Just like you run into the same problem interpreting that any modified device must be found infringing to be in contempt. I haven't seen that standard anywhere. And it especially isn't true when using KSM.

You know the judge did not ask the E* lawyer to cite him another case did he?

Because if Judge Folsom looked at the standard, he knows darn well that standard cannot be used. KSM is the entire backbone of the defense; without it, contempt will be granted.

[jacmyoung]

"Mere violation of the injunction is not enough, infringement must also be found." I have quoted this one before from a real case, you simply ignored it. I will not waste my time to dig it back up for you, you can try, it is in there.

"Infringement is the sin qua non of a violation of an injunction on patent infringement." This quote has been used over and over in many cases, it simply means, infringement of the patent is the essential factor, without it, there cannot be a violation of an injunction on infringement, period.

Again, dismissing a case is not enough, TiVo must cite at least a case to prove their point, which was why the judge asked for it, and TiVo failed to deliver. While I am no lawyer, I know no one had ever successfully won judge's approval without citing any cases to support their argument, for all the cases I have read so far.

What you are saying is TiVo does not need any prior case for support, only the wording of the injunction as they interpreted, I do not see it fly.

As I said E* can interpret the injunction another way, that they indeed had disabled the DVR functions under the infringing software, and replaced them with the DVR fucntions that no longer infringe, and as a result, they are in compliance.

E*'s intepretation is based on the law, that this injunction only means to disable the DVR functions under the old softwre that were infringing, not any DVR functions that do not infringe.

The reason for such argument is, the law, the Rule 65(d), mandates that the only acts this injunction may prohibit are the acts of infringement (by the DVR functions under the old infringing software), not any acts that do not infringe, such as the act of using the current DVR functions that in E*'s view no longer infringe.

Now you can disagree with E*'s interpretation, what you cannot do is to assume the judge has already argreed with your interpretation. He has not, he will have to decide which interpretation is correct, and in making his decision, he must also remember whatever the decision he makes better conform to the law, the Rule 65(d).

If the judge agrees with E* that the current DVR functions may not infringe anymore (i.e. the design around is more than colorable), but still finds E* in violation, he will have made his injunction to prohibit an act that is not an act of infringement, which will violate the Rule.

But if he finds E* not in violation, there is an easy explanation, as E* argued, his order was only to disable the DVR functions under the old design, which was surely an act of infringement, but not any DVR functions that do not infringe, like the current ones.

What TiVo is doing now is asking judge to commit an error according to the law, by ruling E* in violation of the order even if the current act no longer constitues an act of infringement.

Good luck with that.

[glen242]

Isn't there a legal forum where all the lawyers and pseudo lawyers can go to discuss this?

The only thing the average user of E* cares about is, what impact the JUDGES ruling will have upon them.

What impact on the Court will all this BS have? My guess - NONE.

I don't know if some or all of the most prominent posters are lawyers or not, but my recommendation would be to chase a few more ambulances so you would have lesss free time to post this legal mumbo-jumbo. GET A LIFE!

[jacmyoung]

Isn't there a legal forum where all the lawyers and pseudo lawyers can go to discuss this?

The only thing the average user of E* cares about is, what impact the JUDGES ruling will have upon them.

What impact on the Court will all this BS have? My guess - NONE.

I don't know if some or all of the most prominent posters are lawyers or not, but my recommendation would be to chase a few more ambulances so you would have lesss free time to post this legal mumbo-jumbo. GET A LIFE!

I am more than happy to change the subject.

If E* is not in contempt, E* subs gets to continue to use their DVRs.

If E* is in contempt and fails on appeals, E* subs will still get to continue to use their DVRs, because E* will settle with TiVo or simply try to replace those DVRs.

So you are likely correct.

[msmith198025]

Isn't there a legal forum where all the lawyers and pseudo lawyers can go to discuss this?

The only thing the average user of E* cares about is, what impact the JUDGES ruling will have upon them.

What impact on the Court will all this BS have? My guess - NONE.

I don't know if some or all of the most prominent posters are lawyers or not, but my recommendation would be to chase a few more ambulances so you would have lesss free time to post this legal mumbo-jumbo. GET A LIFE!

You know, I dont get into the legal aspects of it myself (boring for the most part), but better advice, for someone who is troubled by the legal "mumbo-jumbo", is to simply bypass the thread. I simply wouldnt tell the two main posters to get a life. JMHO