TIVO vs E*

[Greg Bimson]

There is no "given date". The decision comes out when it comes out.

[Greg Bimson]

I do know. There is no given date. I can only lead the horse to water.

[jacmyoung]

But in this case, the accused devices ARE the adjudicated devices, with a modification...

And the same is true for all the cases we quoted, KSM, StarBrite, Footprint2.0 or Bentow Foods, in all of them, the "accused devices/products/services/processes" were "adjudicated devices/products/services/processes, with a modification."

Show me where "the adjudicated devices" means unmodified. This is exactly what I've been fighting.

Because there are only two options, either "the adjudicated" or "the accused", and since you have already admitted "the accused" here is "the adjudicated with a modification", by reason of exclusion, "the adjudicated" must be unmodified. There is no other choice for you to pick.

This appears to be the first contempt case where "the adjudicated devices" ordered disabled have been modified.

Not true at all, again the Footprint2.0 service was an adjudicated service (including the hardware servers and associated equipment, and the software used by the equipment), and ordered to be shut down (i.e. to be disabled). The infringer modified the service by uploading a software patch, and never stopped the service. The patentee accused the same adjudicated service with that modification (the accused service) for violation, but the infringer was not in contempt due to that modification.

In Bentow Foods, the same thing, the egg process was an adjudicated infringing process and ordered to be shut down (i.e. to be disabled), the infringer modified a single step in the same adjudicated process, the patentee accused the adjudicated process with that modification for violation, but the infringer avoided a contempt due to the modification.

No, the first question is, "does Joe Blow have a device that was ruled infringing?" If so, then its legal status has been determined.

The second question is, "is this Joe Blow's device now different than the one above?" If so, then its legal status has to be determined. And only if infringement can again be found, so can there be a contempt.

The court in KSM, and in many other cases, said they must ansewer yes to both questions not one, before issuing a contempt charge, when there is a design around, or a modification, or a difference.

[Greg Bimson]

And the same is true for all the cases we quoted, KSM, StarBrite, Footprint2.0 or Bentow Foods, in all of them, the "accused devices/products/services/processes" were "adjudicated devices/products/services/processes, with a modification."

Perhaps this is what has skipped a beat...

KSM in their suit against Jones Manufacturing had an injunction against the "Therma-Lock" product. All that had been sold were infringements. A modification and remarket of the modified was sold as the Ultra-Lock products.

The Therma-Lock products were not re-evaluated. They were infringements. They were not being retested because they were modified. The Ultra-Lock products were a modification upon the design of the Therma-Lock products.

Lo and behold, the standard that comes from the appeals court simply mentions that contempt for violation of an order to stop selling, using, or making an infringing product must be found as an infringement.

Somehow that is being interpreted as any modification must be evaluated, when in fact there is another order that says to disable the products adjudged infringing already placed with subscribers as of 8 September, 2006. KSM does not give that order a free pass.

Michael's Foods and Bartow Foods is about an egg process, I believe to pasteurize eggs in their shells. No product was found infringing, the process was. Only the process was enjoined. Change the process, and in a contempt setting that process must be evaluated against the one determined infringing in order to find the status of both infringement and colorable difference.

Digital Island, the Footprint 2.0 case, was very simple. The injunction stated that the service as adjudicated was enjoined. Again, change the service, and in a contempt setting that service must be evaluated against the one determined infringing in order to find the status of both infringement and colorable difference.

And all three specifically relate to alleged violations of an order enjoining the infringer to stop either selling, using or making said service, process or product.

In this case, it starts with the disable order on products already found to infringe. One cannot use a standard which applies only to the making, using or selling of an infringing product and apply it to a disable order.

Because there are only two options, either "the adjudicated" or "the accused", and since you have already admitted "the accused" here is "the adjudicated with a modification", by reason of exclusion, "the adjudicated" must be unmodified. There is no other choice for you to pick.

Nice trick of English. Try this one...

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.

Where does it say all modified products must follow the KSM standard? From my reading, only those accused of violating the injunction order against infringements for manufacturing, using or selling a modified device must be evaluated.

That would not apply to any other injunction order. Such as disable those found infringing.

Even the Michael's Foods case, it appears there were plenty of pre-contempt hearing motions with data to back that up that Bartow Foods had changed enough of the process to question whether or not infringement was still present.

Keeping the court informed would be an important step, since they are the ones that ultimately decide the fate. And we could certainly go back to Judge Folsom's words during the 4 September hearing, as he completely interrupted DISH/SATS counsel McElhinny to drill the point home that the court should have been informed of a possible workaround once it was implemented.

[Thomas22]

In this case, it starts with the disable order on products already found to infringe. One cannot use a standard which applies only to the making, using or selling of an infringing product and apply it to a disable order.

The KSM injunction didn't mention infringement. Neither does the disable order. The appeals court in the KSM case knew that even though infringement wasn't mentioned in the KSM order, infringement was the fundamental reason for the order and overturned the district court's contempt finding because the district court didn't look at whether there was infringement in the modified device. Likewise, if Judge Folsom finds contempt without looking at whether the modified DVRs infringe then his contempt order will be overturned for the same reason.

[Zero327]

TOO - MUCH - JAG

[jacmyoung]

...That would not apply to any other injunction order. Such as disable those found infringing...

There is no other kind of injunction, the only kind of the injunction is the kind that may prohibit acts of infringement, no more no less. Every "kind" of injunctions you discussed above were about to "disable those found infringing..." Can you deny the injunction in Footprint2.0 was to "disable those found infringing"? Can you deny Bartow Foods injunction was to "disable those found infringing"? Can you honestly deny that all those injunctions were to "disable those found infringing"?

All of the injunctions we discussed above, were about prohibiting (disabling) the act of infringement, the law makes no distinction among products, services, processes, devices...and never did, because it is about the acts that is at issue, and an injunction is about prohibiting such acts.

Many injunctions contained your so called "second disabling order", the Price Fisher case you quoted yourself contained such "second order" to pull those adjudicated products off the store shelves, and when the infringer "disobeyed" such "second order" by failing to pull any of the products off the shelves, he was only found in contempt for not pulling off the unmodified adjudicated products, but not in contempt of not pulling off ("disobeying" the "second order") those modified adjudicated products, because the patentee failed to prove with clear and convincing evidence that those modified adjudicated products still infringed.

Greg, you need to stop believing a "second order" has some magic power, it is the same as the "first order", to prohibit acts of infringement, no more no less, because it is the only thing an injunction can do, the law says so.

When Judge Folsom put such "secondary order" in his injunction, he meant to do one thing, to prohibit the use of the DVR functions under the old design, because the use of the DVR functions under the old design was an act of infringement. What the judge also should know is, his "second order" in the injunction cannot prohibit the act of using the DVR functions under the new design, if he finds the new design around more than colorable, meaning the act of using the DVR functions under the new design may not be an act of infringement, then his "second order" cannot prohibit such act.

The judge said so himself on 9/4, that he could still find E* in contempt, if the design around was only colorable. The word "still" gave the condition (the design around is only colorable) the exclusive meaning, under no other but this condition could he still find E* in contempt.

[Greg Bimson]

The appeals court in the KSM case knew that even though infringement wasn't mentioned in the KSM order, infringement was the fundamental reason for the order and overturned the district court's contempt finding because the district court didn't look at whether there was infringement in the modified device.

The valid injunction violated Rule 65(d), so the Court of Appeals created this standard:

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.

The only time the KSM standard can be used is if the legal question is a "violation of an injunction against patent infringement by the making, using or selling of a modified device". Not bad for a valid injunction which violated Rule 65(d).

It is a question that will be answered, as TiVo has stated in their damages motion that they are owed $52 million on receivers which never had the old software; the new software is not more than colorably different and it still infringes. So KSM will come into play.

But not before the issue of ignoring the disable order is addressed.

[Thomas22]

The only time the KSM standard can be used is if the legal question is a "violation of an injunction against patent infringement by the making, using or selling of a modified device".

The KSM injunction didn't mention infringement but the appeals court recognized that infringement was the fundamental issue. It is the same with the disable order.

[Greg Bimson]

The KSM injunction didn't mention infringement but the appeals court recognized that infringement was the fundamental issue.

Correct. And when the charge for contempt is a violation of making, using or selling a modified device, infringement must be found on that modified device, thanks to the standard created in KSM.

But when the contempt charge is not for a violation of making, using or selling a modified device, KSM doesn't apply.