TIVO vs E*

[Thomas22]

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.

The KSM ruling talks about the judgment, not the charge. They overturned the KSM judgment and said the injunction was against infringement even though infringement wasn't mentioned in the injunction. Infringement isn't mentioned in the disable order either.

I wonder how many times Judge Folsom will mention infringement in his judgment. Twenty times? Thirty times?

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.

[jacmyoung]

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

Can you quote me where in KSM it said "the valid injunction violated Rule 65(d)"?

Now you may be able to pick a quote from KSM to point out the standard does not apply to this case with the "second disable order" but that does not prove your argument that the "second disable order" ensures a contempt without finding "the adjudicated products, with a modification" is still an infringement. You need to quote a case where it says violation of a "second disable order" is enough, no need to find if the modified products still infringe or not.

You still have not done so.

I already told you in your own case law, FisherPrice, there was a "second disable order" to pull all adjudicated products off the store shelves, and the infringer was not in contempt for not pulling off the shelves "the adjudicated products, with a modification", because the patentee failed to prove with clear and convincing evidence that the "adjudicated products, with a modification" was still an infringement.

It is your turn to find us where the court had said as long as there was a "second disabling order", there was no need to prove the "adjudicated products, with a modification" still was an infringement.

I have used your own case law to prove my argument, it is your turn to do yours.

[Greg Bimson]

The KSM ruling talks about the judgment, not the charge. They overturned the KSM judgment and said the injunction was against infringement even though infringement wasn't mentioned in the injunction.

What? You cannot have a judgment without a charge. Courts do not operate without one party levelling a charge against another.

The charge in KSM was a prima facie violation of the injunction by, "making, using or selling insulation hangers or refractory anchors of the type and nature identified by the Plaintiff in its Complaint against the Defendant". The district court granted the contempt charge. However, the appeals court reversed the judgment while creating a new standard. So, unless one is trying to say that this case is so extraordinary that a new standard will need to be created, existing standards will be used. The existing standard in KSM only applies to a violation of an order against "the making, using or selling" of a modified device, which happens to be part of the KSM injunction, so it does not apply to another order.

Infringement isn't mentioned in the disable order either.

Infringement is mentioned in the injunction. However, the injunction has more than one order.

Can you quote me where in KSM it said "the valid injunction violated Rule 65(d)"?

Sure...

Despite the reference to the complaint, contrary to Rule 65(d), Jones has not challenged this error, nor does Jones challenge that the injunction is enforceable against devices other than the specific THERMAL-LOCK device of the original suit.

So...

You need to quote a case where it says violation of a "second disable order" is enough, no need to find if the modified products still infringe or not.

Uh, let's see if I have this right...

There is a disable order, and TiVo needs to prove DISH/SATS defense of apparent violations?

The recall order is simple: the adjudicated device at distributors must be recalled. After all, Fisher Price received lost profits and compensation from Safety 1st for all of the infringing products which were sold, so no reason to recall the devices in customers' hands.

TiVo's argument regarding royalties is that they are due a monthly royalty fee for use of their patent. Hence one reason for issuance of the disable order to receivers sold, found infringing and in customers hands; if they weren't able to have DVR functionality shut down, they would have been recalled.

That is standard applicable law. If DISH/SATS wants to defend the contempt charge by saying their modifications to the devices sold and found infringing are not subject to the injunction, fine. However, it is not up to TiVo to prove to Judge Folsom, or for me to prove to you, that case law exists about adjudicated products and modifications to prove contempt should be granted. It is up to DISH/SATS (and if you are defending them, you) to prove case law that a modification of the products that have been sold as infringements is not a violation of an order, or cannot be considered as contempt. It certainly isn't KSM that proves it.

However, to some, it appears this case is so special that DISH/SATS needs a new standard created: another evaluation of a device which has already been sold, found infringing and ordered disabled.

[jacmyoung]

...The recall order is simple: the adjudicated device at distributors must be recalled. ...

Yet Safty 1st was not in contempt for not pulling off the shelf (not obeying the secondary recall order) those adjudicated products with a modification, even though the recall order was to order Safty 1st to pull off (recall) ALL the named products on the shelves at that time.

[jacmyoung]

...However, it is not up to TiVo to prove to Judge Folsom, or for me to prove to you, that case law exists about adjudicated products and modifications to prove contempt should be granted. ...

Yes it is, not because I said so, but the judge said so on 9/4, when he asked TiVo's lawyer to cite him a case law, which TiVo failed to do. If it was not up to TiVo to cite any case law the judge wouldn't have asked for it.

Did TiVo's lawyer respond: "but your honor, we do not need to cite you any case"? No he obeyed, but cited a wrong case, the case TiVo's lawyer cited was a case the infringer did not modify the adjudicated products at all, rather continued to sell them unchanged. To which the judge responded, was this the closest case you had?

The judge did not ask E* lawyer the same question, was KSM the closest case you had, did he?

Of course you don't have to think you need to cite anything, just be aware the TiVo's lawyer did not think the same, he knew he had to, he could not make a successful argument in front of the judge simply by trying to dismiss the case law provided by the opposing party, he needed to provide case law of his own to prove his own argument.

[Greg Bimson]

Yet Safty 1st was not in contempt for not pulling off the shelf (not obeying the secondary recall order) those adjudicated products with a modification, even though the recall order was to order SAfty 1st to pull off ALL the named products on the shelves at that time.

They were held in contempt for not recalling the products listed in the recall order of the injunction. Of course a recall order doesn't apply to products not named in the injunction as infringements:

Fisher-Price argues that Safety 1st violated the Injunction in two ways.

There is a charge for two violations of the injunction; the Court of Appeals rules on both. The one I am concentrating on is the recall order:

Second, Fisher-Price argues that Safety 1st violated the Injunction by failing to make all reasonable efforts to retrieve infringing products from Safety 1st’s major retail customers. The court agrees. Safety 1st hired another company to retrieve infringing products from Toys ‘R Us and Babies ‘R Us. That was a reasonable effort. But Safety 1st admits that it did not make similar efforts with its other major retail customers, such as Target. The court’s order was unambiguous: Safety 1st was required to “make every reasonable effort possible.” Safety 1st did not. Considering the inconsistent and delayed retrieval efforts to which Safety 1st has admitted during depositions and at trial, the court finds that Safety 1st is in contempt of the Injunction with respect to its efforts to retrieve infringing products from major retail customers.

The recall in Safety 1st would have allowed the infringer to grab the infringing product back from distributors and modify it at the warehouse, so it could be resold. However, that recall did not extend to infringing product in customers hands, as the court ordered Safety 1st to compensate Fisher Price for infringement.

[Curtis0620]

Can't wait for the ruling to come out so we can start discussing why the Judge is wrong.

[jacmyoung]

They were held in contempt for not recalling the products listed in the recall order of the injunction. Of course a recall order doesn't apply to products not named in the injunction as infringements:There is a charge for two violations of the injunction; the Court of Appeals rules on both. The one I am concentrating on is the recall order:The recall in Safety 1st would have allowed the infringer to grab the infringing product back from distributors and modify it at the warehouse, so it could be resold. However, that recall did not extend to infringing product in customers hands, as the court ordered Safety 1st to compensate Fisher Price for infringement.

Again you are only quoting the part where Safty 1st was found in contempt for not pulling the products that did not have that modification, but not the part they were found not in contempt for not pulling the adjudicated products that had that modification.

Go ahead quote that part and we'll talk, because that was the part I was talking about.

[jacmyoung]

...The recall in Safety 1st would have allowed the infringer to grab the infringing product back from distributors and modify it at the warehouse, so it could be resold...

Even though I agree with you on that, still nothing in that injunction said the above, it is irrelevant.

All the named products were on the shelves before the injunction went in force, according to you all of them had to be pulled to avoid a contempt, but Safty 1st was not in contempt for not pulling off some of those named products, which were on the shleves along with all the other named products all that time, for one reason and one reason only, that some of those products had a modified part in them.

While it is ok to take the adjudicated products back to the warehouse to modifiy them and resell them, it is also ok to modiify them at any location, whether in the hands of the end users, or already on the shelves, anywhere.

Again quote me where there is a requirment by the court that the adjudicated products must be taken back to the warehouse for modification, and one cannot modify them right in the field.

Of course you can insist you do not need to cite anything for proof, just your own opinion is enough, that is fine. TiVo's lawyer did not dare to think so, I just want to point that out.

[Greg Bimson]

Again you are only quoting the part where Safty 1st was found in contempt for not pulling the products that did not have that modification, but not the part they were found not in contempt for not pulling the adjudicated products that had that modification.

Because that isn't what happened...

On the second charge, Safety 1st was found to violate the recall order in the injunction. On the first charge, Safety 1st was found to violate the order enjoining sales of the infringing product, with the issue of modified product bolded:

First, Fisher-Price contends that Safety 1st violated the Injunction by continuing to sell infringing models of the 2-n-1 Bouncenette and the Magic Motion after August 28, 2003. With respect to Magic Motion sales, Safety 1st has admitted to selling at least 442 units of the Magic Motion after the Injunction was entered. Safety 1st attempts to minimize its contemptuous conduct by portraying it as inadvertent or insignificant. The fact remains, however, that Safety 1st violated a valid court order. Thus, the court finds that Safety is in contempt of the Injunction with respect to Magic Motion sales. With respect to Bouncenette sales, Fisher-Price asserts that Safety 1st has failed to show that its post-Injunction Bouncenette sales were not in violation of the Injunction. Safety 1st counters that, while it sold Bouncenettes after the Injunction’s entry bearing the proscribed base model numbers, all of those Bouncenettes had a new, non-infringing harness design that Fisher-Price has not accused of infringement. Safety 1st explains that it appended a revision letter to the base model numbers, rather than change the base model numbers themselves, to indicate Bouncenettes with the redesigned harness: 43002B became 43002C rather than, hypothetically, 43003. The problem is that certain of Safety 1st’s sales records did not reflect the change in revision letter. This ambiguity in Safety 1st’s recordkeeping appears careless in the face of the Injunction.2 Despite Safety 1st’s less-than-ideal recordkeeping, however, Fisher-Price’s evidence of actual contemptuous Bouncenette sales falls short of the requisite standard. The court finds that Fisher-Price has not established, by clear and convincing evidence, that Safety 1st violated the Injunction with respect to Bouncenette sales.

And as it appears that Fisher Price did not accuse modifications of being colorably different and infringing, the KSM standard was invoked against those products...

Change the harness, change the model number by appending a letter to the base model number, and the sales records weren't kept as they should have been. However, since it appears Fisher Price did not accuse the modified harness products of infringement, the KSM standard applied, so the modified products could not be found in contempt as infringement wasn't found.