TIVO vs E*

[Richard Cranium]

The reexamination decision is indicated by the USPTO director's reexamination certificate that is issued after all appeals (if a negative evaluation) have been exhausted. Until that happens, the patent is assumed by law to be valid. The certificate issued by the director is the only thing that counts.

In other words, even if the USPTO finds the patent invalid it will not have an effect on TX or DE for about, what, 4 more years?

[jacmyoung]

Patent claims get invalidated and cancelled in 13% of ex parte reexaminations.

Playing the word game?

In 59% of the reexaminations, the examiners made the decision to invalidate the patent claims in whole or in part, at the meantime of course the patent claims by law are still valid patent claims, but the patent owners must fight the decisions to invalidate, such process is time consuming.

At the meantime, the patent owners will have trouble going after anyone in court, until the examiners' decision is defeated. A questionable patent should be cleared of any cloud over it

And that is not even the real issue here. My point is, if the USPTO could see a "substantial new question" to invalidate the TiVo's patent claims, the same evidence will most certainly be used by E* in the next jury trial to convince the jury that the two software patent claims are invalid. It happens all the time. Whether the jury will invalidate the two TiVo's software claims will have nothing to do with the USPTO process. The court will determine the claim validity independently.

E* did so in the Forgent case, in the same TX court, and will try to do so in this next jury trial, whether in the DE court, or in this same TX court.

As I said, E* has a strategy since day one, when they filed the new action in the DE court. Everything E* has been doing since then has been gaining the odds of winning.

TiVo on the other hand had no strategy and still has none, they are only reacting. Can you imagine the two software claims are invalidated either by the court, or by the USPTO?

What will TiVo live for? Be careful what you ask for from Charlie

[Thomas22]

b. Certificates – 3rd PARTY REQUESTER ..................................................3693

(1) All claims confirmed 1012 28%
(2) All claims canceled 486 13%
(3) Claim changes 2195 59%

[Thomas22]

the same evidence will most certainly be used by E* in the next jury trial

There will only be contempt hearings. The jury trial was years ago.

[jacmyoung]

b. Certificates – 3rd PARTY REQUESTER ..................................................3693

(1) All claims confirmed 1012 28%
(2) All claims canceled 486 13%
(3) Claim changes 2195 59%

Thank you!

You see in this case, the TiVo patent will never be cancelled, because only the two software claims are asserted, and these two software claims are basically only one claim.

Therefore I was actaully modest when I said 59%. In this case, the chance of the two software claims be thrown out is in fact 72% because any "change" in this case will also mean the software claims are invalidated, even though the TiVo patent itself will still stand with that two hardware claims.

[jacmyoung]

There will only be contempt hearings. The jury trial was years ago.

No, there is also this DE case TiVo is trying to get transferred to the TX court.

TiVo actually is making the best effort in trying to move the case, by submitting over 100 pages of supporting docs to the DE judge.

Wonder why? TiVo sees the real possibility that they may lose on the contempt issue, and will be forced to fight this new fight with E*.

Except that by the time TiVo is ready to fight the new fight, the two software patent claims in question will likely be invalid already. If so there will be nothing left to fight over.

[Thomas22]

Thank you!

You see in this case, the TiVo patent will never be cancelled, because only the two software claims are asserted, and these two software claims are basically only one claim.

Therefore I was actaully modest when I said 59%. In this case, the chance of the two software claims be thrown out is in fact 72% because any "change" in this case will also mean the software claims are invalidated, even though the TiVo patent itself will still stand with that two hardware claims.

Examiners suggest wording changes to make the claims stronger. These are claim changes.

[TheKrell]

Examiners suggest wording changes to make the claims stronger. These are claim changes.

But, but... How can anybody change the wording to make the claims stronger when it is very likely that the claims were based on prior art in the first place?

[Richard Cranium]

No, there is also this DE case TiVo is trying to get transferred to the TX court.

TiVo actually is making the best effort in trying to move the case, by submitting over 100 pages of supporting docs to the DE judge.

Wonder why?

No wonder at all. Tivo wants the case in front of the judge that wrote the injunction. As it should be.

This case has no business being heard in DE and the DE judge is well aware of it. He's already spelled out that he has no interest in it. He'll throw it out and let Folsom deal with Charlie's shenanigans.

It's not going to be pretty for E* when Folsom gets this thrown in his lap again.

I'm thinking maybe even treble damages.

[Thomas22]

But, but... How can anybody change the wording to make the claims stronger when it is very likely that the claims were based on prior art in the first place?

Likely? Based on what?