Dish's en banc request APPROVED!

[TheForce]

11:14a ET May 14, 2010 (MarketWatch)
SAN FRANCISCO (MarketWatch) -- A federal appeals court will allow DISH Network Corp. to appeal a ruling that it infringed patents on digital video technology held by TiVo Inc. . Shares of TiVo dropped 35% to $11.35 and Dish shares rose 5.7% to $23.20 in recent trading. In March, a federal judge ruled in favor of TiVo, awarding it $300 million.

NOW, Charlie has a bargain to just buy them out.

 

[TNGTony]

Looking at what this order is asking for, it looks like even if Dish loses the case, it will be only for the items named in the suit and not for all DVRs. This is very cool. Also looking at the time frame needed for filing briefs and responses, it will be at least September before a re-hearing.

 

[eacalhoun]

First, SARCASM fully engaged:

Does this mean Charlie will do a Wal-Mart rollback on rate increases -- recent past and near future?

 

[yaz96]

Man, is Chuck a lucky bastard, or what?!

 

[meStevo]

There's a lot of celebrating here when all that's happened is the next court has agreed to take a look at it. I'd keep the corks on those bottles until this is actually over.

 

[yaz96]

There's a lot of celebrating here when all that's happened is the next court has agreed to take a look at it. I'd keep the corks on those bottles until this is actually over.

Why? At best, it's an opportunity to be a good ruling, at worst, it's a reprieve. At this point, it means there is no imminent shutoff. That's good news.

I don't hear any corks popping, yet.

 

[nelson61]

Obviously the majority of the Judges feel that the issues raised by Judge Rader in his dissent and E* in the en banc request merit further review. Right now it would seem that the majority feels that there was some mistake or issue with the 3-judge panel decision.

you sum it up nicely!

 

[yaz96]

I think this statement says a lot "The appeal is TiVo v. EchoStar, 2009-1374, U.S. Court of Appeals for the Federal Circuit (Washington). The lower-court case is TiVo Inc. v. EchoStar Communications Corp., 04-cv-01, U.S. District Court, Eastern District of Texas (Marshall)." It won't be decided in Texas.

This is very good news.

 

[Kheldar]

The ruling has some interesting points in it, page 2:

(4) The parties are requested to file new briefs addressing the following issues:
a) Following a finding of infringement by an accused device at trial, under what circumstances is it proper for a district court to determine infringement by a newly accused device through contempt proceedings rather than through new infringement proceedings? What burden of proof is required to establish that a contempt proceeding is proper?
b) How does “fair ground of doubt as to the wrongfulness of the defendant’s conduct” compare with the “more than colorable differences” or “substantial open issues of infringement” tests in evaluating the newly accused device against the adjudged infringing device? See Cal. Artificial Stone Paving Co. v. Molitor, 113 U.S. 609, 618 (1885); KSM Fastening Sys., Inc. v. H.A. Jones Co., 776 F.2d 1522, 1532 (Fed. Cir. 1985).
c) Where a contempt proceeding is proper, (1) what burden of proof is on the patentee to show that the newly accused device infringes (see KSM, 776 F.2d at 1524) and (2) what weight should be given to the infringer’s efforts to design around the patent and its reasonable and good faith belief of noninfringement by the new device, for a finding of contempt?
d) Is it proper for a district court to hold an enjoined party in contempt where there is a substantial question as to whether the injunction is ambiguous in scope?

Part (a) of that section sounds like the court is trying to decide if it is proper to use a contempt proceeding to determine if a "newly accused device" (i.e. a DVR model not included in the original complaint, like maybe the ViPs) is also infringing, or if they must start over with a whole new trial. If they accept the answer that I assume TiVo would give them to this question, this may be a way to get the ViPs shut down with the other models.

Part (b) suggests that, if they agree in part (a) that the newer models should be included in the contempt proceeding, what kind of test should be applied to determine whether or not the "newly accused device" infringes -- the much-discussed "more than colorable differences", or the “substantial open issues of infringement” test, which is described in a book on patent law this way:

So, if “substantial open issues of infringement” don't exist, according to this book it may be entirely appropriate to bring the "newly accused devices" into the case at this point. At least that's what the court is trying to decide.

Then, if they determine in part (b) that it is appropriate to bring the newer devices into the contempt proceeding at this point, part (c) is trying to determine what standard they should use to determine what burden of proof TiVo has to demonstrate to prove that the newer devices infringe, and whether or not DishNet should get bonus points for at least trying to avoid infringement.

Again, I am not a lawyer, but these points seem to mirror some of the debates we have had in earlier threads.

 

[dmendenjr]

NOW, Charlie has a bargain to just buy them out.

Does Echostar buy them NOW, or do they wait for until after TIVO's earnings call in two weeks (hoping for a negative earnings report)?

 

[riffjim4069]

There's a lot of celebrating here when all that's happened is the next court has agreed to take a look at it. I'd keep the corks on those bottles until this is actually over.

You raise a great point. It's like striking-out against Nolan Ryan and then being given a second opportunity since the umpire wasn't paying attention. The odds of striking-out or hitting a weak ground ball to 2nd base are far more likely than belting a home run.

 

[riffjim4069]

...it will be at least September before a re-hearing.

Just like the energizer bunny, this case will go on and on and on and on...

 

[Peter Parker]

A word of caution. The fact that appeals judges ask specific questions of one side or the other does not necessarily mean that the court is skeptical of the position of one side or the other or that they are likely to rule based on that question. It is quite common to ask questions simply to get clarification on the issues involved.

Also don't assume that granting the en banc request means that they feel the original decision is incorrect. It may simply mean that they feel the issues involved are important enough to grant the request.

Unquestionably DISH is better off and Tivo is less likely to prevail than if the request was denied. But this is not over yet and some are reading too much into this.

 

[navychop]

Lucky? He knows how to take max advantage of his luck, maybe even to make his own luck. He didn't get where he is by buying a lottery ticket.

 

[David_Levin]

Unquestionably DISH is better off and Tivo is less likely to prevail than if the request was denied. But this is not over yet and some are reading too much into this.

Yep... The only thing guaranteed is that we're now months way from a final resolution (unless Dish and Tivo get together). There may not be much time left on the TiVo Patent by the time this is over.

 

[dangue]

I think it's time to either buy TIVO or work out a licensing agreement. This grant of review has improved Dish's bargaining position. Charlie should take advantage of it to make this potential problem go away.

 

[TheKrell]

Again, I am not a lawyer, but these points seem to mirror some of the debates we have had in earlier threads.

Undoubtedly true, and I appreciate the rest of your analysis except for one point. I think your identification of the "newly accused device" (vs the "adjudged infringing device") as "the VIP series" is wrong. I'm no lawyer either, but what the judges are talking about is not the VIP series, since those have never been adjudicated at all by any court. What the judges are talking about are the formerly infringing devices with new firmware. Dish claims they designed around the Tivo IP, and that the old infringing devices are no longer infringing, hence they are a "newly-accused device". Tivo says the existing design-around was insufficient, while Judge Folsom says the design-around doesn't even matter. As Judge Rader said, "How can that be right?"

 

[Scott Greczkowski]

Statement from DISH..

DISH Network and Echostar Statement Regarding Granting of En Banc Hearing ​

ENGLEWOOD, Colo. – May 14, 2010 – DISH Network L.L.C., a subsidiary of DISH Network Corporation (NASDAQ: DISH), and EchoStar Technologies L.L.C., a subsidiary of EchoStar Corporation (NASDAQ: SATS), issued the following statement regarding recent developments in TiVo vs. EchoStar Communications Corporation:

“DISH Network and EchoStar are pleased that the full Federal Circuit Court of Appeals has granted their petition for rehearing en banc.

We believe the issues that will be considered by the full court on rehearing will have a profound impact on innovation in the United States for years to come."

 

[TheForce]

Does Echostar buy them NOW, or do they wait for until after TIVO's earnings call in two weeks (hoping for a negative earnings report)?

The stock has lost another dollar since the initial drop off. Earnings will remain negative since they have had little to no changes to their business model.

 

[TheForce]

Unquestionably DISH is better off and Tivo is less likely to prevail than if the request was denied. But this is not over yet and some are reading too much into this.

Absolutely, those who are cheering and screaming can do so only because it puts off the shutdown of the listed DVR's. Those with VIP's need not be as concerned. But it ain't over until the appeal speaks. Meanwhile Tivo continues to operate in red ink and if they don't win soon or they may find themselves cashing a paycheck with DishNetwork's signature. The only winners in this to date were the insiders who recently cashed out of their generous stock options. The little guys who own TIVO will be the losers. Dish will just stop the legal bleeding.