Only because DISH/SATS was using KSM as the basis of their argument, and DISH/SATS counsel McElhinny would not concede that point. When Judge Folsom asked Mr. McElhinny if he understood that he could still be found in contempt, McElhinny did not answer, so Judge Folsom answered for him regarding the extent of the design around, on the basis of using KSM.
Yes, on the basis of KSM, no other basis was ever brought up by the judge, because KSM is the only basis all contempt issues in patent cases are based on, as long as there is design around. The judge could easily told him I could still find E* in contempt, you know for violating the face of my order as TiVo said, but he did not say that. As I pointed out, you like to think the judge could have said that, I like to read only what the judge had said, not what I had hoped what he could have said.
KSM is the starting point for the house of cards that DISH/SATS built. As the KSM case has only ever applied to products never put before the court, it does not apply to devices already adjudicated as infringements. Therefore, if Judge Folsom's decision does not use KSM as case law, then the motion for contempt will be granted.
Not at all, as I have used two cases, the Footprint2.0 and the Food process case, both were based on KSM, in both cases the adjudicated products or process were just that, adjudicated in the trials and found to infringe, and after
in-the-field modifications of the same products and process, no contempt.
KSM is the starting and the end point of such cases.
However, not long after Judge Folsom mentioned using KSM, because of a lack of discovery, Judge Folsom basically slammed the door shut on McElhinny. Judge Folsom mentioned that the lack of discovery means when using DISH/SATS arguments against contempt, he'd have to take DISH/SATS side of the story without any counter from TiVo.
The judge did say that, but then that was because he thought TiVo disputed E*'s evidenece of the new software, but if you read on, when McElhinny said it was interesting your honor...the judge suddenly realized TiVo might not have questioned the evidnece from the initial limited discovery. TiVo accepted the evidence from the limited discovery, the judge did not even think TiVo could have done that but realized such after McElhinny pointed out to him. Meaning the evidence was sufficient for both E* and TiVo to make their own conclusions, only their conclusions were opposite of each other. In such case, if the judge can also make his conclusion on the same evidence, then there will be no need for another discovery because there is no dispute on the evidence, only the conclusion. The judge only needs to settle the dispute on the conclusion, not the evidence.
A discovery may be needed if there is dispute on the evidence.
You know, because DISH/SATS has obtained outside counsel regarding a design around and because DISH/SATS technical advisors signed affadavits Judge Folsom can render a decision. However, DISH/SATS had both opinion from outside counsel and technical adivsors back in April, 2006, and DISH/SATS were still found to have 4 million DVR's which infringe on TiVo's patent.
That tells us the judge does not rely on one side of the argument of course, but it goes both ways. Just because the jury agreed with TiVo during the trial, dose not mean the judge must agree with TiVo now. The jury found E* willfully infringed, and TiVo argued for treble and attorney fees based such jury's finding, yet the judge denied TiVo's motion.
TiVo brought up a fairly compelling argument, as well. A court order cannot be ignored. In this case, it obviously was.
The only problem is, many infringers in the past had "ignored" the orders, as in cases E* cited, yet found not in contempt, because of the design around. TiVo never had a case where an infringer was found in contempt even after a successful design around, none. When the judge asked TiVo's attorney what cases they could cite, the closest one, as the judge called it, was a case that the infringer disagreed with the order but did so too late. That case simply does not apply here, because as the E* lawyer pointed out, E* never disputed the order, E* believed the order was correct and they had been in full compliance of the order.
And I agree, E* did not ignore the order, they complied with the order, and the judge will likely find a way to agree with E*, just as in the StarBrite case when the court found a way to agree with the infringer, even though it was clear the infringer did not follow the letter of the order. Because when it comes to a contempt in a patent case, unlike any other cases,
mere violation of the face of the order is not enough, infringement must also be found, before a contempt may be handed down.
TiVo had cited no single case to support their "face of order violation" argument, because TiVo failed to prove with clear and convincing evidence that the 4 million E*'s DVRs on the list still infringed after the design around.
