TIVO vs E*

[Thomas22]

This is NOT about the "new constructs". This is about the devices which were already found as infringements. And they certainly have NOT been disabled.

The TiVo contempt motion is only about the products that have already been adjudicated as infringements. If DISH/SATS were so keen to change the receivers, they should have been just as keen to have Judge Folsom rule that the workaround could put the at-risk receivers out of scope of the injunction.

KSM was about modified devices that were found to be in violation of an injunction. The word "modified" appears throughout KSM. New or used is unimportant. In KSM the appeals court said that the district court failed to look at whether the modification potentially cured the infringement problem and reversed the contempt finding. If Judge Folsom fails to determinme whether the modification of the DVRs potentially cures the infringement problem then his contempt ruling will meet a similar fate. I don't think he's that stupid.

 

[jacmyoung]

Those 4 million DVRs that used the old software were adjudicated to have infringed, and ordered to be disabled to stop the act of the infringement, that is why the wording of this injunction was perfectly fine, it followed the Rule 65(d) to prohibit the act of infringement at that time.

If those same DVRs now no longer infringe on the patent, the act of using them as DVRs obviously do not constitute an act of infringement, I hope people can see the logic in this, and therefore if the court still prohibits such act which no longer infringes, the court will have violated Rule 65(d).

Which is why legit design around has worked every time, no exceptions.

TiVo's attempt to dismiss all those cases, whether Starbrite, or KSM, is not going to work, because to successfully argue on their behalf, TiVo must cite their own cases in which they demonstrate that even if after a legit design around, the infringers still were found to be in contempt of using the non-infringing devices.

Simply dismissing other cases has never been good enough, which was why Judge Folsom kept asking TiVo's attorney to cite him another case for him, yet the closest case TiVo could cite, as the judge said, was a case where the infringer admitted they still infringed during the contempt hearing because they did not design around, only that they did not agree with the order.

This case is entirely different, E* is not disagreeing with the order, E* said they totally agreed with the order and had sucessfully designed around the patent to be in compliance with the order, just like every other infringer did to avoid a contempt through design around.

Now TiVo is saying based on their interpretation of the order, no matter if the act of using those DVRs still infringe or not, the injunction shoud still be able to prohibit such act. One thing I hope people can agree, such argument goes against the very rule the court has established, which says, the only acts an injunction may prohibit, are the acts of infringement of the patent by...

Again if the act of using the current DVRs no longer is an act of infringement, the injunction cannot prohibit such act, the rule is clear on this, no matter how one tries to dismiss all those prior cases.

What the Rule tells us is, the purpose, and the only purpose of an injunction, is to prohibit acts of infringement, without any regard of what kind of products, or if it is a service, not a product, or if it is a process or things of any other nature, it is the act of infringement that the injunction is allowed to prohibit, no more no less.

An act of infringement does not discriminate among old products, new products, old services, new services, old processes, new processes, things already sold or still on the store shelves, things still on the assmebly line or still in the warehouse.

 

[vampz26]

for a moment i thought you lost your mind. lol!!!

alrighty then........

I'm not the only one...

The war-zone must be very boring these days (for obvious reasons) if I'm going to be stalked by the usual 'crew' every time I question the tainted credibility of a D* sub around here...even when they are starting arguments in E* forums....

Oh well...

 

[Greg Bimson]

KSM was about modified devices that were found to be in violation of an injunction. The word "modified" appears throughout KSM. New or used is unimportant.

Paragraph 9:
In view of these and other considerations to be discussed, where the patent owner seeks to enforce an injunction against an enjoined infringer by reason of a manufacture which was not the subject of the original litigation, the courts have been uniform in exercising restraint in affording the patent owner the benefit of contempt proceedings. KSM

But the four million DVR's found to be infringing are the subject of the original litigation, and infringement has been found.

One does not "retry" a device which has already been found infringing.

In KSM the appeals court said that the district court failed to look at whether the modification potentially cured the infringement problem and reversed the contempt finding.

No, the District Court originally issued an injunction against the Therma-Lock product. The patentee, KSM, asked the District Court to find contempt against other products (Ultra-Lok I and II) that were never adjudged before the court.

The Court of Appeals smacked down the granting of the contempt motion because the judge did not evaluate Ultra-Lok I and II for infringement.

You are suggesting that Joe Blow's four-year old 501 has never been adjudged, when in fact it has been found infringing and ordered disabled. Because it has been adjudged as an infringement, it cannot be tried again.

If those same DVRs now no longer infringe on the patent, the act of using them as DVRs obviously do not constitute an act of infringement, I hope people can see the logic in this, and therefore if the court still prohibits such act which no longer infringes, the court will have violated Rule 65(d).

Except that an injunction in full force and effect in violation of Rule 65(d) is still a valid injunction. From Dupuy v. Illinois Dept of Children and Family Services:

So Rule 65(d) was flouted. But a violation of the rule does not deprive the appellate court of jurisdiction to review the injunction (e.g., Combs v. Ryan's Coal Co., 785 F.2d 970, 978 (11th Cir. 1986)) unless as a result of the violation it is so unclear what the defendant is enjoined from doing that he could not be punished for violating the injunction. For in that event he would lack standing to challenge the injunction because, being unenforceable, it would place no burden on him. He could thumb his nose at it with impunity.

Any injunction can violate Rule 65(d) and still be legal. However, the injunction needs to be challenged about a lack of compliance to Rule 65(d) before it takes effect.

Once the injunction takes effect, any problems with Rule 65(d) are off the table:

Paragraph 28:
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. Jones' challenge is to the standards applied by the district court in holding the company in contempt.

The injunction referenced the original complaint, which is against Rule 65(d). Yet the injunction was still valid.

Jones was arguing that the standards holding the company in contempt were wrong:
KSM and Jones agreed to an injunction, where Jones was "restrained from making, using or selling insulation hangers or refractory anchors of the type and nature identified by the Plaintiff in its Complaint against the Defendant for the remainder of the life of U.S. Patent No. 3,738,217 issued June 12, 1973."

KSM accused Jones that sales of the Ultra-Lok I and II products violated this injunction.

TiVo is simply accusing DISH/SATS of refusing to follow the order to disable devices that were already found infringing. There has been no accusation of "sales of infringing products", which is what KSM discusses wholly.

 

[Thomas22]

You are suggesting that Joe Blow's four-year old 501 has never been adjudged, when in fact it has been found infringing and ordered disabled. Because it has been adjudged as an infringement, it cannot be tried again.

If the modified DVRs are more than colorably different from the infringing DVRs then there has to be a new trial instead of a contempt finding. That's the law. But wait... you said that a device can't be tried twice. That's exactly correct. So how can there possibly be a new trial? It's simple: once it has been determined that there is more than a colorable difference in the modified DVRs then legally they aren't the same devices that were adjudicated and ordered disabled.

 

[jacmyoung]

...You are suggesting that Joe Blow's four-year old 501 has never been adjudged,

Not at all.

when in fact it has been found infringing and ordered disabled. Because it has been adjudged as an infringement, it cannot be tried again.

True. But the currently accused DVRs are different than the DVRs adjudicated to have infringed in that they were designed around, even though they bear the same look, same name, but still they are different. An adjudicated device can be designed around to avoid a contempt, the court said so. Those DVRs are in fact adjudicated devices, therefore they can be designed around to avoid a contempt.

Your argument that the definition of the above adjudicated devices only covers "new products" is flawed because a new product by its own definition cannot be an adjudicated device, that is why it is labeled "new", an adjudicated device has to be the old one, the one that was already adjudicated, and the court has clearly said it can be designed around to avoid a contempt.

 

[jacmyoung]

...Except that an injunction in full force and effect in violation of Rule 65(d) is still a valid injunction. From Dupuy v. Illinois Dept of Children and Family Services:Any injunction can violate Rule 65(d) and still be legal. However, the injunction needs to be challenged about a lack of compliance to Rule 65(d) before it takes effect.

Once the injunction takes effect, any problems with Rule 65(d) are off the table:The injunction referenced the original complaint, which is against Rule 65(d). Yet the injunction was still valid....

You continue to miss the point, the injunction in this case is not against the Rule 65(d), even E* said it is not, why? Because it serves to prohibit the act of infringement by the use of those DVRs that infringed under the old design.

The case above that you cited was about an injunction that was in fact wrong. This Judge Folsom's injunction in front of us is correct, it is not wrong, that is why that above case cited is irrelevant.

What the court cannot do is to make a ruling that is in violation of Rule 65(d). Please keep in mind this ruling has not been made yet therefore there is no issue of disagreeing with it or not on the table. Only after the ruling is made, and only if the ruling is deemed in violation of the Rule 65(d), so can we begin to decide if E* may successfully appeal the ruling or not, which the answer should be a yes.

But we are not there yet, that is why the above case, as well as the case TiVo cited, are irrelevant.

Now if the next ruling says E* is in contempt, and orders E* to disable the DVRs in 7 days as TiVo insisted, and E* fails to appeal within 7 days rather after say 15 days, therefore fails to ask the appeals court to stay the order pending appeal in time, but E* still refuses to disable the DVRs, then you can say E* will have been in contempt of the new order, even if this new order may be found wrong on appeal later.

And in that case, your above case as well as that TiVo's case will be perfect for making an argument that E* is in contempt. We are not there yet.

 

[CuriousMark]

And there you have it. The judge needs to decide if KSM applies or not. Both arguments have merit and reach opposite conclusions. Both arguments are based on the words in the KSM case itself. The judge could go either way. We are now waiting to see what he says. That isn't the only aspect that the judge will have to decide. He could find that KSM does apply and still find contempt based on finding the the software change was merely colorable. There is also wide disagreement here about whether or not that is the case too.

So I think one reason the judge is taking so long with this is that both of those issues are difficult ones that require a good bit of thought and consideration. If the answer were as crystal clear as each side's argument above would seem to make it, the judge would have had an easy time picking the obvious right one and issued an order months ago. Now, it is also true that he is busy with other cases, and he may be hoping that a delay might let market forces push E* and TiVo to the negotiating table; but in my opinion, those are lesser reasons for the delay than the scholarly legal issues brought up in this case.

 

[Greg Bimson]

If the modified DVRs are more than colorably different from the infringing DVRs then there has to be a new trial instead of a contempt finding. That's the law.

Paragraph 9:
In view of these and other considerations to be discussed, where the patent owner seeks to enforce an injunction against an enjoined infringer by reason of a manufacture which was not the subject of the original litigation, the courts have been uniform in exercising restraint in affording the patent owner the benefit of contempt proceedings. KSM

TiVo's contempt motion is about the manufacture of product in the original litigation. Just because software was changed does not change the fact those receivers were found as infringements.

DISH/SATS, along with others, is ardently arguing that a change in software makes the product "new". However, the change ordered by Judge Folsom to disable the functionality of the DVR would not make the product "new" and would still keep the receiver subject to the injunction.

Unless someone wants to argue that the products found infringing no longer exist, yet Joe Blow's four-year old 501 still works, and has been found as an infringement.

True. But the currently accused DVRs are different than the DVRs adjudicated to have infringed in that they were designed around, even though they bear the same look, same name, but still they are different. An adjudicated device can be designed around to avoid a contempt, the court said so. Those DVRs are in fact adjudicated devices, therefore they can be designed around to avoid a contempt.

With the addition, "to continue in the marketplace". As in a 501 may have new software so that DISH/SATS can continue selling it. That does nothing for the four million in customers' hands which were found infringing and subject to a disable order.

What the court cannot do is to make a ruling that is in violation of Rule 65(d).

No, what the court is not supposed to do is issue an injunction that does not comply with Rule 65(d), except it happens quite a bit. It happened in KSM, where the injunction refers to the original complaint.

If the injunction does not comply with Rule 65(d), it must be challenged. Now that the entire case has been reviewed and appealed up until 8 September, 2006, it is set in stone. DISH/SATS has already lost their chance to challenge the injunction if the injunction covers devices which do not infringe.

Rule 65(d) is about the writing of the injunction. It is not about how a judge must issue a decision.

 

[Thomas22]

Unless someone wants to argue that the products found infringing no longer exist,

If the modified DVR configuration (manufacture) is more than colorably different from the adjudicated configuration then the adjudicated DVRs no longer exist. If something has been removed from existence, that is an effective method of disablement.

 

[Thomas22]

If the injunction does not comply with Rule 65(d), it must be challenged.

Who should challenge it? Someone that thinks the injunction complies with the rule or someone that doesn't? Are you saying that TiVo should have challenged it but that they've lost their opportunity?

 

[Thomas22]

With the addition, "to continue in the marketplace". As in a 501 may have new software so that DISH/SATS can continue selling it. That does nothing for the four million in customers' hands which were found infringing and subject to a disable order.

If those 4 million DVRs aren't in the marketplace then why does money change hands every month? Why does TiVo want a share of that supposedly non-marketplace money each month?

"Contempt is a shield protecting the patentee against an infringer's flagrant disregard for court orders," not "a sword for wounding a former infringer who has made a good-faith effort to modify a previously adjudged or admitted infringing device to remain in the marketplace." Arbek Mfg., 55 F.3d at 1570.

 

[Greg Bimson]

If the modified DVR configuration (manufacture) is more than colorably different from the adjudicated configuration then the adjudicated DVRs no longer exist. If something has been removed from existence, that is an effective method of disablement.

Ok. So Joe Blow's four year old DVR 501 receiver is somehow one-year old. Understood.

Would you like to buy my new computer, which is actually a six year old computer, but it is now new because I installed an updated version of iTunes?

If the injunction does not comply with Rule 65(d), it must be challenged.

Who should challenge it? Someone that thinks the injunction complies with the rule or someone that doesn't? Are you saying that TiVo should have challenged it but that they've lost their opportunity?

A party that does not believe the injunction as written complies with Rule 65(d) should challenge it upon appeal. In this case, DISH/SATS is arguing that the injunction cannot possibly enjoin non-infringing receivers, because the injunction would then violate Rule 65(d). However, because DISH/SATS did not challenge the injunction, it stands as written, and if the injunction no longer adheres to Rule 65(d), it is too late to challenge.

Whatever Judge Folsom issues, you can bet either side will appeal the decision based upon matters of law.

 

[Greg Bimson]

If those 4 million DVRs aren't in the marketplace then why does money change hands every month? Why does TiVo want a share of that supposedly non-marketplace money each month?

That's just a maintenance fee. If you don't pay it, DISH/SATS has the honor of disabling your DVR functionality. DISH/SATS has simply elected to charge a monthly usage fee for those receivers, and it isn't like you can take those receivers to DirecTV and use them there.

TiVo sells their product, with a monthly fee attached to it. Their contract with DirecTV provides for a montly royalty for each of their products in service. That's why they want one from DISH/SATS: it is a monthly royalty.

 

[Thomas22]

Would you like to buy my new computer, which is actually a six year old computer, but it is now new because I installed an updated version of iTunes?

I think you are confusing "new" with "different".

A party that does not believe the injunction as written complies with Rule 65(d) should challenge it upon appeal. In this case, DISH/SATS is arguing that the injunction cannot possibly enjoin non-infringing receivers, because the injunction would then violate Rule 65(d). However, because DISH/SATS did not challenge the injunction, it stands as written, and if the injunction no longer adheres to Rule 65(d), it is too late to challenge.

Whatever Judge Folsom issues, you can bet either side will appeal the decision based upon matters of law.

An appeals court can invalidate an injunction as non-compliant without anyone ever challenging the wording if a judge tries to interpret it in a non-compliant way. The appeals court would just point out his error and reverse the contempt finding.

 

[Thomas22]

That's just a maintenance fee. If you don't pay it, DISH/SATS has the honor of disabling your DVR functionality. DISH/SATS has simply elected to charge a monthly usage fee for those receivers, and it isn't like you can take those receivers to DirecTV and use them there.

TiVo sells their product, with a monthly fee attached to it. Their contract with DirecTV provides for a montly royalty for each of their products in service. That's why they want one from DISH/SATS: it is a monthly royalty.

How can Dish make a profit each month on something that supposedly isn't even in the marketplace? People decide each month whether they want to continue using the DVR and either pay or they don't. It's a monthly purchase.

 

[dweber]

The question is whether the hardware or software is infringing with TIVO. If the patent infringement is due to the DISH DVR hardware, then the only solution would be to replace the box or disable the DVR function. If the software that DISH used was infringing on TIVO's patent, then new software would make the device noninfringing unless it is not colorably different. That is how I see the case. Of course, I am an engineer and not a lawyer.

 

[Greg Bimson]

An appeals court can invalidate an injunction as non-compliant without anyone ever challenging the wording if a judge tries to interpret it in a non-compliant way. The appeals court would just point out his error and reverse the contempt finding.

But that doesn't invalidate the injunction. Invalidation of the injunction and reversal of contempt are two different scenarios.

How can Dish make a profit each month on something that supposedly isn't even in the marketplace? People decide each month whether they want to continue using the DVR and either pay or they don't. It's a monthly purchase.

Just because DISH/SATS has decided to charge a fee for each DVR in use does not mean it is a marketplace. We wouldn't be having this discussion if there wasn't an account fee for having DVR's.

If you want to use the simple fact that any fee that is charged defines a marketplace, fine. It's the next one that defeats the entire issue:

The question is whether the hardware or software is infringing with TIVO.

No, the answer is that DISH/SATS was found to have sold 4 million DVR receivers which infringe upon claims 31 and 61 of the Time Warp patent.

The order states to disable those 4 million infringing DVR's (now three million through attrition) which were placed at customer homes as of 8 September, 2006. There is no need to find them infringing again; it is up to DISH/SATS to prove they are no longer infringing.

Proof that has not been given.

It isn't like making a modification to those receivers changes their legal standing. The injunction states to disable the DVR's for the length of the Time Warp patent. Therefore, a disabled DVR does not infringe and is still under the scope of the patent. Why would anyone even remotely believe a simple software change removes the DVR from the scope of the patent?

A finding of infringement on a product does not get thrown out when there is some small change. The Infringing Products still exist. They might not infringe, but they still exist, and are subject to the disable order (but not the injunction against infringements).

 

[Thomas22]

It isn't like making a modification to those receivers changes their legal standing.

Devices which could not be enjoined as infringements on a separate complaint cannot possibly be deemed enjoined as infringements under an existing injunction in contempt proceedings. Accord MAC Corp. of America, 767 F.2d at 886, 226 USPQ at 518, " 'fair ground for doubt' on infringement." (emphasis added). Infringement is the sine qua non of violation of an injunction against infringements.

The authorities are uniform that the modified device must be an infringement to find contempt of such an injunction. See, e.g., Panther Pumps Equipment Company, Inc. v. Hydrocraft, Inc.,"

 

[Rey]

The war-zone must be very boring these days (for obvious reasons) if I'm going to be stalked by the usual 'crew' every time I question the tainted credibility of a D* sub around here...even when they are starting arguments in E* forums....

actually there isn't that much going on between the 2 right now so nothing to go to war over but hey peace is good right v?