Dish: Ready to shut down DVRs if it loses lawsuit

[Thomas22]

To use the colorably different language to subject other receivers that were not part of the lawsuit to an injunction would be a tremendous stretch.

So a company can just slap a new model number on a box and make a few minor unrelated changes and say that they are off the hook? Nope. That's why everyone deserves a day in court to determine in a contempt hearing whether there is only a colorable difference. If there's more than a colorable difference then fine, a new lawsuit would be required. If the differences are unrelated to the patent then Dish is in contempt.

 

[Bob Haller]

I kinda wish E would shut them down, it would make me change providers without looking back

and charlie would be at the pinnacle of stupidity...........

 

[dangue]

There have been a lot of opinions shared about that, with no proof. And in all of their legal writings, DishNet is writing like they are assuming all DVRs are affected, not just on-ViP.

Can anyone provide any legal documentation in this case that excludes the ViPs?

Quarterly filings have to present worst case scenarios otherwise Dish would be liable to purchasers of the stock who would claim that Dish witheld material negative information. Look at any filing by any publicly traded company, they are always very cautious and guarded and sometimes downright pessimistic to avoid lawsuits stemming from violations of securities regulations.

Please feel free to point to any legal documentation stemming from this case that shows that the VIP receivers are included.

The biggest indicator that they are not included is that TIVO was not allowed to add them in at trial and so their infringement status has never been determined at trial.

 

[Thomas22]

Parse the statement. They do not say when in time the the VIP series would be affected. TIVO would have to go back to court to get them included in the order and we've seen how long this thing can be extended by court filins.

Yep, TiVo would have to file a new contempt motion.

Dish knows though that they are using the same processes in their software for the ViP DVRs as the software found to be in contempt. They won't risk being hit with a disgorgement of profits order if they try to play dumb now and say "we didn't know". That train has left the station and derailed.

 

[Kheldar]

Both Thomas22 and Kheldar know that Judge Folsom's injunction only applies to the DVR's specifically named and found to infringe in the orignal lawsuit by TIVO. The VIP series has not been added or found to infringe. They are safe, for now.

Obviously if I "knew" that, I wouldn't be suggesting otherwise.
You are either accusing me of lying, or are being dishonest yourself.

The fact of the matter is that DishNet, TiVo, the courts (who gave the estimated number I quoted above), and the analysts all believe the ViPs are included (hence the 7 million number often quoted). Only people on this board who cannot provide any evidence seem to be claiming otherwise.

 

[dangue]

So a company can just slap a new model number on a box and make a few minor unrelated changes and say that they are off the hook? Nope. That's why everyone deserves a day in court to determine in a contempt hearing whether there is only a colorable difference. If there's more than a colorable difference then fine, a new lawsuit would be required. If the differences are unrelated to the patent then Dish is in contempt.

How can there be a contempt hearing on products that were not subject to the injunction to begin with because they were not part of the original lawsuit?

TIVO can have it's day in court with a contempt hearing once there is a lawsuit that determines that these products are in fact infringing on the patent. You can't just skip ahead in the process like you seem to wish they can. If Judge Folsom were to go with that, it would be a tremendous abuse of judicial discretion and would almost certainly get reversed on appeal.

 

[Kheldar]

Quarterly filings have to present worst case scenarios otherwise Dish would be liable to purchasers of the stock who would claim that Dish witheld material negative information. Look at any filing by any publicly traded company, they are always very cautious and guarded and sometimes downright pessimistic to avoid lawsuits stemming from violations of securities regulations.

My point exactly. If there was no chance that this lawsuit would involve the ViPs, why even list it as a possibility in the filings? If the ViP series was truly free-and-clear from this lawsuit, why would they write the filings to suggest that they may be included?

 

[Hemi 6.1]

My point exactly. If there was no chance that this lawsuit would involve the ViPs, why even list it as a possibility in the filings? If the ViP series was truly free-and-clear from this lawsuit, why would they write the filings to suggest that they may be included?

This is my feeling as well.
Then make it very clear the VIP's are safe.
But it doesn't appear that the VIP are 100% out of the woods.
Whats so different about the old DVRs, that the VIP's are clear?
Is E* going to supply everyone with 922s?

 

[Thomas22]

How can there be a contempt hearing on products that were not subject to the injunction to begin with because they were not part of the original lawsuit?

"A contempt proceeding for violation of a patent infringement injunction will lie where the new and alleged offending device is merely 'colorably' different from the enjoined device or from the patent. In American Foundry & Mfg. Co. v. Josam Mfg. Co., supra, this Court held, 79 F.2d at 117:10"

 

[Roxor]

He still playing a hand of poker. When he was asked if he was thinking of buying Tivo he said he hasn't really thought about it...

Yeah right...

Yes he is, and with our grubstake. I just hope he's not holding Aces and 8s!!!

 

[riffjim4069]

So a company can just slap a new model number on a box and make a few minor unrelated changes and say that they are off the hook? Nope. That's why everyone deserves a day in court to determine in a contempt hearing whether there is only a colorable difference. If there's more than a colorable difference then fine, a new lawsuit would be required. If the differences are unrelated to the patent then Dish is in contempt.

Thomas is 100% correct on this issue. Although the VIP Series DVRs were not part of the initial lawsuit filed in...oh, let's just say in the year 1910 since it seems that long ago, if Judge Folsom rules they are merely "colorably different" they will be enjoined into the injunction order and subject to the disablement provision. This would require a bench trial and in no way indicates how Judge Folsom might rule in this matter. My only point is the VIP Series DVRs can (with "can" being the operative work in that sentence) be ordered disabled without requiring a separate decades long trial. The court is attempting to stop all infringing DVRs, and those merely colorably different, from violating Tivo's patents. Otherwise, Dish Network could simply slap another model number onto the infringing DVRs and tell the courts they are not part of the injunction...and Tivo will have to file a new lawsuit. To me, Judge Folsom's order is crystal clear and the court has given him the authority to rule if the VIP DVRs are to be included. His authority has been affirmed when the appellate court uphelp the juries findings in the Tivo vs. Dish Network trial, and reaffirmed when the appelate court uphelp Judge Folsom's contempt order.

Of course, we all know that SATS wil never disable a single DVR...it's just a matter of how much it is going to cost them in licensing fees or to purchase Tivo outright.

 

[Thomas22]

Judge Folsom has granted a stay until midnight, June 4.

 

[riffjim4069]

Judge Folsom has granted a stay until midnight, June 4.

...of what year?

 

[Voyager6]

Obviously if I "knew" that, I wouldn't be suggesting otherwise.
You are either accusing me of lying, or are being dishonest yourself.

The fact of the matter is that DishNet, TiVo, the courts (who gave the estimated number I quoted above), and the analysts all believe the ViPs are included (hence the 7 million number often quoted). Only people on this board who cannot provide any evidence seem to be claiming otherwise.

Please show us where in the Permanent Injunction the VIP series DVR's are specifically named.

IN THE UNITED STATES DISTRICT COURT
FOR THE EASTERN DISTRICT OF TEXAS
MARSHALL DIVISION
TIVO INC.,
Plaintiff,
vs.
DISH NETWORK CORPORATION,
et al.,
Defendants.
§
§
CIVIL ACTION NO. 2:04-CV-01 (DF)
AMENDED FINAL JUDGMENT AND PERMANENT INJUNCTION
Pursuant to Rule 58 of the Federal Rules of Civil Procedure, and in accordance with the jury verdict delivered on April 13, 2006 and the Federal Circuit mandate issued April 18, 2008, and with the Court’s contemporaneously filed opinions and orders, the Court hereby enters judgment for Plaintiff against Defendants for willful infringement of U.S. Patent No. 6,233,389 (“the ’389 Patent”) claims 31 and 61 (“the Infringed Claims”) by Defendants’ following DVR receivers (collectively the “Infringing Products”): DP-501, DP-508, DP-510, DP-522, DP-625, DP-721, DP-921, and DP-942. The jury in this case found EchoStar’s infringement to be willful, but the Court, finding that Echostar did not act in bad faith and that this is not an “exceptional case,” has determined that there should be no enhancement of damages and no award of attorneys fees pursuant
to 35 U.S.C. Sections 284 and 285. The Court also enters judgment for Plaintiff on Defendants’ counterclaims for declaratory judgment of non-infringement, invalidity, and unenforceability.

IT IS THEREFORE ORDERED THAT Plaintiff shall have and recover from Defendants,
jointly and severally, the total sum of $73,991,964.00, together with prejudgment interest at the rateof prime, said prejudgment interest in the total sum of $5,367,544.00, together with supplemental damages in the amount of $10,317,108.00, together with post-judgment interest on the entire sum calculated pursuant to 28 U.S.C. § 1961. In addition, Plaintiff shall have and recover from
Defendants, jointly and severally, the sum of $103,068,836 in damages accrued during the stay of this Court’s injunction, together with post-judgment interest on that sum calculated pursuant to 28 U.S.C. § 1961. The amounts awarded in this judgment shall bear interest from the date of judgment at the lawful federal rate.

It is FURTHER ORDERED that each Defendant, its officers, agents, servants, employees,
and attorneys, and those persons in active concert or participation with them who receive actual notice hereof, are hereby restrained and enjoined, pursuant to 35 U.S.C. § 283 and Fed. R. Civ. P.
65(d), from making, using, offering to sell, selling, or importing in the Untied States, the Infringing Products, either alone or in combination with any other product and all other products that are only colorably different therefrom in the context of the Infringed Claims, whether individually or in combination with other products or as a part of another product, and from otherwise infringing or inducing others to infringe the Infringed Claims of the ‘389 Patent.

Defendants are hereby FURTHER ORDERED to, within thirty (30) days of the issuance
of this order, disable the DVR functionality (i.e., disable all storage to and playback from a hard disk drive of television data) in all but 192,708 units of the Infringing Products that have been placed with an end-user or subscriber. The DVR functionality, storage to and playback from a hard disk drive, shall not be enabled in any new placements of the Infringing Products.

Defendants shall forthwith provide written notice of this judgment, and the injunction
ordered herein, to their officers, directors, agents, servants, representatives, attorneys, employees,subsidiaries and affiliates, and those persons in active concert or participation with them, including any and all manufacturers, distributors, retailers, and service providers who have been involved in the making, using, selling, offering for sale or importing of any Infringing Products, and to all other persons or entities involved in any way with the making, using, selling, offering for sale or importing of any Infringing Products. Defendants shall take whatever means are necessary or appropriate to
ensure that this order is properly complied with. This injunction shall run until the expiration of the ’389 Patent.

It is FURTHER ORDERED that Defendants shall inform this Court of any further attempt
to design around the ’389 Patent and shall seek approval from this Court before any such design- around is implemented.

This Court retains jurisdiction over Defendants to enforce any and all aspects of this
Judgment and Permanent Injunction, including the award of monetary sanctions for EchoStar’s contempt of this Court’s injunction.

The Court further retains jurisdiction to award Plaintiff amounts for supplemental damages, interest, costs, attorneys fees and such other or further relief as may be just and proper. All relief not specifically granted herein is denied. All pending motions not previously ruled on are denied. This is a Final Judgment and is appealable.

SIGNED this second day of June, 2009

 

[Stargazer]

Didn't Dish Network tell their retailers not long ago that DVR's will NOT be shut off?

 

[mike123abc]

As was pointed out before, the ViP units can not be piggybacked on this lawsuit and would require a new trial.

I think it could go either way. While the ViPs were not part of the original suit, they could fall under it if the Judge rules them merely colorably different. Denying it does not make it go away.

As you well know I am not a TiVo lawyer. But, I am going by statements made by Dish. They constantly warn that they could be forced to stop selling DVRs, and turn off all DVRs in the field except 192,000 (granted TiVo lifetime license as part of the original payment to TiVo).

If Dish though that it only applied to old non ViP models they would say something along the lines of: "we could be forced to replace X# of DVRs in the field with new non infringing DVRs at a cost of $Y". Not

"The only thing we can control is to shut down boxes, so we have to, obviously, if we were to lose in the court procedures," he told analysts during a conference call on the company's earnings. "We're prepared to do that. That obviously will have a material negative effect on our business."

If Charlie is saying it it means he is covering his butt with the worst case possible.

Note I am not saying ViPs are currently part of the suit. But, Dish seems to recognise they could easily fall under the suit. Dish itself keeps saying they could be forced to shutdown DVRs. From their 10Q:

If we are unsuccessful in overturning the District Court’s ruling on Tivo’s motion for contempt, we are not successful in developing and deploying potential new alternative technology and we are unable to reach a license agreement with Tivo on reasonable terms, we would be subject to substantial liability and would be prohibited from offering DVR functionality that would result in a significant loss of subscribers and place us at a significant disadvantage to our competitors.

Another longer quote from the 10Q:

If we are unsuccessful in overturning the District Court’s ruling on Tivo’s motion for contempt, we are not successful in developing and deploying potential new alternative technology and we are unable to reach a license agreement with Tivo on reasonable terms, we would be required to eliminate DVR functionality in all but approximately 192,000 digital set-top boxes in the field and cease distribution of digital set-top boxes with DVR functionality. In that event we would be at a significant disadvantage to our competitors who could continue offering DVR functionality, which would likely result in a significant decrease in new subscriber additions as well as a substantial loss of current subscribers. Furthermore, the inability to offer DVR functionality could cause certain of our distribution channels to terminate or significantly decrease their marketing of DISH Network services. The adverse effect on our financial position and results of operations if the District Court’s contempt order is upheld is likely to be significant. Additionally, the supplemental damage award of $103 million and further award of approximately $200 million does not include damages, contempt sanctions or interest for the period after June 2009. In the event that we are unsuccessful in our appeal, we could also have to pay substantial additional damages, contempt sanctions and interest. Depending on the amount of any additional damage or sanction award or any monetary settlement, we may be required to raise additional capital at a time and in circumstances in which we would normally not raise capital. Therefore, any capital we raise may be on terms that are unfavorable to us, which might adversely affect our financial position and results of operations and might also impair our ability to raise capital on acceptable terms in the future to fund our own operations and initiatives. We believe the cost of such capital and its terms and conditions may be substantially less attractive than our previous financings.
If we are successful in overturning the District Court’s ruling on Tivo’s motion for contempt, but unsuccessful in defending against any subsequent claim in a new action that our original alternative technology or any potential new alternative technology infringes Tivo’s patent, we could be prohibited from distributing DVRs or could be required to modify or eliminate our then-current DVR functionality in some or all set-top boxes in the field. In that event we would be at a significant disadvantage to our competitors who could continue offering DVR functionality and the adverse effect on our business would be material. We could also have to pay substantial additional damages.

Again they do not talk about old technology needing to be replace with new DVRs, they talk about not being able offer DVR functionality PERIOD. This is of course the worst possible outcome of the situation, but obviously one that Dish thinks could happen and have to warn investors about.

Do I think the ViP DVRs will be turned off? No, Dish will pay whatever is needed to keep them on since they know their entire business model would collapse if they do not have DVR functionality. Dish will do something whether buying TiVo, paying TiVo, etc.

 

[Hemi 6.1]

OK , so whats do different between the 625 and 622, besides the larger hardrive and 1 is HD and one is not.

Lets not for get about the solo 512 which is the same exact as a 522.

So just because E* chages the name and Number, that doesn't change the fact that its the same design, Does it?

I don't think any are 100% safe.

 

[space86]

Good Dish, just shut off the DVR's in June, July or August when all
the shows are in reruns!

 

[harshness]

The ViP series has not been contemplated by anyone but TiVo in these proceedings. They've tried to attach them more than once and have been shot down.

The contempt proceeding is to consider whether or not DISH Network is in contempt. It isn't there to facilitate TiVo adding the ViP series to the consideration. The contempt battle is between DISH and the judge and TiVo is simply campaigning against DISH.

 

[Stargazer]

Defendants shall forthwith provide written notice of this judgment, and the injunction
ordered herein, to their officers, directors, agents, servants, representatives, attorneys, employees,subsidiaries and affiliates, and those persons in active concert or participation with them, including any and all manufacturers, distributors, retailers, and service providers who have been involved in the making, using, selling, offering for sale or importing of any Infringing Products, and to all other persons or entities involved in any way with the making, using, selling, offering for sale or importing of any Infringing Products. Defendants shall take whatever means are necessary or appropriate to
ensure that this order is properly complied with. This injunction shall run until the expiration of the ’389 Patent.

It is FURTHER ORDERED that Defendants shall inform this Court of any further attempt
to design around the ’389 Patent and shall seek approval from this Court before any such design- around is implemented


----------------


From what I gather in this, it states that if anybody even sells or uses this product, they will be in violation as well. I wonder what kind of penalty can be imposed on those that have done such thing?

Also, it states that if a design around the patent then the court has to approve that design around before it can be done. So I would gather that this would mean that any other DVR that Dish Network will produce in the future MUST be approved first.