TiVo Sued: A Taste of Their Own Medicine

[jacmyoung]

You know as well as I that no one would settle until after the Court of Appeals issues their decision.

But did those other TiVo folks know?

I know it is semantics, but I think that MSFT is selling a version of an XML editor, not "the customer XML editor" that was found infringing. I even seem to recall MSFT had to issue a patch to remove infringing technology from Word.

The injunction prohibits MSFT from selling "new Word Products with the infringing custom XML editor", and MSFT in a press release after the appeals court ruling, said their engineers had been working on removing the code that infringed on the i4i patent since the appeal began (i.e. during the stay), and their 2010 Word Products no longer contained such code.

MSFT did not remove the custom XML editor, as far as MSFT is concerned, they will continue to sell the new Word products, with the custom XML editor, because they have removed the code that was covered by the i4i patent.

 

[jacmyoung]

Let’s try it this way, in the i4i v. MSFT case, the injunction prohibits the sale of the new word products with the infringing custom XML editor.

During the stay, MSFT claimed they removed the infringing code from their custom XML editors in the new Word products, now continue to sell them., because as far as MSFT is concerned, the “infringing custom XML editor” no longer exists.

In the TiVo v. E* case, the injunction prohibited the use of the DVR functions (i.e. all of the …) of the “Infringing Products”.

During the stay, E* removed the infringing software, replaced it with the non-infringing software, and continue to use those DVRs, because as far as E* is concerned, the “Infringing Products” no longer existed.

Now the point you and TiVo make is, E* cannot do that without approval from the court, but MSFT did not ask the court approval either to determine if their current custom XML editor is still infringing or not, they just said it is not, and continue to sell the new Word products with the editor.

Using TiVo’s logic, MSFT must stop the sale of the new Word products by 1/5/10(?), then ask the court to review the code, make sure it no longer contains infringing code, then approve the sale.

MSFT must be in big trouble now.

 

[Greg Bimson]

Using TiVo’s logic, MSFT must stop the sale of the new Word products by 1/5/10(?), then ask the court to review the code, make sure it no longer contains infringing code, then approve the sale.

That is wholly incorrect. MSFT is not enjoined from "the sale of the new Word products." That is why one has to look at the exact injunction in question before making a determination:

Microsoft Corporation is hereby permanently enjoined from performing the following actions with Microsoft Word 2003, Microsoft Word 2007, and Microsoft Word products not more than colorably different from Microsoft Word 2003 or Microsoft Word 2007 (collectively “Infringing and Future Word Products”) during the term of U.S. Patent No. 5,787,449:

Imagine that; there's that darn "Infringing Products" again...

1. selling, offering to sell, and/or importing in or into the United States any Infringing and Future Word Products that have the capability of opening a .XML, .DOCX, or .DOCM file (“an XML file”) containing custom XML;

So as long as sales of Word with the patch no longer has the ability to open .XML, .DOCX or .DOCM files containing custom XML, its fine.

2. using any Infringing and Future Word Products to open an XML file containing custom XML;

Just like point one above, as long as Word with the patch no longer has the ability to open .XML, .DOCX or .DOCM files containing custom XML, its fine.

3. instructing or encouraging anyone to use any Infringing and Future Word Products to open an XML file containing custom XML;

That's instructions, so it doesn't apply to the acutal product.

4. providing support or assistance to anyone that describes how to use any infringing and Future Word Products to open an XML file containing custom XML;

Again, that's instructions, so it doesn't apply to the acutal product.

5. testing, demonstrating, or marketing the ability of the Infringing and Future Word Products to open an XML file containing custom XML.

They cannot show how Word opens an XML file containing custom XML.

This injunction does not apply to any of the above actions wherein the Infringing and Future Word Products open an XML file as plain text.

If the XML file can be opened as plain text, the injunction does not apply.

Imagine that. There are exceptions all over this injunction. That is unlike the injunction in the TiVo v. EchoStar case, where there wasn't an exception:

In the TiVo v. E* case, the injunction prohibited the use of the DVR functions (i.e. all of the …) of the “Infringing Products”.

During the stay, E* removed the infringing software, replaced it with the non-infringing software, and continue to use those DVRs, because as far as E* is concerned, the “Infringing Products” no longer existed.

And that was only accomplished by changing the legal definition of "Infringing Products". If the actual definition of "Infringing Products" was followed those identified products should have been disabled; there were no exceptions. And there weren't any exceptions within the injunction, unlike i4i v. Microsoft.

 

[jacmyoung]

...So as long as sales of Word with the patch no longer has the ability to open .XML, .DOCX or .DOCM files containing custom XML, its fine...

They are downloading and selling the new 2010 Word products with the ability to do the above, go read MSFT's press release. The only thing MSFT said was, with respect to the 2010 Word products, their engineers worked hard after the infringement verdict and during the stay, the new 2010 Word products would no longer contain the code that used the i4i technology by the time the injunction took effect, which was around 1/5/10.

They did say they had removed the ability to open the above custom files from the 2007 Word products still to be sold, but not from the 2010 Word products, go read their press release. My guess is there were not many 2007 Word products left to sell anyway, just like E* decided not to modify those 9xx and 7xx DVRs.

 

[Curtis0620]

too bad DISH's changes still infringe.

 

[whitewolf8214]

Abou time tivo is gettng what they deserve.charlie after this is done should buy tivo out.

 

[Curtis0620]

Abou time tivo is gettng what they deserve.charlie after this is done should buy tivo out.

exactly what are they getting? DISH has lost every step of the way.

What TiVo is getting is a licensing deal with DISH. SOON.

 

[Greg Bimson]

They are downloading and selling the new 2010 Word products with the ability to do the above, go read MSFT's press release. The only thing MSFT said was, with respect to the 2010 Word products, their engineers worked hard after the infringement verdict and during the stay, the new 2010 Word products would no longer contain the code that used the i4i technology by the time the injunction took effect, which was around 1/5/10.

Okay, but...

Microsoft Corporation is hereby permanently enjoined from performing the following actions with Microsoft Word 2003, Microsoft Word 2007, and Microsoft Word products not more than colorably different from Microsoft Word 2003 or Microsoft Word 2007 (collectively “Infringing and Future Word Products”)

Microsoft Word 2010 is not a "named" product, and would need to be evaluated for colorable difference.

Could i4i go after Microsoft? Sure. If i4i feels that Word 2010 infringes and is not more than colorably different than the versions of Word 2003 and 2007, then i4i will go after them in a contempt proceeding.

 

[jacmyoung]

Okay, but...Microsoft Word 2010 is not a "named" product, and would need to be evaluated for colorable difference.

Could i4i go after Microsoft? Sure. If i4i feels that Word 2010 infringes and is not more than colorably different than the versions of Word 2003 and 2007, then i4i will go after them in a contempt proceeding.

You don't think 2010 Word is the "future Word product" which is "named" in the injunction?

So according to you, as long as a product is "named" in the injunction, there is no need for colorable difference and infringement analyses (since only those not named will need colorable difference analysis, according to you), but if so, what was the point of Judge Folsom doing colorable difference and infringement analyses for those "named" DVRs?

Wasting our tax dollars?

 

[Greg Bimson]

You don't think 2010 Word is the "future Word product" which is "named" in the injunction?

No, it isn't.

Microsoft Corporation is hereby permanently enjoined from performing the following actions with Microsoft Word 2003, Microsoft Word 2007, and Microsoft Word products not more than colorably different from Microsoft Word 2003 or Microsoft Word 2007 (collectively “Infringing and Future Word Products”) during the term of U.S. Patent No. 5,787,449:

Any new release of Word software would have to be tested for colorable difference. Any patches to existing installs of Word 2003 and 2007 would have to be tested for colorable difference.

So according to you, as long as a product is "named" in the injunction, there is no need for colorable difference and infringement analyses (since only those not named will need colorable difference analysis, according to you), but if so, what was the point of Judge Folsom doing colorable difference and infringement analyses for those "named" DVRs?

Don't put words in my mouth.

Word 2003 and 2007 were "patched" by Microsoft. A colorable difference test is in order.

TiVo said DISH/SATS didn't follow the disable order within the injunction. TiVo also accused DISH/SATS of continuing infringement with respect to the newly-patched eight models of DVR that were found infringing at trial. That means sales of the 625 from late 2008 have now became a contemptuous act, because the reworked code is merely colorably different from the sales of the 625 in 2006 (an infringement) and because the 625 from late 2008 also infringes.

So not only did Judge Folsom have to consider whether or not DISH/SATS followed the disable order, TiVo also requested that DISH/SATS be found in contempt for continuing sales of a merely colorably different product, which still infringes. I don't consider that a waste.

 

[jacmyoung]

No, it isn't.Any new release of Word software would have to be tested for colorable difference. Any patches to existing installs of Word 2003 and 2007 would have to be tested for colorable difference.

According to TiVo, the infringer under such order cannot just tell the world they had done such patch, they should have informed the court and obtained approval for such patch. Who knows if MSFT is lying or not? Can you trust a convicted infringer? See TiVo's point?

The injunction prohibits the sale of all Word products, current or future, that contains the infringing XML editor. Before MSFT started to sell them, they needed the court review and approval to ensure the patches are indeed good enough, according to you and TiVo, but this is not done by MSFT for the 2010 version of the "future Word product", so MSFT is in contempt.

Don't put words in my mouth.

Word 2003 and 2007 were "patched" by Microsoft. A colorable difference test is in order.

Why don't you call i4i and tell them they need to charge MSFT for contempt for not asking the court to do colorable difference test? MSFT still sells those products too you know, who knows if they actually did any patch at all? Which is why the court must first review the patches and approve the sale, see TiVo's point?

... I don't consider that a waste.

You conveniently forgot the colorable difference test was not even ordered by Judge Folsom (i.e. he did not want to "waste the time") until E* insisted he did that, so no Judge Folsom was forced by E* to do that test. It wasn't TiVo's idea at all, in fact TiVo in the first meeting insisted only the infringement analysis, not colorable difference test. Why don't you go back to read and refresh your memory?

Now are you going to say hey whose fault was that? It turned out the judge did not want to waste time, but E* forced him to waste time and he agreed to waste time?

Again, it was never TiVo's request to do the colorable difference test, not the judge initially either, but E* insisted that test was done. Get your facts straight first.

You said yourself as far as the "named" DVRs, colorable difference test was not needed, only the not named product, don't try to change the subject by saying if the products are modified, they become not "named" products, therefore now need colorable difference test, because if you do, you have defeated your own argument, you are basically admitting that once a "named" product is modified, it becomes the same as a "not named" product which requires a colorable difference test.

Becareful what you say to try to fit the argument.

 

[ts7]

Once again another lengthy thread with most of the posts point/counter-point from 2-3 posters. Maybe you guys should start your own site for the Tivo vs Dish discussions!

(Don't get me wrong - I actually enjoy reading this stuff)

 

[jacmyoung]

Once again another lengthy thread with most of the posts point/counter-point from 2-3 posters. Maybe you guys should start your own site for the Tivo vs Dish discussions!

(Don't get me wrong - I actually enjoy reading this stuff)

Will you pay a fee to read? If so I will talk to Greg about starting a private site

 

[ts7]

Will you pay a fee to read? If so I will talk to Greg about starting a private site

Well I find it more interesting and entertaining than probably 95% of what shows on Dish. Maybe you could host a Tivo vs Dish talking head show (vis-a-vis the old Hannity & Colmes show)

 

[Greg Bimson]

According to TiVo, the infringer under such order cannot just tell the world they had done such patch, they should have informed the court and obtained approval for such patch. Who knows if MSFT is lying or not? Can you trust a convicted infringer? See TiVo's point?

Where is the "disable" provision in the injunction against Microsoft? Microsoft was told to remove the ability to run custom XML within Word 2003 and 2007 products, and any newer ones that may be merely colorably different. Microsoft was not told to disable Word; DISH/SATS was told to disable certain functionality within eight models of DVR that were installed with an end user as of the date of the injunction.

The injunction prohibits the sale of all Word products, current or future, that contains the infringing XML editor. Before MSFT started to sell them, they needed the court review and approval to ensure the patches are indeed good enough, according to you and TiVo, but this is not done by MSFT for the 2010 version of the "future Word product", so MSFT is in contempt.

I don't see where Microsoft was enjoined from selling the infringing XML editor; at least not within the part of the injunction I posted. I do see that Microsoft is enjoined from selling a Word product which has "the capability of opening a .XML, .DOCX, or .DOCM file (“an XML file”) containing custom XML". That is a big difference. And if i4i feels that Microsoft is selling a version of Word that is merely colorably different than what was found infringing, and also infringes, you can bet that i4i will file a motion for contempt.

You conveniently forgot the colorable difference test was not even ordered by Judge Folsom (i.e. he did not want to "waste the time") until E* insisted he did that, so no Judge Folsom was forced by E* to do that test. It wasn't TiVo's idea at all, in fact TiVo in the first meeting insisted only the infringement analysis, not colorable difference test. Why don't you go back to read and refresh your memory?

TiVo never suggested only infringement analyses. TiVo actually sided with DISH/SATS regarding the use of the KSM standard, where both a colorable difference analysis and an infringement analysis must be performed and both must be found to be present in order to find contempt.

Again, it was never TiVo's request to do the colorable difference test, not the judge initially either, but E* insisted that test was done. Get your facts straight first.

TiVo motioned the court and said DISH/SATS was in contempt because they didn't follow the "disable" provision of the injunction.

DISH/SATS then replied to that motion stating we didn't have to disable anything because we no longer have any infringing products.

TiVo's response to the DISH/SATS' reply was that the modified products still infringe.

And somewhere along the line, TiVo even mentioned that the two-pronged KSM test must be used to find contempt on the newer modified receivers not subject to the disable order.

You said yourself as far as the "named" DVRs, colorable difference test was not needed, only the not named product, don't try to change the subject by saying if the products are modified, they become not "named" products, therefore now need colorable difference test, because if you do, you have defeated your own argument, you are basically admitting that once a "named" product is modified, it becomes the same as a "not named" product which requires a colorable difference test.

You are stating that Word 2010 is the "future Word product" which is "named" in the injunction. You need to prove it. Just because Microsoft release a new Word product does not mean it is already subject to the injunction. Technically, it never is until contempt is found.

Yet the issue in TiVo v. EchoStar simply is that about four million DVR's became subject to a disable clause, and when the injunction became active they weren't functionally disabled. They were ordered modified, and a modification was made, but not the modification that was ordered. That modification didn't make those DVR's "something else". And that modification did not remove them from the scope of the disable clause; the functionally-disabled DVR (if actually disabled) would still be under the scope of the injunction, as those devices were ordered disabled for the life of the patent. Flipping the switch and turning functionality back on would have automatically triggered a motion for contempt.

The issues are different between these two cases. There are many similarities, but in i4i v. Microsoft, the main narrow act that must be completed is disabling the ability to open custom XML files. In TiVo v. Echostar, the main narrow act that must be completed is disabling DVR functionality within a subset of DVR models that were admitted as infringements in front of the court. And if either plaintiff feels the order is being ignored, then they will file a motion for contempt.

 

[jacmyoung]

...TiVo actually sided with DISH/SATS regarding the use of the KSM standard, where both a colorable difference analysis and an infringement analysis must be performed and both must be found to be present in order to find contempt.

No they did not, TiVo initially only wanted infringement analysis, which was why the judge only ordered such analysis in his initial "bench trial", but under E*'s protest, TiVo agreed because else E* would have appealed right there, they almost did but after the judge added the colorable difference test E* withdrew the appeal, remember? TiVo did not want to deal with the appeals court, they knew they needed to stay with Judge Folsom.

You are stating that Word 2010 is the "future Word product" which is "named" in the injunction. You need to prove it.

It is not a matter of proof, rather a matter of interpretation, I interpret that the new 2010 Word products fall into the "future Word product" definition, therefore are "named" because the injunction names "future Word products", at the time there was no 2010 Word product, therefore the 2010 Word products we have now are the "future Wrod products" defined in the injunction, do you disagree?

Just because Microsoft release a new Word product does not mean it is already subject to the injunction. Technically, it never is until contempt is found.

The injunction prohibits the sale of the 2003, 2007 and "future Word products" with..., therefore all 2003, 2007 and "future Word product" fall into the sale prohibition, yet MSFT continues to sell them, how so? Just because MSFT claimed they had done a patch? How can you believe what a convicted infringer's claim? Shouldn't MSFT first stop the sale of the 2003, 2007 and future Word products, let the court evaluate the new code, approve the sale first?

 

[Greg Bimson]

No they did not, TiVo initially only wanted infringement analysis, which was why the judge only ordered such analysis in his initial "bench trial", but under E*'s protest, TiVo agreed because else E* would have appealed right there, they almost did but after the judge added the colorable difference test E* withdrew the appeal, remember?

TiVo never wanted the bench trial. TiVo originally wanted the easy way out, to find contempt for failure to disable. DISH/SATS successfully convinced Judge Folsom that an evaluation needed to take place, and for judicial economy, Judge Folsom decided to order an infringement analysis. DISH/SATS then moved Judge Folsom to also consider a colorable difference analysis.

It is not a matter of proof, rather a matter of interpretation, I interpret that the new 2010 Word products fall into the "future Word product" definition, therefore are "named" because the injunction names "future Word products", at the time there was no 2010 Word product, therefore the 2010 Word products we have now are the "future Wrod products" defined in the injunction, do you disagree?

Of course I disagree. The injunction states the products that fall into the scope of the injunction: Word 2003, Word 2007, and any Word products not more than colorably different from Microsoft Word 2003 or Microsoft Word 2007. The only way Microsoft Word 2010 can be considered the "Future Word Product" is if it is "not more than colorably different" from Word 2003 and Word 2007.

Besides, if Microsoft has patched Word 2003 and Word 2007, any new sales of the modified product would have to be evaluated for colorable difference, as the patched versions are not the same product as listed in the injunction. That goes back to the StarBrite case.

 

[Greg Bimson]

Shouldn't MSFT first stop the sale of the 2003, 2007 and future Word products, let the court evaluate the new code, approve the sale first?

DISH/SATS was allowed to sell modified 501, 508, 510, 522 and 625's. There wasn't any need to evaluate modified code, unless TiVo felt those devices with modification still infringe and are merely colorably different than what was evaluated.

TiVo never suggested DISH/SATS stop sales of the modified products, until DISH/SATS used the fact they no longer infringe against the order to disable DVR functionality.

In i4i v. Microsoft, Word 2003 and Word 2007 were never ordered disabled. Some very small integrated functionality was ordered disabled. The product was allowed to continue to work, but only some small functionailty had to be disabled.

In TiVo v. EchoStar, the eight models of DVR were never ordered disabled. Only the DVR functionalilty was ordered disabled. The product was allowed to continue to work, but only some functionality within the receiver was ordered disabled.

If i4i feels that Microsoft is "2. using any Infringing and Future Word Products to open an XML file containing custom XML", then i4i will go after Microsoft in a contempt setting. Microsoft is ordered not to open XML files containing custom XML. If Microsoft releases a patch that gets Word 2003 and 2007 to comply with this order, then a contempt setting is not needed.

TiVo felt that DISH/SATS violated the order to disable DVR functionality within eight models of DVR. TiVo went after DISH/SATS for failure to disable by filing a motion for contempt. DISH/SATS was ordered to disable DVR functionality; if DISH/SATS released a patch to get those models to comply with the order, then a contempt setting would not be needed. However, DVR functionality was not disabled, and Judge Folsom found DISH/SATS in contempt of that order.

 

[jacmyoung]

...If i4i feels that Microsoft is "2. using any Infringing and Future Word Products to open an XML file containing custom XML", then i4i will go after Microsoft in a contempt setting. Microsoft is ordered not to open XML files containing custom XML. If Microsoft releases a patch that gets Word 2003 and 2007 to comply with this order, then a contempt setting is not needed...

Regardless how i4i feels, MSFT has made it clear that they will continue to sell "future new Word Products" with the custom XML editor, because they had patched the code so it no longer uses the i4i technology, that is what MSFT is saying, not me. Whether i4i will go after MSFT is not even relevant.

The point here is, you have no problem with the above MSFT's action, which is no different from what E* did, the fact you tried to differentiate "disable" and "do not sell" is not helpful. The issue is whether the specific letter of the injunction is followed or not, and whether the infringer must first do exactly what the prohibition says, then seek court approval, then sell the "future Word produtcs" only after the court approval, or not.

 

[Greg Bimson]

Regardless how i4i feels, MSFT has made it clear that they will continue to sell "future new Word Products" with the custom XML editor, because they had patched the code so it no longer uses the i4i technology, that is what MSFT is saying, not me. Whether i4i will go after MSFT is not even relevant.

So Microsoft was enjoined from continuing "to sell "future new Word Products" with the custom XML editor"?

The issue is whether the specific letter of the injunction is followed or not, and whether the infringer must first do exactly what the prohibition says, then seek court approval, then sell the "future Word produtcs" only after the court approval, or not.

I'm going to wait and see the citiation that Microsoft is no longer allowed to sell Word with a custom XML editor. That action is not enjoined, which makes the entire argument invalid.