TiVo Sued: A Taste of Their Own Medicine

[jacmyoung]

...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.

Below is a quote from the appeals court’s interpretation of the i4i injunction, which they reinstated in their decision in December of 2009:

This injunction, which this court stayed pending the outcome of this appeal, is narrow. i4i Ltd. v. Microsoft Corp., No. 2009-1504 (Fed. Cir. Sept. 3, 2009). It does not affect copies of Word sold or licensed before the injunction goes into effect. Thus, users who bought or licensed Word before the injunction becomes effective will still be able to use the infringing custom XML editor, and receive technical support from Microsoft. After its effective date, the injunction prohibits Microsoft from selling, offering to sell, importing, or using copies of Word with the infringing custom XML editor. Microsoft is also prohibited from instructing or assisting new customers in the custom XML editor’s use.

You see the appeals court said all Word products, which is consistent with what you have quoted from the injunction itself. The injunction specifically cited the 2003 and 2007 Word products, but not the 2010 Word products because at the time the injunction was written, the 2010 Word did not exist, so the term “future Word product” was used to capture all future Word products, i.e. all future Word products fall into the same prohibition applied to the 2003 and 2007 Word products. This is to prevent the use of label to cause confusion. Had the court anticipated the 2010 Word as the future Word product and put it in there, what if MSFT later changed it to 2009.5 or 2012 Word? See the point?

Regardless though, the appeals court has already interpreted for us what the injunction means, it means after its effective date (1/5/10?), MSFT cannot sell, offer to sell, or use copies of Word (regardless 2003, 2007, 2010 or 2050) with the infringing custom XML editor, and cannot provide tech support for the use of the custom XML editor.

There is no dispute MSFT had said they continue to sell, offer to sell and use the 2010 Word with the custom XML editor, and they had done a patch, the current custom XML editor no longer uses the i4i technology.

Again the question to you is, based on the above facts, do you believe whether MSFT is in violation of the injunction or not. Do you believe MSFT should have stopped the selling, offering to sell or use of the 2010 Word products (or any Word products), asked the court to review the patches, and approve the continued sale of the Word first?

I am not asking you how i4i may feel, or how TiVo may feel, rather what do you feel?

 

[riffjim4069]

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.

Once again, thank you for posting your timely, and accurate, analysis to combat the endless reams of BOHICA and FUD - it is very much appreciated. :

 

[jacmyoung]

Once again, thank you for posting your timely, and accurate, analysis to combat the endless reams of BOHICA and FUD - it is very much appreciated. :

I am sure Greg is more than capable of defending himself and his own endless..., unless you have something of substance to contribute.

 

[Greg Bimson]

You see the appeals court said all Word products, which is consistent with what you have quoted from the injunction itself.

After its effective date, the injunction prohibits Microsoft from selling, offering to sell, importing, or using copies of Word with the infringing custom XML editor.

However, what the appeals courts states is not a citation of the injunction. The issue is not so much with all Word products as it is with those products' ability to run XML.

With that stated, Microsoft patched the custom XML editor. The new Word no longer contains "the infringing custom XML editor". If the patched version no longer has the abilities to execute any of the enjoined actions, it is no longer "the infringing custom XML editor" as it no longer infringes and is more than colorably different.

 

[xterra]

Why do you guys bash Tivo so much?

 

[jacmyoung]

However, what the appeals courts states is not a citation of the injunction. The issue is not so much with all Word products as it is with those products' ability to run XML.

With that stated, Microsoft patched the custom XML editor. The new Word no longer contains "the infringing custom XML editor". If the patched version no longer has the abilities to execute any of the enjoined actions, it is no longer "the infringing custom XML editor" as it no longer infringes and is more than colorably different.

Who is to say MSFT no longer has the "infringing custom XML editor"? According to you it is infringing until such time the court says it is no longer infringing.

Remember what you said about E*'s "Infringing Proudcts"? Don't you think there is the double standard here? Somwhow you think it is fine when MSFT said they did a patch and the custom XML editor no longer infringed, it is not ok when E* said they downloaded the new software and the DVRs were no longer "Infringing Products"?

If E* cannot be trusted, then why are you trusting MSFT? Because you say whatever that fits your own argument.

Besides, you don't think the appeals court's interpretation of the injunction above is important? You don't have to accept the appeals court's own explanation of what the injunciton prohibits? Are you above the appeals court? Is the district court above the appeals court?

 

[Greg Bimson]

I only cited part of the injunction. Here is an important piece I missed:

This injunction further does not apply to Microsoft providing support or assistance to anyone that describes how to use any of the infringing products to open an XML file containing custom XML if that product was licensed or sold before the date this injunction takes effect.

The injunction doesn't apply to users of Word installed before the injunction took effect.

See? Mea culpa. But as I said, read the injunction. So Word 2010 has a modified XML editor.

Who is to say MSFT no longer has the "infringing custom XML editor"? According to you it is infringing until such time the court says it is no longer infringing.

Remember what you said about E*'s "Infringing Proudcts"? Don't you think there is the double standard here?

Again, in i4i v. Microsoft, Word is prohibited from opening custom XML files. Word is not enjoined, just one specific action that Word has performed is enjoined. As long as i4i believes that action is not performed, i4i will not start a contempt proceeding. If i4i believes that Word contains an XML editor that is merely colorably different than the editor evaluated at trial and that editor continues to infringe in the same manner, i4i will drag Microsoft into court for a contempt proceeding.

And now that new piece of the injunction bears fruit. In i4i v. Microsoft, the installed base of Word 2003 and Word 2007 can keep XML functionality. In TiVo v. Echostar, DISH/SATS is prohibited from allowing DVR functionality within a subset of eight models of receiver; they were ordered to have the DVR functionality disabled. TiVo filed for and the judge found contempt for failure to follow the order to disable.

In other words, there is a large exception in the i4i v. Microsoft injunction when it comes to the installed infringing product. In TiVo v. Echostar, there is only one course of action ordered to the installed infringing product, and that order wasn't followed.

 

[jacmyoung]

I only cited part of the injunction. Here is an important piece I missed:The injunction doesn't apply to users of Word installed before the injunction took effect.

See? Mea culpa. But as I said, read the injunction.

The whole discussion is about whether MSFT has been in violation after the injunction took effect on 1/5/10, not before.

in i4i v. Microsoft, Word is prohibited from opening custom XML files. Word is not enjoined,

Wrong, according to the appeals court, MSFT is prohibited from selling, offer to sell or use of the Word products...after 1/5/10.

I know you do not like the above appeals court's explanation, you insist that the injunction says it differently, but remember, what matters is how the appeals court interprets the injunction that will determine if the contempt will be affirmed, or the injunction will be vacated or reinstated.

As long as i4i believes that action is not performed, i4i will not start a contempt proceeding.

Again I am not asking you what i4i may feel, rather what you feel. Do you feel that MSFT is in violation when they continue to sell, offer to sell and use Word products that... after 1/5/10, as the appeals court said MSFT was not allowed to do?

And now that new piece of the injunction bears fruit. In i4i v. Microsoft, the installed base of Word 2003 and Word 2007 can keep XML functionality.

Not after 1/5/10, but it is clear MSFT has not stopped selling, offer to sell or use the Word products after 1/5/10.

In other words, there is a large exception in the i4i v. Microsoft injunction when it comes to the installed infringing product.

Not for any Word products sold and installed after 1/5/10.

Likewise, E* never used the DVR functions in any "Infirnging Products" after the injunction took effect, because by that time, according to E*, they no longer had "Infringing Products".

Same as what MSFT is saying now, please don't apply double-standard on them. If you insist E*'s "Infringing Products" are always infringing products, until such time the court declares they are no longer infringing products, as a result, E* is in contempt, then you must also agree, MSFT's Word products always have the "infringing custom XML editor" in them, until such time the court delcares that they no longer do, since the court has not had the opportunity to make such declaration, MSFT is in violation for continuing to sell, offer to sell and use the Word products after 1/5/10.

I think you should call i4i, they are missing out on a huge win right there.

 

[Greg Bimson]

Wrong, according to the appeals court, MSFT is prohibited from selling, offer to sell or use of the Word products...after 1/5/10.

After its effective date, the injunction prohibits Microsoft from selling, offering to sell, importing, or using copies of Word with the infringing custom XML editor.

AGAIN.

Microsoft states they have patched "the infringing custom XML editor". More on that in a moment...

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”)

In order for Word 2010 to be a "Future Word Product", it must both infringe and be merely colorably different than Word 2003 and 2007. The patch may make it so that Word 2010 is more than colorably different or no longer infringe.

If comparing to the DISH/SATS injunction, it is exactly like the ViP receivers. They are not part of the injunction either, until they are ruled as merely colorably different and infringe.

...If you insist E*'s "Infringing Products" are always infringing products, until such time the court declares they are no longer infringing products...

Again, do not put words in my mouth. The "Infringing Products" that were subject to the disable order are to be disabled. Period. If DISH/SATS wants them to have DVR functionality, they need to clear it with the court. They need to prove that with modifications the product found infringing no longer infringes before the court will take those products out of the scope of the injunction.

 

[jacmyoung]

AGAIN.

Microsoft states they have patched "the infringing custom XML editor". More on that in a moment...In order for Word 2010 to be a "Future Word Product", it must both infringe and be merely colorably different than Word 2003 and 2007. The patch may make it so that Word 2010 is more than colorably different or no longer infringe.

Did the patch make the 2010 Word products no longer "future Word products"?

If comparing to the DISH/SATS injunction, it is exactly like the ViP receivers.

Not at all, the TiVo injucntion never said anything about any "future E* DVRs". Which is why the appeals court interpreted the i4i injunction to prohibit the sell, offer to sell and use of the Word products after 1/5/10. Don't argue with me, argue with the appeals court.

do not put words in my mouth.

Those were exactly your words, that "Infringing Proudcts" would always be infringing prpducts until such time the court declared them not infringing products, do you want me to find your quotes?

The "Infringing Products" that were subject to the disable order are to be disabled. Period. If DISH/SATS wants them to have DVR functionality, they need to clear it with the court. They need to prove that with modifications the product found infringing no longer infringes before the court will take those products out of the scope of the injunction.

According to the appeals court, MSFT was ordered not to sell, offer to sell or use the Word products with the infringing XML editor after 1/5/10, period. If MSFT wanted to sell, offer to sell or use any Word products with the custom XML editor after 1/5/10, they needed to get court approval first, else MSFT is in contempt, according to yours and TiVo's logic.

E* says if the "Infringing Products" were no longer "Infringing Products" after the modification naturally they did not have to disable the DVR fucntions because the injunction only ordered the DVR functions disabled of the Infringing Products.

MSFT says if our custom XML editor was no longer "infringing custom XML editor" after the patch, naturally we can continue to sell, offer to sell or use the Word products with the custom XML editor. They do not first need the court to determine if the patched custom XML editor is still infringing or not, before the court may decide if MSFT can again sell, offer to sell or use the Word products with the custom XML editor.

If you do not like what the appeals court said above, I cannot help you. The only thing I know is, if i4i is to bring a contempt proceeding against MSFT, they can certainly quote what the appeals court said in their support, because the appeals court had interpreted the injunction for them already, therefore according to your logic, MSFT has to be in violation right now, applying the appeals court statement.

On the other hand, if you insist that what the appeals court said does not matter, i.e. you do not agree with the appeals court, then you must prepare for the likelihood of the appeals court again saying something that you do not agree with, because it has already happened in the i4i case, it could happen in the TiVo case too.

 

[Greg Bimson]

MSFT says if our custom XML editor was no longer "infringing custom XML editor" after the patch, naturally we can continue to sell, offer to sell or use the Word products with the custom XML editor.

That's the whole point.

And it is the court that will make the determination if it is "the infringing custom XML editor", and whether or not it infringes and it is merely colorably different from the one found infringing at trial. And the court will only make that determination at i4i's request.

The only thing I know is, if i4i is to bring a contempt proceeding against MSFT, they can certainly quote what the appeals court said in their support, because the appeals court had interpreted the injunction for them already, therefore according to your logic, MSFT has to be in violation right now, applying the appeals court statement.

Oh, and this modified product being sold because of the interpretation of the appeals court would not need to be judged for colorable difference and infringement? You mean to tell me simply because the appeals court issued that one sentence that it simply rips down the need to do a KSM analysis? Methinks you must have forgotten your arguments while trying to destroy mine.

 

[jacmyoung]

That's the whole point.

And it is the court that will make the determination if it is "the infringing custom XML editor", and whether or not it infringes and it is merely colorably different from the one found infringing at trial. And the court will only make that determination at i4i's request.Oh, and this modified product being sold because of the interpretation of the appeals court would not need to be judged for colorable difference and infringement? You mean to tell me simply because the appeals court issued that one sentence that it simply rips down the need to do a KSM analysis? Methinks you must have forgotten your arguments while trying to destroy mine.

Stop making up my points and attack them, it is called straw man argument.

My point is, base on your logic, MSFT currently is in violation of the injunction, because they continue to sell, offer to sell and use the Word products after 1/5/10.

You need to call i4i up and remind them what kind of next big win it is. Because MSFT should have stopped the sell, offer to sell and use the Word products after 1/5/10, asked the court to review the patches, make sure the court approved the patches, then modify or lift the injunction so MSFT can sell, offer to sell and use the Word products again.

Why do I say so, because this is precisely what you said in the TiVo case, that E* had to first disable the DVR fucntions by the time the injunction took effect, asked the court to review the new software, then modifed the injunction or lift it so E* could use the DVR functions again, without doing so, E* was in contempt, never mind what happened after that.

The same argument, has nothing to do with how should the court do its review, i.e. do colorable difference and infringement analyses.

I never said the court did not have to do the two analyses if i4i seeks a contempt proceeding, don't change the subject. I said according to you, MSFT should have stopped the sale of Word, since they did not, MSFT is now in contempt, just like how you described E*.

 

[Greg Bimson]

Why do I say so, because this is precisely what you said in the TiVo case, that E* had to first disable the DVR fucntion by the time the injunction took effect, asked the court to review the new software, then modify the injunction or lift it so E* could use the DVR functions again, without doing so, E* was in contempt, never mind what happened after that.

Here. Let me make this simple.

This injunction further does not apply to Microsoft providing support or assistance to anyone that describes how to use any of the infringing products to open an XML file containing custom XML if that product was licensed or sold before the date this injunction takes effect.

The injunction does not apply to product licensed or sold by the time the injunction takes effect.

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.

Here, the infringer is told exactly what to do with the products that were installed before the injunction took effect.

It is far from a straw man argument when the foundation used to attack my position is flawed beyond repair.

 

[jacmyoung]

Here. Let me make this simple.The injunction does not apply to product licensed or sold by the time the injunction takes effect.Here, the infringer is told exactly what to do with the products that were installed before the injunction took effect.

It is far from a straw man argument when the foundation used to attack my position is flawed beyond repair.

To say "cannot sell, offer to sell or use after the injunction takes effect" is the same as saying "to disable the DVR functions before the injunction takes effect", the cut off time is the same, the date the injunction takes effect, after which cannot have the DVR fucntions, or cannot sell, offer to sell or use.

If after the date, the DVRs functions are still used, you say it is a violation, then you must also insist, after the date it is still sold, offered to sell or used, it is also a violation.

 

[whatchel1]

TIVO sues everyone

Why do you guys bash Tivo so much?

It's due to the fact that Tivo is trying to rule the world of DVR'S by suing everyone that makes a competing product.

 

[Curtis0620]

It's due to the fact that Tivo is trying to rule the world of DVR'S by suing everyone that makes a competing product.

And what is wrong with protecting your invention?

 

[jacmyoung]

On the other hand, if you say it is ok to sell, offer to sell or use Word as long as it no longer has the “infringing custom XML editor” (even though it still has the custom XML editor), since the injunction only prohibits the Word “with the infringing custom XML editor”, then it is ok to continue to have the DVR functions as long as the DVRs are no longer “Infringing products”, since the injunction only required the DVR functions disabled “of the Infringing Products”, not if the products are no longer infringing products.

The bottom line in all injunction cases where the infringers design around and continue the acts, is this, do the infringers have to first stop the acts on or before the effective date, ask the court to review the design around, approve the design around, then modify or lift the injunctions, before the infringers may resume those acts?

In the TiVo case, the act of using the DVR functions after that date, in the i4i case, the act of selling, offer to sell or use Word after that date.

 

[jacmyoung]

Here is another point in the TiVo v. E* case. The current amended injunction added an “inform and approval” provision. Why? If the old injunction was so perfectly clear, why try to further clarify it? By adding a new provision, Judge Folsom had necessarily admitted at least that the old injunction wasn’t clear about whether E* should have informed and obtained approval from the court first.

And I think you have said, if the injunction wasn’t clear, it may not be enforceable. If it was such a clear order, then Judge Folsom should not have tried to add a new provision to further clarify it. Trying to further clarify the old order necessarily undermines the authority of the old order. Don’t fix it if it is not broken, else you may make yourself look bad by admitting it was broken.

 

[whatchel1]

Protection is one thing

And what is wrong with protecting your invention?

Protecting something is different from trying to hamstring any competition in the market place w/ law suits.

 

[whatchel1]

strings got tangled

Here is another point in the TiVo v. E* case. The current amended injunction added an “inform and approval” provision. Why? If the old injunction was so perfectly clear, why try to further clarify it? By adding a new provision, Judge Folsom had necessarily admitted at least that the old injunction wasn’t clear about whether E* should have informed and obtained approval from the court first.

And I think you have said, if the injunction wasn’t clear, it may not be enforceable. If it was such a clear order, then Judge Folsom should not have tried to add a new provision to further clarify it. Trying to further clarify the old order necessarily undermines the authority of the old order. Don’t fix it if it is not broken, else you may make yourself look bad by admitting it was broken.

Maybe the strings of the puppet master Tivo got tangled and the puppet judge had to fix what wasn't quite right in the 1st place.