TIVO vs E*
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And the same is true for all the cases we quoted, KSM, StarBrite, Footprint2.0 or Bentow Foods, in all of them, the "accused devices/products/services/processes" were "adjudicated devices/products/services/processes, with a modification."
Because there are only two options, either "the adjudicated" or "the accused", and since you have already admitted "the accused" here is "the adjudicated with a modification", by reason of exclusion, "the adjudicated" must be unmodified. There is no other choice for you to pick.
Not true at all, again the Footprint2.0 service was an adjudicated service (including the hardware servers and associated equipment, and the software used by the equipment), and ordered to be shut down (i.e. to be disabled). The infringer modified the service by uploading a software patch, and never stopped the service. The patentee accused the same adjudicated service with that modification (the accused service) for violation, but the infringer was not in contempt due to that modification.
In Bentow Foods, the same thing, the egg process was an adjudicated infringing process and ordered to be shut down (i.e. to be disabled), the infringer modified a single step in the same adjudicated process, the patentee accused the adjudicated process with that modification for violation, but the infringer avoided a contempt due to the modification.
The second question is, "is this Joe Blow's device now different than the one above?" If so, then its legal status has to be determined. And only if infringement can again be found, so can there be a contempt.
The court in KSM, and in many other cases, said they must ansewer yes to both questions not one, before issuing a contempt charge, when there is a design around, or a modification, or a difference.
Perhaps this is what has skipped a beat...jacmyoung said:
KSM in their suit against Jones Manufacturing had an injunction against the "Therma-Lock" product. All that had been sold were infringements. A modification and remarket of the modified was sold as the Ultra-Lock products.
The Therma-Lock products were not re-evaluated. They were infringements. They were not being retested because they were modified. The Ultra-Lock products were a modification upon the design of the Therma-Lock products.
Lo and behold, the standard that comes from the appeals court simply mentions that contempt for violation of an order to stop selling, using, or making an infringing product must be found as an infringement.
Somehow that is being interpreted as any modification must be evaluated, when in fact there is another order that says to disable the products adjudged infringing already placed with subscribers as of 8 September, 2006. KSM does not give that order a free pass.
Michael's Foods and Bartow Foods is about an egg process, I believe to pasteurize eggs in their shells. No product was found infringing, the process was. Only the process was enjoined. Change the process, and in a contempt setting that process must be evaluated against the one determined infringing in order to find the status of both infringement and colorable difference.
Digital Island, the Footprint 2.0 case, was very simple. The injunction stated that the service as adjudicated was enjoined. Again, change the service, and in a contempt setting that service must be evaluated against the one determined infringing in order to find the status of both infringement and colorable difference.
And all three specifically relate to alleged violations of an order enjoining the infringer to stop either selling, using or making said service, process or product.
In this case, it starts with the disable order on products already found to infringe. One cannot use a standard which applies only to the making, using or selling of an infringing product and apply it to a disable order.
Nice trick of English. Try this one...jacmyoung said:
Where does it say all modified products must follow the KSM standard? From my reading, only those accused of violating the injunction order against infringements for manufacturing, using or selling a modified device must be evaluated.
That would not apply to any other injunction order. Such as disable those found infringing.
Even the Michael's Foods case, it appears there were plenty of pre-contempt hearing motions with data to back that up that Bartow Foods had changed enough of the process to question whether or not infringement was still present.
Keeping the court informed would be an important step, since they are the ones that ultimately decide the fate. And we could certainly go back to Judge Folsom's words during the 4 September hearing, as he completely interrupted DISH/SATS counsel McElhinny to drill the point home that the court should have been informed of a possible workaround once it was implemented.
The KSM injunction didn't mention infringement. Neither does the disable order. The appeals court in the KSM case knew that even though infringement wasn't mentioned in the KSM order, infringement was the fundamental reason for the order and overturned the district court's contempt finding because the district court didn't look at whether there was infringement in the modified device. Likewise, if Judge Folsom finds contempt without looking at whether the modified DVRs infringe then his contempt order will be overturned for the same reason.
There is no other kind of injunction, the only kind of the injunction is the kind that may prohibit acts of infringement, no more no less. Every "kind" of injunctions you discussed above were about to "disable those found infringing..." Can you deny the injunction in Footprint2.0 was to "disable those found infringing"? Can you deny Bartow Foods injunction was to "disable those found infringing"? Can you honestly deny that all those injunctions were to "disable those found infringing"?
All of the injunctions we discussed above, were about prohibiting (disabling) the act of infringement, the law makes no distinction among products, services, processes, devices...and never did, because it is about the acts that is at issue, and an injunction is about prohibiting such acts.
Many injunctions contained your so called "second disabling order", the Price Fisher case you quoted yourself contained such "second order" to pull those adjudicated products off the store shelves, and when the infringer "disobeyed" such "second order" by failing to pull any of the products off the shelves, he was only found in contempt for not pulling off the unmodified adjudicated products, but not in contempt of not pulling off ("disobeying" the "second order") those modified adjudicated products, because the patentee failed to prove with clear and convincing evidence that those modified adjudicated products still infringed.
Greg, you need to stop believing a "second order" has some magic power, it is the same as the "first order", to prohibit acts of infringement, no more no less, because it is the only thing an injunction can do, the law says so.
When Judge Folsom put such "secondary order" in his injunction, he meant to do one thing, to prohibit the use of the DVR functions under the old design, because the use of the DVR functions under the old design was an act of infringement. What the judge also should know is, his "second order" in the injunction cannot prohibit the act of using the DVR functions under the new design, if he finds the new design around more than colorable, meaning the act of using the DVR functions under the new design may not be an act of infringement, then his "second order" cannot prohibit such act.
The judge said so himself on 9/4, that he could still find E* in contempt, if the design around was only colorable. The word "still" gave the condition (the design around is only colorable) the exclusive meaning, under no other but this condition could he still find E* in contempt.
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The valid injunction violated Rule 65(d), so the Court of Appeals created this standard:Thomas22 said:
The only time the KSM standard can be used is if the legal question is a "violation of an injunction against patent infringement by the making, using or selling of a modified device". Not bad for a valid injunction which violated Rule 65(d).
It is a question that will be answered, as TiVo has stated in their damages motion that they are owed $52 million on receivers which never had the old software; the new software is not more than colorably different and it still infringes. So KSM will come into play.
But not before the issue of ignoring the disable order is addressed.
The KSM injunction didn't mention infringement but the appeals court recognized that infringement was the fundamental issue. It is the same with the disable order.
Correct. And when the charge for contempt is a violation of making, using or selling a modified device, infringement must be found on that modified device, thanks to the standard created in KSM.Thomas22 said:
But when the contempt charge is not for a violation of making, using or selling a modified device, KSM doesn't apply.
The KSM ruling talks about the judgment, not the charge. They overturned the KSM judgment and said the injunction was against infringement even though infringement wasn't mentioned in the injunction. Infringement isn't mentioned in the disable order either.
I wonder how many times Judge Folsom will mention infringement in his judgment. Twenty times? Thirty times?
Can you quote me where in KSM it said "the valid injunction violated Rule 65(d)"?
Now you may be able to pick a quote from KSM to point out the standard does not apply to this case with the "second disable order" but that does not prove your argument that the "second disable order" ensures a contempt without finding "the adjudicated products, with a modification" is still an infringement. You need to quote a case where it says violation of a "second disable order" is enough, no need to find if the modified products still infringe or not.
You still have not done so.
I already told you in your own case law, FisherPrice, there was a "second disable order" to pull all adjudicated products off the store shelves, and the infringer was not in contempt for not pulling off the shelves "the adjudicated products, with a modification", because the patentee failed to prove with clear and convincing evidence that the "adjudicated products, with a modification" was still an infringement.
It is your turn to find us where the court had said as long as there was a "second disabling order", there was no need to prove the "adjudicated products, with a modification" still was an infringement.
I have used your own case law to prove my argument, it is your turn to do yours.
What? You cannot have a judgment without a charge. Courts do not operate without one party levelling a charge against another.Thomas22 said:
The charge in KSM was a prima facie violation of the injunction by, "making, using or selling insulation hangers or refractory anchors of the type and nature identified by the Plaintiff in its Complaint against the Defendant". The district court granted the contempt charge. However, the appeals court reversed the judgment while creating a new standard. So, unless one is trying to say that this case is so extraordinary that a new standard will need to be created, existing standards will be used. The existing standard in KSM only applies to a violation of an order against "the making, using or selling" of a modified device, which happens to be part of the KSM injunction, so it does not apply to another order.
Infringement is mentioned in the injunction. However, the injunction has more than one order.Thomas22 said:
Sure...jacmyoung said:
So...
Uh, let's see if I have this right...jacmyoung said:
There is a disable order, and TiVo needs to prove DISH/SATS defense of apparent violations?
The recall order is simple: the adjudicated device at distributors must be recalled. After all, Fisher Price received lost profits and compensation from Safety 1st for all of the infringing products which were sold, so no reason to recall the devices in customers' hands.
TiVo's argument regarding royalties is that they are due a monthly royalty fee for use of their patent. Hence one reason for issuance of the disable order to receivers sold, found infringing and in customers hands; if they weren't able to have DVR functionality shut down, they would have been recalled.
That is standard applicable law. If DISH/SATS wants to defend the contempt charge by saying their modifications to the devices sold and found infringing are not subject to the injunction, fine. However, it is not up to TiVo to prove to Judge Folsom, or for me to prove to you, that case law exists about adjudicated products and modifications to prove contempt should be granted. It is up to DISH/SATS (and if you are defending them, you) to prove case law that a modification of the products that have been sold as infringements is not a violation of an order, or cannot be considered as contempt. It certainly isn't KSM that proves it.
However, to some, it appears this case is so special that DISH/SATS needs a new standard created: another evaluation of a device which has already been sold, found infringing and ordered disabled.
Yet Safty 1st was not in contempt for not pulling off the shelf (not obeying the secondary recall order) those adjudicated products with a modification, even though the recall order was to order Safty 1st to pull off (recall) ALL the named products on the shelves at that time.
Yes it is, not because I said so, but the judge said so on 9/4, when he asked TiVo's lawyer to cite him a case law, which TiVo failed to do. If it was not up to TiVo to cite any case law the judge wouldn't have asked for it.
Did TiVo's lawyer respond: "but your honor, we do not need to cite you any case"? No he obeyed, but cited a wrong case, the case TiVo's lawyer cited was a case the infringer did not modify the adjudicated products at all, rather continued to sell them unchanged. To which the judge responded, was this the closest case you had?
The judge did not ask E* lawyer the same question, was KSM the closest case you had, did he?
Of course you don't have to think you need to cite anything, just be aware the TiVo's lawyer did not think the same, he knew he had to, he could not make a successful argument in front of the judge simply by trying to dismiss the case law provided by the opposing party, he needed to provide case law of his own to prove his own argument.
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They were held in contempt for not recalling the products listed in the recall order of the injunction. Of course a recall order doesn't apply to products not named in the injunction as infringements:jacmyoung said:
There is a charge for two violations of the injunction; the Court of Appeals rules on both. The one I am concentrating on is the recall order:
The recall in Safety 1st would have allowed the infringer to grab the infringing product back from distributors and modify it at the warehouse, so it could be resold. However, that recall did not extend to infringing product in customers hands, as the court ordered Safety 1st to compensate Fisher Price for infringement.
Again you are only quoting the part where Safty 1st was found in contempt for not pulling the products that did not have that modification, but not the part they were found not in contempt for not pulling the adjudicated products that had that modification.
Go ahead quote that part and we'll talk, because that was the part I was talking about.
Even though I agree with you on that, still nothing in that injunction said the above, it is irrelevant.
All the named products were on the shelves before the injunction went in force, according to you all of them had to be pulled to avoid a contempt, but Safty 1st was not in contempt for not pulling off some of those named products, which were on the shleves along with all the other named products all that time, for one reason and one reason only, that some of those products had a modified part in them.
While it is ok to take the adjudicated products back to the warehouse to modifiy them and resell them, it is also ok to modiify them at any location, whether in the hands of the end users, or already on the shelves, anywhere.
Again quote me where there is a requirment by the court that the adjudicated products must be taken back to the warehouse for modification, and one cannot modify them right in the field.
Of course you can insist you do not need to cite anything for proof, just your own opinion is enough, that is fine. TiVo's lawyer did not dare to think so, I just want to point that out.
Because that isn't what happened...jacmyoung said:
On the second charge, Safety 1st was found to violate the recall order in the injunction. On the first charge, Safety 1st was found to violate the order enjoining sales of the infringing product, with the issue of modified product bolded:
And as it appears that Fisher Price did not accuse modifications of being colorably different and infringing, the KSM standard was invoked against those products...
Change the harness, change the model number by appending a letter to the base model number, and the sales records weren't kept as they should have been. However, since it appears Fisher Price did not accuse the modified harness products of infringement, the KSM standard applied, so the modified products could not be found in contempt as infringement wasn't found.
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