TIVO vs E*

[jacmyoung]

..."The court finds that Fisher-Price has not established, by clear and convincing evidence, that Safety 1st violated the Injunction with respect to Bouncenette sales"...

Again even when you were quoting the right section, you still ignored the true reason why the court said Safty 1st was not in contempt, please read the above. Bouncenette products were adjudicated as infringement during the trial, and named in the injunction to be stopped from sell, use,... and to be pulled off the shelves, why did the court say Fisher Price had to establish, by clear and convincing evidence...with respect to Bouncenette sales? Why did Fisher Price have to prove such adjudicated products were infringing again? Because Safty 1st said those adjudicated products had a modified part in them--"the adjudicated device, with a modification", sounds familiar?

....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.

Just like TiVo, Fisher Price accused all the products on the shelves for violation, including those with a modification. Quote for me where you got the impression Fisher Price did not accuse the modified products? All of those products were on the shelves when the injunction went in full force and Fisher Price accused all of them.

Like TiVo, Fisher Price did not believe they had to again prove the adjudicated products with that modified part an infringement again, because the injunction ordered Safty 1st to pull all of them off regardless, as FisherPrice argued. TiVo is saying the same thing.

But the court said not so fast, Fisher Price had to first prove those products with the modified part still infringed, without doing so, Safty 1st did not violate the order by not pulling them off, even though the order specifically said those products had to be pulled off.

And you are right, KSM was used to support that court's decision, and KSM should be used in this case too.

At one point you argued it was E* who was trying to make this case special, that claim does not follow logic at all. E* was the one who cited several cases to prove design around had alwways been used to avoid contempt, it was TiVo who did not have any case to prove contempt despite more than colorable design around.

By definition, when you do not cite any case law for support, you are saying your case does not have to have precedence, and therefore you are saying your case is special.

And I'd like to point out again, Judge Folsom had already said this case was not special, when he denied TiVo's treble damage/attorney fee motion. When he said that, he was basically saying TiVo needed case law for support of their argument, and this point was further demonstrated on 9/4, when the judge asked TiVo's lawyer to cite him another case, because TiVo did not have a case yet.

 

[Greg Bimson]

Again even when you were quoting the right section, you still ignored the true reason why the court said Safty 1st was not in contempt, please read the above. Bouncenette products were adjudicated as infringement during the trial, and named in the injunction to be stopped from sell, use,... and to be pulled off the shelves, why did the court say Fisher Price had to establish, by clear and convincing evidence...with respect to Bouncenette sales?

I quoted the correct section: the recall order. For some reason, you believe the recall order applies to the modification, when in fact it did not. And Safety 1st was still found in contempt for failing to do their best to recall.

In this case, the order to recall was not issued because DISH/SATS could apply some software, and it could be possible to design around the patent.

Just like TiVo, Fisher Price accused all the products on the shelves for violation, including those with a modification. Quote for me where you got the impression Fisher Price did not accuse the modified products? All of those products were on the shelves when the injunction went in full force and Fisher Price accused all of them.

What's wrong? Can't keep your stories straight?

The Bouncenette models were listed in the injunction. This modification was called the 43002C. It was not enjoined. You cannot recall a product that has not been enjoined.

And you are right, KSM was used to support that court's decision, and KSM should be used in this case too.

Fisher Price charged that Safety 1st violated the injunction because they were still selling infringing product. Safety 1st was selling the same infringing product, so they were found in contempt. However, with respect to the modifications, those products were not found in contempt.

Fisher Price levelled two accusations: 1) they sold infringing products, and 2) they did not recall infringing products. The only point Safety 1st won was that the modified product with the redesigned harness, and those could not be considered as a violation of contempt, because they were modified and those modifications weren't even asked to be found infringing.

TiVo has charged that DISH/SATS violated the injunction because they were still selling infringing product. On the redesign which DISH/SATS is selling, TiVo is ASKING for KSM to apply.

However, TiVo has first charged that DISH/SATS violated the injunction, because the sold devices as of 8 September 2006 are not disabled. KSM does not apply here. Nor should it.

By definition, when you do not cite any case law for support, you are saying your case does not have to have precedence, and therefore you are saying your case is special.

Not special at all.

Carborundum. Walker. A party must abide by the injunction even if it is incorrect. You can argue all you want that the injunction cannot apply to non-infringements, but that is only taking DISH/SATS at its word. The device was ruled as infringing.

 

[jacmyoung]

I quoted the correct section: the recall order. For some reason, you believe the recall order applies to the modification, when in fact it did not.

The recall order applied to all the products on the shelves at that time, and those Bouncentte products with the modified part were all on the shelves at that time along with unmodified products, therefore were all under that order to be pulled.

And Safety 1st was still found in contempt for failing to do their best to recall.

But not in contempt for failing to recall those adjudicated products with the modified part.

In this case, the order to recall was not issued because DISH/SATS could apply some software, and it could be possible to design around the patent.What's wrong? Can't keep your stories straight?

If TiVo already knew E* could apply software to design around the patent, why didn't TiVo insist a recall then? Wouldn't that have removed all the current argument? Who's fault was it for not asking for a recall and give E* the chance to modify in the field?

The Bouncenette models were listed in the injunction. This modification was called the 43002C. It was not enjoined.

Go back and read again. The Bouncentte products with the modification was the enjoined 43000A or B model on the shelves at the time of the injunction, therefore were enjoined and recalled. Safety 1st later sent the stores a notice that those products with the modification should be changed to 43002C. And simply changing the model name was not the reason for a no contempt, because a model name change has always been ruled to be only colorable, it was that modified part got Safety 1st off the hook.

And yes they were enjoined, the 43002C model name change was done by Safety 1st after the fact, besides, the court never said the reason for no contempt was because of the model name change, if the name change were the only change, Safety 1st wouldn't have gotten away with a no contempt.

Price charged that Safety 1st violated the injunction because they were still selling infringing product.

Fisher Price charged Safety 1st for both selling and not pulling off the shelves those enjoined products, including those Bouncenette products Safety 1st claimed to have a modified part.

...The only point Safety 1st won was that the modified product with the redesigned harness, and those could not be considered as a violation of contempt, because they were modified and those modifications weren't even asked to be found infringing.

Yes Safety 1st won the point that they did not have to pull off the shelves, and stop the sales of those Bouncentte products with that modified part, and yes, Fisher Price did ask the court to find Safety in contempt for the sale and not pulling off the shelves, all the products, including those Bouncnette products with the modified part.

Think about it, if your reading were correct that Fisher Price did not even accuse the Bouncentte products with the modified part, then why did the court even waste the time to tell FisherPrice that they failed to prove those products still infringed? See the logic?

FisherPrice had to have accused that product first, before the court would rule on that product.

TiVo has charged that DISH/SATS violated the injunction because they were still selling infringing product. On the redesign which DISH/SATS is selling, TiVo is ASKING for KSM to apply.

The current motion does not even deal with anything E* is selling, only those 4 million DVRs in the field, TiVo was a little too far ahead of itself.

However, TiVo has first charged that DISH/SATS violated the injunction, because the sold devices as of 8 September 2006 are not disabled.

So did FisherPrice charge that Safety 1st violated the injunction, because those Bouncentte products that were on the shelves as of the date the injunction took effect, were still sold and still not pulled off the sheves, yes, including those with the modified part.

And the court said for the modified ones, FisherPrice had to prove with clear and convincing evidence they still infringed first. Since FisherPrice did not do so, Safety 1st was cleared for continued sale, and not pulling off the shelves, those modified products.

Carborundum. Walker. A party must abide by the injunction even if it is incorrect. You can argue all you want that the injunction cannot apply to non-infringements, but that is only taking DISH/SATS at its word. The device was ruled as infringing.

The Walker case is irrelevant because no one is saying the injunction is incorrect, which was why the judge asked the TiVo's attorney if he could cite him another case, after the attorney cited the Walker case. If the Walker case were relevant, there would have been no reason for the judge to ask for another case.

TiVo has no case law in their support, only their opinion, this much is a fact even you cannot deny, only that you said TiVo did not need any case law.

 

[vampz26]

Screw this BS....

So...is my ViP622 going to keep doing its job so long as Dish stays in business or what?!?

Why don't you experts answer the REAL questions and stop bickering like an old married couple...

Let me know...because I have a few VERY sentimental shows to archive before the whole thing goes to blazes....

Thank you....

 

[Greg Bimson]

I won't even bother with anything else, which is quite a bunch of mis-statements, other than this...

The current motion does not even deal with anything E* is selling, only those 4 million DVRs in the field, TiVo was a little too far ahead of itself.

Really?

In TiVo's last reply motion, TiVo simply pointed out at the very end of their challenge of the new software that Judge Folsom can also find contempt on the modification as well.

TiVo is asking for $220 million in damages, broken out into three categories. The third category is for sales of the enjoined products that only had the new software, because they still infringe and are only colorably different. That would be the section that Christine Byrd presented on 4 September; the part where TiVo says the first two categories don't need contempt to be found for damages to be awarded. The third category would require Judge Folsom to find contempt on the workaround.

Go back and read the transcript yourself.

 

[jacmyoung]

I won't even bother with anything else, which is quite a bunch of mis-statements,

I suspect you decide not to bother because you could not argue on those points anymore

In TiVo's last reply motion, TiVo simply pointed out at the very end of their challenge of the new software that Judge Folsom can also find contempt on the modification as well.

TiVo is asking for $220 million in damages, broken out into three categories. The third category is for sales of the enjoined products that only had the new software, because they still infringe and are only colorably different. That would be the section that Christine Byrd presented on 4 September; the part where TiVo says the first two categories don't need contempt to be found for damages to be awarded. The third category would require Judge Folsom to find contempt on the workaround.

And TiVo will fail on the damages argument as well. If the judge finds the design around more than colorable, and therefore there will be no contempt, then the only damages TiVo will get will be for the period before the new software was downloaded, not after.

In another word, the demage period will be what the one E* used, the only difference maybe that the judge could increase the rate E* used, because that was what the judge told the E* lawyer, he could change the rate.

Remember what else the judge said?

1) He had a very hard time understanding how TiVo could even have come up with a total amount of damages ($220 million) that was three times higher, for the same amount of the DVRs, in only 1/3 of the time period covered, compared to what the jury had come up with ($74 million), which the judge approved. Amusing isn't it? What an idiot jury it was, and what an idiot judge he was to approve the jury's $74 million, when it should have been $660 million, if you consider the three times longer period it covered.

2) He also was very surprised, and asked the TiVo lawyers did they mean E* had to pay up to 04/08, even though E* started the design around in 10/06 and if he ruled no contempt because of the design around?

Pay attention to what the judge said, and you will begin to realize now ridiculous TiVo's math had been.

BTW, even the judge had not thought about the actual jury's damages for the 4 million DVRs, it was not $74 million but about $45 million I think, the rest was for those other 197,000 units.

So when the judge finally has time to sit down and do his own math, he will find out that TiVo was asking 5 times of the damages the jury had allowed, for the same 4 million DVRs, and in only 1/3 of the time period covered.

I can just imagine the expression on the judge's face at that point

 

[Greg Bimson]

So...is my ViP622 going to keep doing its job so long as Dish stays in business or what?!?

More than likely.

Because TiVo has accused the software modification DISH/SATS made still infringes, it is more than likely ALL 501/508/510, 522 and 625's, if found as infringements, will also be ordered disabled. The software was changed on the 622/722 as well, to comply. DISH/SATS would be foolish not to deal with TiVo once their backs are against the wall.

However, even if those original receivers are disabled, it would take a while before the 622 and 722 ever made it through the court system, to both be found as an infringement and be subject to the injunction.

 

[vampz26]

I suspect you decide not to bother because you could not argue on those points anymore

Here we go again...another classic case of needling and forcing a conclusion...

Look guys...we've come full circle here...the minutes an argument goes to this, its pretty much over and stalemated.

 

[Greg Bimson]

I suspect you decide not to bother because you could not argue on those points anymore

No, just tired of arguing 17 paragraphs of mis-statements.

And TiVo will fail on the damages argument as well. If the judge finds the design around more than colorable, and therefore there will be no contempt, then the only damages TiVo will get will be for the period before the new software was downloaded, not after.

I don't believe that is how this works.

DISH/SATS is not allowed to reap the benefit of a stay. In other words, damages should be calculated as if the stay was never given. So in that first category, the one DISH/SATS says they owe $16 million, what is neglected is the lost profits to TiVo because the stay should have taken effect and the DVR's should have had their functionality disabled, causing customers to defect. TiVo claims $55 million for those receivers, until the new software is downloaded.

The second category is the same: again the adjudicated receivers ordered disabled, but this time with the modified software. It totals $113 million. Keep this in mind. If the stay were not issued, all of the receivers should have had their DVR functionality bricked, and therefore new software would not be allowed to be downloaded. Remember that DISH/SATS argued for the stay because they didn't want 4 million DVR's to be disabled. They got their wish, but they've basically admitted if it weren't for the stay, they wouldn't have been able to generate the workaround. If the receiver were bricked as ordered, the new software would not be placed on it, as that receiver was to be bricked for the length of the Time Warp patent. DISH/SATS again doesn't get to cash in on the benefit of a stay without appropriate compensation to TiVo.

 

[Thomas22]

Keep this in mind. If the stay were not issued, all of the receivers should have had their DVR functionality bricked, and therefore new software would not be allowed to be downloaded.

My computer doesn't have DVR functionality but somehow I manage to download new software to it all the time.

 

[Greg Bimson]

Ahh, but your computer hasn't been ruled an infringement with an order from the court to "disable all storage to and playback from a hard disk drive of television data".

 

[Thomas22]

Ahh, but your computer hasn't been ruled an infringement with an order from the court to "disable all storage to and playback from a hard disk drive of television data".

Ahh, but software is not television data.

 

[Greg Bimson]

Okay, new software which would allow "storage to and playback from a hard disk drive of television data" would not be implemented if the injunction wasn't stayed.

I shouldn't have said new software couldn't be downloaded. Once the injunction would have taken effect on 8 October, 2006, software that enabled DVR functionality was prohibited by the injunction. DISH/SATS could modify their software millions of times unless a modification allowed storage and playback of television data.

 

[Thomas22]

Any company is allowed to modify their product to end infringement and remain in the marketplace.

“[C]ontempt 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.

 

[Curtis0620]

Funny how Dish's DVR's have gotten better since they stole the Tivo base programming. Their DVR's used to be the worst.

 

[Greg Bimson]

“[C]ontempt 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.

Paragraph 1:
In 1991, the United States District Court for the Southern District of California enjoined Sasan Moazzam from infringing Arbek Manufacturing, Inc.'s design patent. In 1994, Arbek requested the district court to hold Moazzam in contempt, contending that a new Moazzam design violated the injunction.

TiVo is requesting that Judge Folsom hold DISH/SATS in contempt because the adjudged receivers have violated the injunction (they haven't been disabled) and because the modified receivers violated the injunction (they infringe and aren't more than colorably different from those which were adjudicated).

Paragraph 6:
In March 1994, Arbek learned that Moazzam was marketing a second pier that Arbek believed infringed the '323 patent. Moazzam's second pier is a modification of the first. [...]

Paragraph 7:
Arbek filed a contempt motion to enforce the Order. The motion accused Moazzam of again infringing the '323 patent. The trial court denied the motion. The trial court found: "defendant's design DOES NOT infringe on plaintiff's patented pier design." Arbek, slip op. at 2. Arbek appeals.

Where did this come from? Well...

Paragraph 8:
DISCUSSION

Paragraph 9:
In KSM Fastening Systems, Inc. v. H.A. Jones Co., 776 F.2d 1522, 227 USPQ 676 (Fed.Cir.1985), this court sets forth a standard for deciding whether an accused infringer is in contempt of an injunction prohibiting infringement. To show contempt, the patent owner must prove by clear and convincing evidence that "the modified device falls within the admitted or adjudicated scope of the claims and is, therefore, an infringement." Id. at 1530

Wonderous. The decision from the opinion is the KSM standard:

Under the standard we adopt, a judgment of contempt against an enjoined party for violation of an injunction against patent infringement by the making, using or selling of a modified device may not be upheld without a finding that the modified device falls within the admitted or adjudicated scope of the claims and is, therefore, an infringement.

And once again KSM does not apply to those devices already adjudicated and subject to another order.

The citiation from Arbek specifcally relates to sales of modified product.

 

[8bitbytes]

Funny how Dish's DVR's have gotten better since they stole the Tivo base programming. Their DVR's used to be the worst.

Actually Dish DVRs have improved since they reprogrammed them to be different than a Tivo.

 

[CuriousMark]

Screw this BS....

So...is my ViP622 going to keep doing its job so long as Dish stays in business or what?!?

Most likely yes. If Dish decides to take it to the wall over and over again, and continues to lose every time, there is a very slight possibility it could be at risk of shut down in a few years, but most likely you won't have it anymore by then anyway.

I believe that neither Dish nor TiVo really want to see anything shut down. Shut down of the DVR features of some of the older models out there is just one of the cards that was dealt at this point in this case and the hand has not been called yet.

 

[Thomas22]

The citiation from Arbek specifcally relates to sales of modified product.

Dish sells DVR functionality every month. That's what TiVo wants a cut of. Whenever someone stops payment, the DVR functionality stops.

Dish is accused of violating an injunction in a patent case by the use of modified devices. The KSM injunction didn't mention infringement just as Judge Folsom's disable order didn't mention infringement. The appeals court called the KSM injunction an infringement injunction anyway because infringement was the fundamental reason for the injunction and injunctions by law are only allowed to prevent infringement in patent cases. Similarly, the appeals court would recognize that the fundamental issue in Folsom's injunction is infringement and would say "a judgment of contempt against an enjoined party for violation of an injunction against patent infringement by the making, using or selling of a modified device may not be upheld without a finding that the modified device falls within the admitted or adjudicated scope of the claims and is, therefore, an infringement."

 

[Curtis0620]

Actually Dish DVRs have improved since they reprogrammed them to be different than a Tivo.

Yes, those early Dish DVR's were just awesome.