TIVO vs E*

[Thomas22]

This is all TiVo needs to prove for contempt.No, every case which involved a modification and an accusation of violating the making, selling or using of said enjoined product uses KSM as the standard. Big difference.Then how about THE standard, from KSM:It does NOT apply to all modified products. It only applies to contempt accusations by making, using or selling of a modified device.

The appeals court does not rule on accusations. The appeals court rules on court rulings. Regardless of the contempt motion wording, if the district court ruling is one of contempt by reason of infringement by a modified device, then KSM applies. The quote below does not say "an accusation". It says "a judgment". If there is a contempt ruling in this case and it doesn't mention infringement, that is going to be quite a trick, but even if it doesn't, I don't think it will fool the appeals court. Don't forget that the KSM injunction didn't mention infringement but the appeals court knew that infringement was the central issue and TiVo has already stipulated that the DVRs have been modified.

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.

 

[Greg Bimson]

Greg, I dont know if you misunderstood me, but you did quote my post. I was saying basically the same thing you are saying here. I in no way insulted you. I was defending your right to post your argument if you so choose. Go back and read my post, if you think I was attacking you or insulting you, I apologize, not my intent.

I've misread your post. Specifically the word "wouldnt". I apologize. Even with it mispelled I should have figured it out.

See what I mean...

I know, I know. But still...

For you to make your argument, try to quote another case, where the infringer was found in contempt after he had designed around the patent and the design around was more than colorable. TiVo failed to do that, maybe you can help.

Hmm. Are we sure the infringer has "designed around the patent and the design around was more than colorable"? Or are we to simply take the word of the willful infringer, where the willful infringer has both opinion from outside counsel and testimony from engineering management that the receivers don't infringe? After all, in April 2006, had all of this, and DISH/SATS was found to wilfully infringe.

The most telling of the arguments, though, is this...

The appeals court does not rule on accusations. The appeals court rules on court rulings. Regardless of the contempt motion wording, if the district court ruling is one of contempt by reason of infringement by a modified device, then KSM applies.

Let's see.

The court case found four million devices over eight DVR models as infringements. If Judge Folsom finds contempt for disobeying the disable order, why would there be a need to find infringement of the devices, as they've been found infringing as of April, 2006? Judge Folsom does not need to rule "contempt by reason of infringement by a modified device", as the first charge of contempt leveled by TiVo is for not following the disable order. Everyone seems to be misplacing the fact there are two direct actions the injunction order gives: an order against infringements and an order to disable the devices already found as infringements. I don't see where KSM helps devices that have already been found infringing.

Because they've been modified? So the idea here is that DISH/SATS needs to find supporting case law that modifying a device ruled as an infringement changes the adjudication of that device. That is, Joe Blow's four year old DVR 501 has been ruled as an infringement, does simply modifying the software change the ruling on that device?

DISH/SATS never did give that answer. Legally, it does not change the infringement violations found against it.

DISH/SATS has been ardently arguing that they've modified the devices, but have never told the court what is expected they should believe: that all the active devices that were found infringing no longer exist.

The quote below does not say "an accusation". It says "a judgment". If there is a contempt ruling in this case and it doesn't mention infringement, that is going to be quite a trick, but even if it doesn't, I don't think it will fool the appeals court. Don't forget that the KSM injunction didn't mention infringement but the appeals court knew that infringement was the central issue. TiVo has already stipulated that the DVRs have been modified.

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.

If a judgment of contempt against an enjoined party for violation of an order to disable is granted, then the above standard for KSM does not apply.

Sure the DVR's ruled as infringements have been modified. That doesn't change the fact those models were ruled as infringements. That doesn't change the fact there is an injunction ordering the products ruled as infringements disabled.

So, again, the question ends as, "does changing the software change the judgment of infringement on those receivers"? Is DISH/SATS position that there are no products found as infringements currently active by simply downloading some non-descript software legally acceptable?

And, of course, TiVo did go the extra mile here. Even if contempt cannot be granted because the modification is of utmost importance, TiVo has asked that Judge Folsom rule that the modifications are infringements and merely colorably different from the adjudged receivers.

So, at some point in Judge Folsom's decision, KSM and the whole "modification" defense will come into play.

 

[Thomas22]

If a judgment of contempt against an enjoined party for violation of an order to disable is granted, then the above standard for KSM does not apply.

Why not? Because the order "violated" didn't mention infringement? Neither did the KSM order.

 

[Greg Bimson]

Why not? Because the order "violated" didn't mention infringement? Neither did the KSM order.

Because there is another order.

The infringer in the KSM case, Jones, appealed because they felt the district court needed to find infringement on the accused devices before finding contempt. The appeals court agreed and issued the standard...

That standard applies to finding contempt against the making, using or selling of a modified device, with the caveat that infringement must be found on such device in order to grant contempt.

The order in TiVo v. Echostar does mention infringement. It isn't the only order. Everyone is pointing to KSM because there was a modification. There is another order; the only way to escape it is to cite some case where an adjudicated device loses it's legal status as an infringement simply by sending some non-descript modification.

 

[Thomas22]

There is another order; the only way to escape it is to cite some case where an adjudicated device loses it's legal status as an infringement simply by sending some non-descript modification.

The legal status of the unmodified device is unchanged. It is unimportant and not the issue.

 

[Greg Bimson]

The legal status of the unmodified device is unchanged. It is unimportant.

Really? Care to cite a case where a device found infringing and installed was changed so that it's legal status was also changed?

By implication, you have assumed that the legal status of the devices found infringing change once a modification is made. But no citation exists to prove that point.

The arguments against me always boil down to the same issue: KSM is the guiding force regarding contempt because of a modification, and that modification renders the disable order on devices found infringing moot, but no citation exists.

The only way that can happen is if a modification removes the ruling on the devices found infringing, but no citation exists.

KSM is the camphor ice and Blue Star ointment of patent law. But it isn't.

Except we also get back to DISH/SATS defense of not disabling the receivers found infringing. Besides KSM, DISH/SATS' arguments are:

1) "Infringing Products", which was legally defined in the injunction as the eight models of DVR's found infringing, actually has a completely different meaning: products that infringe. Except simple English dictates that "Infringing Products" only has one defintion, as a proper noun has a different meaning than a noun with an adjective.

2) The order was followed, but the order wasn't active when they followed it. When the order became active, there was no longer a need to follow the active order because it was already followed.

3) The injunction cannot possibly violate Rule 65(d), stating an injunction order against patent infringement can only prohibit acts of infringement. I present Rule 65(d), from here:

(d) Contents and Scope of Every Injunction and Restraining Order.

(1) Contents.
Every order granting an injunction and every restraining order must:

(A) state the reasons why it issued;
(B) state its terms specifically; and
(C) describe in reasonable detail — and not by referring to the complaint or other document — the act or acts restrained or required.

(2) Persons Bound.
The order binds only the following who receive actual notice of it by personal service or otherwise:

(A) the parties;
(B) the parties' officers, agents, servants, employees, and attorneys; and
(C) other persons who are in active concert or participation with anyone described in Rule 65(d)(2)(A) or (B).p.

Hmm. Nothing about infringement here. Must be case law.

 

[Thomas22]

Really? Care to cite a case where a device found infringing and installed was changed so that it's legal status was also changed?

The legal status of the unmodified device is unchanged. The legal status of the modified device is the issue.

 

[Greg Bimson]

The legal status of the modified device is the issue.

Which is exactly what I've been saying for three pages here and at the other site since the beginning of the year. My belief is the legal status doesn't change on the devices found as infringements.

 

[Thomas22]

Which is exactly what I've been saying for three pages here and at the other site since the beginning of the year. My belief is the legal status doesn't change on the devices found as infringements.

Correct. The legal status of the unmodified devices won't change.

 

[Curtis0620]

Correct. The legal status of the unmodified devices won't change.

Exactly how do they prove they were modified at all, if they are in the consumers hands?

 

[Thomas22]

Exactly how do they prove they were modified at all, if they are in the consumers hands?

TiVo admits they were modified. There is nothing to prove.

 

[Greg Bimson]

My belief is the legal status doesn't change on the devices found as infringements.

Correct. The legal status of the unmodified devices won't change.

And the legal status of the devices in customers' hands found as infringements but were modified probably won't change, either. Surprisingly, of all the case law cited, none fits this bill.

 

[Thomas22]

And the legal status of the devices in customers' hands found as infringements but were modified probably won't change, either.

The legal staus of those devices hasn't been determined yet. There is nothing to change.

 

[Greg Bimson]

And the legal status of the devices in customers' hands found as infringements but were modified probably won't change, either.

The legal staus of those devices hasn't been determined yet. There is nothing to change.

Joe Blow's four year old DVR 501 has been found infringing. Just because some software was modified doesn't change the fact that receiver was found infringing.

This isn't like Eolas v. Microsoft or Digital Island, where the product which infringed was replaced, as it was software.

The receiver ruled as an infringement has not been replaced; software was downloaded. And there still has not been a citation which clarifies that point.

 

[Thomas22]

Joe Blow's four year old DVR 501 has been found infringing. Just because some software was modified doesn't change the fact that receiver was found infringing.

Does Joe Blow have a modified DVR? If he has a modified DVR, the legal status hasn't been determined yet. If it hasn't been modified then its legal status hasn't changed.

 

[jacmyoung]

Greg, in all the cases we quoted, and you quoted, the Court had used two separate terms to explain their standards, one is “the accused devices” and the other is “the adjudicated devices”. We need to first understand what each of them represents, because I think this is where the disagreement arises.

When the Court used the term “the adjudicated devices”, it meant for unmodified devices, as pointed out by Thomas, and when the Court used the term “the accused devices”, it meant for modified devices.

The Court never said “the adjudicated devices” needed to be re-adjudicated, because, as Greg you said, and we agree, the adjudicated devices had been deemed to infringe, no need to go back to re-try them.

But if “the accused devices” are different than the adjudicated devices, then the Court said such accused devices must also be found to infringe before a contempt ruling is granted.

Now “the accused devices” we are talking about are those 4 million DVRs with the design around, because they are precisely what TiVo is accusing them of the violation. And “the adjudicated devices” we are talking about are those 4 million DVRs with the old design, and TiVo is not accusing those DVRs with the old design for violation. If you cannot even agree on that there is no point going further.

 

[Greg Bimson]

Greg, in all the cases we quoted, and you quoted, the Court had used two separate terms to explain their standards, one is “the accused devices” and the other is “the adjudicated devices”. We need to first understand what each of them represents, because I think this is where the disagreement arises.

But in this case, the accused devices ARE the adjudicated devices, with a modification.

When the Court used the term “the adjudicated devices”, it meant for unmodified devices, as pointed out by Thomas, and when the Court used the term “the accused devices”, it meant for modified devices.

Show me where "the adjudicated devices" means unmodified. This is exactly what I've been fighting.

This appears to be the first contempt case where "the adjudicated devices" ordered disabled have been modified. In NTP v. RIMM (the Blackberry case), the judge issued a warning before issuing an injunction that the parties should not leave it up to him; the parties settled. In Verizon v. Vonage, Vonage has appealed the decision and the injunction to the Court of Appeals; the appeal is still going but the injunction is not active.

There isn't any normal case law for DISH/SATS to claim the workaround is the first order of business. Therefore, with an adjudged infringing device subject to an order to disable, the order must be followed or contempt will most likely be found, unless there is some case law that Judge Folsom has found that allows the workaround to trump the injunction.

Does Joe Blow have a modified DVR? If he has a modified DVR, the legal status hasn't been determined yet. If it hasn't been modified then its legal status hasn't changed.

No, the first question is, "does Joe Blow have a device that was ruled infringing?" If so, then its legal status has been determined.

Of course, the implication here is that because DISH/SATS downloaded some software, any software, whether one byte or one billion lines of code, that it would change the fact the device in Mr. Blow's AV center has been ruled as an infringement.

Yet there isn't any citation to prove the preceding statement.

IMPORTANT EDIT: Don't worry. I am with you guys that the modification needs to be evaluated. And it will be. I just don't believe it will have anything to do with the disable order.

 

[Thomas22]

No, the first question is, "does Joe Blow have a device that was ruled infringing?" If so, then its legal status has been determined.

That's what I asked. If he has an unmodified device then he has an adjudicated device. If he has a modified device then its legal status hasn't been determined. If the change is more than colorable then he doesn't have an adjudicated device.

 

[riffjim4069]

Does anyone recall when Judge Folsom is supposed to rule on Tivo's contempt motion?

 

[Thomas22]

Does anyone recall when Judge Folsom is supposed to rule on Tivo's contempt motion?

There is no schedule. He can rule tomorrow or next year. Nobody knows.