TIVO vs E*

[jacmyoung]

...But you can bet if TiVo doesn't get resolution through removal of the stay, that will be the next step.

This is one of the key issues, TiVo must get the stay lifted before they can go after the new DVRs. The other key is, regardless what is the software in the new DVRs, TiVo must also prove the new DVR hardware are also only colorable different than the 8 named DVRs. To do so as you said expert testimonies will be needed. Judging by the pace of Judge Folsom's proceedings, before a resolution is reached, it is likely the appeals court will have already made their ruling, that is to assume if the temporary stay is lifted pending appeal.

If the stay of the injunction is not lifted, TiVo will have to wait till the appeals court makes its ruling. But I also said if the stay is lifted, the mere appearance that TiVo may get Judge Folsom to shut off the newer DVRs will put incredible amount of pressure on Charlie.

 

[Martin Tupper]

This is one of the key issues, TiVo must get the stay lifted before they can go after the new DVRs.

I don't think they have to wait. It is just not in their best interests to delay the injunction by introducing anything new. If the injunction gets delayed by upholding the stay, why would TiVo wait to file a claim that un-named DVR's are also violating the

The other key is, regardless what is the software in the new DVRs, TiVo must also prove the new DVR hardware are also only colorable different than the 8 named DVRs. To do so as you said expert testimonies will be needed. Judging by the pace of Judge Folsom's proceedings, before a resolution is reached, it is likely the appeals court will have already made their ruling, that is to assume if the temporary stay is lifted pending appeal.

Why? At present, none of the named DVR's are considered to be infringing on the hardware claims. Why would other un-named DVR's have to meet that requirement?

If the stay of the injunction is not lifted, TiVo will have to wait till the appeals court makes its ruling. But I also said if the stay is lifted, the mere appearance that TiVo may get Judge Folsom to shut off the newer DVRs will put incredible amount of pressure on Charlie.

They may coose to wait. I don't know why they would have to wait?

 

[Greg Bimson]

I wouldn't speculate on what their software does or how exactly it functions, but from my own experience, MY code can do function differently based on different equipment SOMETIMES. Not sure that's the case here, but just a small bit of info for you.

I haven't read the details behind this, but:

There were eight models of DVR, and during trial they were divided into two groups:

The Broadcom DVRs were the 522 and 625
The 50X DVRs were the 501, 508, 510, 721, 921 and 942

The 721, 921 and 942 could not take the software update, so they still run the old software and infringe. However, because DISH/SATS paid lost profit damages on 192,708 DVR's, DISH/SATS is allowed to keep that many infringing. As I recall, there are less than 193K of those three models.

The remaining 50X DVR's received a software update to remove the indexing and the Media Switch functionality. DISH/SATS claims it is the only change to those receivers, thus removing the "parse video and audio from broadcast data".

The Broadcom DVR's received a software update not only to claim removal of the "parse" element, but also the self-regulation element.

So it is definitely possible to have the same design make some differences in the operation as it relates to the Infringed Claims. The issue is that there aren't too many claims that DISH/SATS can work-around.

 

[jacmyoung]

I don't think they have to wait. It is just not in their best interests to delay the injunction by introducing anything new. If the injunction gets delayed by upholding the stay, why would TiVo wait to file a claim that un-named DVR's are also violating the

Because when the injunction order is stayed, the order is not in effect, E* is not under an effective order to disable, sale, use, manufacture...of the 8 named DVRs and any DVRs that are only colorably different. TiVo cannot ask the court to enforce an order that is not in effect.

Why? At present, none of the named DVR's are considered to be infringing on the hardware claims. Why would other un-named DVR's have to meet that requirement?

It was undisputed that none of the 8 named DVRs had any hardware changes, the hardware were the exact same, therefore it was enough by just finding the new software was merely colorably different.

Any new DVRs will have two differences, one the hardware, the other the software, even if the software is the same (which is not true), the differences in hardware will have to be evaluated to determine whether the newer DVRs are only colorably different than the 8 named DVRs.

This issue has nothing to do with "hardware claims" or "software claims." The two issues should not be confused. It was also undisputed that the software claims also contain hardware functions, not just software functions. Likewise, the hardware claims also relate to software functions, not just hardware.

 

[jacmyoung]

... DISH/SATS claims it is the only change to those receivers, thus removing the "parse video and audio from broadcast data"...

It is interesting you said that, if such claim is true, do you still think the new software continues to infringe the software claim step one?

 

[Martin Tupper]

Because when the injunction order is stayed, the order is not in effect, E* is not under an effective order to disable, sale, use, manufacture...of the 8 named DVRs and any DVRs that are only colorably different. TiVo cannot ask the court to enforce an order that is not in effect.

If the stay is not lifted pending appeal, that doesn't mean that the named DVR's are free and clear. E* must still win the appeal to keep them on permanently. No?

If the stay is upheld pending the appeal, there is nothing preventing TiVo from raising the stakes by filing another motion for contempt arguing that the un-named DVR's are not more that colorably different than the named oned, with respect to the software claims. They still may choose to wait, pending the outcome of the appeal, but the decision is theirs to make.

It was undisputed that none of the 8 named DVRs had any hardware changes, the hardware were the exact same, therefore it was enough by just finding the new software was merely colorably different.

Any new DVRs will have two differences, one the hardware, the other the software, even if the software is the same (which is not true), the differences in hardware will have to be evaluated to determine whether the newer DVRs are only colorably different than the 8 named DVRs.

This issue has nothing to do with "hardware claims" or "software claims." The two issues should not be confused. It was also undisputed that the software claims also contain hardware functions, not just software functions. Likewise, the hardware claims also relate to software functions, not just hardware.

Can you site an example of these "hardware" functions in "software" claims?

 

[Greg Bimson]

It is interesting you said that, if such claim is true, do you still think the new software continues to infringe the software claim step one?

That was DISH/SATS position. My position is the PID filtering meets the limitation in the "parse" element.

If the stay is upheld pending the appeal, there is nothing preventing TiVo from raising the stakes by filing another motion for contempt arguing that the un-named DVR's are not more that colorably different than the named oned, with respect to the software claims. They still may choose to wait, pending the outcome of the appeal, but the decision is theirs to make.

Technically, I believe you and jacmyoung are both correct.

Filing a contempt motion because TiVo thinks the ViP series infringe now may be a moot point. jacmyoung correctly points out the injunction is stayed, so a new motion for contempt may be placed on hold because the appeal will suspend the injunction for infringement now.

However, TiVo certainly can file a motion for contempt because they believe the ViP series has always infringed. When the injunction was activated in full force and effect, if TiVo believes the ViP receivers were infringing then, TiVo has every right to claim the injunction, as issued back in August 2006, prohibited those receivers.

Simply put, during the time when the injunction was active, if there were violations, TiVo can ask for relief via motion for contempt.

 

[Greg Bimson]

Can you site an example of these "hardware" functions in "software" claims?

Sure.

"parse video and audio data from said broadcast data" is accomplished using a chip, called a PID filter.

"automatically flow-controlled" relates to the use of a memory buffer, which is hardware.

 

[jacmyoung]

That was DISH/SATS position. My position is the PID filtering meets the limitation in the "parse" element.

But does the PID filter meet the definition of the "physical data source?" If not, then did TiVo identify such "physical data source" in the new design by some other items? Keep in mind to prove the new design still uses such "physical data source" TiVo must prove three things are performed by such "physical data source," not just "parse." I will not repeat my previous posts other than say E* had clearly provided substantial evidence during the hearing that the PID filter cannot be that "physical data source." To prove by clear and convincing evidence that the new design still meet the first step of the software claims, TiVo must identify that "physical data source" and prove it still meet all three elements, not just the "parse" element. The only thing TiVo did was to prove the PID filter still parses.

However, TiVo certainly can file a motion for contempt because they believe the ViP series has always infringed.

A motion for contempt can only be considered if there is an order which a party may be in violation of, if there is no such order in effect, there cannot be a violation of such order, therefore cannot be a contempt. Of course TiVo can file any motion they want, but if there is no order in effect, such motion will not be granted. E* isn't going to just sit there let TiVo motion all they want. TiVo would be foolish to file a motion just to have it dismissed quickly.

Or maybe TiVo will, anything is possible.

When the injunction was activated in full force and effect, if TiVo believes the ViP receivers were infringing then, TiVo has every right to claim the injunction, as issued back in August 2006, prohibited those receivers.

Then TiVo should have file a motion for contempt by the VIPs during the time when the injunction was in effect, or wait till the injunction becomes effective again, should it happen.

Simply put, during the time when the injunction was active, if there were violations, TiVo can ask for relief via motion for contempt.

I would change the words "can ask" to "could have asked."

 

[Greg Bimson]

Then TiVo should have file a motion for contempt by the VIPs during the time when the injunction was in effect, or wait till the injunction becomes effective.

But why can't a motion for contempt be filed for violations during the active period?

In civil contempt proceedings, “the party seeking an order of contempt need only establish (1) that a court order was in effect, and (2) that the order required certain conduct by the respondent, and (3) that the respondent failed to comply with the court’s order.”

Additionally, the issues regarding contempt of an injunction against infringements would also need to be followed.

I don't see where the injunction has to be active in order to find contempt. I do know that the injunction only had to be active, which in this case it was...

 

[jacmyoung]

But why can't a motion for contempt be filed for violations during the active period?Additionally, the issues regarding contempt of an injunction against infringements would also need to be followed.

I already said TiVo of course can file any motion for contempt they want, but E* is not going to just sit there let TiVo file any motion they want. E* will ask the judge to dismiss any motion for contempt TiVo files, even if the stay is lifted, because the appeals court may overturn the judge's ruling and vacate the order, by agreeing with E* that the 8 named DVRs may no longer infringe. It would be a waste of court economy to entertain such motion for contempt by the VIPs before the appeals court rules.

Motion for contempt for not disabling the DVR functions on the 8 named DVRs on the other hand, will be the obvious next step, if the stay is lifted and E* fails to disable after 29 days. Even so, I do not know if E* can then go to the Supreme Court to ask for an emergency stay order, if the appeals court should lift the stay? Maybe Rocky will chime in after he is back from the outside

I don't see where the injunction has to be active in order to find contempt. I do know that the injunction only had to be active, which in this case it was...

I see your point, I am no lawyer, can't say one way or the other what should be the proper court procedure on this one.

 

[iwc5893]

the appeals court may overturn the judge's ruling and vacate the order, by agreeing with E* that the 8 named DVRs may no longer infringe. .

But does it matter if the DVR's no longer infringe, because they were not shut down IAW the original order. If E* felt that their design around no longer infringed, why didn't they file a motion with the court to get it reviewed and get the shutdown order lifted?

 

[jacmyoung]

But does it matter if the DVR's no longer infringe,

I believe this is one of the decisions E* is asking the appeals court to make, because the appeals court had always said yes to similar questions in the past.

because they were not shut down IAW the original order.

Whether the above statement was true or not was in dispute before the judge's recent ruling. E* interpreted the injunction as to only order "Infringing Products" to be disabled, but now the judge said no, infringing or not, my order was to disable regardless. On appeal, E* will have to argue that the judge's injunction was unclear, he should not have said "Infringing Products."

If E* felt that their design around no longer infringed, why didn't they file a motion with the court to get it reviewed and get the shutdown order lifted?

Court rarely lifts a "permanent injunction" in part or in whole. The defendants only need to comply with the injunction. E* interpreted the injunction to apply to the "Infringing Products" so there was no need to disagree with the order, all they had to do was to make sure the design around no longer infringed.

Had the order said "Adjudicated Products" for example, E* would likely have appealed to have the term modified, but the term "Infringing Products" was fine with E* based on the way E* interpreted it.

E* now has to argue to the appeals court that since the judge said his "Infringing Products" covered non-infringing products too, his wording was unclear. One of the most common reasons to deny or overturn a contempt is to demonstrate that the order is ambiguous, not clear or not precise.

 

[Smith P.]

Sure.

"parse video and audio data from said broadcast data" is accomplished using a chip, called a PID filter.

"automatically flow-controlled" relates to the use of a memory buffer, which is hardware.

This "using a chip, called a PID filter" is only partially HW, but SW also - when you want filter some PID(s) you must create criteria for such filtering in your program, then load into HW the tables and activate them.

 

[jacmyoung]

This "using a chip, called a PID filter" is only partially HW, but SW also

That is what both Greg and I were saying, the "hardware claims" do not limit themselves to the hardware only, the "software claims" do not limit them to the software only, they are combinations of the hardware and software functions, or as you said, partially HW, but SW also.

- when you want filter some PID(s) you must create criteria for such filtering in your program, then load into HW the tables and activate them.

Given your expertise in this area, may I ask you this, was E* correct by saying the PID filter only analyzes the channel ID info, a 13-bit code, and such channel ID info contains no audio and video data, only the 13-bit code?

I also decided to quote one part of E*'s testimonies on the ID packet (the header) issue and the issue of the "physical data source" must "parse audio and video data from the broadcast data" to meet the first step of the software claims, and the PID filter does not meet that step:

Q AND WHERE IS THE VIDEO AND AUDIO DATA?

A THE VIDEO AND AUDIO DATA WOULD BE IN THE PAYLOAD TO THE RIGHT.

Q DOES THE PID FILTER ANALYZE THE PAYLOAD?

A NO.

Q NOW AT THE TIME PID FILTERING IS ACCOMPLISHED, ARE THE PAYLOADS SCRAMBLED?

A YES, FOR ALMOST ALL OF THEM. MOST OF THE PAYLOADS THAT ARE SHIPPED DOWN BY THE ECHOSTAR SATELLITES CARRY INFORMATION, VIDEO, AUDIO, AND OTHERS THAT HAVE BEEN SCRAMBLED.

Q AND WHAT IS THE SIGNIFICANCE OF SCRAMBLING TO THE QUESTION THAT WE’RE LOOKING AT NOW WHICH IS WHETHER A PID FILTER ANALYZES AUDIO AND VIDEO DATA?

A THE AUDIO AND VIDEO DATA IS HIDDEN BY THE SCRAMBLING, SO EVEN IF THE PID FILTER WERE TO OPEN THE PAYLOAD OF A TRANSPORT STREAM PACKET THAT CARRIED SCRAMBLED DATA, IT WOULD BE UNABLE TO ANALYZE THE ACTUAL VIDEO OR AUDIO DATA WITHOUT GOING THROUGH AN INVERSE DESCRAMBLING PROCESS, AND THE PID FILTER ITSELF DOES NOT DO THAT.

Q AND SO KEEPING IN MIND THE COURT’S CLAIM CONSTRUCTION OF THAT ENTIRE CLAIM ELEMENT, PARSES AUDIO AND VIDEO DATA FROM THE BROADCAST DATA, WHY, IN VIEW OF THAT CONSTRUCTION, IS IT YOUR OPINION THAT THE NEW ECHOSTAR PRODUCTS DON’T MEET THAT LIMITATION?

A I CAN STATE IT VERY SIMPLY. THE ONLY PLACE THAT THE VIDEO OR AUDIO DATA WOULD BE FOUND IS IN THE PAYLOADS OF THE TRANSPORT STREAM PACKETS AS THEY PROCEED THROUGH THE FRONT END OF THAT DEVICE AND ULTIMATELY SHOW UP ON DISK. AND IN THE MODIFIED PRODUCTS, DURING THAT FRONT END PROCESS, THERE IS NEVER ANY ANALYSIS OF THE VIDEO AND AUDIO DATA BEING PERFORMED BY OPENING THE PAYLOAD PORTION OF THE TRANSPORT STREAM PACKETS. THE ONLY THING THAT IS NOW DONE IS THE USE OF A PID FILTER, AS WAS DONE BEFORE, TO LOOK AT THE HEADER AND FIND THE PACKET IDENTIFIER 13 BIT CODE. THAT’S ALL THAT’S DONE. AND THE MODIFIED SYSTEMS ON THE FRONT END LEADING TO THE DISK, THE PAYLOAD IS NEVER EXAMINED.

Q AND IT’S THE PAYLOAD WHERE THE VIDEO AND AUDIO DATA RESIDE, CORRECT?

A THAT’S CORRECT.

Q AND NOT IN THE HEADER?

A NONE OF THAT DATA IS IN THE HEADER.

And also notice the highlighted sentence, which demonstrated that E* was conforming to the court's own claim construction, not trying to change it or contest it. Since E* was not trying to change it, the judge was wrong by saying E* should have contested such claim construction on appeal, because E* was not trying to contest the construction, rather follow it.

I don't think Judge Folsom remembered the above testimonies, nor cared to go back to read that part at all, he only read what he liked to read, because his mind was already made up.

 

[Smith P.]

I'll try to answer to your questions later, for now just one quick point - if the V/A payload was encrypted it's still encrypted regardless of claimed new or old software.
Plus it's created a mess in arguments, because PVR50x/522/625 storing unencrypted V/A data and indexes ( actually pointers to I-frames) while 721/921 storing re-encrypted [by CPU/FPGA with own unique key] those decrypted at same point as 50x video/audio data .
Also, for sure filtering PIDs not just one type of filtering, there are table filtering what going after packets been decrypted by eventual reason.
[I'm still reading TiVo patent, not cleared yet for myself how it's apply in fine technical details to dish SW.]

 

[Greg Bimson]

And also notice the highlighted sentence, which demonstrated that E* was conforming to the court's own claim construction, not trying to change it or contest it. Since E* was not trying to change it, the judge was wrong by saying E* should have contested such claim construction on appeal, because E* was not trying to contest the construction, rather follow it.

Didn't this testimony from the continuing infringement hearing come from one of five experts that admitted during the trial that PID filtering met the parse element?

So, in other words, with all experts in agreement that PID filtering met the parse element limitiation in April 2006, one expert changing his story without DISH/SATS changing the underlying technology means there was no change:

THE ONLY THING THAT IS NOW DONE IS THE USE OF A PID FILTER, AS WAS DONE BEFORE, TO LOOK AT THE HEADER AND FIND THE PACKET IDENTIFIER 13 BIT CODE.

And this same person testified during the trial in April 2006 that PID filtering met the parse element limitation.

But here is something to ponder:

AND THE MODIFIED SYSTEMS ON THE FRONT END LEADING TO THE DISK, THE PAYLOAD IS NEVER EXAMINED.

Even with this testimony, at some point the payload must be "examined", otherwise programming would not be viewed as audio and video data wouldn't ever be analyzed to get on the TV. As I recall, there is no order to the steps within the patent claim, so the analysis of that audo and video data is still occurring.

 

[jacmyoung]

Didn't this testimony from the continuing infringement hearing come from one of five experts that admitted during the trial that PID filtering met the parse element?

So, in other words, with all experts in agreement that PID filtering met the parse element limitiation in April 2006, one expert changing his story without DISH/SATS changing the underlying technology means there was no change:And this same person testified during the trial in April 2006 that PID filtering met the parse element limitation.

First you may not have read the 2/09 testimonies we have quoted some time earlier so let's try to find out why those E* experts said back then the PID filter met the parse limitation.

At the time of the jury trial there were two issues involved, one E* was trying to prove no infringement, the other E* was trying to prove that the TiVo's patent was invalid.

In order to prove TiVo's patent invalid, E* used several prior art, two of which involved the PID technology. Based in part on the PID prior art E* experts argued TiVo's patent disclosed the key part of its invention--the "parse" limitation, which was covered by the PID prior art as obvious, for that reason, and several others, E* tried to prove TiVo's patent was invalid due to obviousness.

TiVo's counter argument was, PID filter did not parse as the patent disclosed, the PID filter's function was to determine the broadcast channel IDs, to allow the DVRs to decide which channel to tune to. It was the media switch that did the parse as disclosed in their patent. And most importantly, the jury agreed with TiVo by finding TiVo's patent valid. That was E*'s point in the hearing, since the jury agreed with TiVo, E* must now change their experts' failed argument during the jury trial.

That was why in the 2/09 hearing E* said parties had completely changed their positions, which even the judge himself agreed. Of course the judge only determined now E*'s change of position was not allowed, yet TiVo's change of position was just fine.

But here is something to ponder:Even with this testimony, at some point the payload must be "examined", otherwise programming would not be viewed as audio and video data wouldn't ever be analyzed to get on the TV. As I recall, there is no order to the steps within the patent claim, so the analysis of that audo and video data is still occurring.

The question is not whether the audio and video data may be analyzed somewhere down the road, rather if the PID filter does such analyzing, if the PID filter dose not analyze any audio and video data, then the PID filter cannot parse as described by the patent. TiVo must identify what is in the E* new design that may be defined as the "physical data source" that dose all three things:

1) It must first obtain broadcast data from the input device, therefore it has to exist at the very front part of the process, not somewhere down the road.

2) It must analyze audio and video data from the broadcast data it had just obtained from that input device, and then

3) After it parsed out the audio and video data from the broadcast data, it must also temprorarily store such audio and video data.

Regarding 1), E* used the figure in the patent specification and TiVo's own testimonies during the trial to demonstrate that the PID filter was a part of the "input device" therefore could not be the "physical data source."

Regarding 2) E* demonstrated the PID filter did not analyze any audio and video data, and

Regarding 3), E* actually got the TiVo expert to admit the new software no longer temporarily stored the data.

The above three steps are all in the first step of the software claims, it has to be done all in one step at the very beginning of the process, cannot have one of them done at the front of the DVR process, another done at the end of the DVR process. Because most of the remaining steps in the software claims are dependent on this first step to complete itself first.

 

[jacmyoung]

...because PVR50x/522/625 storing unencrypted V/A data and indexes ( actually pointers to I-frames) ...

That was done in the old software, but not in the new software, TiVo does not even dispute that, TiVo only says but the I-frame issue is irrelevant.

Do you agree the I-frame issue is irrelevant to TiVo's invention?

 

[Smith P.]

Not sure - I need spend more time for reading that patent's wording.
As an 'index' the pointers to I-frame ( ok, to any time stamp linked to I-frame) is mandatory for provide trick play.