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Discussion Starter #1
Back in October, 2006, the U.S. District Court ruled that Dish Network had infringed on TiVo patents and had 30 days to disable the DVR functionality on the DP-501, DP-508, DP-510, DP-721, DP-921, DP-522, DP-625, DP-942, and any future DVRs whose implementations "are not more than colorably different from any of these products." That injunction was stayed (delayed) pending appeal with the U.S. Court of Appeals.


The permanent injunction has been reinstated, so Dish Network will have 30 days to disable its DVRs -- or settle -- when the appeal is finalized. More specifically, the injunction says that Dish Network must disable the hard drives on its DVRs.

Full decision (PDF)

Current Status as of January 19


The injunction hasn't happened yet because the appeals process isn't over. Echostar had 14 days from the decision to file a petition for rehearing by the full jurist panel of the Court of Appeals. Once that petition is filed, it could take a month for the court to respond. If a rehearing is granted, then we're in for a long wait. If the rehearing is denied, then -- as far as I can tell -- the injunction (30 days? to disable DVRs) would take effect 7 days after that denial. If they are denied, Echostar can file a writ of certiorari to appeal to the Supreme Court.


On January 7, Echostar requested a time extension to file their petition for rehearing. The court granted the extension, with the note that no further extensions should be expected. Echostar now has until March 17, 2008 to file their petition for rehearing.


U.S. Court of Appeals Summary
Quote:
In sum, because of a failure of proof of literal infringement, we reverse the judgment of infringement of the hardware claims with respect to all of the accused devices. We remand for any further proceedings that may be necessary with respect to those claims. We affirm the judgment of infringement of the software claims with respect to all of the accused devices. Because the damages calculation at trial was not predicated on the infringement of particular claims, and because we have upheld the jury’s verdict that all of the accused devices infringe the software claims, we affirm the damages award entered by the district court.


The district court’s injunction was stayed during the course of these proceedings. The stay that was issued pending appeal will dissolve when this appeal becomes final. At that time, the district court can make a determination as to the additional damages, if any, that TiVo has sustained while the stay of the permanent injunction has been in effect.


Each party shall bear its own costs for this appeal.


AFFIRMED IN PART, REVERSED IN PART, and REMANDED. "
Echostar's Response
Quote:
The decision, however, will have no effect on our current or future customers because EchoStar’s engineers have developed and deployed ‘next-generation’ DVR software to our customers’ DVRs. This improved software is fully operational, has been automatically downloaded to current customers, and does not infringe the Tivo patent at issue in the Federal Circuit’s ruling. All DISH Network customers can continue to use their DVRs without any interruption or changes to the award-winning DVR features and services provided by DISH Network.
TiVo's Response to Echostar's Response
Quote:
EchoStar has made a series of statements over the years related to the infringement of the TiVo patent that has turned out to be both false and misleading,'' TiVo said in an e-mailed statement. ``At this point it doesn't really matter what EchoStar says by way of further self-serving statements. It matters what the courts say -- and the courts have spoken.'
More coverage

Bloomberg: TiVo Wins Appeal in Fight Against Dish Over DVRs

TiVo Press Release
 

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I haven't been following this issue closely enough to remember what percentage of Dish Networks users have the affected equipment... does anyone know?
 

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Discussion Starter #3

Quote:
Originally Posted by bicker1 /forum/post/12990811


I haven't been following this issue closely enough to remember what percentage of Dish Networks users have the affected equipment... does anyone know?

TiVo claims that it is all Broadcom-based DVRs, i.e. every Dish Network DVR released since the DP-501. During its litigation, TiVo referred to the infringing products as "Broadcom DVRs."


Now, Dish Network may disagree with that. Certainly, it would seem they do from their response:
Quote:
We are pleased the Federal Circuit found for us on Tivo’s hardware claims, but are disappointed in the Federal Circuit’s decision on the software claims. The decision, however, will have no effect on our current or future customers because EchoStar’s engineers have developed and deployed ‘next-generation’ DVR software to our customers’ DVRs. This improved software is fully operational, has been automatically downloaded to current customers, and does not infringe the Tivo patent at issue in the Federal Circuit’s ruling.


All DISH Network customers can continue to use their DVRs without any interruption or changes to the award-winning DVR features and services provided by DISH Network.


We intend to appeal the Federal Circuit’s ruling affirming the $94 million jury verdict.
 

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Do you think this will effect the Echostar TR-50, or possibly delay it's roll out? I sure hope not. I'm really waiting for finally being able to record true HD. The TR-50 also uses a guide, but maybe it's different from the DISH DVDR's guide in question.
 

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Quote:
Originally Posted by bfdtv /forum/post/12990875


TiVo claims that it is all Broadcom-based DVRs, i.e. every Dish Network DVR released since the DP-501. During its litigation, TiVo referred to the infringing products as "Broadcom DVRs."

Perhaps, but what about the specific models mentioned in the US District Court ruling -- does anyone know what percentage of Dish Network DVRs are among those models listed?
 

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I am definitely not an attorney but there are two statements in the PDF which seem to support Dish's press release.


"Inasmuch as the Broadcom DVRs do not satisfy the is separated limitation and the 50X DVRs do not satisfy the assembles limitation, we must reverse the portion of the judgment upholding the jury's verdict that EchoStar's DVRs literally infringe the hardware claims." (page 22)


and


"We therefore uphold the jury's verdict that the EchoStar DVRs infringe the software claims of the '389 patent." (page 32)
 

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I wonder how this is going to jive with DISH freezing their rates until the end of 2009 as of tomorrow. They will obviously either pay to license patent, release software updates which work around the infringement or buy Tivo. All options can be expensive, especially since it will take more than 30 days to roll out software updates to the 625. The last one took over 6 weeks to roll out!


Ted
 

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This judgment is big enough that I bet it would actually legally substantiate a surcharge, even for customers who had some kind of contractually locked-in rate, assuming such things were done in this industry (sort of like how the cruise lines are allowed to apply a fuel surcharge under certain circumstance). I suspect that if necessary Dish will simply unfreeze their rates, and do their best to paint TiVo as the culprit.
 

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Edit -


Sorry I see the E* response was already posted above. I'll leave it here as well for anybody who may have missed it.



Here's a post from Scott over at SatGuys:

Quote:
DISH Network Statement in Response to Federal Circuit Ruling in


Tivo Inc. v. EchoStar Communications Corp.




ENGLEWOOD, Colo. – Jan. 31, 2008 – DISH Network Corporation (NASDAQ: DISH) issued the following statement regarding recent developments in the Tivo Inc. v. EchoStar Communications Corp. lawsuit:


“We are pleased the Federal Circuit found for us on Tivo’s hardware claims, but are disappointed in the Federal Circuit’s decision on the software claims. The decision, however, will have no effect on our current or future customers because EchoStar’s engineers have developed and deployed ‘next-generation’ DVR software to our customers’ DVRs. This improved software is fully operational, has been automatically downloaded to current customers, and does not infringe the Tivo patent at issue in the Federal Circuit’s ruling. All DISH Network customers can continue to use their DVRs without any interruption or changes to the award-winning DVR features and services provided by DISH Network.


We intend to appeal the Federal Circuit’s ruling affirming the $94 million jury verdict.”

__________________

Scott

Chief Cook and Bottle Washer

SatelliteGuys.US

Emphasis added.
 

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Discussion Starter #10
 Tivo's response to the above:

Quote:
EchoStar has made a series of statements over the years related to the infringement of the TiVo patent that has turned out to be both false and misleading,'' TiVo said in an e-mailed statement. ``At this point it doesn't really matter what EchoStar says by way of further self-serving statements. It matters what the courts say -- and the courts have spoken.'

They certainly have a point there. Echostar maintains to this day that they have never infringed TiVo patents.


I added the Echostar and TiVo comments to the first post.
 

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The last I heard, TIVO stock shot up a "bunch" while E*** dropped very little.
 

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Thanks for posting that TiVo quote, bfdtv... it is something that a lot of folks perhaps need to come to understand, that our legal system, and really the entire fabric of our society, is a crafting of our institutions. Truth, with regard to anything that affects commerce, for example, is determined by the actions and decisions of the institutions of our society designated with specific powers in that regard. There is no denying them because the constructs (such as "intellectual property") were created by our society... they didn't exist in nature.
 

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Quote:
Originally Posted by bfdtv /forum/post/12990875


TiVo claims that it is all Broadcom-based DVRs, i.e. every Dish Network DVR released since the DP-501. During its litigation, TiVo referred to the infringing products as "Broadcom DVRs."


Now, Dish Network may disagree with that. Certainly, it would seem they do from their response:

I am not a lawyer. I've never had legal training. And I didn't read the whole decision.


But in reading it, I did come across one key item: Tivo's patent requires that the audio and video MPEG data be recorded into two separate buffers. They argued in the case that this was not meant to be a physical but a logical separation, but the judge disagreed. In other words, all of Tivo's patent claims require that the audio and video segments be buffered into two physical buffers. Any Dish DVR that simply copies the incoming data stream to the hard drive and then decodes it later only has one buffer, and would thus be exempt from the ruling. Probably most of their OTA ones would not fit the ruling as well. Dish did admit that their 5000 series did use separate buffers and could be subject to the ruling.


It was interesting to me that Tivo's patent is so specific as to require the use of MPEG encoding. If another video compression scheme were to be used, the entire patent would be useless. Not much help for an OTA product, though, as it would require decoding and re-encoding prior to storage.


So, in summary, because of the two physical buffer requirement, this ruling is unlikely to have any impact on current DVRs or announced and planned DVRs in the near future. If anything, this ruling will give Dish boldness to push these plans forward in an effort to recoup the fees they'll have to pay Tivo for prior patent violations.
 

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Discussion Starter #14

Quote:
Originally Posted by sregener /forum/post/13010723


So, in summary, because of the two physical buffer requirement, this ruling is unlikely to have any impact on current DVRs or announced and planned DVRs in the near future. If anything, this ruling will give Dish boldness to push these plans forward in an effort to recoup the fees they'll have to pay Tivo for prior patent violations.

The software infringement and the injunction were upheld, so the burden is on Echostar to prove that their new software is "more than colorably different" [in how it works] from previous implementations. If they cannot, then Dish will be forced to disable the hard drive on their DVRs, as per the injunction.


One would expect TiVo to file a motion to get the ViP622 and ViP722 added to list of infringing products. Then the debate on the new software will begin.


TiVo may also argue before the district court that hardware infringement be reinstated under the doctrine of equivalents . The doctrine of equivalents prevents companies from taking a patent and implementing the technology with very minor changes in an attempt to avoid infringement. It allows the court to find infringement even if the device does not fall within the scope of the patent but is still equivalent to the patented technology.


There are two tests :


1. An invention is deemed equivalent if:

a. it performs substantially the same function

b. in substantially the same way

c. to accomplish the same substantial result


2. An invention is deemed equivalent if there is only an "insubstantial change" between each of the elements of the accused device or process and each of the elements of the patent claim.


Here's the pertinent section of the ruling:
Quote:
At several points, TiVo argues that even if this court were to overturn the jury’s verdict of literal infringement, there would still be ample evidence of infringement under the doctrine of equivalents. There are two problems with upholding the judgment on the hardware claims on that basis. First, the jury was told that if it found literal infringement it should not make a determination as to whether there was infringement under the doctrine of equivalents, so there was no verdict on the issue of equivalents with regard to the hardware claims.
Quote:
At this juncture, we could uphold the judgment on the basis of the doctrine of equivalents only if we were to conclude that no reasonable jury, given proper instructions, could reach any verdict other than to find infringement by equivalents. The parties, however, have not briefed that issue in any detail, and we therefore do not address it. More generally, we do not decide what further proceedings, if any, are appropriate in the district court regarding the equivalents issue. Instead, we leave that issue for the district court to resolve in the event that, on remand, TiVo decides to continue to pursue the hardware claims in light of this decision.

To summarize, TiVo had their hardware claims overruled because (1) the Appeals court more narrowly interpreted certain words in deciding literal infringement on the hardware, and (2) jurors were told not to determine whether there was infringement under the doctrine of equivalents if they found literal infringement. Since the jury found literal infringement, TiVo did not pursue the doctrine of equivalents.


The Appeals court remanded the [question of] doctrine of equivalents to the district court.
 

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More of the shell game. Lower court restricted the focus to literal and passed it on (without doing a complete job because they were instructed to do so.. Gr..argh!). Now the higher court overturns that lower courts judgment on hardware infringement. So now the issue of equivalence is once again pertinent. Now, who makes the decision on that? More wasted taxpayer $'s. I also noticed the acquisition of replayTV by DTV hasn't yet been discussed in this forum. I thought DTV now owned Echostar. If so, then couldn't they simply say "our 622 & 722 DVR's use replay software" or at the very least modify the software to use the replay licenses?
 

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Discussion Starter #16

Quote:
Originally Posted by ndabunka /forum/post/13041601


I thought DTV now owned Echostar. If so, then couldn't they simply say "our 622 & 722 DVR's use replay software" or at the very least modify the software to use the replay licenses?

DirecTV (owned by Liberty Media) and Dish Network (owned by Echostar) are two completely separate companies. They do not share ownership.


DirecTV has a licensing agreement with TiVo which expires in 2010. Some speculate that DirecTV acquired ReplayTV for bargaining purposes in 2010. ReplayTV was on the auction block, so it's also possible that DirecTV purchased those patents so they wouldn't fall into the hands of another competitor [which might litigate].
 

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Quote:
Originally Posted by bfdtv /forum/post/13041869


DirecTV (owned by Liberty Media) and Dish Network (owned by Echostar) are two completely separate companies. They do not share ownership.

Thanks for the details. I left DirecTV about 5 years ago and thought I heard that Direct bought Dish. At the time I thought it was odd that both companies would have been under a single roof. I thought that there HAD to be anti-trust issues there. Maybe, it never happened or they somehow split them out. If they are both owned then there goes the replay TV options for Dish.
 

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So,

Why isn't Microsoft being sued by Tivo? Media Center has had DVR functionality for years. How is this different from the Echo vs. Tivo battle when the hardware and software components can be segregated in terms of patent infringement?


JD
 

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Discussion Starter #20

Quote:
Originally Posted by jdskycaster /forum/post/13044656


So,

Why isn't Microsoft being sued by Tivo? Media Center has had DVR functionality for years. How is this different from the Echo vs. Tivo battle when the hardware and software components can be segregated in terms of patent infringement?

TiVo, ReplayTV [now owned by DirecTV], and Microsoft are the three major holders of DVR patents.


Microsoft may infringe on some TiVo patents, but TiVo may infringe on some Microsoft patents. We don't really know. We do know that TiVo did not ask to disable the Dish Network's "Dishplayer" DVRs running Microsoft software as part of their litigation against Echostar.


TiVo doesn't have the resources to pursue litigation against multiple companies simultaneously, so we really don't know what they will do once the Echostar litigation is complete. Clearly, TiVo will use any precedents established in TiVo v. Echostar in other cases.
 
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