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Archive for the ‘litigation’ Category

33 Months for Moviehouse Copyright infringer

26 Aug

Consider this interesting case from the UK where a copyright pirate was sentenced to 33 months in jail for downloading Fast & Furious 6 from the back of a moviehouse and then posting it where it was downloaded 700,000 times.
http://www.bbc.com/news/technology-28896675

 

Fed Circuit kills all pending false marking cases retroactively. Are patent infringers next to be dismissed?

11 Jul

In a policy move based on illogic, the Federal Circuit affirmed a USDC decision dismissing a qui tam false marking suit based on false marking occurring prior to passage of the law limiting recovery to actual damages. The law was prospective, but the USDC, affirmed by the CAFC, applies it retroactively in a docket clearing move. This is a policy move by the Court to clear the massive backlog of qui tam false marking cases by effectively pardoning all those who false marked. The decision is doublespeak, as it says what is clearly a court-made pardon is not a pardon. When a court says black is white and the Fed Circuit affirms, the Fed Circuit is showing that, for it, the ends justify the means. The Court appears to me to have found that the Court’s case management is the priority not the enforcement of legal rights. So, the next move will I suppose come if the pending patent troll legislation passes the best Congress money can buy to kill independent inventors cases at the behest of big business lobbying. This false marking pardon sets the stage for the dismissal of all perceived troll cases using the same logic. That is, why not just pardon willful infringement by big business on the basis that such pardon is not a pardon but what Congress really intended to do. I am not a fan of massive qui tam false marking cases, but that WAS the law. If the Federal Government wants to eliminate rights and deny due process, it seems just compensation should be paid BY THE GOVERNMENT. The 5th Amendment’s just compensation clause is there to protect citizens against Government deprivation of due process or taking of property. So, rather than summary dismissal by court fiat, it seems to me that summary dismissal and some payment of just compensation is the proper route.

Here is the Fed Circuit opinion.

http://law.justia.com/cases/federal/appellate-courts/cafc/13-1180/13-1180-2014-07-10.html?utm_source=Justia+Law&utm_campaign=d5cc2808a1-summary_newsletters_practice&utm_medium=email&utm_term=0_92aabbfa32-d5cc2808a1-406034737

 

SAP v Versata – Major PTAB decision adverse to business method patent claims

03 Jul

In it’s first major inter partes reexam decision on business method patent claims, the PTAB has a blockbuster. Remember the name SAP v Versata, as it will be perhaps the hottest topic this year in patent law unless and until the Federal Circuit and/or Suprem Court reviews and revises this monumental decision. It will change the way patent applications are drafted and prosecuted. A patent prosecution attorney who is not up to speed on this decision has a serious malpractice risk. The PTAB announced its presence by determining that the appropriate claim construction standard for post-grant review is the Broadest Reasonable Interpretation (BRI) as opposed to the standard of claim construction used in US District Court proceedings (Phillips v. AWH) and then held all of Versata’s claims unpatentable as directed to unpatentable subject matter. It’s a major turnaround of the case and victory for SAP, but sure to be appealed to the Federal Circuit. The PTAB has sure made its new presence known in a big way with this decision effectively gutting a $345 million infringement finding by declaring the claims invalid as too abstract.

http://www.ipfrontline.com/depts/article.aspx?id=50760&deptid=4

This was one of 3 proceedings, as there are also pending a Federal Circuit case and an USDC-VA-E case.

Versata won a significant decision at the USDC-VA-ED of $345 million for infringement, and the Federal Circuit had affirmed on May 1, 2013. See nice report in easy to read language at  http://www.reexamlink.com/2013/05/federal-circuit-appeal-decision-in-versata-software-v-sap/.

Bruce E Burdick, The Burdick Law Firm, Alton, IL

 

Google Patents “Prior Art Finder” Is An Infringement Location Tool

16 Aug

New tool available from Google Patents that not only helps locate prior art but also helps locate infringements.

Google has added to each patent overview in Google Patents (see for example 6,425,764 at http://goo.gl/f31nh) , a blue button labeled “Prior Art Finder”, which appears to be a search tool that searches Google Scholar, Google Patents, Google Web, Google Books and Google People databases to try to find references that use the words of the patent claims in the patent. By default this gives the top 10 references from all those sources. Very cool, right? It arguably does for free in seconds what an invalidity searcher would charge thousands of dollars to do in a few weeks. The Geeks who have noticed it so far have touted it as a new way to fight patent trolls by cheaply locating patent killing prior art.  And, it will surely do that in some situations.  Patent defense attorneys will certainly welcome this new tool, as they and their engineers can pour over this stuff and quickly locate significant prior art to use in invalidity arguments and/or invalidity opinions. Even though I do more plaintiff work, I also welcome it as it allows me to play devil’s advocate and locate those things I might expect my opponent to assert in arguments for invalidity. I also welcome it on an objective level as being an objective “truth finder”.  This tool is arguably neutral as to whether what it finds in invalidating art, as it just apparently searches for things in a given time period that seem to be similar based on the words of the patent claims in question.

As a plaintiff’s attorney in infringement cases, I notice a neat and perhaps unintended capability of this “Prior Art Finder”. As the saying goes, “what infringes if later, anticipates if earlier”.  The Prior Art Finder has user adjustable search fields for the beginning and ending date of the search it makes. Again referring to 6,425,764 (Lamson VRIT patent) when we click on the Prior Art Finder button we get the following screen http://goo.gl/eO4fO in which you will see on the left the heading “Custom Date Range” which can be adjusted. For example with 6,425,764 I know the priority date is the provisional filing date of 06/09/1997 rather than the non-provisional date 12/12/1997 listed. Apparently the Google programmers realized this sort of situation and made the date range fully adjustable.  However, here’s the really neat twist for patent enforcers – if you make the starting date the issue date of the patent and leave the ending date blank or today, you get an infringement search since now the “Prior Art Finder” becomes a subsequent art finder.  So in my example, doing that produces http://goo.gl/rn4qt a list of possible infringements. Note it can also be customized by clicking on one of the boxes at the top of the page, say Patents, to just list patents or to Scholar to just list scholarly articles, etc.  As the attorney for 6,425,764, that is a great tool I will certainly use to advantage.

L2BL (lesson to be learned) What anticipates if earlier infringes if later.

 

SHIELD Act to “Protect against patent trolls” – Would it?

05 Aug

http://www.article-3.com/shield-against-patent-trolls-98209

An article recently published extolling the virtues of a proposed Saving High-Tech Innovators from Egregious Legal Disputes (SHIELD) Act. The Act seeks to protect high tech businesses against suits by patent enforcement companies (patent trolls or PECs) by adopting a one-sided “loser pays the costs of the winner, but only if loser is the patent owner” policy.  The author of the article says “As they stand today, our current patent laws do little-to-nothing to protect businesses from egregious lawsuits. A new bill proposed this week might actually make a dent in the saga of tech patent wars.”

So, the party asserting a patent would pay costs of the alleged infringer if the infringer proves the patent invalid, but the infringer does not pay costs of the patent owner if the invalidity defense is frivolous.

So, the proposal would make a patent infringement trial inherently unfair.  It needs an amendment to make it simply “loser pays”.

Bruce Burdick

The Burdick Law Firm, Alton, IL

 

Patent Extorter Fined over $600K

06 Aug

The CAFC upheld the sanctions award of $631,135.18 July 29 in a unanimous panel ruling in Eon-Net v. Flagstar Bancorp in an opinion by Judge Lourie affirming Judge Ricardo Martinez of the District of Washington and his exceptional case finding and order for patent lawyer Jean-Marc Zimmerman and Eon-Net to pay $631,135.18 in sanctions and fees. The award was assessed as punishment for an extortion scheme using bogus patent litigation to extract nuisance value settlements from alleged infringers despite knowledge there was no infringement.

This is one where the patent enforcement entity can truly said to be a patent troll, since the finding was that they filed hundreds of cookie-cutter suits seeking to obtain $25K-75K in settlement to avoid expensive patent litigation defense, such as the $631, 135.18 Flagstar proved it paid. It is to be expected that others will seek damages from Eon-Net & Zimmerman.  Zimmerman pleaded poverty to try to avoid the judgment, but the Court did not buy it.

This shows that so-called patent trolls and their attorneys are at risk for sanctions if they over-reach in enforcing patents.

 

Real life story of how FTF would cheat inventors

20 Jul

San Rafael, CA (July 19, 2011): CALIFORNIA INVENTOR SUES US GOV FOR $100M+ FOR USE OF INVENTION ON PTSD TREATMENT METHOD

Over 20 years ago, Dr. Ralph Lamson, a psychologist from San Rafael, CA was hiking in the Muir Woods when he experienced another episode of acrophobia (fear of heights) and mentioned to his friend that perhaps virtual reality simulations would be a way to help treat it. The friend said it sounded like “Virtual Therapy”. Some time later, Dr Lamson saw notice of a trade show where VR equipment was on display. Donning the head mounted display for a simulated elevator ride, Lamson once again experienced his fear of heights, but this time in virtual reality, and he found that the more he used it the less scared he became. As a psychologist, he had a “Eureka moment” and instantly knew this confirmed his earlier thoughts while hiking and in about a half-hour he used VR to treat himself right there at the trade show. Now, thinking he was on to something, he went to work in early 1993 to test the theory which he termed “Virtual Therapy” and found in his first large scale test that he was able to cure over 90% (38 out of 40) patients, most in one 90 minute session. Previously, a 60% cure rate in about 10 one hour face-to-face “prolonged exposure therapy” sessions was considered the optimum treatment. Lamson published an article and was in 1994 awarded a Cybertechnology Journal “application of the year” award, predicting it would have widespread application to many other phobias, stress disorders and mental conditions. He began getting phone calls, letters, and visitors from the military wanting to learn more about his invention for possible military applications, which he took to mean psy-ops of some sort. Fast forward ten years to 2004, when Dr. Rizzo at USC’s Institute of Creative Technologies (“USC-ICT”), who knew of Dr. Lamson’s pioneering work with virtual reality immersion therapy or VRIT, began adapting this treatment for PTSD, taking the video game “Full Spectrum Warrior”, and with Dept. of Defense funding developed “Virtual Iraq“, a program (see http://ict.usc.edu/projects/ptsd/) of virtual reality immersion therapy (VRIT) for the treatment of post-traumatic stress disorder (“PTSD”). In Virtual Iraq soldiers recreate traumatic experiences under controlled virtual reality conditions in order to help get over them. It works so well that Dr. Rizzo and others working under DOD funding, grants and contracts have received hundreds of millions of dollars in support of this program. In fact, Virtual Reality Immersion Therapy or VRIT has become the preferred treatment for PTSD and has the potential to save American taxpayers over a billion dollars as America tries to cure more than 300,000 PTSD sufferers. VRIT is quicker and more effective, so it lessens the chance of suicide or criminal behavior by sufferers of PTSD and other anxiety disorders. But, the reality is that this was invented by Dr. Lamson. Lamson says the Government stole his invention and that jobs have been lost in California and shipped out-of-state as a result, and he has hundreds of publications and videos to back up his story, including a patent (6,425,764) and book “Virtual Therapy” http://www.amazon.com/dp/B005BCOFXU published in 1997, two years before the US Army funded the creation of the USC program in 1999. http://en.wikipedia.org/wiki/Institute_for_Creative_Technologies . It is that patent and the invention it defines that is the basis of his lawsuit. After years of requesting compensation from the Government, Lamson has recently filed suit against Uncle Sam for more than $100 million for unauthorized use of his invention.

The Wikipedia article at http://en.wikipedia.org/wiki/Virtual_reality_therapy describes this technology and Dr. Lamson’s status as the pioneer in the field. Does theft of US jobs, say in southern California, concern you? Does theft of intellectual property interest you? Would you be concerned if it was the U.S. Government itself that was ‘taking’ intellectual property (inventions) and using these without permission of the inventor and without any payment whatsoever, let alone payment of ‘just compensation’ as required by the 5th Amendment of the US Constitution? Is there a relationship between the Congressional passage of patent reform and theft of patents from small businesses and independent inventors? Dr. Lamson knows the answer because it happened to him! His Government stole his invention, one which might have resulted in hundreds of San Francisco area jobs and sent those jobs to Belgium, Canada, Georgia, Florida, Maryland, Hawaii, Washington state, and to military bases and VA hospitals world-wide. And, he was not paid a dime!

How does this relate to current patent legislation? Well, even though he was first to invent Lamson was second to file. A Gov’t funded contractor filed first. With enactment 2011-09-16 of HR1249, the law will be “reformed” to where the first to invent will no longer get the patent as has been the case since the first US Patent law in 1790. Instead, Congress passed and the President signed legislation switching to a system where any inventor who is first to get to the Patent Office with an application gets the patent, not the true first inventor. This means that anyone (especially BIG Government or a BIG corporation) who learns about an invention that someone else discovered can pretend to “discover” it themselves,  have their eagerly awaiting patent attorneys rush to file and obtain a patent and use that patent to stop the even the true inventor. The independent inventor cannot afford the cost to move that quickly or to file on each possible wrinkle of his invention and will be out-of-luck. If the pretender is a BIG company (Microsoft, IBM, GE, etc.) or worse yet (but just as likely if not more likely) a foreign company, the jobs that the independent inventor would have had to create here, being too small to start overseas, to make his business grow will (hear the sucking sound) go overseas as that is where Big Business has its production now. And since the invention is, like Lamson’s, something better, it will displace existing American businesses and jobs. The economy will further erode as more jobs  disappear overseas, and once these new industries set up shop overseas the factories are there not here and the jobs will never return.

As Dr. Lamson points out, “If so-called ‘patent reform’ was law in 1997 when my patent was filed, I would have lost a lifetime of work with no recourse.” Congress wants to “streamline” the patent process by making it easier for government, corporations, and others to steal from inventors. “The Department of Defense (“DOD”), Office of Naval Research (“ONR”), Army, Air Force agencies and divisions, Defense Centers of Excellence, Naval Postgraduate School Monterrey, US Department of Veterans Administration, Department of Health and Human Services, multiple VA hospitals and TRICARE, as well as several Government contractors and grantees are all infringing my patent”, Dr. Lamson notes. “If patent reform was the law, I would just have to watch and cry. But that’s not what the Constitution says in the Fifth Amendment. It says

Amendment V

No person shall be held to answer for a capital, or otherwise infamous crime, unless on a presentment or indictment of a grand jury, except in cases arising in the land or naval forces, or in the militia, when in actual service in time of war or public danger; nor shall any person be subject for the same offense to be twice put in jeopardy of life or limb; nor shall be compelled in any criminal case to be a witness against himself, nor be deprived of life, liberty, or property, without due process of law; nor shall private property be taken for public use, without just compensation.

“The theft of my invention by my Government without due process for public use without just compensation began years ago when officers from the Naval Postgraduate School, Monterrey visited me in San Rafael to pick my brain about my invention. They wanted to find out about this ‘remarkable new technology’ (Scott Pelley’s description of VRIT for PTSD on the CBS Evening New), my virtual reality psychotherapy discovery, the secrets of my VRIT treatments, and anything else they could steal concerning my VRIT. And I trusted my Government because they said I could and because they said it was really important for the military to know about it for ‘military reasons.’ That was sure a mistake. Don’t you make the mistake of trusting them on Patent Reform, either” says Lamson.

Dr. Lamson describes the theft of his invention. “The Navy began its own VRIT program almost immediately after learning how I did mine. Sure, the Navy now denies theft of my invention but evidence even in the public domain is overwhelming and demonstrates otherwise. For example they asked me to submit an SBIR (small business innovation & research) funding request but denied my request and instead wrote up their own funding request for their own program to do essentially what I had requested and described. They sent the manager of that program to attend my seminar to learn more from me. They then funded Georgia Tech and Emory University in Atlanta (Sam Nunn, head of the Senate Armed Services Committee was from Georgia).  Georgia Tech even tried to hire me to teach my secrets and, when I turned them down, hurried up to file their own patent application to beat me by a few months.” Meanwhile, Lamson was trying to perfect his invention, figure out the medical reasons why it worked so much better than other methods, and find funding to commercialize his invention. Lamson laments “I was really disappointed to learn that no legitimate venture capitalist was interested in my work. I felt that since I had originated the idea I knew best how to make it work so it could realize its maximum benefit. I was repeatedly told by venture capitalists that they were not going to invest their money because the Government was spending millions of dollars funding at least 5 competing programs after having stolen my invention.” So you see, had Big Business dominated James Madison (and the founders who created the US patent system) like it does our current Congress; had patent reform and it’s “first to file” system been the law at that time, Lamson would have been sunk, because he was second to file. “But, under our current patent system,” notes Lamson, “as has been the case for US inventors continuously for over 220 years since 1790, I was able to prove to the US Patent & Trademark Office  that I was actually the true and first inventor and I got the patent, thus effectively invalidating the prior-filed patent by the Government’s invention thieves.” David Pressman, Lamson’s San Francisco patent attorney did this by a sophisticated, but relatively inexpensive device that is familiar to most patent attorneys called a Rule 131 Affidavit, in which he submitted incontrovertible evidence proving Lamson’s earlier invention. Due to the arduous task of overcoming that prior filing it took five long years for Lamson to get his patent. Once he got the patent, he started looking for contingent fee lawyers to go after these invention pirates who were infringing his now issued patent. But, there was not yet enough money in it and the Government, with its limitless resources, would be the main Defendant. It took him seven years to locate an attorney willing to take on the Government.

Bruce Burdick, Lamson’s patent trial attorney, notes “Yes, you guessed it, Rule 131 will be abolished by the ‘America Invents Act’ so true inventors like Lamson can’t do that to BIG business or BIG government any more. But patent reform was NOT the law in 1997, so Dr. Lamson, the true inventor, got the patent in 2002 and after years of requesting the Government to pay just compensation, we filed suit in July 2011. That suit could not have occurred under first-to-file, but rather the Ga. Tech and Emory Univ. and Government invention thieves would have been deemed the “inventor” and he would have become the infringer. So you see, his story shows the folly of this new patent bill in very real terms in a very real situation.” Burdick also notes “By the way, Dr. Lamson’s Senators, Barbara Boxer and Diane Feinstein were both leading opponents of First to File, arguing to the bitter end in favor of Amendments http://www.govtrack.us/congress/vote.xpd?vote=s2011-31 seeking to delete it from S23, the corresponding Senate bill and Senator Boxer was one of only 5 voting against the entire bill. http://www.govtrack.us/congress/vote.xpd?vote=s2011-35 . His representative, Lynn Woolsey, also voted against patent reform. http://www.govtrack.us/congress/vote.xpd?vote=h2011-491. Dr Lamson is proud of their effort on behalf of inventors like him. We now hope the US Court of Claims sees the truth and awards him the compensation he is due for this invention that is improving the lives of so many thousands of sufferers of PTSD and other psychological disorders. In America, great inventors should not be treated like this, especially by their own Government, or they will just stop inventing. It is an outrage.”

“Lest you think the Government acts fairly with inventors,” Burdick notes, “Dr. Lamson tried filing an Administrative Complaint of Patent Infringement in accordance with DFARS 227.7004 with the ONR (Office of Naval Research, which serves as Intellectual Property Counsel for the Navy) but that was denied. Since the denial looked bogus, Dr Lamson checked further. By FOIA request, he has recently learned that the Navy has turned down all (yes ALL, every single one) of such complaints for at least the last 15 years. The Government issues these patents and then does not even honor them. It’s really infuriating to inventors like Dr/ Lamson. His own Government has left him with no other choice but to file suit against them, so June 10, 2011 we filed suit in the US Ct. of Fed. Claims (USCFC), so his story is a matter of public record, and he will get his day in Court.” His Complaint to DOD is posted online at http://www.burdlaw.com/references/20101020%20Administrative%20Claim%20-%20final.pdf and his court Complaint at http://burdlaw.com/references/PX20110610%20Complaint.pdf . If you read those Complaints you will see many of the same facts he has described above.

As Dr. Lamson notes in closing, “The US Government says it is stimulating the economy to create jobs. Just the opposite. The last remaining corner of hope for arresting a downward spiral is inventing to achieve a competitive edge for the economy and for personal livelihood. The military is not only waging war abroad but silently destroying the US economy from within. It is insidious. And now the best Congress money can buy is about to kill the patent system for inventors like me. I want to create a business, hire people and cure people and improve their lives. My Government is stopping me by stealing from me my life’s work. Wonder why America’s economy is in decline? Who’s watching? Who’s reporting? “

Dr Lamson can be reached by email at rvirtigo.lamson@gmail.com or phone at (415) 209-4269. His attorney, Bruce Burdick, can be reached by email at beb@burdlaw.com or phone at (618) 462-3450.

 

Small Seattle area co. Eagle Harbor Holdings seeks to sink SYNC with patent suit.

05 Jul

http://www.techflash.com/seattle/2011/07/eagle-harbor-holdings-sues-ford.html

Small Bainbridge Island (Seattle-Tacoma area) company Eagle Harbor Holdings sues Ford for patent infringement of 7 patents. Founders Joe & Dan Preston also founded Airbiquity, a Seattle company whose technology is in GM’s ONSTAR. The company is encouraged, no doubt, by the success of i4i in its suit against Microsoft which kept a high burden of proof in invalidation defenses against such suits.

 

Twitter loses long-shot venue challenge

03 Jul

Techdirt.com article 2011/07/23

Twitter Tries To Move Patent Trial By Saying All Twitter Users Agree To Settle Legal Disputes On Twitter’s Home Turf

from the nice-try,-but-no dept

It’s no secret that patent holders suing for infringement prefer certain venues. And, many tech companies based in the Bay Area like to try to get those cases moved to a local court instead. There’s been some efforts to move cases to better locations, but thanks to some tricky games, lawyers can frequently keep the cases where they were filed.

Apparently Twitter thought that it might try some tricky lawyers’ games of its own to get one case transferred. The company tried arguing that because the patent holder, Dinesh Agarwal, who was suing them was also a Twitter user, it meant he’d agreed to Twitter’s terms of service… which state that all lawsuits against the company must be brought in San Francisco. That’s pretty clearly a tortured reading of the Terms of Service, because this lawsuit had nothing, whatsoever, to do with Agarwal’s use of the service… and the judge didn’t buy it, allowing the case to continue in Virginia, where it was filed. As the judge noted, agreeing to this “would potentially foster satellite litigation in every patent case involving a social networking market participant,” basically guaranteeing that such lawsuits could only be brought where social networking companies wanted them to be brought.

Burdlaw comment: This suit was pursuant to patent laws not Twitter service to Agarwal. First, the plaintiff was VS Technologies, which did not have a Twitter account and was not created until after Agarwal got a Twitter account, so the Judge found that VS Technologies could not have agreed to the TOS. Hard to dispute that. Second, the suit was not about Twitter’s service to Agarwal, but rather Twitter’s adoption of items covered by the VS Technologies patent. Third, if TOS trumped patent law choice of forum, a patentee suing multiple social networks would generate satellite lawsuits in each network’s TOS forum choice, rather than in one multi-defendant case in one jurisdiction before one judge, and judicial efficiency favors one case rather than an unlimited number when the issue is essentially the same. Hard to dispute that logic. Fourth, in this case the balance of convenience appeared to be either equal or favoring non-transfer. That balance is for the Court to determine, not Twitter. Fifth, Agarwal’s undisputed testimony was his Twitter account was only obtained in order to gather evidence for the suit, not to use the service. Sixth, the USDC-VA-E has a faster docket (it is one of the famous rocket docket jurisdictions for patent cases), and that was a minor factor favoring non-transfer to USDC-CA-N. Not mentioned was the real reason, which the Judge well knows, that the USDC-VA-E is much more pro-plaintiff than the USDC-CA-N so the plaintiff wants it to stay at the USDC-VA-E and Twitter, the defendant, wants it the hell out of there and into a more anti-patent forum like the USDC-CA-N. If Twitter were the patent owner and VS Technologies the defendant, Twitter would be arguing the other way, namely to keep the case there. All in all, this was a real legal stretch by Twitter, indicating desperation. Expect Twitter to try to settle this one.


 

TiVo awarded $90M in sanctions against EchoStar (Dish network) in patent infringement case

21 Apr

This post on gametimeip http://gametimeip.com/2011/04/20/tivo-mindwarp-court-renders-permanent-injunctions-worthless-in-key-patent-ruling/

is a major misreading of today’s en banc TiVo v EchoStar decision, in my opinion. I suspect that post took the dissent to be the decision rather than the majority opinion, or perhaps they overlooked that this is a sanctions case, not an infringement decision, or they overlooked that TiVo won affirmance of 100% of the $90M sanction award amount. gametimeip says the decision renders permanent injunctions worthless. Yet, the CAFC affirmed the lower court’s $90M sanction against Echo Star for the ENTIRE $90M awarded below. The CAFC noted that two injunctions were issued and affirmed the entire sanction award for violating the second injunction, even though they remanded on the issue of violation of the 1st injunction. That is not a worthless injunction, as monetarily it is a total victory for TiVo. The dissent, on the other hand, would have zeroed the sanction award in a clear case of direct violation of the express wording of an injunction and that would have made injunctions of much less value.

The remand was because on the first issue, the CAFC found 12-0 that the USDC-TX-E committed error in finding there were no colorable differences of the redesigned product from the claims without doing an element by element analysis to determine if there were “colorable differences” as to any element sufficient to raise a reasonable issue of non-infringement. If the DC on remand still finds there were, the sanctions will not decrease and if they find there weren’t the sanctions will not increase, so the contempt issue is over (barring an unlikely appeal to the S. Ct.) and TiVo has won 100% of the amount of the sanction awarded below. The trial court has already held the claims are infringed by the new product so it is a virtual cinch that, after the required element by element analysis, TiVo will get another infringement judgment for another huge amount for infringement by the newly downloaded software.

The contempt which won the day for TiVo, was Echo Star’s violation of the second part of the injunction which required EchoStar to disable the DVR functionality of 8 models, because EchoStar did not disable the DVR functionality of any of the 8 models but rather kept selling and using the 8 models and instead just downloaded new software that they unsuccessfully claimed designed around TiVo’s claims and avoided infringement. The injunction did not provide for not disabling the DVR functionality, and EchoStar did not get clearance of the Court before doing something on its own in lieu of disabling the DVR functionality as ordered, so EchoStar should have gone back to the Court and sought clarification before violating the express terms of the second injunction by not disabling DVR functionality of the 8 models. Ignoring the injunction and fashioning its own unauthorized alternative approach turned out to be a $90M error.

So, that is $90M in sanctions in addition to the $74M previously awarded. Worthless? $164M in total award is worthless? Wow, what a misreading of the case. And, once the DC gets the case back on remand, more damages will likely be coming for the infringement the Court already found once on the design around software. So, $164M is likely to be even bigger by the end of this. And that is worthless? Man, I hope my clients get some of those “worthless” injunctions like TiVo got.

Lesson to be Learned: Be careful not to jump to the end of opinions for a quickie view of the case, since the dissent comes last. Also, follow the money and, if you get all you asked for, that is a victory, not “worthless.”