TIVO INC. v. ECHOSTAR CORP.
Oral Argument · Case 2009-1374 · 30:50
0:00
Appellant Attorney (E. Joshua Rosenkranz)
Tevo asks this court to uphold contempt on a patent injunction that Tevo reads as an unprecedented prohibition on non-infringing designer rounds.
0:12
But that is not what the injunction says, and Echo Star should not have been expected to read it that way.
0:18
The phrase infringing products is most reasonably and naturally read to mean products that infringe.
0:26
This was in order to disable the current infringing products in their current infringing form, not in order prohibiting Echo Star.
0:36
Judge Rader
It doesn't say that. It says disable all storage to and playback from.
0:41
Now that sounds to me like you ought to have recognized that all means all and have appealed it earlier.
0:49
Appellant Attorney (E. Joshua Rosenkranz)
Your Honor, it says disable...
0:51
Judge Rader
I'm asking the waiver question.
0:52
Appellant Attorney (E. Joshua Rosenkranz)
Well, so let me first explain why.
0:57
It doesn't mean that, and then I'll turn to the waiver question.
1:01
So yes, Tevo makes that argument, and Tevo's argument is premised particularly on the notion that infringing products does not mean products that infringe,
1:12
but rather the following eight model numbers.
1:15
Now we know that that can't possibly be what it means, and we can look at it together on page 162 of the injunction of the joint appendix.
1:26
The very next sentence uses the same exact formulation, so it's 162 right at the bottom.
1:35
Now it's on the enablement point, and it reads the DVR functionality, i.e. disable all storage and playback from a hard disk drive of television data,
1:46
exactly the formulation Your Honor used, shall not be enabled in any new placements of the infringing products.
1:54
Okay, so if Tevo's formulation...
1:56
If the formulation of infringing products is correct, that must mean the DVR functionality shall not be enabled in any new placement of the following eight models, regardless of whether they infringe or not.
2:08
Tevo tells us...
2:09
Judge Rader
So you're explaining why all doesn't mean all.
2:11
Appellant Attorney (E. Joshua Rosenkranz)
Well, Your Honor, I'm explaining why Tevo's...
2:14
Judge Rader
But I'm saying, why didn't you just appeal it?
2:18
Appellant Attorney (E. Joshua Rosenkranz)
Well, Your Honor, there is no reason for anyone reading this injunction to believe that infringing products meant anything other than the products that infringe.
2:27
And in that sentence, all meant all of the functionality as it existed in the device at the time, not don't design around, which would have been a very unnatural reading,
2:41
particularly because Tevo never requested any ban on design arounds in the context of this case.
2:49
Tevo said that it was asking for, in order to prohibit infringement, nothing more, nothing less.
2:56
Actually, citing to International Rectifier, Tevo's current interpretation of the injunction would have required...
3:07
Tevo's current interpretation would have been both unprecedented and unlawful.
3:13
Tevo never suggested that there was a curse on the hardware, never sought a recall of either these boxes...
3:21
Well, never sought a recall of these boxes, never offered this recall light theory that the later...
3:27
The power to do the lesser included the power to do the greater, and the District Court said nothing about any of these notions.
3:36
So then turning to, finally, Your Honor, the question of waiver, because there was no reason for a reasonable litigant in Echo Star's position
3:44
to have imagined that the District Court was ordering something that Tevo never requested, and certainly it wasn't at all clear,
3:53
and it would have been illegal, there was no reason to appeal it.
3:57
And I kind of...
3:57
I can imagine the conversation Mr. Dunner would have had with this Court at the time.
4:02
He would have come before the Court with all of the issues in front of the Court on a very complicated case and said,
4:08
Your Honors, this injunction is too broad because it illegally prohibits non-infringing conduct.
4:18
And this Court would have said, well, Mr. Dunner, has anyone interpreted it that way?
4:23
Has anyone asked for it?
4:25
Judge Rader
And he could have said...
4:27
DVR functionality is defined in here, and all means all.
4:32
Please make sure there's no ambiguity, Court of Appeals, and we could have done so with a stroke of the pen.
4:39
I have said, infringing is all you can enjoin, of course.
4:44
Appellant Attorney (E. Joshua Rosenkranz)
And my point, Your Honor, is it would have been unnatural for him to be doing that,
4:47
especially with all the other issues, to stretch to find a meaning for this injunction that no one had proposed.
4:57
Turning to the...
4:57
Judge Rader
To the infringement provision for a minute, don't you really have to reverse your theories entirely from what you were before to when?
5:07
Appellant Attorney (E. Joshua Rosenkranz)
Your Honor, on one particular aspect of it, both Thiebaud and Echo Star have switched positions.
5:15
Judge Rader
But I'm just asking you, of course, at this point.
5:17
Appellant Attorney (E. Joshua Rosenkranz)
We have switched positions, Your Honor, and for good reason.
5:20
We had a jury verdict against us that told us we lost on that argument.
5:25
And there's something very unfair in the...
5:27
It's for court's opinion in saying that we are bound by our losing position,
5:33
and Thiebaud is not at all bound by its winning position.
5:37
Judge Lourie
So in any event, the court said those positions dealt with hardware,
5:41
and we're now dealing with software. Isn't that correct?
5:44
Appellant Attorney (E. Joshua Rosenkranz)
That is what the court said, Your Honor.
5:46
But no one made the argument that the word parsing meant something different in the two claims.
5:52
In fact, both Thiebaud and Echo Star...
5:57
Echo Star took the position that this is one invention, the words mean the same thing in both.
6:02
In fact, the construction was the same in both.
6:06
Now, just to back up then, Echo Star removed the very features that Thiebaud had accused of infringement.
6:16
Thiebaud does not contest that those features are now gone.
6:20
In our briefs, we posed a challenge to Thiebaud, multiple challenges.
6:25
How in the world can you claim that the read does not exist?
6:28
That the design was essentially the same, when you now have to turn to different features,
6:32
invoke different theories, and prove different facts in order to prove infringement?
6:39
How can you say that there are no open questions of infringement?
6:42
Which is to say, all questions of infringement were already adjudicated against Echo Star,
6:48
if you had to present dueling experts to argue about what...
6:53
Judge Rader
But parsing means analyzing, and that's very broad,
6:58
it wasn't appealed.
6:59
Appellant Attorney (E. Joshua Rosenkranz)
We are not, we did not appeal the construction, we're accepting the construction,
7:03
and I beg to differ with you, Your Honor.
7:04
Judge Rader
Yes, and now, this happens very often here.
7:07
You accept the construction, and then you argue about the construction of the construction.
7:11
No, Your Honor, we're not.
7:12
Appellant Attorney (E. Joshua Rosenkranz)
Parsing, Your Honor, does not mean, parsing means analyzing.
7:16
Parsing video and audio data under the construction of the court means parsing video and audio data,
7:24
and the mistake that the district court made was forgetting,
7:28
that what's supposed to be parsed is video and audio data.
7:31
But again, this is an open question of infringement now.
7:34
We're now talking about a totally different feature from the start code detection,
7:39
which Thiebaud had claimed in the original action performed the parsing.
7:46
And I hasten to add, when we talk about open questions of infringement,
7:51
the question you, Your Honor, Judge Rader, asked at the outset is quite relevant.
7:57
Thiebaud...
7:58
Thiebaud is now having to switch positions on what it is identifying as the parser,
8:05
which means that that question couldn't possibly have been adjudicated against EchoStar in the first proceeding.
8:15
Thiebaud also can't call the redesign a subterfuge
8:19
when EchoStar managed to achieve two results that Thiebaud's own inventor said
8:26
were impossible to achieve.
8:29
If those two features were gone,
8:32
and a highly successful, excuse me, a highly reputable and independent patent firm
8:38
confirmed to EchoStar not only that these products are more than colorably different,
8:46
but that they were different enough to defeat an infringement claim on five separate theories.
8:52
So on pages 28 to 29 of our blue brief, we list nine reasons why
8:57
these devices are not essentially the same.
9:01
Thiebaud mainly says that all of those are irrelevant,
9:06
but does not really engage on them.
9:08
Main point on colorable differences, Your Honors, is that Thiebaud's,
9:16
excuse me, that the district court made numerous legal errors.
9:21
I know Thiebaud was saying this is about deference and clear and convincing,
9:27
excuse me, clearly erroneous standard,
9:30
but that is true as to facts.
9:32
But here we've got legal errors.
9:34
Let me just, with my time remaining before my rebuttal time,
9:38
mention one of them.
9:40
The district court mistakenly concluded that removing a feature
9:44
does not implicate claim terms,
9:47
just because the name that EchoStar used for that feature
9:54
does not appear in the claims.
9:55
Well, that's of course wrong.
9:57
These features start code detection
10:01
indexing, blocking,
10:03
were implicating the claim terms.
10:05
They were the basis on which EchoStar had been found
10:09
to have infringed in the first place.
10:11
If they didn't implicate claim terms,
10:14
there could have been no finding of infringement.
10:17
If there are no further questions,
10:18
I'd like to reserve the remainder of my time for rebuttal.
10:20
Thank you, Your Honors.
10:21
Judge Lourie
Mr. Waxman.
10:30
Appellee Attorney
May it please the court.
10:32
The trial judge who presided over this case
10:35
for well over five years,
10:37
has written a careful, detailed opinion,
10:40
finding EchoStar in contempt
10:43
of two independent provisions of the injunction.
10:46
Judge Rader
But he could not have ever enjoined anything
10:49
other than infringing conduct, could he?
10:52
Appellee Attorney
He has the authority under 283,
10:57
and I'm quoting the statute,
10:59
to issue an injunction in accordance with principles of equity
11:03
to prevent violation, not of any patent,
11:07
but violation of any right secured by a patent
11:11
on such terms as the court deems reasonable.
11:14
And this court has on occasion,
11:16
and we're talking here about whether the court
11:18
abused his discretion in concluding that
11:21
with this infringer,
11:23
Judge Rader
But is anyone ever going to interpret that all
11:26
to be anything other than all conduct that was infringing,
11:31
not dismantling the machine?
11:36
Appellee Attorney
Judge Rader, that is, first of all,
11:39
the request was not for dismantling the machine.
11:41
The request was, as your questions pointed out,
11:43
to disable all DVR functionality
11:47
with respect to satellite receivers.
11:49
Judge Rader
But some of the functionality is not infringing.
11:52
Appellee Attorney
Well, at the time that the injunction was issued,
11:56
the court had found infringement
11:59
both of the so-called hardware claims,
12:01
claims 1 and 32 that dealt with the media switch,
12:04
and the software claims that are issued here.
12:08
We made a request to the court
12:11
that in our proposed injunction,
12:13
which is on page 7550 of the joint appendix,
12:17
both with respect to products
12:19
that are already in subscribers' homes
12:22
that EchoStar leases to them,
12:24
that there be a disablement of the software
12:28
or of the functionality that provides DVR functionality.
12:32
This is a company that provides
12:34
principally satellite reception service.
12:37
We asked for that.
12:38
We also asked with respect to boxes
12:41
that are in inventory in warehouses,
12:43
et cetera, et cetera, that they be destroyed.
12:45
Now, there was no question whatsoever
12:50
that the judge understood what we were asking for.
12:55
He provided what we were required.
12:57
And although it is not relevant
12:59
under the Supreme Court's decision in Travelers,
13:02
EchoStar darn well
13:04
understood what we were requesting.
13:06
It actually put in its 10Q,
13:10
which EchoStar has included in the joint appendix,
13:13
language that says,
13:15
we've just lost at trial,
13:17
we're gonna have to litigate the scope of the injunction,
13:19
and TiVo is requesting that we disable
13:21
all DVR functionality in the machines that we've placed.
13:26
Judge Rader
But I see nothing that makes it clear
13:28
that you have to make a hardware fix,
13:32
go in and literally remove
13:34
hardware when all of the infringing conduct
13:37
could have been taken care of with a software beam down.
13:41
Appellee Attorney
Exactly the point.
13:42
And we actually said in our briefs
13:44
in front of the district court that we,
13:47
Judge Rader
Can you show me where you actually said
13:50
they're gonna have to remove the hardware?
13:52
Appellee Attorney
We never said we were gonna have to remove the hardware.
13:55
We asked for a removal of the infringing DVR functionality,
13:59
which is accomplished by software,
14:02
and we said,
14:04
and Judge it's at page,
14:05
our opening request in support of the injunction
14:20
that we requested.
14:22
We said at page 6063 and 6064 of the joint appendix,
14:28
6063 is where we talk about existing placements.
14:32
6064 we said,
14:34
EchoStar can disable the infringing DVR functionality
14:38
in all DVR units by updating their software
14:42
via satellite transmission.
14:44
Now your request,
14:46
the question you've asked Judge Rader
14:48
about when this court has ever done such a thing
14:51
or approved such a thing,
14:52
you did it in spindle fabric
14:54
where you approved an injunction
14:57
that extended not just to infringing,
15:00
I think it was wool spinning products,
15:03
but all in light of the particular facts of that case.
15:07
You approved it in footnote 31
15:10
of Judge Lurie's decision for the court
15:12
in Johns Hopkins versus Selkirk,
15:14
with respect to vials of stem cell material
15:18
that had been created before the patent had issued,
15:21
had never been shown to infringe,
15:23
but as you explained,
15:24
in light of other conduct of the defendant in this case,
15:28
the trial court was within its discretion
15:30
to order the destruction of that material.
15:33
Now I can see that this is an unusual provision
15:38
that is tailored to the very unusual facts of this case,
15:43
and there was a time and a place
15:45
to seek modification,
15:47
to seek clarification,
15:49
to appeal,
15:50
and ECHOSTAR made a deliberate tactical decision
15:54
to do none of those things.
15:56
When it came to this court
15:57
to seek a stay of the injunction
16:01
that Judge Folsom issued the first time,
16:04
it filed stay papers,
16:05
emergency stay papers in this court
16:07
that was all about
16:09
this injunction is going to make us stop using DVR functionality,
16:13
it's going to cost us more than $90 million a month,
16:16
we need a stay of the injunction,
16:18
and when it filed its merits brief in this case,
16:22
not a single one of the 14,000 words
16:26
was addressed to the scope of the injunction.
16:28
And other travelers,
16:30
which after all,
16:31
the Supreme Court dealt with a provision
16:34
that went to the subject matter jurisdiction of the court,
16:37
the Supreme Court said...
16:38
Mr. Waxman?
16:39
Judge Rader
I think we've got that point.
16:40
Appellee Attorney
Okay.
16:41
Judge Rader
I'm reading from the place you brought up
16:43
where you put me.
16:44
Appellee Attorney
Uh-huh.
16:45
Judge Rader
Echostar can reprogram and disable
16:47
the infringing DVR functionality in all units
16:51
by updating their software via satellite transmission.
16:56
Correct.
16:58
Appellee Attorney
Now, that was in support of an injunctive provision.
17:02
If I can just direct your attention while you have it.
17:05
Judge Rader
How does that require a hardware alteration?
17:09
Appellee Attorney
It doesn't.
17:09
We weren't asking for a hardware alteration.
17:12
We were asking for,
17:14
and you can see exactly, Judge Rader,
17:16
what we were asking for at page 7550
17:21
of the joint appendix, paragraph 6,
17:25
which requested...
17:27
Maybe I'll wait until you get the page
17:29
so we don't actually have to read back and forth
17:31
through each other.
17:32
Go ahead.
17:32
Let me make the following point with respect.
17:35
Under travelers, it is too late,
17:39
far too late for a collateral challenge
17:42
to the scope, application,
17:43
or interpretation of this provision.
17:46
Under travelers, it is also entirely irrelevant
17:50
what all of these briefs and oral arguments
17:53
said about this at the time.
17:55
In travelers, the parties came to the Supreme Court
17:58
and said, look, there is substantial evidence
18:00
that no one understood this order
18:03
to apply to travelers' own primary conduct.
18:07
And Justice Souter, writing for the court,
18:09
said, that looks right.
18:11
You may well be right about that,
18:13
but the time to raise those claims is over.
18:16
The language of the injunctive order is plain enough
18:20
that if there were an issue,
18:21
this should have been raised before.
18:24
And this is a paradigmatic example.
18:29
Now, Mr. Rosencrantz says,
18:31
well, maybe all doesn't mean all,
18:32
and maybe the doesn't mean the,
18:34
and maybe the defined term,
18:37
infringing products,
18:38
doesn't somehow mean the defined term.
18:40
But the question,
18:41
even if this were undirected,
18:43
the question certainly now
18:45
is whether or not they can seriously contend
18:48
that no one could have read
18:51
the terms of this injunction
18:54
to mean what it plainly does mean.
18:57
That is, that there was no possibility
18:59
they could ever have imagined
19:01
that they would be asked to do
19:02
exactly what we asked the court
19:05
to direct that they do on page 7550.
19:08
Now, if I may,
19:10
I mean, I don't want to cut off questions,
19:11
on the disabling provision,
19:13
but I would like to talk about
19:15
the infringement positions as well.
19:17
Judge Rader
You have to flip your position here too,
19:20
don't you?
19:20
Appellee Attorney
Not at all.
19:21
The issue at trial,
19:24
the overwhelming issue at trial,
19:27
dealt with the media switch in claim one.
19:31
Claim one requires
19:32
that the device have a media switch
19:36
that parses and separates
19:38
the audio and video streams.
19:41
There was,
19:43
there was an immense,
19:43
titanic battle about this because,
19:46
and this was an issue on which you were-
19:47
Judge Rader
But the PDI filter only analyzes header data,
19:52
not audio and video.
19:55
Appellee Attorney
It, the requirement,
19:57
may I first answer the question
19:58
about whether we had to switch positions
20:00
and then I'll explain-
20:01
Judge Rader
I'm jumping in ahead.
20:02
Appellee Attorney
I want to make sure
20:03
that I'm totally responsive here,
20:05
but let me just say,
20:05
again, the district court made a finding of fact
20:10
that the PID filters,
20:11
A, haven't changed from then to now,
20:14
and B, they do analyze video and audio data
20:19
from said broadcast data.
20:21
That finding,
20:22
I'm going to explain to you why it's correct.
20:25
It is surely not clearly erroneous.
20:28
When every single expert at the trial
20:31
conceded that,
20:33
either proclaimed it or conceded it.
20:36
Now, with respect to,
20:38
again, I think we need to put in context
20:41
the point that Judge Luria was making,
20:42
the main feature of the first trial,
20:46
the overwhelming feature
20:47
of their so-called Herculean workaround
20:50
and their lawyer's letters
20:51
and their thousands of hours of time
20:53
dealt with this media switch.
20:56
We created something
20:57
that I called the genius of the invention
21:00
when I was arguing before this court before,
21:03
and that was a system
21:05
in which the media switch
21:07
would create a logical index of start codes
21:11
and that would go into the hard drive
21:13
along with the actual data
21:14
and assist a low-cost consumer DVR.
21:18
Judge Rader
You were trying to avoid
21:19
the PDI filter prior art, right?
21:21
Appellee Attorney
No, not at all.
21:22
I mean, there was the PID filters,
21:26
the PID filters as I gather they call them
21:28
in the industry,
21:29
are ubiquitous.
21:30
They have been around forever.
21:32
They are what allows someone to,
21:36
a device,
21:37
to take a multi-stream,
21:41
MPEG-2 transport stream
21:43
that includes up to a dozen channels
21:45
and lots of other information
21:47
including software
21:48
and say,
21:49
hey, the user wants to watch
21:51
I Love Lucy on Channel 5
21:53
at 2 o'clock.
21:55
What the PID filter does,
21:57
and there's no dispute about this.
21:59
It's like most electronics business.
22:02
There's no dispute about
22:03
what the software and the hardware does.
22:05
The entire multi-program
22:09
MPEG transport stream
22:11
goes through the PID filters
22:13
and the PID filters pick out
22:15
from the entire flow of broadcast data,
22:18
they pick out the audio
22:20
and video segments
22:21
that are associated with
22:23
I Love Lucy at 5 o'clock
22:25
on Channel 5
22:26
and then send them otherwise.
22:28
The question was,
22:29
what they were,
22:31
the question was,
22:32
do we have a media switch
22:34
that parses and separates
22:37
under the meaning of Claim 1,
22:39
we said we do.
22:41
We build this logical index
22:42
that separates the two logically
22:44
and they,
22:45
it's created by using
22:46
a start code detector
22:48
which looks at the segments
22:50
that the PID filters identify
22:52
and finds the start code
22:55
for each independent frame.
22:57
Judge Rader
The header.
22:57
Appellee Attorney
And they,
22:58
and we,
22:59
yes, they set,
23:00
well.
23:00
Judge Rader
Not the video and audio data.
23:02
I mean,
23:03
Appellee Attorney
it's all video and audio.
23:04
Each MPEG segment
23:06
is 188 bits long.
23:09
It includes,
23:10
you know,
23:10
sort of like genes do.
23:12
It includes,
23:12
you know,
23:13
little codes
23:14
that are associated
23:14
with a particular pixel.
23:16
It includes start codes.
23:18
It includes the PID.
23:20
The filter looks through
23:23
the entire data stream,
23:25
identifies those pieces of audio
23:28
and video segments
23:29
that are associated with
23:31
I Love Lucy.
23:31
Judge Rader
But it's all scrambled
23:32
before it hits the PID filter.
23:34
Appellee Attorney
It's,
23:34
it is,
23:35
some of it is scrambled
23:37
and some of it isn't scrambled.
23:38
There are some segments
23:39
that are unscrambled channels
23:39
and some unscrambled channels.
23:41
Judge Rader
The audio and video data
23:42
is clearly scrambled
23:43
before it hits the PID filter.
23:44
Appellee Attorney
It is not.
23:46
There are some programs
23:47
in which
23:48
there is some part
23:50
of the MPEG segment
23:51
that's scrambled
23:52
and some parts
23:53
that aren't.
23:54
But the point is
23:55
that,
23:55
surely,
23:57
Judge Folsom
23:58
was not clearly erroneous
24:00
in concluding
24:01
that the PID filters
24:03
did exactly
24:04
what every single one
24:05
of their experts said.
24:06
I mean,
24:06
if the PID filters
24:08
do not analyze
24:09
broadcast data
24:10
as the claim requires,
24:12
I don't know how
24:13
Dr. Johnson
24:14
and Dr. Rine
24:16
and Dr. Polish,
24:18
their experts,
24:18
could have sworn
24:19
under oath
24:20
that they met
24:21
the limitation
24:22
of the parsing function.
24:25
Judge Rader
But it doesn't say
24:25
broadcast data.
24:26
It says audio
24:27
and video data.
24:29
From
24:30
That's scrambled
24:32
and before
24:33
it hits the PID filter.
24:34
Appellee Attorney
First of all,
24:36
it says,
24:36
it says
24:38
parsing
24:40
parses,
24:40
we're talking about
24:40
claim 31 here,
24:42
parses
24:43
video
24:44
and audio
24:45
data
24:45
from
24:46
said
24:47
broadcast data.
24:48
The entire
24:50
multi-
24:51
multi-stream
24:52
MPEG
24:53
transport
24:53
goes through
24:55
the PID filter
24:55
and
24:57
a PID filter's
24:58
job
24:58
is to identify
25:00
those audio
25:01
and video
25:02
segments
25:02
that are associated
25:03
with a particular program.
25:05
Everyone
25:06
agreed
25:07
that that
25:08
is parsing.
25:10
At trial
25:11
was that
25:12
it doesn't
25:12
involve
25:13
separating
25:14
an audio
25:15
and video
25:16
stream.
25:17
The start
25:18
code detector
25:19
and the index
25:20
did that.
25:21
The jury
25:22
did conclude
25:22
that their
25:24
devices
25:24
because they
25:25
did build
25:26
this logical
25:26
index
25:27
did infringe.
25:29
You reversed
25:30
on the ground
25:31
that separated
25:32
which is
25:33
the claim term
25:34
that was at issue
25:35
actually required
25:36
physical separation
25:37
and not logical
25:40
And the
25:41
law to be
25:42
applied
25:43
in
25:44
before this
25:45
court
25:46
and before the
25:47
district court
25:48
on remand
25:48
was the claims
25:50
as construed
25:51
by the court
25:52
the court
25:53
applied
25:53
How do we know
25:54
Judge Rader
what the jury
25:54
found?
25:55
Appellee Attorney
We
25:56
have no
25:57
there's no way
25:58
to know
25:58
what the jury
25:59
found except
26:00
that we were
26:00
right.
26:01
But the question
26:01
is under
26:02
KSM
26:03
both step
26:04
one and
26:04
step two
26:05
the question
26:06
is whether
26:08
or not there
26:08
is a substantial
26:09
open question
26:10
of infringement
26:11
in light
26:12
of the claims
26:13
as construed
26:15
by the court
26:16
and these
26:17
in this instance
26:18
there are two
26:18
claim elements
26:19
they were both
26:21
construed
26:21
they were not
26:22
appealed
26:22
and the judge
26:23
was not only
26:24
not clearly
26:25
erroneous
26:25
he was clearly
26:26
correct
26:26
in concluding
26:28
that they are
26:28
still met
26:29
under his claim
26:30
construction.
26:31
Thank you.
26:32
I see my
26:32
light is on.
26:32
Judge Lourie
Thank you.
26:33
Chair Rosengrass.
26:36
Appellant Attorney (E. Joshua Rosenkranz)
Yes Your Honor.
26:37
Just a few brief
26:38
points.
26:38
First on the
26:39
disablement
26:40
provision.
26:41
Back in 2006
26:42
there was
26:43
no reason
26:44
at all
26:44
for a judge
26:45
to say
26:46
to Echo Star
26:47
you are a
26:48
recidivist
26:49
you need to be
26:50
disciplined
26:50
in a particular
26:51
way which
26:51
is what
26:52
the spindle
26:53
fabric case
27:00
of the court
27:01
to exceed
27:02
the boundaries
27:03
of the patent
27:04
act which says
27:05
283 says
27:06
that this is
27:07
for preventing
27:08
infringement.
27:09
Secondly back
27:10
in 2006
27:11
TiVo never
27:12
said we need
27:13
to ensure
27:13
that Echo Star
27:15
never designs
27:16
around
27:17
with respect
27:18
to any
27:19
devices
27:20
and certainly
27:20
did not say
27:21
that with
27:22
respect to
27:23
the devices
27:24
that were at
27:25
homes.
27:26
Third the test
27:27
isn't whether
27:28
someone
27:30
squinted and
27:31
imagined that
27:32
this is what
27:32
the injunction
27:33
means.
27:33
The question is
27:35
whether the
27:35
injunction is
27:36
clear and if
27:37
TiVo has to
27:38
have two
27:39
different meanings
27:40
for the words
27:41
infringing products
27:42
depending upon
27:43
where they show
27:44
up in the
27:45
injunction it
27:46
can't possibly
27:47
claim that
27:48
it's reading
27:49
is clear.
27:50
Next TiVo's
27:52
whole theory
27:53
for why
27:54
the disablement
27:55
clause should
27:56
be read that
27:56
way is
27:58
both based
27:59
on a
28:00
misreading of
28:01
the law and
28:02
misreading of
28:03
the context.
28:05
It is
28:06
plainly
28:07
illegal for
28:09
the district
28:10
court to
28:10
order an
28:12
injunction that
28:13
exceeds the
28:13
scope even
28:14
under the
28:15
patent act
28:16
even under
28:16
the theory
28:17
that TiVo
28:19
articulates.
28:20
TiVo's
28:20
theory is
28:21
premised on
28:22
the need to
28:23
compensate for
28:24
past harm
28:25
and 283
28:26
and Johns
28:27
Hopkins which
28:28
TiVo just
28:29
cited says
28:30
exactly the
28:31
opposite and
28:32
I'll read from
28:32
Johns Hopkins
28:33
an injunction is
28:35
not to
28:35
quote fashion
28:36
a meaningful
28:37
remedy for
28:38
past infringement
28:39
end quote or
28:41
to prevent a
28:42
party quote
28:43
from unfairly
28:44
capitalizing
28:45
on its
28:46
infringement
28:47
end quote.
28:49
Finally TiVo
28:53
is just
28:54
wrong when
28:55
it says
28:55
that all of
28:56
the experts
28:57
now moving
28:57
to the
28:59
infringement
28:59
clause that
29:01
all of the
29:01
experts agreed
29:03
that the
29:03
PID filter
29:04
was the
29:04
parser.
29:06
TiVo's
29:06
own expert
29:07
absolutely said
29:09
the exact
29:10
opposite and
29:11
I'll read to
29:11
the court from
29:12
the very page
29:13
that TiVo
29:14
cites.
29:14
This is
29:16
Dr.
29:17
Storer,
29:17
TiVo's
29:18
expert who
29:20
on cross
29:20
examination by
29:22
Echo Star
29:22
said yes
29:23
parsing is
29:25
a type of
29:25
excuse me
29:27
the PID
29:28
filter does
29:28
a type of
29:29
parsing and
29:30
then on
29:31
redirect counsel
29:33
says you
29:34
were asked
29:34
some questions
29:35
about a
29:35
PID filter
29:35
by opposing
29:36
counsel.
29:37
Do you
29:37
remember that?
29:37
I do.
29:38
Were you
29:38
given an
29:39
opportunity to
29:39
explain?
29:40
I'm sorry this
29:40
is on page
29:42
3542 of
29:43
the record.
29:43
Well you
29:44
could tell I
29:45
was a little
29:45
bit frustrated
29:46
with the
29:46
yes or no
29:47
format so
29:47
no I wasn't.
29:48
Then on the
29:49
next page he
29:50
says and so
29:51
inside the
29:52
receiver card
29:53
the input
29:53
section yes
29:54
there's a
29:54
little bit of
29:55
what you
29:55
might call
29:57
separation in
29:58
order to
29:59
perform this
29:59
translation a
30:01
little bit of
30:01
what you
30:02
might call
30:02
even a
30:02
type of
30:03
parsing in
30:04
order to
30:04
pick out the
30:05
correct packets
30:06
but this
30:07
is the key
30:08
just because
30:09
there are
30:09
these are words
30:10
you use to
30:10
describe this
30:11
conversion process
30:12
you shouldn't
30:13
confuse that
30:14
with the claim
30:14
terms which
30:16
by the way is
30:17
exactly what
30:17
the district
30:18
court judge
30:19
did in his
30:20
colorable
30:20
differences
30:21
analysis he
30:23
stopped at the
30:23
notion of
30:24
parsing and
30:25
Judge Rader
30:25
absolutely right
30:26
you can't stop
30:27
there the
30:28
question is not
30:29
does this
30:29
analyze something
30:30
it's does it
30:31
analyze video
30:32
and audio
30:33
data
30:34
if there are
30:35
no further
30:36
questions I
30:36
thank the
30:37
court for its
30:37
attention and
30:38
we respectfully
30:39
request that
30:40
the court vacate
30:41
the injunction
30:41
as to both
30:42
provisions
30:43
thank you