Federal Judiciary

Contempt! Court Grants TiVo's Motion Against Echostar

By Michael C. Smith

No, not that Contempt, (although both will steam up your DVR something awful). 

Chief Judge Folsom today granted TiVo's motion asking to have Echostar declared in contempt of his permanent injunction.  He set a briefing schedule for any motions for sanctions and set a hearing on the issue of sanctions for July 28, 2009, with each side given thirty minutes.

The opinion is 35 pages long, and begins with a lengthy recitation of contempt law as it applies to patent cases, specifically the KSM Fastening case, .  It then discusses what happened factually in this case as far as Echostar's modifications to its software (the alleged "design around"), whether the modifications rendered the software more than colorably different, whether it continues to infringe, and what to do about TiVo's alleged facial violation of the court's order.

One of the Court's findings is that while it found that even as modified the software still infringed, it would have held Echostar in contempt anyway because it never complied with the injunction's requirement that DVR functionality be disabled after that injunction took effect following the Federal Circuit's affirmance of the case (notably Echostar never appealed the injunction).  The injunction required that DVR functionality be disabled, not that infringing DVR fnctionality be disabled.  (Echostar had claimed that since it had downloaded a software update that eliminated the infringing nature of the functionality, it was not in violation).  "Instead of requesting review of this Court?s order by itself or another court, EchoStar merely ignored this Court?s order because it subjectively believed it to be improper or overly broad. This cannot be allowed," the Court wrote.  "A party may not unilaterally decide whether it will or will not comply with a court order."

"The harm caused to TiVo by EchoStar?s contempt is substantial," the Court concluded.  "EchoStar has gained millions of customers since this Court?s injunction issued, customers that are now potentially unreachable by TiVo. See Dkt. No. 773 at 10. As this Court has noted in the past, ?loss of market share and of customer base as a result of infringement cause severe injury,? and ?every day of Defendant?s infringement affects Plaintiff?s business.? Id. at 10-11. Although EchoStar requests that this Court stay its injunction further, this Court declines to do so. EchoStar has escaped this Court?s injunction for over two years and further delay will be manifestly unjust to TiVo and cause TiVo substantial harm."

But nary a reference to Brigitte Bardot.  Sigh.

Full post as published by Eastern District of Texas Federal Court Practice on June 02, 2009 (boomark / email).