On Tuesday, November 9, 2010, the United States Court of Appeals for the Federal Circuit heard oral arguments in TiVo, Inc. v. EchoStar Corp. The case pits TiVo versus Dish, and any ruling from the Federal Circuit will necessarily define the extent to which a district court judge can rely on contempt proceedings to enforce an injunction rather than simply order a full blown new trial. In process the en banc oral argument in this case at the Federal Circuit did not substantially differ from the oral argument held at the Supreme Court the day earlier in the Costco copyright case, where the Supreme Court was struggling with the meaning of the phrase “lawfully made under this Title.” There are two phrases that will be at the center of resolving the TiVo case. The first is “fair ground of doubt,” and the second is “merely colorably different.”
Several weeks ago TiVo filed its brief in the matter of Tivo, Inc. v. EchoStar Corp., which will be heard en banc by the United States Court of Appeals for the Federal Circuit on Tuesday, November 9, 2010. The dispute between TiVo and EchoStar dates back to 2004 when TiVo sued EchoStar in the United States District Court for the Eastern District of Texas, alleging that its receivers infringe “hardware” claims (claims 1 and 32) and “software” claims (claims 31 and 61) of US Patent No. 6,233,389. The jury found there was willful infringement and the district court entered an injunction ordering EchoStar to cease infringing. It is this injunction that now is at the root of the dispute to be heard by the Federal Circuit. TiVo did not believe EchoStar lived up to the Order of the district court. The district court, seemingly out of an abundance of caution, decided not to utilize its summary contempt powers but held a year long proceeding to determine if infringement was ongoing. The district court found EchoStar was violating the injunction Order and acted accordingly. EchoStar appealed and argued that only a full patent infringement trial would suffice. The panel sided with TiVo over a strong dissent by Judge Rader, now Chief Judge of the Federal Circuit, who felt the summary proceedings were inadequate. For more see Looking Ahead to TiVo v. Dish at the Federal Circuit. So as the full Federal Circuit hears this case it is anticipated that the inherent powers of a district court to enforce their own Orders and administer justice will be front and center.
The United States Court of Appeals for the Federal Circuit announced back in May that they would take up the matter of Tivo, Inc. v. EchoStar Corp. en banc, and then subsequently set the oral argument date for Tuesday, November 9, 2010. November 9, 2010 will be a busy day for the Federal Circuit indeed. On this first anniversary of the Bil ski oral arguments at the United States Supreme Court the Federal Circuit has scheduled two en banc hearings. Second up on November 9, 2010 will be Tivo v. EchoStar, first up will be Therasence v. Becton, both cases of great importance. We will be following both cases closely, and I will be in attendance in the gallery and offering eyewitness accounts that afternoon. In the meantime, however, let the punditry, analysis and gossip begin. First up — TiVo v. Echostar, which will decide the limitations (if any) on a district court’s ability to use contempt proceedings to enforce a permanent injunction in a patent case when there is an alleged work-around.
TiVo, Inc. (NASDAQ: TIVO), owner of U.S. Patent 6,233,389, titled “Multimedia Time Warping System,” was a big winner today at the United States Court of Appeals for the Federal Circuit when the CAFC handed down its decision in Tivo, Inc. v. EchoStar Corp. A majority of the 3 judge panel hearing the case agreed with the district court and ratified the contempt order against EchoStar (NASDAQ: SATS) and Dish Network (NASDAQ: DISH). EchoStar’s business focuses on digital Set-Top Boxes and and Satellite Services, and was spun-off from DISH Network on January 1, 2008. The patented technology involved allows television users to simultaneously record and play television broadcasts using what is commonly known as a digital video recorder. On news of the Federal Circuit ruling TiVo stock immediately surged ahead well over $5, up over 50%. Within less than 1 hour TiVo stock when from trading just over $10 a share, trading at $10.31 at 11:06 am EST, to trading at $16.07 at 11:42 am EST, hitting an intra-day high at 1:18pm EST at $16.36, and establishing a trading range plus or minus $15.65, where it is at as of 2:46pm EST.