Advancing a Free Society

The importance of finality in patent litigation

Wednesday, December 8, 2010

Does "no" mean no when courts enforce patents? It should. But that's an open question today. It was debated last month before a full session of the court that hears most patent appeals, the U.S. Court of Appeals for the Federal Circuit, in Washington.

The case is TiVo v. EchoStar, and it focuses on TiVo Inc.'s revolutionary, time-shifting technology for letting us watch the TV shows we want, when we want, rather than when they're broadcast live. TiVo invented that technology. After the usual multiyear patent trial, EchoStar Corp. was found to have willfully infringed the valid patent. The trial court thought it wrapped up that case with a judgment that included an order that EchoStar turn off the key time-shifting feature — a digital video recorder (DVR) — of those set-top receiver boxes EchoStar had convinced customers to buy and install in their homes. These boxes were like mini-Trojan horses into which EchoStar could stream TV service for an ongoing subscription price much greater than the price for the box.

Turning off DVR functionality in the installed infringing boxes is a crucial part of the remedy because it helps neuter the predatory gains that EchoStar was able to hoard by flooding customers' homes with infringing products at such low prices. Letting these boxes continue to be both receivers and DVRs would violate one of the most famous equitable maxims: "No one shall be permitted to take advantage of his own wrong."

Continue reading Scott Kieff in the National Law Journal