NOTE: This disposition is nonprecedential. 

United States Court of Appeals 

for the Federal Circuit 

__________________________ 

TIVO INC., 

Plaintiff-Appellee, 

v. 

ECHOSTAR CORPORATION, 

ECHOSTAR DBS CORPORATION, 

ECHOSTAR TECHNOLOGIES CORPORATION, 

ECHOSPHERE LIMITED LIABILITY COMPANY, 

ECHOSTAR SATELLITE LLC, 

AND DISH NETWORK CORPORATION, 

Defendants-Appellants. 

__________________________ 

2009-1374 

__________________________ 

Appeal from the United States District Court for the 

Eastern District of Texas In Case No. 2:04-CV-01, Chief 

Judge David Folsom. 

__________________________ 

ON MOTION 

__________________________ 

Before RADER, Chief Judge, NEWMAN, MAYER, LOURIE, 

BRYSON, GAJARSA, LINN, DYK, PROST, MOORE, O’MALLEY, 

and REYNA, Circuit Judges. 

LOURIE, Circuit Judge. 

O R D E R 

The parties jointly move to dismiss this appeal due to 

settlement. 
TIVO v. ECHOSTAR 2

This court issued its en banc decision and opinion in 

this case on April 20, 2011. The judgment affirmed in 

part, vacated in part, and remanded for additional proceedings. In part, we affirmed the district court’s exercise 

of its discretion to impose sanctions against the appellants. 

On May 2, 2011, prior to this court’s issuance of the 

mandate, the parties informed us that they had settled 

the case on April 29, 2011, and asked us to dismiss the 

appeal. The parties did not inform us that they had 

settled the matter before issuance of our decision nor do 

they inform us that they had agreed to a disposition of the 

matter dependent upon our decision. It is clear that if the 

parties had entered into such an agreement before issuance of our decision, it was counsel’s duty to inform this 

court of the agreement. Board of License Comm’rs of 

Tiverton v. Pastore, 469 U.S. 238, 240 (1985); see also

Arizonans for Official English v. Arizona, 520 U.S. 43, 68 

n.23 (1997) (citing Pastore) (“It is the duty of counsel to 

bring to the federal tribunal's attention, ‘without delay,’ 

facts that may raise a question of mootness.”) (emphasis 

in original). Clearly, they did not settle before our decision. 

Our judgment vacated in part, affirmed in part, and 

remanded to the district court. If we were to grant the 

parties’ motion, the judgment would be that the appeal is 

dismissed. Although the parties do not ask us to vacate 

our decision, at this stage, days before issuance of a 

mandate, we determine that granting the motion to 

dismiss, which would result in a modification or vacatur 

of our en banc judgment, is neither required nor a proper 

use of the judicial system. Miller v. Anderson, 268 F.3d 

485, 486 (7th Cir. 2001) (during rehearing stage, denying 

motion to dismiss appeal due to settlement; “the court will 

not dismiss an appeal after the appeal has been decided”); 

see also U.S. v. Payton, 593 F.3d 881 (9th Cir. 2010) 

(denying vacatur and dismissal of appeal when mootness 

arose after appellate court’s opinion issued); Show-
3 TIVO v. ECHOSTAR

time/The Movie Channel, Inc. v. Covered Bridge Condominium Ass’n, Inc., 895 F.2d 711, 713 (11th Cir. 1990) 

(stating that “a motion to dismiss an appeal and to withdraw a decision and opinion once published [should be 

granted] only in rare cases and for valid reason”). 

The parties are of course free upon our remand to the 

district court to request that the district court dismiss the 

complaint and vacate its previously imposed sanctions 

because they have settled the underlying matter.∗

 However, consistent with our sister circuits, we conclude that 

we should not dismiss the appeal after it has been decided. 

 Accordingly, 

IT IS ORDERED THAT: 

The motion to dismiss is denied. The mandate will issue in due course. 

FOR THE COURT

May 10, 2011 

—————————— 

Date 

/s/ Jan Horbaly 

—————————— 

Jan Horbaly 

Clerk 

 ∗

 Of course, the district court would have no jurisdiction to do either unless and until we return the case to 

its docket. See Showtime, 895 F.2d at 713. 
TIVO v. ECHOSTAR

4

cc: E. Joshua Rosenkranz, Esq. 

Seth P. Waxman, Esq. 

Edward A. Pennington, Esq. 

Robert Patrick Merges, Esq. 

Matthew D. McGill, Esq. 

Seth D. Greenstein, Esq. 

Edward R. Reines, Esq. 

Christopher J. Kelly, Esq. 

Philip J. Graves, Esq. 

Raymond Millien, Esq. 

Elaine J. Goldenberg, Esq. 

Matthew Schruers, Esq. 

Rodney A. Cooper 

Richard A. Epstein, Esq. 

Gary M. Hoffman, Esq. 

Scott A.M. Chambers, Esq. 

Alexander C.D. Giza, Esq. 

Bruce A. Lehman, Esq. 

Philip S. Johnson, Esq. 

Herbert C. Wamsley, Esq. 

Mark J. Abate, Esq. 

William P. Nelson, Esq. 

Michael K. Kellogg, Esq. 

Willard K. Tom, Esq. 

Paul D. Clement, Esq.