TiVo Claims Progress in Patent Dispute with EchoStar

U.S. Patent and Trademark Office: TiVo’s Time Warp Patent Still Valid

By Glen Dickson -- Broadcasting & Cable, 11/29/2007 4:19:00 PM

Digital-video-recorder supplier TiVo said a successful review of its “Time Warp Patent” by the U.S. Patent and Trademark Office strengthened its case in its patent-infringement lawsuit against satellite-TV operator EchoStar Communications.

TiVo has long maintained that DVRs used by EchoStar Dish Network customers infringe on its Multimedia Timewarping System patent, U.S. Patent No. 6,233,389.

In August 2006, a Texas-based U.S. District Court judge agreed and issued an injunction that called for EchoStar to shut down its DVR service within 30 days and pay TiVo $89.6 million in damages. EchoStar quickly appealed the decision to the U.S. Court of Appeals and secured a stay of the injunction for the length of its appeal, which meant no disruption in DVR service to its customers.

In its appeal, EchoStar claimed that the Texas court made significant errors during the trial process. And as part of the process, EchoStar also asked the U.S. Patent and Trademark Office to re-examine the validity of the Time Warp Patent.

Apparently, that move did nothing to weaken TiVo’s position, as the agency found the Time Warp Patent’s claims to still be valid.

“We are extremely pleased that the PTO has now found all claims of the Time Warp Patent to be valid after conducting a re-examination of the patent requested by EchoStar,” TiVo said in a statement. “This decision by the PTO is final and not appealable by EchoStar. Today's decision by the PTO brings us another step closer to ending EchoStar's continued infringement, and we are hopeful that the United States Court of Appeals for the Federal Circuit will uphold the district-court judgment of patent infringement and reinstate the injunction."

For its part, EchoStar said it isn’t happy with the PTO’s decision but doesn’t believe that it hurts its case.

“We are disappointed in the Patent and Trademark Office’s decision,” EchoStar said in a statement. “The decision, however, does not impact in any way our pending appeal to the Federal Circuit. We are hopeful that the Federal Circuit will reverse the district court and find that we do not infringe TiVo’s patent.”