Patent Office Lets TiVo Do The 'Time Warp' Again
 

Agrees To Re-Examine TiVo 'Time Warp' DVR Patent In EchoStar Battle

By Linda Moss -- Multichannel News, 1/14/2009 8:41:00 AM

The U.S. Patent and Trademark Office has agreed to re-examine one of TiVo’s DVR “time warp” patents, one that company claims EchoStar is violating in contempt of a court order.

TiVo won a major patent-infringement case against EchoStar back in April 2006 in Texas, and in October the set-top maker paid TiVo $104.6 million in damages and interest stemming from that jury verdict.

EchoStar maintains that it developed a legal workaround for the TiVo patent, by creating new software and downloading it to its DVRs, which are used by Dish Network subscribers. But TiVo claims that EchoStar is still infringing on its patent, and should be held in contempt of court.

But U.S. patent officials have now raised questions about TiVo patent claims, and will take another look at them at EchoStar’s request. 

"We are pleased that the Patent and Trademark Office granted our Petition for Re-Examination of the software claims of TiVo's '389 patent, which are the subject of TiVo's current motion for contempt,” EchoStar and Dish Network said in a joint statement Tuesday. “The PTO found that there is a 'substantial new question' of patentability as to the software claims in light of prior patents that appear to render TiVo's '389 patent invalid as obvious."

The TiVo patent in question is U.S. Patent 6,233,389, which covers a system that “allows the user to store selected television broadcast programs while the user is simultaneously watching or reviewing another program.”

TiVo issued a response to the patent office’s decision and EchoStar’s comments Wednesday, denying that any substantive findings had been made.

"EchoStar's latest tactic follows numerous failed attempts to invalidate TiVo’s  groundbreaking Time Warp patent,” TiVo said in its statement. “In 2006, the District Court rejected all of EchoStar's validity challenges after a full jury trial and the judgment of validity was affirmed by the Federal Circuit in 2008.”

TiVo said, “The USPTO also conducted a prior reexamination of the Time Warp Patent at EchoStar's request, which concluded on Nov. 11, 2008, with the USPTO issuing a Reexamination Certificate confirming the validity of all of the claims of the Time Warp Patent without any change. EchoStar's latest request for reexamination is based on a combination of two prior art references that were both already submitted to the USPTO in connection with the earlier reexamination. The USPTO grants most patent reexamination requests. Contrary to EchoStar's statement, the USPTO made no substantive findings. We are confident that the USPTO will once again confirm the validity of all of the claims of the Time Warp patent.”

Last May, Dish Network filed its own federal lawsuit asking the courts to rule that its new DVR softeware doesn’t infringe on TiVo’s patent.

U.S. District Court Judge David Folsom in November set hearings next month, Feb. 17 and 18, on TiVo’s claim that EchoStar’s set-tops are still infringing on its patent, in contempt of court.

Sanford Bernstein analyst Craig Moffett wasn't sure how this latest development would play out, offering this assessment in a report Wednesday: “It is unclear how quickly the U.S. PTO will issue findings of this latest re-examination of the TiVo patent, and it is similarly unclear how, or if, this latest development might impact the timeline for the enforcement phase of TiVo's claims against Dish Network.” .