TiVo Patent May Be Invalid
PTO Preliminary Review Rejects 'Time Warp' Claims
by Todd Spangler -- Multichannel News, 8/10/2009 2:00:00 AM
In the latest wrinkle in the years-long legal fracas between Dish Network and TiVo, the U.S. Patent & Trademark Office last week issued a preliminary rejection of two claims in TiVo's so-called “Time Warp” patent.
TiVo said the patent office's action “is a preliminary finding, entered in the normal course before TiVo has had any opportunity to present its views.”
The patent in question is TiVo's “Multimedia Time Warping System” patent, U.S. Patent No. 6,233,389. Granted in May 2001, the patent describes a digital video recorder system that allows for simultaneous storage and playback of TV programming from a cable or satellite source.
In June, the U.S. District Court for the Eastern District of Texas ordered Dish to disable an estimated 4 million DVRs and pay TiVo $103 million in additional damages plus interest, after ruling the satellite-TV operator's workaround still infringed the Time Warp patent. Dish and EchoStar, which provides the DBS operator's technology, appealed that decision and the U.S. Court of Appeals for the Federal Circuit granted Dish's request to stay that order pending appeal.
The patent office, in its Aug. 3 re-examination, was acting on a request by Dish and EchoStar. The PTO said two claims in the '389 patent related to indexing “now appear to be rendered obvious” by prior art in two patents: 6,018,612, granted to Philips for a system that simultaneously stores and plays back a TV program; and 5,949,948, granted to iMedia for a compressed video-playback system.
TiVo said it believes the PTO's preliminary finding “will not affect” EchoStar's appeal of a Texas federal court's ruling finding the satellite operator in contempt of court for infringing the patent.
“[I]t is not unusual for the PTO to provide a preliminary finding of invalidity and to then later find that the claims are valid after hearing an explanation from the patent owner,” TiVo said.
However, Dish and EchoStar said “the PTO's conclusions are highly relevant to the issues on appeal as well as the pending sanctions proceedings in the district court.”
“These software claims are the same claims that EchoStar was found to have infringed in the contempt ruling now pending on appeal,” Dish and EchoStar said in a statement.
Dish Network and EchoStar filed the most recent request with the PTO to review the TiVo patent in November 2008. The satellite operator filed a request in 2005 for a review of the “Time Warp” patent — and the PTO in November 2007 upheld the patent's validity.
TiVo originally sued EchoStar Communications, which last year officially changed its name to Dish Network, in January 2004.
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Maybe someone should remind the USPTO that Tektronix has a prior patent, number 5,438,423, being its Time Warping for Video Viewing and The Grass Valley Group also has prior patent, number 5,012,334, being its Video Image Bank for Storing and Retrieving Video Image Sequences. Read those two patents and it sounds a lot like the TiVo patents. Both of those patents pre-date the Philips and iMedia patents mentioned in the article as the basis for the USPTO decision.
Cory Phaeus - 12/5/2009 12:24:33 AM EST -
Oddly enough, it was ReplayTV - an independent company started by Mosaic (later Netscape) creator Marc Andreessen that was repeatedly sued out of existence by thenetworks and production houses who created TiVo in response. They were terrified that ReplayTV and its promise to let viewers skip over commercials would devastate their ad-based business model. The initial TiVos did not include a skip button - only ReplayTVs did.
ReplayTV was first to market with a DVR (I was on the waiting list for it and got one of the first run models - 10 whole hours of recording time!), but was soon driven to bankruptcy by the deep pockets behind TiVo by basically exhausting their venture capital - and ad budget - on legal fees.
SonicBlue bought the remains and continued the brand - even coming up with a reasonably accurate auto-skip option that keyed on production value differences (e.g. the sudden bump in volume) associated with commercials to automatically jump over commercials and resume the show when they are done, allowing commercial TV to be viewed without commercials.
That triggered another round of lawsuits, ending with the ReplayTV brand being retired in favor of a PC app (hobbist-only use was deemed a reasonable compromise and no real threat to the ad-based business model).
It just seems ironic that TiVo should be struggling for its life by championing a patent that only exists because it was part of an attempt to disrupt and control the very technology that TiVo represents. Getting their patent paperwork approved first was TiVo's only real coup over ReplayTV, whose technology was better and easier to use (many of its features were eventually co-opted by TiVo). The only reason that TiVo prevailed over ReplayTV was that the backers of TiVo spent huge sums of money repeatedly suing ReplayTV out of existence while promoting their brand as the "original DVR"...
Pete Brown - 8/10/2009 8:10:02 AM EDT
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