Patent Office Upholds TiVo Victory Over EchoStar
'Time Warp' Patent Valid
By Linda Moss -- Multichannel News, 11/29/2007 9:22:00 AM
In another victory for TiVo and blow to EchoStar, the U.S. Patent Office has upheld the validity of the DVR maker’s patent for the simultaneous recording and viewing of TV channels.
After re-examining TiVo’s so-called “Time Warp” patent, the patent office has essentially upheld the DVR maker’s rights under that patent, according to TiVo.
EchoStar had asked the patent office to reexamine TiVo’s Time Warp patent back in 2005, which was before a patent-infringement trial on the patent, according to Matthew Zinn, TiVo’s general counsel and senior vice president.
“Now, it would be very difficult for anyone to question the validity of our patent,” Zinn said.
In the trial, TiVo was awarded a $94 million judgment from EchoStar for damages and interest in the patent-infringement case involving the Time Warp function. The satellite provider is appealing that Texas jury verdict, which was rendered in April 2006 against it. EchoStar has won a stay of an injunction that barred it from distributing DVRs with the technology that’s in dispute, pending the appeal.
“We are extremely pleased that the PTO has now found all the claims of the Time Warp Patent to be valid after conducting a reexamination of the patent requested by EchoStar,” TiVo said in a statement Thursday.
“This decision by the PTO is final and not appealable by EchoStar,” TiVo said. “Today’s decision by the PTO brings us another step closer to ending EchoStar’s continued infringement and we are hopeful that the U.S. Court of Appeals for the Federal Circuit will uphold the district court judgment of patent infringement and reinstate the injunction.”
According to Zinn, “What this does is remove another obstacle for the resolution of this case.”
EchoStar issued its own statement Thursday. “We are disappointed in the Patent and Trademark Office’s decision,” the satellite provider said. “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.”
The U.S. Court of Appeals heard oral arguments on EchoStar’s appeal last month, and the satellite provider and TiVo are awaiting the panel’s ruling.
