TiVo stands to get at least $300 million from Dish Network and EchoStar -- and potentially even more -- after the U.S. Court of Appeals for the Federal Circuit on Thursday denied the satellite operator's request to overturn a lower court ruling finding it in contempt of an order to disable DVRs that were found to infringe a key TiVo patent.
Dish and EchoStar, in a joint statement, said they would seek review of the decision by the full Federal Circuit. The companies said DVR customers are currently not affected.
"We are disappointed in the Federal Circuit's split decision, but are pleased that Judge Rader agreed with our position. Therefore, we will be seeking en banc review by the full Federal Circuit," Dish and EchoStar said. "We also will be proposing a new design-around to the district court for approval. At this time, our DVR customers are not impacted."
TiVo said in a statement, "We are pleased that the United States Court of Appeals for the Federal Circuit fully affirmed the district court's finding of contempt against EchoStar, including both the disablement and infringement provisions. Additionally, this ruling paves the way for TiVo to receive the approximately $300M in damages and contempt sanctions awarded to us for EchoStar's continued infringement through July 1, 2009. We will also seek further damages and contempt sanctions for the period of continued infringement thereafter. We will continue our efforts to protect our intellectual property from further infringement."
The case dates to January 2004, when TiVo sued EchoStar Communications for patent infringement. (EchoStar in 2008 officially changed its name to Dish Network.) A federal jury found in TiVo's favor, and the U.S District Court for the Eastern District of Texas originally ordered Dish to disable all infringing DVRs in August 2006.
In June 2009, a federal judge in the Texas court found Dish Network in contempt for violating a court order to stop using TiVo's "Time Warp" digital video recording patent and awarded the DVR company an additional $103 million, plus interest. In September 2009, the Texas court ordered Dish and EchoStar to pay about $200 million in additional damages and contempt sanctions.
EchoStar and Dish have already paid TiVo $104.6 million in initial damages plus those accrued through Sept. 8, 2006, with interest, after the U.S. Supreme Court declined to review the case in 2008.