Court Allows EchoStar Patent Suit Against TiVo To Proceed

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A federal court ruled Tuesday that EchoStar's patent-infringement lawsuit against TiVo may proceed, in a case that is separate from the DVR company's still-pending litigation against EchoStar and Dish Network.

The U.S. District Court for the Eastern District of Texas entered an order lifting its stay of EchoStar's patent-infringement suit against TiVo, which alleges TiVo violates U.S. Patent No. 6,208,804 ("Multimedia Direct Access Storage Device and Formatting Method"). Originally, EchoStar said TiVo infringed four patents but three were thrown out.

"We are pleased that the court granted our motion to lift the stay in our patent infringement action against TiVo," EchoStar said in a statement Wednesday. "The patent in this case withstood two re-exam petitions by TiVo seeking to invalidate it. We look forward to the trial."

In a statement, TiVo said it "remains confident that TiVo does
not infringe any of the remaining claims at issue." TiVo also asserted
that "EchoStar has changed its position on the meaning of claim terms"
on the '804 patent.

The EchoStar lawsuit, filed in 2005, is independent of TiVo's lawsuit against EchoStar and Dish in which the satellite operator was found to have violated the TiVo "Time Warp" patent. TiVo is still awaiting a decision from the U.S. Court of Appeals for the Federal Circuit in that suit, after arguments were presented to the court in November 2010. The appeals court is considering whether a Texas district court's injunction ordering the satellite operator to disable millions of DVRs that infringe a key TiVo patent -- as well as the appeals court's subsequent upholding of that injunction and contempt finding -- were appropriate.

EchoStar's suit against TiVo alleged violate of four patents that EchoStar acquired from IBM. The court dismissed EchoStar's patent claims under U.S. Patent No. 6,173,112 ("Method and System for Recording In-Progress Broadcast Programs") as well as claims 21-30 and 32 of U.S. Patent No. 5,774,186 ("Interruption Tolerant Video Program Viewing").

The court in July 2006 issued an order staying the case pending the reexamination by the U.S. Patent and Trademark Office of the remaining claims of the '186 patent as well as the claims of U.S. Patent Nos. 6,529,685 ("Multimedia Direct Access Storage Device and Formatting Method") and the '804 patent. The USPTO subsequently ruled all claims of the '685 and '186 patents were invalid.

Separately, TiVo has patent-infringement lawsuits pending against Verizon
Communications and AT&T
, both of which have countersued the DVR
company.

In addition, TiVo faces two patent lawsuits from Microsoft. The software giant, citing its customer AT&T, last month filed complaints with the U.S. District Court for the Western District of Washington and the International Trade Commission against TiVo, alleging the DVR company infringes four Microsoft patents. That's after Microsoft sued TiVo in a California federal court and intervened on behalf of AT&T in TiVo's lawsuit against the telco, which uses Microsoft's Mediaroom IPTV software.

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