Dish: PTO Decision On TiVo's Patent Provides Grounds For Retrial

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Dish Network is arguing that the U.S. Patent and Trademark Office ruling earlier this month validating TiVo's Time Warp DVR patent actually provides grounds for why the satellite TV operator should not have been held in contempt by a lower court for violating the patent -- and Dish says a new trial now is warranted.

The satellite operator outlined its position in a letter Monday to the U.S. Court of Appeals for the Federal Circuit, which is undertaking a full-court ("en banc") review of the previous contempt ruling in TiVo's patent-infringement case against Dish and EchoStar. Dish had been ordered to disable an estimated 8 million DVRs, which a Texas federal court said infringed the Time Warp patent.

The PTO on Oct. 6 affirmed the validity of TiVo's DVR patent, reversing the agency's ruling this summer -- after a second re-examination requested by EchoStar and Dish Network -- that the patent was invalid because some of the claims were covered in two prior patents.

But according to Dish, the decision validating the TiVo patent in question -- U.S. Patent No. 6,233,389 ("Multimedia Time Warping System") -- narrowed the scope of the DVR company's previous claims.

"To save its patent from being invalidated, TiVo made statements to the PTO that give rise to a ‘prosecution disclaimer' narrowing the scope of the claims," Dish said in a statement Tuesday. "Because TiVo has never shown that any Dish Network product infringes these narrowed claims, we believe that the contempt order should be reversed, the injunction lifted, and a new trial ordered on whether we infringe TiVo's new substantially narrower claims."

In statement Tuesday responding to the Dish letter, TiVo said: "The PTO recently upheld the claims of the '389 patent for the third time. The PTO's reexamination proceeding has no direct bearing on the issues now before the en banc court. This is just another attempt by EchoStar to delay resolution of this case."

TiVo originally sued EchoStar Communications in January 2004.

Dish and EchoStar have already paid TiVo $104.6 million in initial damages after the U.S. Supreme Court declined to review the case in 2008, and has been ordered to pay additional damages and contempt sanctions.

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