Patent Office: TiVo's 'Time Warp' Is Invalid

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The U.S. Patent and Trademark Office has ruled that TiVo's "Time Warp" DVR patent -- which is at the heart of the company's years-long litigation against Dish Network and EchoStar -- is invalid in light of two prior-art references.

The patent in question is TiVo's "Multimedia Time Warping System," U.S. Patent No. 6,233,389, which describes a DVR system that allows for simultaneous storage and playback of TV programming from a cable or satellite source.

In a statement, TiVo downplayed the decision, calling the PTO's action "just one of several steps in the review process." The patent office reexamination was prompted by a review request by Dish and EchoStar.

"We will continue to work with the PTO to explain the validity of the claims under review," the DVR company said Tuesday. "It is important to note that TiVo received a ‘final action' holding several claims invalid during EchoStar's first reexamination request at this juncture only to have the PTO ultimately uphold the validity of all claims of the patent."

TiVo also asserted that the PTO proceeding is "separate and apart" from the ongoing litigation against Dish and EchoStar.

The U.S. Court of Appeals for the Federal Circuit is currently undertaking a full-court (or "en banc") review of a previous ruling in TiVo's patent litigation against Dish and EchoStar. That granting of the en banc review vacated the March 4 appeals court opinion, which denied Dish/EchoStar's request to overturn a Texas federal district court's ruling finding Dish and EchoStar in contempt of an order to disable DVRs that were found to infringe the "Time Warp" patent.

Dish Network and EchoStar Technologies in a joint statement said, "We are pleased the Patent and Trademark Office issued a Final Office Action maintaining its rejection of the software claims of TiVo's patent. These software claims are the same claims that EchoStar was found to have infringed in the contempt ruling now pending for en banc review by the Federal Circuit."

Under PTO procedures, a patent that has been rejected after a review continues to be valid and enforceable until all appeals by the patent-holder are exhausted. TiVo can appeal the decision to the U.S. Patent and Trademark Office's Board of Patent Appeals and Interferences, and, if that fails, can appeal the matter through the federal court system.

The U.S. Patent and Trademark Office, in its August 2009 preliminary reexamination of the patent requested by Dish and EchoStar, 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.

Dish Network had filed a previous request in 2005 for a review of the "Time Warp" patent, and the PTO in November 2007 -- under a review by a different examiner -- upheld the patent's validity.

TiVo originally sued EchoStar Communications in January 2004. The patent office granted TiVo the "Time Warp" patent on May 15, 2001.

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