TiVo-EchoStar Patent Dispute Heats Up


The long-running patent-infringement battle between TiVo Inc. and EchoStar Communications Corp. is heating up again.

In a court filing Monday, TiVo asked U.S. District Judge David Folsom to shut down a competing digital-video-recorder from the direct-broadcast satellite provider, following up on a ruling in TiVo’s favor in April, in a trial that Folsom oversaw.

EchoStar countered by claiming that the United States Patent and Trademark Office Tuesday rejected several TiVo patents as invalid.

“That re-examination ruling, together with the favorable decision from the Court of Appeals earlier this month (finding that the Texas court abused its discretion in connection with key trial evidence withheld from the jury), are steps in the right direction as we prepare our response to TiVo's recently filed injunction motion,” EchoStar said in a prepared statement.

“Similarly, the favorable U.S. Supreme Court decision last week in the eBay [Inc.] patent-injunction case will be considered as part of the long process ahead,” the DBS operator added.

TiVo quickly countered with a prepared statement of its own.

“The level of misleading spin that EchoStar is putting out with respect to our patent case against them is quite extraordinary,” the DVR vendor said. “We are pleased to state that the USPTO issued its first office action in the re-examination. The USPTO re-examined all 61 claims set forth in the Barton patent confirming the validity of most of the claims, including two of the claims that EchoStar has been found to have willfully infringed.”

The TiVo statement continued, “In the office action, the USPTO expressly rejected the invalidity arguments put forward by EchoStar. While certain of the patent claims were rejected by the patent office, this should in no way impact the jury verdict. We will now be given an opportunity with the patent office to discuss our claims, which, we believe, should result in a reaffirmed and strengthened patent. We will provide a real understanding of how this process works on our earnings call after close of market [Wednesday].”

In other TiVo news, the company reported its financial results for its fiscal first quarter ended April 30.

The vendor said costs associated with litigation, more aggressive price offerings and the expensing of stock options caused its net loss to skyrocket to $10.7 million, or $0.13 per share, versus $857,000 ($0.01) in the previous-year period.

TiVo-owned subscription gross additions were 91,000 for the quarter compared with 104,000 in the first quarter of last year.