TiVo Patent May Be Invalid


In the latest wrinkle in the years-long legal fracas between Dish Network and TiVo, the U.S. Patent & Trademark Office last week issued a preliminary rejection of two claims in TiVo's so-called “Time Warp” patent.

TiVo said the patent office's action “is a preliminary finding, entered in the normal course before TiVo has had any opportunity to present its views.”

The patent in question is TiVo's “Multimedia Time Warping System” patent, U.S. Patent No. 6,233,389. Granted in May 2001, the patent describes a digital video recorder system that allows for simultaneous storage and playback of TV programming from a cable or satellite source.

In June, the U.S. District Court for the Eastern District of Texas ordered Dish to disable an estimated 4 million DVRs and pay TiVo $103 million in additional damages plus interest, after ruling the satellite-TV operator's workaround still infringed the Time Warp patent. Dish and EchoStar, which provides the DBS operator's technology, appealed that decision and the U.S. Court of Appeals for the Federal Circuit granted Dish's request to stay that order pending appeal.

The patent office, in its Aug. 3 re-examination, was acting on a request by Dish and EchoStar. The PTO 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.

TiVo said it believes the PTO's preliminary finding “will not affect” EchoStar's appeal of a Texas federal court's ruling finding the satellite operator in contempt of court for infringing the patent.

“[I]t is not unusual for the PTO to provide a preliminary finding of invalidity and to then later find that the claims are valid after hearing an explanation from the patent owner,” TiVo said.

However, Dish and EchoStar said “the PTO's conclusions are highly relevant to the issues on appeal as well as the pending sanctions proceedings in the district court.”

“These software claims are the same claims that EchoStar was found to have infringed in the contempt ruling now pending on appeal,” Dish and EchoStar said in a statement.

Dish Network and EchoStar filed the most recent request with the PTO to review the TiVo patent in November 2008. The satellite operator filed a request in 2005 for a review of the “Time Warp” patent — and the PTO in November 2007 upheld the patent's validity.

TiVo originally sued EchoStar Communications, which last year officially changed its name to Dish Network, in January 2004.