Tivo’s ‘Time Warp’ Hits Wall


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 six-year-old 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

In a statement, TiVo downplayed
the decision — made following
a review request by Dish
and EchoStar — calling the PTO’s
action “just one of several steps
in the review process.”

“We will continue to work with
the PTO to explain the validity
of the claims under review,” the
DVR company said. “It is important
to note that TiVo received
a ‘final action’ holding several
claims invalid during Echo-
Star’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.”

A patent that has been rejected
after a review continues to be
valid and enforceable until all
appeals by the patent-holder are

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

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.