The U.S. Patent and Trademark Office on Wednesday affirmed the validity of TiVo's so-called Time Warp 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.
TiVo's stock price shot up 9.7% for the day, to close at $10.08 per share Wednesday.
The decision by the PTO is final and cannot be appealed by Dish/EchoStar. Dish and EchoStar declined to comment on the latest ruling.
The Time Warp patent is central to TiVo's patent-infringement litigation against Dish and EchoStar, which dates back to January 2004. The patent, U.S. Patent No. 6,233,389 ("Multimedia Time Warping System"), describes a DVR system that allows for simultaneous storage and playback of TV programming from a cable or satellite source.
Currently, the U.S. Court of Appeals for the Federal Circuit is undertaking a full-court ("en banc") review of a previous ruling in TiVo's case against Dish and EchoStar. That prior decision by the appeals court denied Dish/EchoStar's request to overturn a Texas federal district court's ruling finding Dish and EchoStar in contempt of its order to disable an estimated 8 million DVRs which the court said infringed the Time Warp patent.
In a statement, TiVo said, "We are pleased that the United States Patent and Trademark Office has reaffirmed the validity of all claims of the Time Warp Patent at issue in the second re-examination of the patent at the request of EchoStar.... Today's decision further validates our IP and brings us closer to ending EchoStar's ongoing infringement."
TiVo added in its statement Wednesday that "we remain confident that the United States Court of Appeals for the Federal Circuit will uphold and enforce an injunction against EchoStar's ongoing willful infringement of the Time Warp Patent."
In 2005, Dish had filed a request 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.
In the second re-examination requested by Dish and EchoStar, in August 2009 the PTO issued a preliminary finding that two claims in the '389 patent related to indexing "now appear to be rendered obvious" by prior art in two patents: U.S. Patent No. 6,018,612, granted to Philips for a system that simultaneously stores and plays back a TV program; and U.S. Patent No. 5,949,948, granted to iMedia for a compressed video-playback system.