The U.S. Patent & Trademark Office, acting on a request by Dish Network and EchoStar, on Monday issued a preliminary rejection of two claims in TiVo's so-called "Time Warp" patent at issue in the years-long litigation between the companies.
In a statement, TiVo said the action taken by the patent office "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, which describes a DVR system that allows for simultaneous storage and playback of TV programming from a cable or satellite source.
The patent office, in its Aug. 3 re-examination, 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, in its statement Tuesday, 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.
"This is an initial step in the lengthy process known as 're-examination,' and it 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 Network 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."
"We are pleased that the Patent and Trademark Office issued an initial office action rejecting TiVo's software claims as invalid in light of two prior patents," Dish and EchoStar said in a statement. "These software claims are the same claims that EchoStar was found to have infringed in the contempt ruling now pending on appeal."
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 proposed workaround still infringed TiVo's so-called Time Warp patent. Dish and EchoStar appealed that decision and the U.S. Court of Appeals for the Federal Circuit granted Dish's request to stay that order pending appeal.
Dish Network and EchoStar filed the most recent request with the PTO to review the TiVo patent in November 2008.
Previously, the satellite operator filed a request in 2005 for a review of the "Time Warp" patent -- and the PTO in November 2007 upheld the validity of the patent.
The PTO's Aug. 3 re-examination of the TiVo patent can be accessed here.
The litigation between TiVo and EchoStar dates back to 2004, when TiVo sued EchoStar Communications for patent infringement. (EchoStar last year officially changed its name to Dish Network.) A federal jury found in TiVo's favor, and the Texas court originally ordered Dish to disable all infringing DVRs in August 2006.