--Patent Is at Center of Litigation between TiVo and DISH Network/EchoStar
The US Patent and Trademark Office (USPTO) has provisionally rejected two of the claims in TiVo's so-called "Time Warp" patent (US #6,233,389), which is at the center of a long-running lawsuit that the company has brought against DISH Network and the latter's spin-off company, EchoStar. (Note: the judge in the case, David Folsom, recently found DISH Network and EchoStar to be in contempt of court for having continued to infringe upon the TiVo patent via a supposed "workaround," and ordered DISH Network to disable nearly 4 million of its DVR's--a ruling that was subsequently stayed--and to pay TiVo an additional $103 million, plus interest, in damages. It recently came to light that TiVo is seeking an additional $1 billion in damages from DISH and EchoStar: that figure was revealed in a July 13th filing by the latter companies in response to a June 26th sealed motion by TiVo, in which the DVR vendor laid out its case for the sanctions that should be imposed on DISH and EchoStar for having been ruled in contempt of court--for more on the history of the case, see the articles published on itvt.com, June 3rd, June 17th and July 16th.) According to the USPTO, two of the claims in the patent appear to be covered by earlier patents filed by Philips (US #6,018,612: "Arrangement for storing an information signal in a memory and for retrieving the information signal from said memory") and iMedia (#5,949,948: "Method and apparatus for implementing playback features for compressed video data"). The USPTO's reexamination of the "Time Warp" patent (alternatively referred to as the "Barton Patent") was requested by DISH Network and EchoStar last November, even though a reexamination that they had requested in 2005 had upheld the patent's validity.
TiVo, DISH Network and EchoStar immediately issued responses to the USPTO's finding: TiVo, pointing out that the USPTO upheld the validity of the patent in its earlier review, downplayed it as "a preliminary finding, entered in the normal course before TiVo has had any opportunity to present its views. TiVo believes that the PTO's preliminary finding will not affect EchoStar's appeal of the June 2009 ruling by the United States District Court for the Eastern District of Texas finding EchoStar to be in contempt of court," the response continued. "This is an initial step in the lengthy process known as 'reexamination,' 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. Indeed, this is precisely what happened with the first reexamination of the Barton Patent that EchoStar filed in 2005. Among other things, the next step in the reexamination process provides TiVo, for the first time, the opportunity to discuss and distinguish the references presented by EchoStar, and to present new claims." DISH Network and EchoStar, meanwhile, issued the following statement: "We are pleased that the Patent and Trademark Office (PTO) issued an initial office action rejecting Tivo's [sic] software claims as invalid in light of two prior patents. These software claims are the same claims that EchoStar was found to have infringed in the contempt ruling now pending on appeal. We believe that the PTO's conclusions are highly relevant to the issues on appeal as well as the pending sanctions proceedings in the district court."
