The Patent office is re-examining the validity of TiVo's 'Time Warp' patent, giving EchoStar and Dish a glimmer of hope in the DVR case

Jeff Baumgartner, Senior Editor

January 14, 2009

2 Min Read
EchoStar, TiVo Play Patent Ping Pong

In the latest round of a long-running legal bout between Dish Network LLC (Nasdaq: DISH), its EchoStar Corp. LLC (Nasdaq: SATS) spinoff, and TiVo Inc. (Nasdaq: TIVO), the U.S. Patent and Trademark Office (PTO) on Tuesday said it would reexamine the validity of TiVo's "Time Warp" patent.

In the most recent chapter of this litigiously charged drama, the U.S. Supreme Court shot down Dish's appeal last fall. In turn, Dish agreed to pay TiVo about $104 million -- the amount of the original jury award in 2006, plus interest. (See High Court Denies Dish.)

To further recap, TiVo has argued that Dish's DVR software workaround still infringes on the Time Warp patent, but the U.S. District Court in Texas has not made a final ruling on that contempt of court hearing. An "evidentiary hearing" on the matter is scheduled for Feb. 17 and 18. Dish is also suing TiVo in Delaware over claims that its new software does not infringe. (See Dish's DVR Boat Anchors and And Now… We Wait .)

So, now what?

Last night, Dish claimed that the PTO's decision to take another look suggests there is a "substantial new question" about the validity of the TiVo patent, and appears "to render TiVo's '389 patent invalid as obvious," Dish and EchoStar said in a joint statement.

TiVo downplayed EchoStar's position, countering that EchoStar's latest request for reexamination is based on a combo of two prior "art references" that were previously submitted to the PTO for an earlier look.

"Contrary to EchoStar's statement, the USPTO made no substantive findings. We are confident that the USPTO will once again confirm the validity of all the claims of the Time Warp patent," TiVo said.

So, which side does a re-examination favor? Clearly, it offers Dish/EchoStar yet another chance to get someone, anyone to make a DVR patent decision that falls in its favor. Others who have been following this case closely aren't so sure.

"It is unclear how quickly the U.S. PTO will issue findings of this latest re-examination of the TiVo patent, and it is similarly unclear how, or if, this latest development might impact the timeline for the enforcement phase of TiVo's claims against Dish Network," Sanford C. Bernstein & Co. Inc. analyst Craig Moffett said in a research note issued this morning.

Investors are hedging their bets, too. Shares in EchoStar, Dish, and TiVo are all down in the range of 2 percent to 4 percent in early trading Wednesday.

— Jeff Baumgartner, Site Editor, Cable Digital News

About the Author(s)

Jeff Baumgartner

Senior Editor, Light Reading

Jeff Baumgartner is a Senior Editor for Light Reading and is responsible for the day-to-day news coverage and analysis of the cable and video sectors. Follow him on X and LinkedIn.

Baumgartner also served as Site Editor for Light Reading Cable from 2007-2013. In between his two stints at Light Reading, he led tech coverage for Multichannel News and was a regular contributor to Broadcasting + Cable. Baumgartner was named to the 2018 class of the Cable TV Pioneers.

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