TiVo patent confusion

Chris Forrester

PVR-technology company TiVo is in something of a major pickle. The US Patent and Trademark Office has rejected some of TiVo’s claims, placing a new twist on Tivo’s long-running legal battle with EchoStar and Dish.

“We are pleased that the Patent and Trademark Office (PTO) issued an initial office action rejecting Tivo’s software claims as invalid in light of two prior patents," 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. 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.”

TiVo’s statement took a different spin on the situation. “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," the company said. "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."

In July, Dish and EchoStar won a stay, pending their appeal, of a Texas court's order that they disable millions of digital video recorders that infringe on TiVo's patent for "time warp" technology. In 2006, a jury awarded TiVo about $74m in damages plus interest, for a total payment by EchoStar and Dish of $104m.