TiVo and EchoStar Return to Court

The drama continued between TiVo and Dish Network operator EchoStar on Tuesday, as the two met once again in a Texas court.  According to Reuters, TiVo argued that EchoStar should have to pay additional damages for infringing on its digital video recorder patent.

For those that aren’t familiar with the history between these two companies, the legal dispute dates all the way back to 2004.  TiVo initially charged EchoStar’s Dish network system of violating TiVo’s patent for “Time Warp” software.  This software, also known as DVR, allows users to record one TV program while watching another.  In 2006, a court ruled in TiVo’s favor and the company was awarded $104 million in damages.  The U.S. Supreme Court denied Dish’s appeal of the ruling.

After that decision, EchoStar continued to distribute its digital video recorders, and collect subscription fees for the DVRs.  EchoStar claimed that the software contained a “work-around” that avoided infringement on TiVo’s patent.  TiVo claims that this “work-around” still infringes on their patents, which brought both companies back to court earlier this week.

TiVo is not only seeking additional damages, they are also looking for an injunction which would force EchoStar to stop using the DVR technology with its customers.

Drama Continues Between Dish & TiVo

The U.S. Patent and Trademark Office decided on Tuesday to reexamine a patent infringement claim involving TiVo’s software, according to Reuters.  Tivo has been battling with Dish Network Corp and EchoStar Corp for several years over TiVo’s Time Warp software.  This technology allows users to record one television program while watching another, by utilizing a digital video recorder.

Dish celebrated the decision by stating, “The PTO found that there is a ’substantial new question’ of patentability as to the software claims in light of prior patents that appear to render TiVo’s ‘389 patent invalid.”

However, TiVo stated that the latest reexamination request was only accepted because the PTO grants most requests.  Furthermore, TiVo said that the PTO previously examined the patent at EchoStar’s request and decided last November that the patent was valid and did not need to be changed.  TiVo continued with the following:

EchoStar filed its latest request for reexamination after TiVo asked the United States District Court to hold EchoStar in contempt of the Court’s injunction requiring EchoStar to disable its DVR functionality … EchoStar’s latest tactic follows numerous failed attempts to invalidate TiVo’s groundbreaking Time Warp patent. In 2006, the District Court rejected all of EchoStar’s validity challenges after a full jury trial and the judgment of validity was affirmed by the Federal Circuit in 2008.

The next date these two will have is a hearing on the contempt matter, which is scheduled to be held on February 17 and 18, 2009.