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.

Guardian Media Files Suit Against 32 Companies

Guardian Media Technologies recently filed a lawsuit in a California district court against a number of well known companies.  Guardian alleges that these companies have infringed on two of their patents, and they are seeking damages, reports the IT Examiner.

The first patent in question involves a selective video playing system, which is connected to parental control features in DVD players that the defendants are offering, or have offered for sale.  The other patent was issued in May 1990 for “automatic censorship of video programs,” and covers parental control on televisions.

The following is the full list of companies Guardian has named in the lawsuit: Coby Electronics, Acer, Amazon, Apple, Bang and Olufsen, Best Buy, Bose, Cisco, Costco, Dell, Direct TV, Echostar Fujitsu, Imation, Lenovo, Lite on, Memorex, Microsoft, Motorola, Nintendo, Onkyo, Overstock.com, Radio Shack, Robert Bosch, Scientific-Atlanta, Sears Roebuck, Sherwood America, Sound Around, Target Corp, Tivo, TTE Technology, Walmart, Viewsonic and Yamaha.

It doesn’t seem to make a lot of sense to sue companies that merely sell the products that infringe on the patents.  Are stores supposed to research the patent history of every product they sell, or patents they may infringe?  It would make more sense for Guardian to name only the makers of the products that allegedly infringe on the patents.

TiVo and Dish Network Feud Continues

The unfriendly relationship between TiVo and Dish Network Corp. just became a little more hostile.

As the Associated Press reports, U.S. District Judge David Folsom has delayed granting TiVo’s request to hold Dish in contempt as part of their 2006 patent infringement case.  To give a brief history of the rift between these two companies, TiVo originally sued Dish in a Texas court for patent infringement on their DVR software.  Dish filed an appeal, and the appeals court actually reversed the original ruling that Dish had violated the patent.  But, this reversal did not impact the damages, which were set at $105 million with interest.

This past September, TiVo requested another hearing regarding Dish’s newest software.  Upon hearing the case yesterday, Judge Folsom scheduled a hearing for February 17, 2009, to determine whether Dish’s new software infringes TiVo’s patent.  The decision to delay the hearing prompted Dish to state that, “the district court did not find us in contempt on the face of the injunction.”  TiVo objected, saying that the court had not ruled on contempt of the injunction.  Meanwhile, TiVo’s stock fell 14 percent and hit a new year low.

Will this delay be seen as a setback for TiVo?  Or is it simply a ploy to prevent another appeal from Dish?  We’ll find out in a few months.