Having paid over $100 million to TiVo in a patent judgment, Dish Network is still fighting. It says it has now gotten the US Patent and Trademark Office to open a re-examination of TiVo’s main DVR patent, based on Dish’s claim that it has found prior patents that make the TiVo patent invalid.
In response, TiVo notes that its patent withstood a previous re-examination.
"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. An evidentiary hearing on the contempt issues is scheduled to be held on February 17 and 18, 2009,” a statement from TiVo noted.
"We are pleased that the Patent and Trademark Office (PTO) granted our Petition for Re-Examination of the software claims of TiVo’s ‘389 patent, which are the subject of TiVo’s current motion for contempt. 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 as obvious," said a statement from Dish Network and the related EchoStar Communications Corp., which stand to owe millions more to TiVo if they are found in contempt of court for continuing to violate the TiVo patent. They claim that their re-engineered DVRs do not violate the patent, but TiVo disagrees. Meanwhile, Dish/EchoStar are pursuing the PTO angle as well in an attempt to get the patent thrown out.
“EchoStar’s latest request for re-examination is based on a combination of two prior art references that were both already submitted to the USPTO in connection with the earlier reexamination. The USPTO grants most patent reexamination requests. 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 of the claims of the Time Warp patent,” TiVo said.