The latest round in the long legal battle between TiVo and Dish Network/EchoStar over digital video recorder (DVR) technology goes to Dish/EchoStar. The US Patent and Trademark Office (PTO) has agreed with Dish/EchoStar that TiVo’s DVR patent is not valid.
TiVo and Dish/EchoStar had been battling over the patent in federal court for years. Dish had already paid TiVo $104 million for patent infringement and was facing another $103 million plus interest after being held in contempt of court because its purported work-around DVR was also ruled to violate the TiVo patent. Most recently, though, Dish had been granted a review by the full federal appeals court, which put the judgment on hold. Now it has scored another big win with the PTO ruling that the patent was based on “prior art” and should not have been granted in the first place.
“We are pleased the Patent and Trademark Office issued a Final Office Action maintaining its rejection of the software claims of TiVo’s patent. These software claims are the same claims that EchoStar was found to have infringed in the contempt ruling now pending for en banc review by the Federal Circuit. In the Final Office Action, three examiners of the PTO considered TiVo’s response and, in a detailed 32-page decision, finally concluded that the software claims were unpatentable in view of two prior art references,” said Dish/Echostar in a celebratory announcement.
TiVo, however, insists there is still a long way to go in the legal battle.
“While TiVo is disappointed with this recent PTO office action, this is just one of several steps in the review process. We will continue to work with the PTO to explain the validity of the claims under review. It is important to note that TiVo received a ‘final action’ holding several claims invalid during EchoStar’s first reexamination request at this juncture only to have the PTO ultimately uphold the validity of all claims of the patent,” said TiVo.
“Moreover, the PTO proceeding is separate and apart from the ongoing litigation against EchoStar and does not impact the current United States Court of Appeals en banc review of the district court’s finding of contempt against EchoStar and the related injunction,” TiVo added.