Breaking News: TiVo v EchoStar

Dave Zatz —  January 31, 2008 — 11 Comments

I just got off a plane in Minneapolis and will be tied up most of the day, but learned that the US Court of Appeals has rendered their decision (on testimony I attended). I haven’t had a chance to peruse the document, but here’s a cut & paste of the conclusion:

In sum, because of a failure of proof of literal infringement, we reverse the judgment of infringement of the hardware claims with respect to all of the accused devices. We remand for any further proceedings that may be necessary with respect to those claims. We affirm the judgment of infringement of the software claims with respect to all of the accused devices. Because the damages calculation at trial was not predicated on the infringement of particular claims, and because we have upheld the jury’s verdict that all of the accused devices infringe the software claims, we affirm the damages award entered by the district court.

The district court’s injunction was stayed during the course of these proceedings. The stay that was issued pending appeal will dissolve when this appeal becomes final. At that time, the district court can make a determination as to the additional damages, if any, that TiVo has sustained while the stay of the permanent injunction has been in effect.

Updates…

DISH’s Response:

We are pleased the Federal Circuit found for us on Tivo’s hardware claims, but are disappointed in the Federal Circuit’s decision on the software claims. The decision, however, will have no effect on our current or future customers because EchoStar’s engineers have developed and deployed ‘next-generation’ DVR software to our customers’ DVRs. This improved software is fully operational, has been automatically downloaded to current customers, and does not infringe the Tivo patent at issue in the Federal Circuit’s ruling.

All DISH Network customers can continue to use their DVRs without any interruption or changes to the award-winning DVR features and services provided by DISH Network.

We intend to appeal the Federal Circuit’s ruling affirming the $94 million jury verdict.

TiVo’s Response:

We are extremely pleased that the United States Court of Appeals for the Federal Circuit unanimously ruled in our favor in EchoStar’s appeal of the district court judgment of patent infringement, full award of damages and that the injunction, which was stayed pending appeal, was ordered to be reinstated. Today’s ruling is confirmation of the value of TiVo’s IP portfolio, which is in addition to the other benefits TiVo has to offer. TiVo can now continue to focus on its goal to drive greater distribution in both its stand alone and mass distribution efforts.

(Thanks for the tip and link, Jason D!)

11 responses to Breaking News: TiVo v EchoStar

  1. I believe an “oh snap!” is in order.

  2. I’m sensing either some sort of licensing agreement coming from Echostar or a big check. Of course, there may be some other legal hurdles that I’m not aware of…. but things look pretty good for TiVo

  3. Agreed cableric, Echostar just got told.

  4. TiVo is in and out of court more than Britney Spears…but hooray for TiVo! Pleas apply that big fat damages check you’ll be getting from EchoStar towards lower the cost of a new Series 3. KTHX

  5. Dude, minneapolis? Wheres the beer meetup? ;)

  6. I’m happy for Tivo, and happy enough with the result. I don’t think EchoStar infringed the Tivo patents in question (since there is no encoding going on, just capture), but the outcome may still be fore the best. Obvious question is whether Tivo will pursue cases against other companies (MOT, Cisco, DirectTV) on the basis of this. I think I’d prefer they didn’t…

  7. Does this make Tivo profitable?

  8. It will for the quarter that they finally receive the payment from Echostar.

  9. It depends on how much the Judge awarded Tivo and the basis of that award – for instance if he awarded them 21 Million and most of that was on the hardware infringment vs the software then that judgment may be lessened tremendiously.
    So it will go back down to the original Judge to make the determination of the award.

  10. $74 Million…and…what…3rd time it’s been upheld? I think they’re getting paid.

  11. Pay $74M or just buy Tivo for 10x that?

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