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U.S. Patent Office Rejects Two TiVo Patent Claims

4 Aug, 2009 By: Erik Gruenwedel

TiVo is downplaying a preliminary Aug. 3 finding by the United States Patent Office and Trademark Office (PTO) that rejected two claims (out of 60) by the digital video recording pioneer’s multimedia time-warping system patent (DVR pat. 6,233,389).

The Alviso, Calif.-based service said the UPO’s finding was a procedural process implemented before it could present its views and would not affect ongoing appeals by EchoStar Communications and satellite subsidiary Dish Network of $103 million in damages awarded TiVo by a federal judge in Texas in June regarding ongoing patent infringement litigation.

A federal appeals court June 3 issued a temporary stay requiring both parties return to court and re-present their cases.

The U.S. District Court for the Eastern District of Texas had concurred with TiVo’s allegation that EchoStar continued to infringe TiVo’s patent and violate the injunction issued by the court requiring them to disable the DVR functionality in their infringing set-top box devices.

“This is an initial step in the lengthy process known as ‘re-examination,’ and it is not unusual for the PTO to provide a preliminary finding of invalidity and to then later find that the claims are valid after hearing an explanation from the patent owner,” TiVo said in a statement. 

The company said the patent office ruled similarly when EchoStar first filed its counter litigation in 2005, which was subsequently reversed. It said that the re-examination process provides TiVo, for the first time, the opportunity to discuss and distinguish the references presented by EchoStar and to present new claims.

Engelwood, Colo.-based EchoStar said it was pleased with the PTO ruling.

“These software claims are the same that EchoStar was found to have infringed in the contempt ruling now pending on appeal,” EchoStar said in a statement. “We believe that the PTO’s conclusions are highly relevant to the issues on appeal as well as the pending sanctions proceedings in the district court.”

EchoStar last year paid TiVo $104 million in jury-awarded damages in an initial ruling in the 2006 infringement case.

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