SAN JOSE, Calif. — TiVo Inc. on Thursday proclaimed itself winner of the latest round in its battle against EchoStar Communications Corp. after federal regulators validated the digital video recorder maker’s patent that is central to the case.
EchoStar was disappointed in the U.S. Patent and Trademark Office decision but said the agency’s conclusion won’t affect its pending appeal of a court ruling in TiVo’s favor. The court decision requires it to pay TiVo $89.6 million in damages for patent infringement and to stop distributing DVRs or to modify features of its products.
TiVo sued EchoStar in 2004, and the patent office launched a re-examination of TiVo’s “time warp” patent after Echo Star protested the validity of it. The patent focuses on the ability to record a television program while watching another — a fundamental feature of DVRs.
Alviso-based TiVo agreed the patent office’s action won’t have a direct bearing on Echo Star’s appeal but contended it is important.
“It eliminates any arguments EchoStar can make before the court of appeals about the patent’s validity,” said Matthew Zinn, TiVo’s general counsel. “It also results in a much stronger patent, and it will be difficult for anyone to try to invalidate the patent again.”
EchoStar said in a statement that it remains hopeful of winning the appeal. The Douglas County-based satellite-TV operator runs the Dish Network and was among the first, along with TiVo, to introduce DVR features in a set-top box.
