In a rare win for Echostar in its long running patent row with TiVo, the US Patent & Trademark Office (PTO) has ruled TiVo's 'Time Warp' patent invalid. This has been at the heart of the dispute.
“We are pleased the Patent and Trademark Office issued a Final Office Action maintaining its rejection of the software claims of TiVo’s patent,” said Dish and EchoStar in a joint statement. “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.”
TiVo, though, says this is but one step in the review process and it is still pursuing its court action against Echostar. “While TiVo is disappointed with this recent PTO office action, this is just one of several steps in the review process,” said TiVo. “We will continue to work with the PTO to explain the validity of the claims under review..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.”
The stakes couldn't be higher for both companies. If Echostar loses it will have to pay massive damages and/or face the ruinous expense of swapping out its DVR population. If TiVo loses its whole licensing business model would be seriously undermined.