The U.S. Patent and Trademark Office (PTO) has rejected two software claims related to TiVo’s “time warp” technology, which enables users to record and play back TV programs. The ruling against patents held by TiVo could adversely affect its long-running lawsuit against Dish Network and EchoStar.
While the PTO’s decision is a parallel proceeding to TiVo’s ongoing lawsuit against Dish and EchoStar — in its statement on the matter, TiVo stresses that the ruling is “separate and apart” from the court case — the claims that the ruling invalidates are the same claims that Echostar was found to have infringed on in that case. TiVo can appeal the ruling, however, and during the process of review the patent will remain valid and enforceable.
The ruling comes just a few weeks after a federal appeals court said it would have to take another look at the patent infringement suit, potentially jeopardizing a $200 million award that TiVo was granted the previous September. The appeals court felt it would need an en banc review of the case to decide whether or not the prior judge should have given Dish another trial to determine if it was still infringing on TiVo’s patents.
TiVo issued the following statement based on the PTO decision:
“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.
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.”
And here’s Dish Networks’ statement on the matter:
“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.”