Dish Wins Reopening of Patent Lawsuit Against TiVo

Dish Network Corp., the satellite-television provider formerly known as EchoStar Communications Corp., won a ruling that reopens a 2005 patent-infringement lawsuit filed against TiVo Inc.

The ruling was made yesterday by a judge in Texas, according to a court filing. The suit occurred before EchoStar changed its name to Dish and spun off its EchoStar Corp. equipment unit in 2008. Dish will handle the case, said Marc Lumpkin, a spokesman for the Englewood, Colorado-based company.

The suit has been on hold for four years while the U.S. Patent and Trademark Office reexamined, at TiVo’s request, whether three EchoStar inventions related to digital-video recorders should have received patents.

“To continue the stay would only further delay this case without the likelihood of further simplification of the issues,” U.S. Magistrate Caroline Craven in said in her order.

Dish agreed to narrow its suit to one patent that completed the review -- related to how multimedia is formatted and stored -- if the case was reopened, the magistrate said.

“TiVo does not infringe any of the remaining claims,” the Alviso, California-based company said in a statement today.

TiVo pioneered development of digital TV set-top boxes that let users pause, rewind and play back programs as they’re being broadcast. Dish, the second-largest U.S. satellite-television provider after DirecTV, offers its customers a similar device.

TiVo’s Lawsuit

TiVo fell 39 cents, or 3.6 percent, to $10.44 at 4 p.m. New York time in Nasdaq Stock Market trading. The shares have climbed 17 percent in the past year. Dish rose 54 cents, or 2.5 percent, to $22.18.

The companies are still awaiting a ruling from a U.S. appeals court in an unrelated TiVo lawsuit. The court is considering whether Dish and EchoStar were in contempt of a ruling that they stop providing their digital-video recording service because it infringed a TiVo patent.

EchoStar filed its case a year after TiVo’s 2004 suit and it was put on hold when TiVo asked the patent office to take a second look at the patents. TiVo told the court in Texarkana, Texas, that the outcome of that review “substantially narrowed the issues in this case” and it asked the patent office to take a third look at two of the patents.

The agency denied TiVo’s request on one of the patents, and granted limited review of a second, the judge said in her order.

IBM Patents

“The patent in this case withstood two reexam petitions by TiVo seeking to invalidate it,” Dish said. “We look forward to the trial.”

Dish bought the patents from International Business Machines Corp. after TiVo’s suit was filed, TiVo said. A federal jury in Marshall, Texas, found EchoStar was infringing a TiVo patent, and the decision was upheld on appeal. The appeals court is considering whether a redesigned DVR service was in contempt of an order that Dish and EchoStar stop violating the patent.

The case is EchoStar Technologies Corp. v. TiVo Inc. and Humax USA Inc., 05cv81, U.S. District Court for the Eastern District of Texas (Texarkana).

The appeal is TiVo v. EchoStar, 2009-1374, U.S. Court of Appeals for the Federal Circuit (Washington). The lower-court case is TiVo Inc. v. EchoStar Communications Corp., 04-cv-01, U.S. District Court, Eastern District of Texas (Marshall).

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