The U.S. Patent and Trademark Office will reexamine the claims of Tivo's "Time Warp" patent--again--at EchoStar’s request.
EchoStar, which recently lost a lawsuit against Tivo over the patent, requested the reexamination. Tivo won an injunction against EchoStar and asked the U.S. District Court to hold the satellite TV outfit in contempt of court for not disabling its DVR functionality.
An evidence hearing will be held on Feb. 17 and 18. In October, Tivo won $104.6 million in damages from EchoStar over the patent. At the time, Tivo was confident that the U.S. District Court would enforce an injunction. Since then there have been workaround and evidence hearings about additional damages.
In this latest episode of patent wars, we get two dueling statements:
"EchoStar's latest tactic follows numerous failed attempts to invalidate TiVo's groundbreaking Time Warp patent. In 2006, the District Court rejected all of EchoStar's validity challenges after a full jury trial and the judgment of validity was affirmed by the Federal Circuit in 2008. The USPTO also conducted a prior reexamination of the Time Warp Patent at EchoStar's request, which concluded on November 11, 2008, with the USPTO issuing a Reexamination Certificate confirming the validity of all of the claims of the Time Warp Patent without any change. EchoStar's latest request for reexamination is based on a combination of two prior art references that were both already submitted to the USPTO in connection with the earlier reexamination. The USPTO grants most patent reexamination requests. Contrary to EchoStar's statement, the USPTO made no substantive findings. We are confident that the USPTO will once again confirm the validity of all of the claims of the Time Warp patent."
"We are pleased that the Patent and Trademark Office (PTO) granted our Petition for Re-Examination of the software claims of TiVo's '389 patent, which are the subject of TiVo's current motion for contempt. The PTO found that there is a 'substantial new question' of patentability as to the software claims in light of prior patents that appear to render TiVo's '389 patent invalid as obvious."