tivo & echostar

[cpucrash0]

I came upon this on google news http://www.realtechnews.com/posts/3547

"October 3rd, a federal appeals court granted EchoStar Communications’ request to stay a permanent injunction imposed by a lower court. The injunction had prevented EchoStar from continuing to make and sell a certain DVR in the U.S. pending the outcome of EchoStar’s appeal.

Rewind to January 2004, TiVo sued EchoStar over a TiVo patent known as Time Warp. Time Warp allows device to store and play back programs. April of this year, a jury decided that the TiVo Time Warp patent had been violated by EchoStar ruling in favor of TiVo. EchoStar immediately appealed at which point TiVo won an injunction against the satellite-TV operator from making, using and selling DVRs using the Time Warp technology. One last nugget… EchoStar and TiVo are still in business together and extended their agreement period a couple of years!"


I had no idea Echostar and tivo are in business together, is this true?

[GoHokies!]

They're not, which is the root of the problem - a while back Tivo sent over a demo unit to E* to see if they were interested. E* basically said "No, we're cool - and we seem to have misplaced the box you sent us."

By "misplaced" E* meant "took apart and reverse engineered" to produce their own DVR, violating a bunch of Tivo's patents. Tivo sued, and here we are today.

More details here: http://www.tivocommunity.com/tivo-vb/showthread.php?t=293670

I don't know what the "agreement period" thing is. :confused:

[HiDefGator]

It is extremely unlikely that Echostar "took apart and reverse engineered" the demo Tivo. I can't imagine that any active hardware or software engineer would believe that. It would take years to reverse engineer it but half that time to do it yourself from scratch. Without electronic schematics or source code you could tear apart the demo all you wanted and gain nothing of value.

What Echostar did was make their own DVR from scratch which included designs that were found to infringe existing Tivo patents. Echostar still does not believe their implementation infringes valid Tivo patents.

[davezatz]

One last nugget… EchoStar and TiVo are still in business together and extended their agreement period a couple of years!"


I had no idea Echostar and tivo are in business together, is this true?

They are confused and probably meant DirecTV has extended their partnership (with a no-sue clause).

[ping]

It is extremely unlikely that Echostar "took apart and reverse engineered" the demo Tivo. I can't imagine that any active hardware or software engineer would believe that. It would take years to reverse engineer it but half that time to do it yourself from scratch. Without electronic schematics or source code you could tear apart the demo all you wanted and gain nothing of value.

Actually, given what the hacker community has managed to do (and assuming there was no "seeding" of information from TiVo), I disagree.

[HiDefGator]

You can reverse engineer anything with enough time and money. But that doesn't make it a practical thing to do if you are designing a product that you will be supporting and improving for years to come.

No one has ever suggested that the Dish hardware or software contained any code or designs lifted directly from the Tivo design. The only features they are claimed to have infringed are the same features that every DVR maker out there is also supposed to have infringed. Did they all get Tivo samples they reverse engineeered?

[ping]

The only features they are claimed to have infringed are the same features that every DVR maker out there is also supposed to have infringed.

Not true. Go read the "timewarp" patent or any of the several analyses here in this forum. The infringed patent is not nearly that broad.

You don't need to reverse engineer to infringe, but the fact (proven in court) that they did so only speaks to willfulness of the infringement.

[ZeoTiVo]

What Echostar did was make their own DVR from scratch which included designs that were found to infringe existing Tivo patents. Echostar still does not believe their implementation infringes valid Tivo patents.

so that is why EchoStar is witholding documents requested as evidence in the trial and that indeed Echostar was found to have willfully infringed. I think the bot posting of "nice deal buddy" was the most useful post in this thread full of misinformation started from a link to a very confused article on the net.

[GoHokies!]

so that is why EchoStar is witholding documents requested as evidence in the trial and that indeed Echostar was found to have willfully infringed. I think the bot posting of "nice deal buddy" was the most useful post in this thread full of misinformation started from a link to a very confused article on the net.

Exactly!!!

Either that or E* actually made the box first, and Tivo used the "timewarp" feature to go back in time and release the box. The sueing ot Echostar is just the icing on the cake.

[samo]

so that is why EchoStar is witholding documents requested as evidence in the trial and that indeed Echostar was found to have willfully infringed.
And you don't know why E* withholding documents either. There could be multitude of legitimate reasons. But that is not a point of Gator's post. At a time TiVo presented their design to E* Dish already had a contract with Microsoft. Most likely they didn't return the unit because most companies do not return unsolicited samples. DishPVR (501) was not introduced to public till 2001. Assuming that it took Dish 1-2 years to develop it, they wouldn't have to "reverse engineer" the prototype - they could pay $500 for retail model of TiVo at Sears. Time-line just doesn't support an idea that Dish used the prototype to develop their own unit.
Fact that 12 technically illiterate people in a county court well known to strongly favor patent holders decided that Dish willfully infringed on TiVo patent does not prove that Dish copied any part of TiVo design. Federal court may or may not decide in TiVo favor, but even Federal court decision is not a prove that E* did anything wrong. Just common sense will tell any unbiased person that there is nothing special in TiVo "time warp" patent except for the fact that they have a patent. Just like Gemstar's TV guide. TiVo didn't invent DVRs, they just used very well known technology to make a concept of affordable personal digital recordings feasible. At least 3 companies came up with same product as TiVo in about a same time (TiVo, Replay and Dish-Microsoft). I don't care who was first or last to the market. I don't care who was able to patent idea first. All 3 companies worked on delivering PVR to the market in a same time and all 3 developed their own versions. Dish later developed their own design and any unbiased person can tell that it has much more in common with Dish-Microsoft design than with TiVo design. Actually it has nothing in common with TiVo design. I don't care what a final outcome of the legal battle is going to be (I don't hold stock in either company), but I have no doubt in my mind that DishPVR was developed completely independent from TiVo.
PS. And apparently E* thinks that they will prevail in court. Overwise they would just try to purchase Replay operations (or patent portfolio) from D&M. As you probably well know that TiVo settled with Replay by cross licensing their patents and D&M purchased Replay for about $40 million.

[vman41]

but I have no doubt in my mind that DishPVR was developed completely independent from TiVo.

You can still infringe a patent even with an independant development. I think the willfullness aspect concerns the amount of damages owed.

[samo]

You can still infringe a patent even with an independant development. I think the willfullness aspect concerns the amount of damages owed.
There two parts to this story - legal and technical. I don't know much (nor do I care to know) about legal aspect. That is for courts and attorneys to decide. But on a technical side of the issue, it is almost impossible that Dish used any of the TiVo technology in their design.

[ZeoTiVo]

they wouldn't have to "reverse engineer" the prototype - they could pay $500 for retail model of TiVo at Sears. Time-line just doesn't support an idea that Dish used the prototype to develop their own unit.
the thing is that Echostar and TiVo were in talks - TiVo would have explained parts of it and after that it is not that hard to figure out the rest. The whole unit and certainly not the software were not reversed engineered to give echostar the ability to copy key parts.

This was not an "unsolicited sample" and echostar backed out of the talks. You can decide things went the way you speculate but a case was decided on with all kinds of lawyers and testimony from both sides and hardly seems to be a total miscarriage of justice as you proclaim it to be.

The final outcome will be some amount of money paid out to TiVo and perhaps a licsensing deal. My gut feeling is that Echostar is dragging it out as much as they can so it is a one time money payout and they had time to come up with something else to avoid making any deal with TiVo. I doubt they have winning in mind at this stage of the game

[samo]

the thing is that Echostar and TiVo were in talks - TiVo would have explained parts of it and after that it is not that hard to figure out the rest. The whole unit and certainly not the software were not reversed engineered to give echostar the ability to copy key parts.

This was not an "unsolicited sample" and echostar backed out of the talks
Not the way it was presented at trial. TiVo made an offer to E* to provide software for free if E* allows them to collect anonymous information and provide advertisement in showcases. E* had a contract with Microsft already in place, but they let TiVo make a presentation anyhow. Later E* decided that they don't want TiVo software even for free since there was a risk involved that this startup will go under. Little did they know :). So obviously they made a mistake not to take TiVo on the offer and not returning prototype that they considered worthless. But there is no chance that they used any part of the TiVo design in DishPVR. They are drastically different both on hardware and software levels.

[HiDefGator]

"I doubt they have winning in mind at this stage of the game "

Echostar is dragging this out as long as they can to get a better deal out of Tivo. Tivo can't sue a second DVR maker until the first case it finally resolved. They can sue but whomever they pick would file for a delay until the first case (echostar) is fully resolved in Tivo's favor.

So the longer Echostar can make Tivo wait the more likely Tivo is to agree to a lesser settlement so they can start going after the other infringers. Until then everyone gets to make all the infringing dvr's they want. Tivo is currently losing subscribers not gaining them due to DirecTV dropping them. If Tivo can't turn things around eventually they may need to settle.

So far nothing Tivo has done is driving subscriber growth significantly higher. Their best hope today is the Comcast deal. But that is an opt-in deal for customers and it remains to be seen how many of those cable subs will opt for the higher priced Tivo software.

[bawker]

If this lawsuit is concerning the features of the 625 DVR from Dish I have now, that's one heck of a stretch...the interface on it is horrible...although I will say that it hasn't missed a recording yet.

Still going to get an S3 eventually, though. :)

[GoHokies!]

But there is no chance that they used any part of the TiVo design in DishPVR.

That's a pretty strong statement. Care to back it up with any facts?

[HiDefGator]

If any part of the actual Tivo design was found in the Dish PVR that would have been Tivo's opening statement in court. It would be the only smoking gun needed to win the case. Yet Tivo never once suggested in court. All Tivo argued was that the Dish implementation infringed their patent.

[ZeoTiVo]

They are drastically different both on hardware and software levels.

anyone care to define the "willfull infringement" judgement in light of such statements. Seems to be a contradiciton in there somewhere. ;)

sure no one had to reverse engineer anything and of course no direct copy of anything TiVo had to be there. Patent infringement is fairly well defined to be more than just that.

the willfull part does imply that Echostar had a knowing hand in building off the TiVo ideas that were patented without enough differentiation to make it their own work with no need to work a deal with TiVo to incorporate those patented ideas.

The case was lost already and the appeal before the federal judge is not about retrying anything.

[ChuckyBox]

anyone care to define the "willfull infringement" judgement in light of such statements. Seems to be a contradiciton in there somewhere. ;)
Wilful infringement means what it sounds like: Echostar knew they were infringing TiVo's patent, but they did it anyway.

The discussion of copying here, despite the interest that reporters took in it, is irrelevant. Copying is not required for a finding of infringement or wilfulness.


They are drastically different both on hardware and software levels.

Apparently not different enough to get Echostar the summary judgment it requested from an experienced patent judge, nor to convince an unbiased jury that it didn't violate any of the nine patent claims TiVo asserted.

[HiDefGator]

ChuckyBox is 100% right.

They did not have to copy any of the design to willfully infringe Tivo's patent. They just needed to make a box that did what the patent describes. They could have done that without ever seeing the Tivo box. Willful just means they did it knowing what they were making infringed an existing patent.

I suspect (but obviously do not know for sure) the papers E* is refusing to turn over are opinions from patent lawyers they asked before making their box. The opinion would be a vague saying like "while your design appears to infringe the Tivo patent there is a strong possibility Tivo's patent will be thrown out or that a jury will not find for Tivo if you get sued."

That would be very bad for E* because the court would take it to mean they were clearly told their design "probably" infringed.

[ChuckyBox]

I suspect (but obviously do not know for sure) the papers E* is refusing to turn over are opinions from patent lawyers they asked before making their box. The opinion would be a vague saying like "while your design appears to infringe the Tivo patent there is a strong possibility Tivo's patent will be thrown out or that a jury will not find for Tivo if you get sued."

One defense against wilfulness is to have a reasonable belief that you were not infringing (even it that belief is later proven wrong in court). One way to show such a belief is to have obtained a legal opinion of non-infringement upon which you reasonably relied.

Echostar twice commissioned law firms to give them opinions on the potential that their DVRs infringed on the TiVo patent. The first firm never gave an opinion. The reasons for this are unclear, and are a matter of some disagreement between the parties.

The second firm, Merchant & Gould, was hired after TiVo filed suit against Echostar. They did, in fact, provide an opinion of non-infringement. But when one uses this defense, one waives attorney-client privilege. So TiVo asked for, and the judge ordered, all the supporting documents. Echostar refused and asked another judge in Georgia to rule on the issue, and he also took TiVo's side. So Echostar appealed, and obtained an writ of mandamus (essentially an order to the lower court) clarifying the law: anything that was communicated to the client, or references a communication with the client is fair game, everything else is privileged.

In the meantime, the TiVo trial had already happened. Echostar was not allowed to introduce their document or even mention they had it, and TiVo won the case and a verdict of wilful infringement.

After the jury trial, the Texas judge got the Appeals Court order, and he promptly told Echostar to turn over all the documents that were communicated to them (there were still a number of matters before the court that these documents affected). Echostar turned over some documents and claimed privilege on the rest. Later, the Texas judge would not award TiVo its triple damages because in part Echostar had not been allowed to introduce their document, and in part because he did not find that Echostar acted in bad faith.

Meanwhile, TiVo was working the Georgia court to get the documents from the Merchant & Gould attorney who worked for Echostar. The Georgia court ordered the attorney to give to TiVo any documents communicated to Echostar, and to submit to it, for in camera review, any documents for which he claimed privilege. Echostar, on behalf of the attorney, argues that he has since retired and no longer has access to the documents (this is apparently well-trodden territory and they won't succeed) and that it doesn't matter anyway, because discovery in the Texas trial is long over. TiVo has filed a motion to compel. It's been a couple of months without much action, so I don't know the current status there.

So what is in these documents? It is not known, but the Georgia judge, in his original order, specifically mentioned the large number of drafts of the opinion, among other things. If the documents show that Echostar worked with the law firm to tailor the opinion in their favor, it completely invalidates the defense, and actually shows the bad faith that the Texas court found missing. TiVo could take that evidence to the Texas court and get a reconsideration of the judgment, and get its triple damages and attorney fees.

If nothing new comes of any of this, the appeals court will probably toss the wilfulness verdict and send it back to Texas. The Texas court may then make a summary judgement on the issue in Echostar's favor, or it may go back to trial. Even with the opinion, it is unclear that a jury would not find for TiVo. And this time TiVo would be almost certain to get its triple damages.

The important thing to note is that none of this impacts the findings of infringement. It only goes to the issue of wilfulness.

The other "take away" is the fact that Echostar really, really, really does not want TiVo to get those documents.

That's my current understanding of the situation wrt the disputed documents. Some of what I've said is, obviously, opinion and interpretation.

[GoHokies!]

That's my current understanding of the situation wrt the disputed documents. Some of what I've said is, obviously, opinion and interpretation.


That's an awesome sumary, thanks!

[MichaelK]

yes chuckbox thank you for your thorough post (even if it is opinion it is very interesting)