# Tivo Case on Patent-Infringement



## lessd (Jan 23, 2005)

Can anyone explane what just happened with this patent case RE: http://www.bloomberg.com/news/2011-...o-case-on-patent-infringement.html?cmpid=yhoo The headline is *EchoStar Technologies Wins Reopening of Tivo Case on Patent-Infringement*

Thanks


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## socrplyr (Jul 19, 2006)

I think that would have to be a different patent case where Dish claims Tivo infringed on one of its patents. To my knowledge it has nothing to do with the long standing case people have been following.


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## CuriousMark (Jan 13, 2005)

This is Dish's counter-suit that was put on hold while the primary case by TiVo against Dish went ahead. While it was on hold, TiVo successfully got three of the 4 patents Dish claims were infringed in the counter suit invalidated at the US Patent and Tradmark Office (USPTO) or weakened to the point where Dish removed the patent from the lawsuit. We should know the results of this lawsuit in about 5 years after the jury trial and all appeals are finalized. Of course if Dish looses the TiVo suit, they may pull this lawsuit as part of a settlement, in which case it will end much sooner.


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## lessd (Jan 23, 2005)

CuriousMark said:


> This is Dish's counter-suit that was put on hold while the primary case by TiVo against Dish went ahead. While it was on hold, TiVo successfully got three of the 4 patents Dish claims were infringed in the counter suit invalidated at the US Patent and Tradmark Office (USPTO) or weakened to the point where Dish removed the patent from the lawsuit. We should know the results of this lawsuit in about 5 years after the jury trial and all appeals are finalized. Of course if Dish looses the TiVo suit, they may pull this lawsuit as part of a settlement, in which case it will end much sooner.


Thanks for your clarification, I don't know how normal people would have figured this out from the article I referenced in post 1.


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## ZeoTiVo (Jan 2, 2004)

lessd said:


> Thanks for your clarification, I don't know how normal people would have figured this out from the article I referenced in post 1.


this paragraph from the linked article
"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. "

Though I found far more interesting
"Dish bought the patents from International Business Machines Corp. after TiVos suit was filed, "


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## CuriousMark (Jan 13, 2005)

ZeoTiVo said:


> Though I found far more interesting
> "Dish bought the patents from International Business Machines Corp. after TiVos suit was filed, "


I don't recall where I saw it, so I can't confirm if true or not, but I remember reading that TiVo had also bought some patents from IBM once upon a time.


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## orangeboy (Apr 19, 2004)

Some interesting reading regarding Echostar vs. TiVo: http://www.whda.com/blog/wp-content/uploads/2010/11/2010.11.11-TiVo-Response.pdf


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## turbobuick86 (May 3, 2002)

Hope tivo gets punitive $damages$ if echostar is found in contempt of court order.


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## ZeoTiVo (Jan 2, 2004)

CuriousMark said:


> I don't recall where I saw it, so I can't confirm if true or not, but I remember reading that TiVo had also bought some patents from IBM once upon a time.





orangeboy said:


> Some interesting reading regarding Echostar vs. TiVo: http://www.whda.com/blog/wp-content/uploads/2010/11/2010.11.11-TiVo-Response.pdf


I hope they bought better ones than DISH did


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## klrobinson999 (Aug 26, 2010)

and yet a new TiVO is coming to Dish network? Wow.


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## NotVeryWitty (Oct 3, 2003)

klrobinson999 said:


> and yet a new TiVO is coming to Dish network? Wow.


Ummm, no...

Perhaps you're confusing Dish Network with DirecTV?


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## JimboG (May 27, 2007)

klrobinson999 said:


> and yet a new TiVO is coming to Dish network? Wow.


Care to cite a source? What on earth led you to think this might be true?


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## pjm877 (Oct 5, 2005)

CuriousMark said:


> I don't recall where I saw it, so I can't confirm if true or not, but I remember reading that TiVo had also bought some patents from IBM once upon a time.


ah that old thing... and if memory serves me well; yes around 1997... had they not... IBM would have OWNED Tivo, because these are the very ones they are trying to hold over Echostar

But in all... really moot... THIS is software.. not hardware they are fighting over... and there for not "Patentable" copyright yes... the Gov needs to get it's act together, or Congress to clear up this BIG mess. for everyone

I think there is something like the time shifting that dates 3 years even before TIVO was even on the drawing board. That might be the IBM thingie?

Echostar should have bought them out when they hit bottom years ago... they had the cash on hand.. not sure why they did not do this ????

and yes I have Dish, a TIVO hd lifetime and a TiVo Premiere XL on the way for OTA viewing

just my opine and not really good for anything  now to duck for cover


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## ZeoTiVo (Jan 2, 2004)

pjm877 said:


> ah that old thing... and if memory serves me well; yes around 1997... had they not... IBM would have OWNED Tivo, because these are the very ones they are trying to hold over Echostar


They are part of it, but the main copyright infringement TiVo is holding over DISH is what TiVo inc. developed in house for parsing the content to add in trick play markers and allow the audio to be stored separately yet played back exactly in sync along with trick play even while still being recorded.
It is that parsing of the media that let TiVo use off the shelf parts in the DVR and finally get one on market that is affordable. So what DISH infringed on was software developed in house by TiVo and that was key to TiVo being competitive. Just wanted to set the record straight on that.

Oh and that is the suit that is not the topic of this thread which is the suit brought by DISH against TiVo by buying some IBM patents * after* DISH was brought to court for copying TiVo developed software.


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## fasTLane (Nov 25, 2005)

ZeoTiVo said:


> They are part of it, but the main copyright infringement TiVo is holding over DISH is what TiVo inc. developed in house for parsing the content to add in trick play markers and allow the audio to be stored separately yet played back exactly in sync along with trick play even while still being recorded.
> It is that parsing of the media that let TiVo use off the shelf parts in the DVR and finally get one on market that is affordable. So what DISH infringed on was software developed in house by TiVo and that was key to TiVo being competitive. Just wanted to set the record straight on that.


Thank you very much for the clarifying this.


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## pjm877 (Oct 5, 2005)

yes. thanks very much for clearing this up. learn something new every day.


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## GBL (Apr 20, 2000)

TiVo Statement on Decision by U.S. Court of Appeals in Lawsuit Against EchoStar

ALVISO, CA, Apr 20, 2011 (MARKETWIRE via COMTEX) --

TiVo Inc. (NASDAQ: TIVO), the creator of and a leader in advanced television services including digital video recorders (DVRs) for consumers, content distributors and consumer electronics manufacturers, offered the following statement today on the ruling by the U.S. Court of Appeals in its lawsuit against EchoStar Communications Corporation:

"We are pleased that the United States Court of Appeals for the Federal Circuit sitting en banc affirmed the district court's finding of contempt and award of sanctions against EchoStar for failing to comply with the district court's injunction. This marks the second time that the district court's contempt ruling has been upheld by the Court of Appeals. We look forward to the permanent injunction against EchoStar and Dish Network finally being enforced with respect to the DVRs they must now disable. This ruling also paves the way for TiVo to receive substantial damages and contempt sanctions regarding the DVRs that EchoStar and Dish Network failed to disable. With respect to the remand of the infringement provision of the District's Courts order, we intend to pursue the most rapid path to resolution. We will continue our efforts to protect our intellectual property from further infringement by EchoStar and Dish Network."


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## Sasparilla (Dec 10, 2003)

Wow, looks like a big win for TiVo, the stock jumped almost 50% this morning although it is settling some now.

Be interesting to see what happens now.


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## orangeboy (Apr 19, 2004)

What does this mean?



> However, the court -- which considered the appeal en banc, as opposed to by a three-judge panel -- *vacated the Texas district court's finding of contempt of the infringement provision of the permanent injunction, and vacated in part the damages awarded to TiVo for EchoStar's continued infringement.*


Source

I found the legal definition of "vacate", so does this mean TiVo has to _pay back_ part of the damages?!


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## timckelley (Oct 15, 2002)

two apparently contradictory versions, which one is right?


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## GBL (Apr 20, 2000)

From the order 09-1374.pdf:


> We therefore vacate the district courts finding of con-
> tempt for violation of the infringement provision and
> remand to the district court to make that factual determi-
> nation under the guidance that we have provided today.
> ...


_

As I understand it (IANAL), TiVo gets the $90 million now (barring appeal to USC), goes back to court about more money for infringement of original software during stay, and about the remaining award of $110 million._


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## GBL (Apr 20, 2000)

ENGLEWOOD, Colo., April 20, 2011 /PRNewswire/ -- DISH Network L.L.C., a subsidiary of DISH Network Corporation (NASDAQ: DISH), and EchoStar Technologies L.L.C., a subsidiary of EchoStar Corporation (NASDAQ: SATS), issued the following statement regarding the decision by the U.S. Federal Court of Appeals regarding Tivo:

"DISH Network and EchoStar are pleased that the Federal Circuit Court of Appeals has unanimously vacated the district court's contempt ruling regarding our software design around. We are disappointed, however, that the Federal Circuit in a 7-5 split decision has affirmed the district court's ruling on the disablement question. We intend to seek review of that part of the decision by the United States Supreme Court and seek a stay of the injunction while doing so. We also will be making a motion to dissolve the injunction based on Tivo's recent representations to the Patent and Trademark Office substantially limiting the scope of the claims at issue in this case. Existing DISH Network customers with DVRs are not immediately impacted by these recent developments. The disablement ruling covers only certain older generation MPEG2 DVRs. We have already upgraded many of these customers and, if we are unsuccessful in obtaining a stay, we will work as quickly as possible to upgrade the remaining customers to our current generation DVRs, as these are not at issue in the ruling."


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## [email protected] (Dec 1, 2007)

Sasparilla said:


> Wow, looks like a big win for TiVo, the stock jumped almost 50% this morning although it is settling some now.
> 
> Be interesting to see what happens now.


Well, it's kind of a mixed decision.

The good part, for TiVo, is that the court basically ruled that Echostar can't keep dredging up new hypothetical grounds for appeal and disguise them as a contempt hearing; the time has long passed for those sort of games.

The bad parts are (i) there's a pretty strong minority dissent arguing in favor of Echostar, which may prompt a higher court review of this rulng, and (ii) part of the original court ruling has been reversed, and another part sent back to the lower court for a factual determination.

All in all, I expect this will just prolong the whole mess for another year or two. But there was enough in TiVo's favour for them to be pretty sure of having the financing necessary to continue the battle.


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## timckelley (Oct 15, 2002)

In the end, how much of the $ goes to the lawyers instead of TiVo? Echostar could have just bent over and paid, and saved lawyer fees, but then again, maybe they'd rather pay lawyers than let TiVo get money.


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## DeWitt (Jun 30, 2004)

From a quick read, looks like Two parts. One the original infringing boxes and the contempt for ignoring that injunction and second the issue of continuing infringement and new boxes and contempt associated with that.

Looks like clear win for Tivo for the original infringing boxes and the associated contempt award, but final determination of continued infringement and contempt award for that goes back to the lower court.


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## timckelley (Oct 15, 2002)

orangeboy said:


> Nothing like "swift justice", huh?


It's the long sllooooooowww arm of the law. It doesn't seem right that it should take this long.


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## DianaMo (Oct 22, 2003)

TiVo Soars on Judgment Against EchoStar and Dish
http://www.cnbc.com/id/42688231


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## MichaelK (Jan 10, 2002)

GBL said:


> ENGLEWOOD, Colo., April 20, 2011 /PRNewswire/ -- DISH Network L.L.C., a subsidiary of DISH Network Corporation (NASDAQ: DISH), and EchoStar Technologies L.L.C., a subsidiary of EchoStar Corporation (NASDAQ: SATS), issued the following statement regarding the decision by the U.S. Federal Court of Appeals regarding Tivo:
> 
> "...The disablement ruling covers only certain older generation MPEG2 DVRs. We have already upgraded many of these customers and, if we are unsuccessful in obtaining a stay, we will work as quickly as possible to upgrade the remaining customers to our current generation DVRs, as these are not at issue in the ruling."


Wonder how much of echostars strategy is based on stallong long enough to just swap all the offenders?


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## CuriousMark (Jan 13, 2005)

MichaelK said:


> Wonder how much of echostars strategy is based on stallong long enough to just swap all the offenders?


It appears that they have already replaced around 3/4 of the offending DVRs with newer MPEG4 capable models that have not been litigated.


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## MichaelK (Jan 10, 2002)

CuriousMark said:


> It appears that they have already replaced around 3/4 of the offending DVRs with newer MPEG4 capable models that have not been litigated.


...



[email protected] said:


> Well, it's kind of a mixed decision.
> 
> ...
> 
> All in all, I expect this will just prolong the whole mess for another year or two. But there was enough in TiVo's favour for them to be pretty sure of having the financing necessary to continue the battle.


Problem solved
"Yes your honor we agree it finally is time to shut down the remaining offending units. We will shut them both off tomorrow."


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## orangeboy (Apr 19, 2004)

MichaelK said:


> ...
> 
> Problem solved
> "Yes your honor we agree it finally is time to shut down the remaining offending units. We will shut them both off tomorrow."


As mentioned in another thread:



Worf said:


> While it's true they can license for the remaining period of time, they're still liable for the licensing fees due when they were infringing (which can be treble damages). Otherwise this would be a really big loophole - release a product that infringes, litigate, litigate, litigate, then when product's just about obsolete, license and pay small fee. I believe the treble damages aren't even counted towards the punitive damage award either.


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## MichaelK (Jan 10, 2002)

orangeboy said:


> As mentioned in another thread:


I suspect license fees (even treeble- sp?) is "just a cost of doing business" to Ergen.

It would have been emmensly damaging had he been forced to really shut down 100's of thousands of millions of subs all at once. He couldn't have quickly swapped everyone to new boxes and People would have been pissed and left.

Loosing something like 3 percent (guessing it would have been like 500k out of 15 million?) of your subs in a couple months is a lot more painful then paying a few million a month in fees and fines.

For these service companies- the stock market seems not to really give too much of a rat's butt about profit so long as the subscriber numbers are up.


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## Series3Sub (Mar 14, 2010)

MichaelK said:


> I suspect license fees (even treeble- sp?) is "just a cost of doing business" to Ergen.
> 
> It would have been emmensly damaging had he been forced to really shut down 100's of thousands of millions of subs all at once. He couldn't have quickly swapped everyone to new boxes and People would have been pissed and left.
> 
> ...


Actually, Dish suffered a net loss of subs not too long ago (Dish rebounded later to a net increase), but increased profits and better financials in the same period. No, losing that number of subs is less painful than the money at stake, in the long run.

However, you are correct that Wall Street is far too enamored with the subscriber numbers always increasing. A good example is what I mentioned above. When Dish lost sub for those few quarters, they lost bottom feeders and saw an increase in monthly bills and strong profit Ironically, not having to pay the $500-$700 to acquire a lot of customers sure booted the profits. Financially, they were GREAT quarters. Yet, Wall Street was terribly unhappy at the loss of subs, yet they also hate the cost of acquiring new subs and whine about that, but that is the only way to get new customers. Yes, Wall Street is focused on the quick return too much.


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## vurbano (Apr 20, 2004)

MichaelK said:


> Wonder how much of echostars strategy is based on stallong long enough to just swap all the offenders?


Bingo. We have a winner. (the court wants that too)


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