TiVo demand EchoStar disable 4 million DVRs

TiVo has raised the stakes again since it has now decided to try and ban Echostar altogether from selling the DVRs that infringe on it’s copyright. Last month TiVo successfully sued Echostar for $74 million for violating their DVR patents.

TiVo, the original DVR manufacturer, has been losing money since the company went public in 1999 and is being severely damaged by competition which manufacturer similar DVR devices squeezing away TiVo’s market share. TiVo argue that “Every day that EchoStar sells its infringing DVRs, TiVo loses critical market share”.

TiVo are being exceptionally aggressive with Echostar and have even filed court papers which will force EchoStar to disable the 4 million DVRs already installed in Dish Network subscribers homes. This is especially worrying for both Dish Network and Echostar alike as it would leave their customers without the "time warp" patented features that allow viewers to pause, rewind and fast-forward live TV. Something Dish Network customers will not be very happy with.

The requested injunction applies to Dish Networks DP-625 DVR and the HD ViP622 DVR. TiVo wishes for the DVR function to be disabled in Dish Networks customer’s home via a satellite update.

However Echostar will not be giving up without a fight and have released this press release which states that many of TiVo’s patent claims have already been rejected by the United States Patent Office:

"We are pleased that the United States Patent and Trademark Office yesterday rejected many of TiVo’s patent claims as invalid. That reexamination ruling, together with the favorable decision from the Court of Appeals earlier this month (finding that the Texas court abused its discretion in connection with key trial evidence withheld from the jury), are steps in the right direction as we prepare our response to TiVo’s recently filed injunction motion."

This battle looks far from over with the whole patent argument heading back to the courts. It is still even possible that TiVo could lose the patent rights which they only just recently won. Currently the situation stands with the case being presented to a jury next month to see whether the patent is to be enforced. Such extreme circumstances as having the 4 million EchoStar DVRs disabled look unlikely. A more workable middle ground which would leave the DVRs in place and have EchoStar pay TiVo a licensing fee would be more likely. We shall wait and see…


Update:

TiVo has responded to EchoStars press release claiming that the situation is still in their favour:


"The level of misleading spin that EchoStar is putting out with respect to our patent case against them is quite extraordinary. We are pleased to state that the USPTO issued its first Office Action in the reexamination.

The USPTO reexamined all 61 claims set forth in the Barton patent
confirming the validity of most of the claims, including two of the claims that EchoStar has been found to have willfully infringed. In the Office Action, the USPTO expressly rejected the invalidity arguments put forward by EchoStar. While certain of the patent claims were rejected by the patent office, this should in no way impact the jury verdict. We will now be given an opportunity with the patent office to discuss our claims which we believe should result in a reaffirmed and strengthened patent. We will provide a real understanding of how this process works on our earnings call after close of market today."