Dish Network and Echostar have won a victory this week over TiVo, with the U.S. Patent and Trademark Office claiming TiVo’s patent claims for “time warp” DVR tech are invalid.
The updated ruling comes after the PTO reexamined the patents for a second time.
TiVo said it would follow the ruling with additional arguments.
The decision could still lead to the satellite companies paying damages to TiVo, but the new PTO ruling could still have long-term ramifications in TiVo’s other cases against AT&T and Verizon, says the WSJ.
All the companies have been fighting for years over the patents to the technology that allows for pausing, rewind and fast-forwarding of live TV.
In 2006, Dish and EchoStar were found liable of patent infringement when they began creating their own set-top boxes. The companies are currently in “en banc review,” which will spell out the legal ramifications of the case.
Most expect TiVo to win.
Result for: trademark office
The U.S. Patent and Trademark Office (USPTO) has denied Google’s application to trademark “Nexus One.”
For Google, the rejection is not yet final, giving the search giant a chance to submit more evidence as well as new arguments.
“Registration of the applied-for mark is refused because of a likelihood of confusion with the mark in U.S. Registration No. 3554195,” wrote the USPTO.
No. 3554195 is a trademark of the word “Nexus” that was registered years ago by Integra Telecom, an 11-state wireline phone provider.
For their part, Integra thanked the USPTO for protecting its trademark and says they hope to work out a deal with Google. Adds John Nee, Integra’s vice president of corporate communications: “Google hasn’t contacted us since the PTO issued its objection but we hope we can work together to achieve our respective business goals.”
Result for: trademark office
For several years Echostar has been involved in a legal battle with TiVo over Dish Network DVRs that were found to be infringing on that company’s ‘Time Warp’ patent. To date every court decision has gone in TiVo’s favor. Now they’ve managed to get the US Patent and Trademark Office (USPTO) to re-examine the patent, hoping to have it invalidated.
Echostar released a statement today saying “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.”
Since being sued for patent infringement Echostar has redesigned their DVRs to avoid paying TiVo royalties, but if the patent is upheld they’ll owe TiVo $74 million.
