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TiVo, EchoStar both claim victory in patent ruling

Patent Office reviews 61 patents covering digital video recording technology as part of an ongoing lawsuit.

Candace Lombardi
In a software-driven world, it's easy to forget about the nuts and bolts. Whether it's cars, robots, personal gadgetry or industrial machines, Candace Lombardi examines the moving parts that keep our world rotating. A journalist who divides her time between the United States and the United Kingdom, Lombardi has written about technology for the sites of The New York Times, CNET, USA Today, MSN, ZDNet, Silicon.com, and GameSpot. She is a member of the CNET Blog Network and is not a current employee of CNET.
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Candace Lombardi
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Both TiVo and EchoStar are claiming victory after the U.S. Patent and Trademark Office issued a ruling concerning a series of patents owned by TiVo.

As part of an ongoing lawsuit filed by TiVo against EchoStar, the Patent Office did a formal review of 61 TiVo patents.

TiVo on Wednesday said the Patent Office reaffirmed most of the patents, although it did reject at least two patent claims. The digital video recorder (DVR) company did not say which patents were rejected.

"While certain of the patent claims were rejected by the Patent Office, this should in no way impact the jury verdict," TiVo said in a statement. "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."

Some EchoStar set-top boxes have DVR capabilities. Both EchoStar and TiVo devices use "multimedia time warping system" technology that allows DVRs to record live television while the owner watches a pre-recorded program.

TiVo filed suit against EchoStar in 2004, alleging that its use of that technology infringed on a TiVo patent. In April, a jury awarded TiVo $73.9 million in damages. EchoStar has appealed the jury verdict. However, TiVo is attempting to use the ruling to get an injunction preventing EchoStar from shipping DVRs.

EchoStar is arguing the verdict on the grounds that some of TiVo's patents on the technology were invalid, and earlier this month it won one of its appeals concerning the original court's handling of evidence.

"We are pleased that the United States Patent and Trademark Office yesterday rejected many of TiVo's patent claims as invalid. That re-examination ruling, together with the favorable decision from the Court of Appeals earlier this month...are steps in the right direction as we prepare our response to TiVo's recently filed injunction motion," EchoStar said in a statement.

EchoStar also hinted that it would use the recent U.S. Supreme Court decision in the eBay patent injunction case as part of its argument against TiVo.

TiVo said it plans to provide more details on the patent case during its earnings call Wednesday after the market has closed.