A Setback for TiVo Reexamination Patent

Scott Daniels | June 10, 2010

This past Friday, the PTO made final its rejection of claims 31 and 61 of U.S. Patent No. 6,233,389, the key patent claims for TiVo’s digital video software for simultaneously storing and playing multimedia data, e.g., for time-shifting television signals.  The Reexamination Request was filed by Dish Network in November 2008.

Although certainly disappointing for TiVo, the final rejection does not “invalidate” the ‘389 patent as at least one news source has reported – TiVo may still seek reconsideration from the examiner, and if unsuccessful with the examiner, TiVo may appeal to the PTO Board and if necessary to the CAFC.  Nevertheless, the examiner appears to be quite firm in his analysis of the ‘389 claims and the prior art, and he is unlikely to withdraw the rejection.  Even if he adopted TiVo’s narrow construction of the claims, the examiner states, he would still find them to be obvious over the prior art.  And, as we have previously reported, the PTO Board has a consistent record of affirming rejections in reexamination proceedings.

Previously, TiVo had sued EchoStar and Dish Network for infringing the ‘389 patent and obtained a judgment of $74 million, as well as an injunction against future infringement.  That judgment was affirmed by the CAFC in 2008.

EchoStar and Dish then attempted to redesign their software system around the ‘389 claims, but Judge Folsom found that EchoStar and Dish still infringed and awarded TiVo $200 million after conducting a contempt proceeding.  The CAFC initially affirmed the award in March, but later vacated its opinion and ordered an en banc rehearing – specifically asking for briefing on a series of questions on how to handle infringement allegations in post-judgment contempt hearings.  Oral argument is scheduled for November 9, 2010.

EchoStar has also sued TiVo for infringement of three patents.  That case has been stayed, however, pending completion of reexaminations of each of the patents.  Reexamination has been ordered for one of the EchoStar patents, and the other two are now on appeal before the PTO Board.

Last summer TiVo sued AT&T and Verizon for infringement of the ‘389 patent and two other patents, and Verizon subsequently counter-claimed against TiVo for infringement of six Verizon patents.  Further reexaminations seem to be inevitable.

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