TiVo’s Famous Time Warp Patent: from Setback to Comeback

Scott Daniels | October 7, 2010

Last June we reported that TiVo had sustained a setback when the PTO made final its rejection of claims 31 and 61 of U.S. Patent No. 6,233,389.  Claims 31 and 61 are the key patent claims for TiVo’s digital video software for simultaneously storing and playing multimedia data, e.g., for time-shifting television signals.  But yesterday, the PTO indicated that it had mailed a Notice of Intent to Issue a Reexamination Certificate. Although not yet posted, the Notice is expected to state that the patentability of claims 31 and 61, without amendment, is confirmed.

TiVo’s present success is the result of an interview with the examiners, followed by two very powerful declarations. TiVo was represented at the interview by counsel, but also by TiVo co-founder and ‘389 patent co-inventor Jim Barton, as well as UCLA Professor John Villasenor.  Barton’s declaration, and presumably his presentation at the interview, established a critical nexus between the substantial commercial success enjoyed by TiVo’s digital video recorder and the “automatic flow control” required by claims 31 and 61.  Dr. Villasenor’s declaration detailed the technical distinctions between the ‘389 claims and the prior art, which he asserted “simply reacts to the flow and does not control it.”  Villasenor also argued that one skilled in the art would have no reason to combine the references in the manner proposed in the final rejection.

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.  When EchoStar and Dish then attempted to redesign their software system around the ‘389 claims, Judge Folsom of Texas found that EchoStar and Dish still infringed and awarded TiVo $200 million after conducting a contempt proceeding.  The case for contempt is now before the CAFC, where oral argument is scheduled for November 9, 2010.

Still, issuance of a Notice of Intent is not the same as issuance of a reexamination Certificate.  If the opponents of the ‘389 patent have strong patent or printed publication prior art not previously presented to the PTO, they have approximately three months in which to file another reexamination request.  If such a request were granted, the PTO could withdraw yesterday’s Notice.

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