Scott Daniels | November 12, 2010
TiVo is now testing in EchoStar v. TiVo, (E.D. Tex., 5:05-cv-00081) the limit to which an accused infringer may stay litigation pending completion of the reexamination process.
EchoStar sued TiVo in 2005 for infringement of U.S. Patent Nos. 5,774,186 and 6,208,804 related to direct access TV technology. TiVo replied by requesting reexamination of the patents, and the trial court stayed the litigation pending completion of the reexaminations. After vigorous and prolonged prosecution, the PTO issued Notices of Intent to Issue a Reexamination Certificate (NIRC) for the ‘186 and ‘804 patents, in August and July respectively. It appeared that the patents were on their way out of reexamination, and on October 29th, EchoStar asked the trial judge to lift the stay and resume the litigation.
TiVo, however, moved quickly to keep the patents in reexamination and the litigation in check. On November 8th, it filed a new reexamination request against the ‘186 patent. The next day it filed a new request against the ‘804 patent. And on November 11th, TiVo filed with the court an opposition to EchoStar’s request to resume the case, calling the request “premature.”
TiVo’s new requests are not yet publicly available, but in its opposition to resumption, TiVo offers the briefest of previews: the request against the ‘186 patent points out the “deficiencies” of EchoStar’s arguments in reexamination, and the request against the ‘804 patent shows why the claims as now construed by EchoStar are invalid “in light of additional prior art.”
EchoStar will undoubtedly cry foul, asking whether the requests do, in fact, raise substantial new questions of patentability, and, in the case of the new ‘804 request, when did TiVo become aware of the additional prior art. EchoStar might also ask at what point does the reexamination process rob a patentee of its statutory right to exclusivity.
The District Court case involved a third EchoStar patent – U.S. Patent No. 6,529,685 – that was subjected to reexamination where all claims were canceled.