Updates on Stays for EchoStar v. TiVo, Sorenson ‘184 Patent, Alps v. Willow Wood

Scott Daniels | March 30, 2011

1.     EchoStar v. TiVo Case Resumes despite New Reexamination Requests

Last November (here) it appeared that EchoStar’s U.S. Patent Nos. 5,774,186 and 6,208,804 for direct access TV systems were about to emerge successfully from reexamination and that the trial judge would lift the stay of EchoStar’s case against TiVo for infringement of those patents.  TiVo moved quickly, however, to try to stop the reopening of the litigation by filing new requests for reexamination of the ‘186 and ‘804 patents. 

Magistrate Judge Caroline M. Craven has now lifted the stay of EchoStar’s case.  She noted that the PTO has denied TiVo’s new request for reexamination of the ‘804 patent; and although a new reexamination was granted for one out of the five SNQs proposed by TiVo against the ‘186 patent, EchoStar has now provided TiVo with a covenant no to sue, thereby removing any reexamination of that patent as an obstacle to resumption of the litigation.  Magistrate Judge Craven explained that “the current stay has been in place for four-and-a-half years,” so that to “continue the stay would only further delay this case without the likelihood of further simplification of the issues.”  She also scheduled a June 2011 claim construction hearing and a June 2012 trial for the remaining ‘804 patent.

TiVo, for its part, has petitioned the denial of its ‘804 reexamination request and the denial of four of its five proposed SNQs regarding the ‘186 patent.   We doubt that either petition will be granted. 

2.     Sorenson Scores Major Comeback

Sorenson Research & Development Trust, owner of U.S. Patent No. 4,935,184 for a cyclic injection molding method (here), has won its appeal of the examiner’s rejection of the ‘184 claims in reexamination.  The ‘184 patent is the subject of numerous license agreements and perhaps even more infringement actions.  Those actions had been stayed pending completion of the ‘184 reexamination and are now likely to be reopened. 

3.     Trial Judge Grants Willow Wood’s Renewed Stay Motion

Judge Elizabeth Kovachevich had previously denied the accused infringer’s motion to stay pending completion of a reexamination of the patent in Alps South v. Willow Wood.  When Willow Wood recently renewed its stay motion after the PTO’s final rejection in January of all the claims, Judge Kovachevich changed her mind and stayed the case (2011 U.S. Dist. LEXIS 31666).  She explained that in view of the developments at the PTO, the “benefit of expertise provided by the PTO will aid both the parties and this Court.”

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