US$300m TiVo victory set for retrial
Digital TV company TiVo will not be collecting its US$300m winnings from a patent lawsuit against rivals Dish Network and EchoStar any time soon, after an appeals court agreed to a fresh hearing of the case.
The US Appeals Court for the Federal Circuit on granted EchoStar's petition for a rehearing en banc, which means all the judges on a court will be present for a rehearing of the patent dispute between the TV service providers.
In March the appeals court upheld a lower court ruling which confirmed that Dish Network and EchoStar infringed, and continued to infringe, TiVo's digital video recording patent despite a court injunction against them in 2006.
The verdict meant TiVo was cleared to claim around US$300m that had accrued against Dish and EchoStar through to 1 July 2009, as well as additional damages and legal fees. Dish and EchoStar were also told to switch-off DVR services to nearly half-a-million customers.
In a statement EchoStar said, "Dish Network and EchoStar are pleased that the full Federal Circuit Court of Appeals has granted their petition for rehearing en banc. We believe the issues that will be considered by the full court on rehearing will have a profound impact on innovation in the United States for years to come."
TiVo sued Dish and its sister company EchoStar in 2004, alleging that they had infringed TiVo's patent for DVR technology. A court ruled in 2006 that TiVo's patent was infringed and ordered Dish to pay US$104m.
As the case went to appeal, Dish modified its DVR software, distributing the new version to its customers. TiVo said the software still infringed its patent and asked the courts for a permanent injunction. On 2 June 2009, a court agreed with TiVo in granting the injunction and ordered the two companies to pay an additional US$103m plus interest from the 2006 order of damages.
The judge had given the companies 30 days to disable the infringing DVR's, but they were allowed to carry on their services pending the result of an appeal.
In the three-panel appeals court decision, two of the judges found that the lower court was right in ruling that Dish and EchoStar's redesigned software continued to infringe TiVo's patent and the companies were therefore in contempt. But the dissenting judge, Randall Rader, said the court was punishing a company that had made a good faith effort at a redesign.
TiVo said it was disappointed with the court's decision to review the March verdict. "We are disappointed that we do not yet have finality in this case despite years of litigation, but we remain confident that the Federal Circuit's ruling in our favour will be reaffirmed after all of the judges on the Federal Circuit have had the opportunity to review the merits of this case," the company said in a statement.
A new court date has not been set, but both sides have 42 days to file briefs. TiVo has similar suits against AT&T, Verizon Communications and Microsoft pending in the courts, over the same patent.
