TiVo Prevails in DVR Patent Dispute

By Ed Oswald, BetaNews

April 14, 2006, 11:39 AM

In a decision that could have implications for the entire digital video recorder industry, TiVo on Thursday won a patent infringement case against EchoStar Communications. A jury awarded the DVR manufacturer $73 million and found that EchoStar willfully infringed on TiVo's patent.

The patent covers how TiVo is able to play one television show while recording another, in addition to various DVR functions including the pausing of live television. EchoStar, which is accused of using TiVo's technology in its recorders for the DISH Network satellite TV service, vowed to appeal the decision.

"We believe the patent - as interpreted in this case - is overly broad given the technology in existence when TiVo filed its patent," the company said. EchoStar added that the TiVo's patent was under review, saying there was "a substantial question" as to its validity.

TiVo plans to ask for a permanent injunction that would bar EchoStar from shipping its DVRs. Such a move would cripple the satellite provider, while sending a message to TiVo's competitors that it will vigorously defend its patent rights.

"TiVo has a long list of licensees in the consumer electronics, cable and satellite markets, and we will continue to license our technology under appropriate circumstances and arrangements," the company said in a statement.

An appeals process is likely to drag on for years. But if TiVo ultimately prevails, it could fundamentally change the DVR landscape. The company would have increased leverage when negotiating with rivals.

Additionally, it could potentially mean new customers for TiVo, as cable and satellite providers may opt to license TiVo's technology directly rather than attempting to develop their own.

While EchoStar may have lost this initial fight, the company has a countersuit in Arkansas that accuses TiVo of infringing on four of its own patents. That case will go to trial in February 2007.