Patents battle for TiVo, EchoStar moves forward

Patents involving technology in rival set-top boxes are at heart of the companies' suits. EchoStar's suit has been whittled down from four patents to just one.

Steve Marcus/Reuters/File
A giant inflatable TiVo icon occupies a blowup couch at the 2011 International Consumer Electronics Show in Las Vegas in January. EchoStar's patent infringement case against TiVo is going to go to trial after a federal court lifted a stay on the suit earlier this week. The two companies are involved in rival suits over patents.

EchoStar Corp.'s patent infringement case against rival TiVo Inc. will go forward, after a federal court lifted a stay on the suit on Tuesday. The case will proceed even as TiVo awaits a ruling in its own seven-year-old patent infringement case against EchoStar .

However, EchoStar, which rivals TiVo in the market for set-top boxes that record live television, is disputing just one patent, instead of the four originally named in the suit. The companies did not say when they expect the trial to begin.

The patent pertains to a mechanism that controls how multimedia files are stored, formatted and accessed.

TiVo "remains confident" it didn't infringe upon the patent, the company said in a statement Wednesday.

The two companies' legal battles date to 2004, when TiVo sued EchoStar, then the parent company of satellite television provider Dish Network Corp., for infringing on a key patent used in its digital video recorder set-top boxes, the one that allows consumers to rewind and fast-forward live TV.

In 2005, EchoStar filed a countersuit against TiVo, alleging it violated four of its patents. The following year, the U.S. District Court for the Eastern District of Texas placed a stay, or suspension, on EchoStar's case, pending the federal patent office's re-examination of the disputed patents.

During that process, three of the patent claims were canceled, while TiVo petitioned, unsuccessfully, to dismiss the fourth. In 2008, while these re-examinations were under way, EchoStar spun off Dish Network as a separate company, though the two continue to share management and general counsel.

Dish Network said in a statement that it was "pleased" that the stay was lifted and that it looked forward to the trial.

As for TiVo's case against EchoStar, a court awarded TiVo $200 million in damages, but EchoStar appealed the ruling. The companies made arguments in a hearing in November and are awaiting a ruling.

EchoStar and Dish Network are both based in Englewood, Colo. TiVo is based in Alviso, Calif.

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