The US Patent and Trademark Office (PTO) has issued a preliminary finding which would void two claims of TiVo’s Multimedia Timewarping System patent for DVRs. The company says it still expects to prevail in its long patent dispute with Dish Network/EchoStar.
“The Office action is a preliminary finding, entered in the normal course before TiVo has had any opportunity to present its views. TiVo believes that the PTO’s preliminary finding will not affect EchoStar’s appeal of the June 2009 ruling by the United States District Court for the Eastern District of Texas finding EchoStar to be in contempt of court,” TiVo said in announcing the PTO action.
“This is an initial step in the lengthy process known as ‘reexamination,’ and it is not unusual for the PTO to provide a preliminary finding of invalidity and to then later find that the claims are valid after hearing an explanation from the patent owner. Indeed, this is precisely what happened with the first reexamination of the Barton Patent that EchoStar filed in 2005. Among other things, the next step in the reexamination process provides TiVo, for the first time, the opportunity to discuss and distinguish the references presented by EchoStar, and to present new claims,” the TiVo statement said.
There was no immediate comment by Dish/EchoStar. The PTO action involved only two of more than 60 claims in the TiVo patent.
The companies have been in a long legal battle over the DVR patent claims. Dish/EchoStar had to pay TiVo $104 million for patent infringement and is facing a judgment for an additional $103 million, which is on hold pending appeal.
