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EchoStar has a countersuit just waiting for TiVo

TiVo has been busy as of late, not on product releases but in the courts. TiVo earlier this year filed a suite against EchoStar seeking to stop EchoStar from shipping its PVR products. TiVo claimed that EchoStar had infringed on patents that TiVo owned. The patents themselves had to do with a method that TiVo used to record one show while another show was being watched. While this may seem like a feature that's a natural evolutionary step for PVR and home theater PCs, the method for doing so technically belongs to TiVo. According to TiVo's press release:

TiVo is pleased that the jury found that TiVo's pioneering time warping patent is valid and that EchoStar has been infringing on our intellectual property. TiVo is particularly gratified that the jury found that EchoStar willfully infringed on our patent and the consequences their actions had on our overall business. This decision recognizes that our intellectual property is valuable and will ensure that moving forward EchoStar and any others that want to use our patented technology will be required to provide us with compensation.

EchoStar ended up not only being accused of patent infringement, but willfully infringing on TiVo's patents. This means that EchoStar knew about the patents but decided to build devices using the technology anyway. In the US legal system, such accusations are hard to escape. According to the ruling, the injunction could very well happen, but a final hearing will take place in June. Of course, EchoStar is appealing.

According to some reports, EchoStar said it was actually pleased that the courts decided to more carefully examine the case before making a final decision. EchoStar believes that it has the rights to use the technology, especially because its general and any dual-tuner device would be able to do such a feat. In response, TiVo said that it was appalled about the amount of "spin" EchoStar was putting forward. "The level of misleading spin that EchoStar is putting out with respect to our patent case against them is quite extraordinary," said TiVo representatives.

EchoStar apparently has a countersuit for TiVo, which it is waiting to press forward for 2007.

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Not quite the whole truth
By patentman on 5/26/2006 7:50:16 AM , Rating: 3
"EchoStar ended up not only being accused of patent infringement, but willfully infringing on TiVo's patents. This means that EchoStar knew about the patents but decided to build devices using the technology anyway ."

This is only part of the story of willfuil infringement:

35 U.S.C. §284 provides the statutory basis for willful infringement in patent cases, and a court to increase the damages awarded up to three times the amount found or assessed.

The test for willful infringment requires two elements to be shown, specifically:
1. Did infringer have actual notice of the patent?; and if so

2. Did the patentee fail to meet their affirmative duty to avoid infringement?

Note that, "actual notice" means that the infringer had actual knowledge of your patent and had actual knowledge that they might infringe.
-But also note that there is no affirmative duty to research pending patents

If the answer to elements 1 and 2 is yes then the infringement was willful.

However:

-An infringer can show that he met their affirmative duty to not infringe by:
A) getting an opinion from counsel; and
B) Reasonably relying on that opinion.

Whether or not an infringer "reasonably relied" on an opinion is dependent on many factors, including:

1) When the opinion was obtained

2) The Content of the opinion:
-opinion must not simply state conclusory things; it has to consider literal infringement, obviousness, the doctrine of equivalents, prosecution history etc.

3) The qualifications of the opinion giver:
-the person giving the opinion should be of the same technical background as the technololgy in the patent and have patent experience.

4) The qualifications of person getting the opinion:
-if the entity getting the opinion has little patent experience, it is more reasonable for them to rely on a conclusory opinion then a company that has experienced in house counsel who have years of patent experience.

Finally, the court considers many factors in determining if they are going to enhance damages, and if so, by how much. these factors include:

1) Whether the infringer deliberately copied the ideas or design of another;

2) Whether the infringer, when he knew of the others patent protection, investigated the scope of the patent and formed a good faith belief that the patent was invalid or that they did not infringe;

3) The infringer’s behavior as a party to the litigation litigation

4) The infringer’s size and financial condition

5) Closeness of the case with respect to willfulness
-If it was a very close case on willfulness the its less likey that damages will be enhanced

6) Duration of infringer’s misconduct:
-longer infringement -> more enhancement of damages

7) Remedial action by the infringer
-If infringer voluntarily remediated infringing conduct -> less enhancement

8) Infringer’s motivation for harm
-If infringer’s acts are pernicious to P, more enhancement; and

9) Whether the infringer attempted to conceal its misconduct
-If yes, then more enhancement




Typo
By Bull Dog on 5/26/2006 10:59:15 AM , Rating: 1
quote:
seeking to stop to stop EchoStar




RE: Typo
By timmiser on 5/27/2006 1:06:27 AM , Rating: 2
Hooray for you.


The method
By Trisped on 5/26/2006 5:51:33 PM , Rating: 2
quote:
The patents themselves had to do with a method that TiVo used to record one show while another show was being watched.
The method, not the idea of using a second tuner to record one show while watching another (something I have done with my VCR/TV for years). They are saying that EchoStar stole the way that they do it. What that way is I am not sure, but if someone was to read the patent they would surly find a way to create the same effect without coping the patented system/method.

Didn't Microsoft have a PVR that could record a show, plus record what you were watching? Did TiVo sue them too?




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