Judge Lifts Stay in EchoStar’s Suit Against TiVo

A federal judge lifted a nearly five-year stay on EchoStar Technologies’ patent infringement suit against TiVo, potentially setting the stage for yet another face off in court between the companies. U.S. District Court Judge David Folsom, Texarkana, Texas, imposed a stay in the case in July 2006, pending the outcome of a U.S. Patent Office re-examination of four EchoStar patents. EchoStar’s infringement suit against TiVo is separate from one TiVo filed against it that’s pending for the U.S. Court of Appeals for the Federal Circuit (CED Nov 10 p1).

In granting EchoStar’s motion to lift the stay, U.S. District Court Magistrate Caroline Craven said the Patent Office recently ruled that TiVo’s re-examination request didn’t raise “any new substantial question of patentability” with respect to four of the five combinations of “prior art.” The Patent Office did reject claims in one patent granted in 1998 and assigned to IBM that described an input coupling circuit design to feed programming to a receiver. EchoStar is going to drop that patent and another one from the case to focus on the so-called ‘804 patent covering a storage device and a method for transferring program signals to and from it, Craven said. EchoStar sued TiVo and hardware supplier Humax in 2005.

The ‘804 patent was given to Hal Hjalman and three other inventors in 2001 and assigned to IBM. A Patent Office examiner rejected the ‘804 patent in 2008, but the Board of Patent Appeals reversed the decision in July 2010 after EchoStar re-wrote a key term in the patent. TiVo filed another re-examination request for the ‘804 patent in November that the Patent Office rejected Jan. 24, according to court documents.

"By its own terms, the stay in this case entered over four years ago should end,” Craven said. “Given the changed circumstances, the court finds EchoStar will be prejudiced if the stay continues in place. To continue the stay would only further delay this case without likelihood of further simplication of the issues."

EchoStar is “pleased” by Craven’s decision granting its motion and “we look forward to the trial,” the company said in a statement. A trial date hasn’t been set, an EchoStar spokesman said. EchoStar, TiVo and Humax are to file within 20 days a proposed order setting the schedule for the case, Craven said. EchoStar’s suit has been “whittled down” to one patent on which the company “changed its position on the meaning of the claim terms,” TiVo said in a statement.