Confusion in DVR Patent Land

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With the injunction placed on DISH over their DVRs comes a great deal of confusion over what is really about to happen.

First, certain DISH DVRs found to infringe on certain of TiVo´s patents are the subject of an Injunction which orders that those models no longer be put into service and that the DVR functionality on the ones already in service be disabled no more than 30 days after the injunction takes effect. Initially DISH was found to infringe on both hardware and software claims, but an Appeals Court ruling eliminated the hardware claims for now, leaving only software infringement.

During the appeals process, the injunction had been stayed by the Appeals Court, but that stay is over and the injunction is now in effect. One point of confusion is whether the 30 days ran during the stay. DISH´s actions at this point imply they believe the 30 days did not run, and thus DISH has so far only taken steps to stop the deployment of the subject DVRs, but has not yet disabled the DVR functions in active units. I tend to agree with this because for the 30 days to have run would have undermined the authority of the Appeals Court; that Court stayed the injunction in whole, not in part; the 30 day clock is a part of the injunction itself.

DISH claims they have newer software which does not infringe which has already been loaded onto the boxes. Thus DISH will try to claim the injunction is no longer necessary because the hardware claims are no longer applicable and the software no longer infringes – how can you enjoin the use of something that doesn´t infringe in any way? The fact that the scope of infringement has significantly changed since the Appeallate ruling could well be a factor in arguing for a modification of the injunction. I think it is likely that DISH will have to demonstrate its software does not infringe for the Judge to lift the injunction in whole or in part, however there may be some delays granted by the Court and reasonable opportunities for DISH to do so before the DVR functions are required to be shut down. There may also be an Appeals process over this which could further stay the DVR shutoff.

The next question is can the DVR functionality be disabled without turning the entire box off; ie. can the box be turned into a STB and honor the injunction? I believe it is very likely this can be done. Thus rumors of complete catastrophy for DISH are exaggerated. A lot of chest thumping about massive fines and contempt of court is likely just that at this point.

As it stands, the Court has ordered a status conference for May 30th, giving TiVo until May 16th to lay out its position and DISH May 23rd to repsond. I don´t think anything serious is going to happen to DISH in the interim in terms of fines, but subscribers might lose their DVR functionality. The next 3 weeks will reveal a lot about the parties´strategies and positions as we see motions, etal.

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One Response to “Confusion in DVR Patent Land”

  1. HDTiVo Says:

    For a little info on the business of IP litigation…

    http://www.dailyreportonline.com/Editorial/News/singleEdit.asp?individual_SQL=4%2F25%2F2008%4022920

    Firms stand to make serious money from the work. In 2007, patent litigation with more than $25 million in damages at stake netted a median of $5 million in fees, according to data collected by AIPLA. Trademark litigation with more than $25 million at stake resulted in a median of $1.25 million, and copyright litigation with more than $25 million at risk offered a median of $1 million in fees.

    The copyright dispute raging between Google and Viacom over video sharing on Google-owned YouTube shows just how massive IP cases can be. Fifty lawyers from Mayer Brown are in the throes of discovery for Google. One of the lead attorneys on the case, Washington partner Richard Ben-Veniste, says the team is in the process of reviewing about 10 million documents

    At the beginning of this year, Waxman and fellow Wilmer partner Edward DuMont secured a Federal Circuit victory for TiVo Inc. against EchoStar Communications Corp. The court upheld a previous verdict that EchoStar had infringed a TiVo patent, and awarded damages of $74 million.

    On May 5, Waxman is set to argue another patent infringement matter for clients ArvinMeritor, Pressure Systems International and Equalaire Systems in the Federal Circuit.

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