Delay on Order To Disable EchoStar DVRs

In a victory for DVR pioneer TiVo, U.S. District Court Judge David Folsom has ruled that EchoStar has willfully infringed on TiVo’s patents and EchoStar must essentially disable DVR functionality in all but roughly 190,000 digital video recorders it has distributed to its satellite television customers within 30 days. The judge also denied a request that the injunction be suspended pending appeal, giving EchoStar very little time to strike up a deal with TiVo or another DVR developer in time to keep its subscribers happy.

So: EchoStar took its case to the Federal Circuit Court of Appeals in Washington D.C., which late Friday issued a temporary block on Judge Folsom’s injunction. Meaning, EchoStar can leave customers’ DVRs running while it appeals the decision.

The injunction follows the judge’s ruling in April that EchoStar pay TiVo some $74 million in damages; in addition, Judge Folsom has ordered EchoStar to pay $5.4 million in interest and another $10.3 million in supplemental damages, bringing the total due to TiVo to nearly $90 million. However, Judge Folsom denied TiVo’s request that damages be tripled, finding that EchoStar has not acted in bad faith.

The basis of TiVo’s suit against EchoStar, filed back in January 2004, is that EchoStar’s DVR functionality violated TiVo’s "Time Warp" patent for timeshifted recorded television programming, including the ability to simultaneously store and play back content, pause live television, along with fast-forward, rewind, and slow-motion.

In a statement, TiVo said "TiVo is built on a strong foundation of innovative technology and intellectual property. Beyond the U.S. Time Warp patent, we now hold more than 86 patents in our worldwide patent portfolio and have more than 138 patent applications pending. TiVo has a long list of licensees in the consumer electronics, cable and satellite markets, and we will continue to license our technology under appropriate circumstances and arrangements. We will also continue to vigorously defend our intellectual property for the benefit of our licensees and shareholders."

TiVo has also posted a message on its site for DISH Network subscribers, laying fault for any eventual shutdown of DVR service at EchoStar’s feet; TiVo also solicits contact information and receiver model numbers from DISH Network subscribers interested in knowing more about TiVo.

[Update 1: 2:40 PM, 18-Aug-2006. Including info on temporary block on injunction.]

[Updated 2: 10:02 AM, 19-Aug-2006. Title edit; pointer to TiVo’s message for DISH subscribers.]

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