The world of technology patents is a confusing one indeed. One of the better-known technology patent battles in recent years has been TiVo’s patent victory against Echostar, in which TiVo’s so-called "time-warp" patent for DVR usage was upheld, and Echostar (the corporate parent of Dish Network) was found to have infringed on it to the tune of over $70 million. The case bolstered TiVo’s claims to have pioneered the DVR field, and have helped give the company a new lease on life as it makes deals with cable companies like Comcast, who are no longer eager to roll the dice on the validity of TiVo’s patents.
Dish Network, for its part, is trying to avoid having to pay royalties to TiVo for the use of its patented technology—and it also doesn’t want to have to disable DVR functionality in its customers’ set-top boxes, which would no doubt lead to significant customer defection to other services. So Dish Network and Echostar have been trying to develop a "patent workaround" technology which enables them to continue offering DVR services without technically infringing on TiVo’s patents. TiVo has been skeptical of the efforts, with TiVO CEO Tom Rogers noting last week along with TiVo’s quarterly results (PDF) "based on what we’ve been provided by EchoStar to date, we believe that EchoStar’s modified software does not avoid infringement."
It seems Disk Network and Echostar are eager to prove their technology does not infringe on TiVo’s patents, and, to prove it, they’ve turned the tables and sued TiVo. The companies want a Delaware court to declare that their patent workaround successfully skirts TiVo’s multimedia time-warping patent.
In the meantime, TiVo is widely expected to ask a federal judge to mandate Dish Networks shut down DVR functionality for continuing to infringe on TiVo’s patent in contempt of the earlier ruling—if the judge agrees, Dish may have to execute a license for TiVo’s patents in order to keep its DVR functionality operational. However, Dish Networks maintains it is in full compliance with the earlier injunction.
