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TiVo Looks to Shut Down EchoStar TV 'Time Warping' System

On the heels of winning a $74 million verdict in its patent-infringement case against the DISH Network satellite television provider, digital-recording pioneer TiVo Inc. is preparing to ask a federal court to bar the rival company from continuing to distribute a device that allows users to pause or rewind live TV programs.

TiVo will make its case for a permanent injunction against EchoStar Communications Corp. during a bench trial slated to begin June 26, according to a scheduling order handed down by U.S. District Judge David Folsom.

In April a federal jury in Texas agreed with TiVo's claim that EchoStar willfully infringed TiVo's patent for a "multimedia time-warping system."

Because the jury concluded that EchoStar had willfully infringed the patent, Judge Folsom could triple the damages.

TiVo filed suit in January 2004 in the U.S. District Court for the Eastern District of Texas, alleging that EchoStar started infringing its technology in May 2001 when TiVo first obtained the patent.

EchoStar responded with a counterclaim alleging that the patent is invalid and unenforceable. The company also argued that TiVo used technology patented by EchoStar between 1998 and 2003.

Despite losing at trial on TiVo's claim, EchoStar noted in a statement that the U.S. Patent and Trademark Office is currently in the process of examining its claim regarding the validity of the TiVo patent.

The company added that it is looking forward to trial of its own patent case against TiVo in February 2007.

EchoStar also stressed on its Web site that the verdict is only the first step in a "very long process" and that the company believes the decision will be reversed either through post-trial motions or on appeal.

"Among other things, we believe the patent — as interpreted in this case — is overly broad given the technology in existence when TiVo filed its patent," EchoStar said.

Judge Folsom said in his scheduling order that both sides will need to hand in all of their briefing on the permanent injunction motion before June 13.