TiVo vs EchoStar - TiVo Wins

ssuchter writes "A jury just ruled in favor of TiVo in their suit against EchoStar, awarding TiVo $73M of the $87M they asked for. From the article: 'TiVo had sought $87 million in damages from the Dish satellite-TV network in a patent dispute that TiVo lawyers said could be "life or death" for the company that sold the first box for pausing and rewinding live television.'"

Expected outcome, also expected to be appealed

[nsafreak]

Well Tivo did win the first trial (or the first battle in the war) but this is far from over. Let's look at a few points: 1) EchoStar posted profits of 1.5 billion [cnn.com] for the year 2005. Tivo by contrast hasn't posted any profits and has lost close to half a billion since their inception. So guess who has the bigger pockets? 2) The next court that EchoStar will likely appeal to typically overturns 40% of the lower court rulings 3) Tivo's patent is currently being investigated by the US Patent Office. If they revoke that patent you can pretty much kiss Tivo good bye. It should be interesting to see how this battle continues.

I have a Dish Network PVR (721)...

[MrFrank]

... and it's not a TiVo. It's a VCR that uses disk instead of tape to do it's recording. Yeah you get the benefits of a random access storage medium, so you can watch whil you record and pause, etc.

But is doesn't have the nice features that TiVo has. I can't record all episodes of a certain show, I can only give it a time to record (and it doesn't auto adjust if a game goed long). I can't tell it to record everything for a certain actor. Amongst other things.

Now I never used a TiVo, but from what I have been told, the Dish PVR doesn't compete.

Dish had a DVR 1st

[Brad1138]

I am surprised that TiVo won this case. Dish network had the 7100/7200 which could pause and record live TV before TiVo's patent. It may have been a piece of shit but it was still first. Obviously Echostars product would improve over time and the similarities of the current models are logical advance in the technologies.

Re:Expected outcome, also expected to be appealed

[MagikSlinger]

I do feel sorry for TiVO, but on the other hand, can anyone read the TiVO patents and explain in plain english was exactly they patented? Even if it is just a "method and system" for digitizing video onto a hard-disk for random-access playback by the user, it would qualify as a novel invention in my books. It's just that, well... didn't the broadcast industry have that LONG before we did? And the basic idea of pausing live television was also used by television networks for instant replay which even used a hard-disk (but an analog one, if memory serves).

I just hope TiVO doesn't get greedy and either tries to become a) an honest corporate citizen and tries to make win-win licensing deals with their competitors, or b) realise that the money is in the "bits about bits" and that their real cash cow is the recommendation service and TV guide.

Some of TIVO's US patents

[nebaz]

Found on a TiVo press release [tivo.com].

US Patents

6,850,691 - Automatic playback overshoot correction system

6,847,778 - Multimedia Visual Progress Indication System

6,792,195 - Method and Apparatus Implementing Random Access and Time-Based Functions on a Continuous Stream of Formatted Digital Data (continuation of 6,327,418)

6,757,906 - Television Viewer Interface System

They also have exclusive licensing rights to

5,241,428 - Variable-Delay Video Recorder

Japanese Patents

3615486 - Multimedia Time Warping System

Chinese Patents

ZL 99804757.0 - Method and Apparatus Implementing Random Access and Time-Based Functions on a Continuous Stream of Formatted Digital Data (see US patent 6,327,418)

ZL 00805987.X - Data Storage Management and Scheduling System

This is of March 2005, they may have more since then. Also, if you want to search the text of the US patents, you can start here [uspto.gov]

Re:ummmm no

[Warlock7]

"The two earliest consumer DVRs, ReplayTV and TiVo, were..." BOTH "...launched at the 1999 Consumer Electronics Show in Las Vegas." [wikipedia.org]

They were both introduced the same year.

DIdn't have 'time warp'

[mgkimsal2]

As a Tivo stockholder, I've been following the trial as closely as I could. The patent focused on what they called the 'time warp' aspect. What came out in testimony was that the original echostar dish stuff could *not* let you watch a prerecorded program *and* simultaneously be recording a new program. It seems this functionality only made its way in to dish products *after* they had access to a Tivo which the Tivo dev team left them during a licensing/partnership meeting. Bad move on Tivo's part to leave equipment in a potential competitor's hands, obviously. What seemed to come out is that it was true the original echostar dish products *didn't* infringe on the Tivo patents, but that's not what they've been selling for a long time - they've been selling products that infringe on the patent.

So, given that such a large company had a 'similar' product on the market *before* Tivo, and it didn't have anywhere close to the functionality which Tivo patented, it would seem to be that the 'non-obvious' or 'novel' aspects of the patent got a significant boost. If it was such an 'obvious' way of performing this trick, the people with an earlier technology would have indeed developed the 'obvious' technique and used it in their product.

TiVo's exact patent

[ssuchter]

TiVo's patent in question is on being able to record one show while using the same device to watch another. Dish's prior recorder that allowed pausing of live TV isn't really prior art of that.

Re:Well, this saves Tivos butt...

[Anonymous Coward]

Reading from and writing to a hard disk at the same time, wow. That's an amazing innovation. Why didn't someone think of that before? Oh wait someone did you just couldn't patent software way back then.

Re:Mixed Feelings

[Anonymous Coward]

Ugh. Everyone who keeps saying "all they did was take a VCR and replace the tape with a hard drive" should be taken out and shot. Or at least hit with a cluestick or something. You may not like the patent, but at least try to make a minimal effort to understand what it is.

A hard disk VCR is not what TiVo's time warping patent is about. Not getting into the technical details, but essentially the patent applies to recording and playing back, simultaneously, TV content to and from a hard drive. You can't do that with tape.

There are also other technical details in the patent, but that's the crucial point to understand. This patent is about a lot more than replacing a tape with a hard drive. Show me a tape that will allow you to watch a TV show on tape at the exact same time you are recording the TV show to that very same tape. Ain't no such animal.

Re:Didn't have 'time warp'

[mgkimsal2]

In many ways it doesn't matter. There are people that patent things with only prototypes. Especially in the 90's, everything in the world relating to software was being patented, even if it was trivially obvious. Something else that came out in trial, from what I gathered (trying to read a bit in to what quotes I managed to read) was that Echostar developers didn't even *try* to put that feature in. If they had tried, and had any documentary evidence (meeting notes, prototypes, etc) that would have been produced as evidence that they'd been working on 'obvious' functionality like that before Tivo. None of that came out, because it was not, in fact, that obvious how to do this.

Tivo has numerous other patents from what I understand, but this was the one at the heart of this trial, and hopefully will be upheld. The only way I can see it being overturned would be if echostar introduces new evidence (which I'm not sure they can do at this stage of the process).

Echostar has released a statement

[Brad1138]

EchoStar Statement Regarding VERDICT IN TiVo Inc. v. EchoStar Communications Corp. LAWSUIT

April 13, 2006 - This is the first step in a very long process and we are confident we will ultimately prevail. 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. We believe the decision will be reversed either through post-trial motions or on appeal. Additionally, the Patent Office is in the process of re-examining TiVo's patent, having determined there is a substantial question concerning the validity of the patent.

DISH Network subscribers can continue to use the receivers in their homes, including their DVRs. Furthermore, TiVo dropped their claim that EchoStar's Dishplayer 7200 DVR infringes their patent.

Re:I have a Dish Network PVR (721)...

[Anonymous Coward]

Having seen and played with EVERY Dish PVR, as well as Series 1, Series 2 and DirecTV Tivo units, I can say hands down that the Dish Network boxes are big huge steaming piles compared to ANY offering by Tivo. It's not even close.

Dish has gotten better, but they haven't even come close to the Tivo yet.

And yes, I am the current owner of 2 DirecTV Tivo units. I bought them after evaluating both Dish and DirecTv's DVR options.

State Law: The damages will probably be reduced.

[mrbriguy]

Even if EchoStar fails in appeals court, the Damages will most likely be capped depending on State law. I think about 30 states have caps on punitive damages, VA being the most extreme - where punitive damages are caped at $350,000 even. Jury's aren't told about the caps. They come out of the court room thinking they really stuck it to the defendant, and as soon as they leave, the Judge reduces the number according to the state's law. (That one that applies is where the injury occurred)

Newspapers almost always report the non-capped number. Rarely if ever will we find out about the final judgment - sometimes billions of dollars less than what was initially proposed.

The Texas state law for Punitive Damage's [pointoflaw.com](as explained in the context of the Merck/Vioxx trials) is a little confusing, and potentially dangerous to EchoStar since TiVo is claiming they have had $650 million in economic damages in the past nine years. But if TiVo really believed that was true, I suspect it would have sought much higher damages than they did.

Re:State Law: The damages will probably be reduced

[Free_Meson]

Patent infringement cases are exclusively federal jurisdiction, so any state laws pertaining to damages would be completely irrelevant. More importantly, there aren't "punitive" damages in patent infringement cases -- the patentee is entitled to lost profits or a reasonable royalty for past infringement and an injunction against future infringement. Where the jury finds the infringement to be willful, that number can then be trebled.

Re:I have a Dish Network PVR (721)...

[just_another_sean]

I also have a Dish Network DVR and I *can* tell it to record all episodes of a certain show. I can set a timer for just a certain time slot/channel (e.g. Simpsons, Sunday night 8:00) or as I like to do with Adult Swim, tell it to find all episodes of Harvey Birdman and record those (Adult Swim is famous for their schedules being out of sync with the guide, which is what my DVR seems to go by when scheduling things).

And my wife, a big fan of 24, set a timer that records all episodes of 24, regardless of time and channel. She get's reruns from A&E (It think, from somewhere anyway) and the new ones on Monday night.

Finally there is a feature called "Dish Pass" that allows you to search for a keyword and then record all related programming. I don't like this one though because it can be a little overzealous if you're not careful. (a search for Venture Brothers turned up Jack Hannah's Animal Adventure for example).

I would guess that I just got mine later the you...

Re:Expected outcome, also expected to be appealed

[sh00z]

TiVo picked this patent fight with Echostar because it was an open and shut case

I'm on TiVo's side on this one, but your assertion is false. If it were an open and shut case, TiVO would not bave thought it necessary to bring suit in the most plaintiff-friendly venue [foxnews.com] in the country: BFE, Texas.