In the ongoing patent spat between DISH Network & EchoStar and TiVo there has been another exchange. First DISH Network issued this statement:

DISH Network Corporation (Nasdaq: DISH) and EchoStar Corporation (Nasdaq: SATS) issued the following statement regarding recent developments in the TiVo Inc. v. EchoStar Communications Corp. lawsuit:

“We are pleased that the Patent and Trademark Office (PTO) granted our Petition for Re-Examination of the software claims of TiVo’s ‘389 patent, which are the subject of TiVo’s current motion for contempt. The PTO found that there is a ’substantial new question’ of patentability as to the software claims in light of prior patents that appear to render TiVo’s ‘389 patent invalid as obvious.”

And TiVo responded with their own statement:

TiVo Inc. (Nasdaq: TIVO), the creator of and a leader in television products and services for digital video recorders (DVR), offered the following statement today regarding the decision by the United States Patent and Trademark Office to reexamine the software claims of TiVo’s Time Warp Patent:

“EchoStar filed its latest request for reexamination after TiVo asked the United States District Court to hold EchoStar in contempt of the Court’s injunction requiring EchoStar to disable its DVR functionality. An evidentiary hearing on the contempt issues is scheduled to be held on February 17 and 18, 2009.

“EchoStar’s latest tactic follows numerous failed attempts to invalidate TiVo’s groundbreaking Time Warp patent. In 2006, the District Court rejected all of EchoStar’s validity challenges after a full jury trial and the judgment of validity was affirmed by the Federal Circuit in 2008. The USPTO also conducted a prior reexamination of the Time Warp Patent at EchoStar’s request, which concluded on November 11, 2008, with the USPTO issuing a Reexamination Certificate confirming the validity of all of the claims of the Time Warp Patent without any change. EchoStar’s latest request for reexamination is based on a combination of two prior art references that were both already submitted to the USPTO in connection with the earlier reexamination. The USPTO grants most patent reexamination requests. Contrary to EchoStar’s statement, the USPTO made no substantive findings. We are confident that the USPTO will once again confirm the validity of all of the claims of the Time Warp patent.”

Round and round we go…

The EchoStar HD DuoDVR SlingLoaded ViP 922 won CNET’s “Best of CES” today, and two of G4’s judging panelists, Attack of the Show host Kevin Pereira and Wired’s Chris Hardwick, both picked EchoStar’s SlingLoaded 922 as their very favorite out of the entire 2009 CES. The EchoStar 922’s unique user interface and remote control were also selected as CES Innovations 2009 Design and Engineering Award honorees prior to the show.

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On November 20th the U.S. District Court of Texas set a date of February 17, 2009 for a bench trial to determine if EchoStar’s software is still infringing on TiVo’s patents. But now, according to the San Jose Mercury News, Dish Network is angling for a jury trial on the issue.

If the U.S. Court of Appeals for the Federal Circuit in Washington decides that a jury trial is warranted, it would bring everything around to where it was a few years ago - a trial to determine if TiVo’s patents are being infringed. While the jury in the first trial sided with TiVo, and the verdict was upheld on appeal, Dish claims that their new software is no longer infringing. So if a new trial is granted it’d be the same case, redux.

I Am Not A Lawyer, but it seems odd to me. Can this be stretched out indefinitely just by issuing software updates and saying each one needs a new jury trial to determine if it is infringing? I think this show jumped the shark.

Disclaimer: I work for Sling Media, which is owned by EchoStar.

On Thursday the United States District Court of Texas set a date for a bench hearing to decide of EchoStar and DISH Network’s software workaround makes their DVRs non-infringing to TiVo’s patents, as well as if they’re in contempt of the court’s injunction and if more damages are owed to TiVo, on top of the $104.6 million already awarded. The bench trial will take place February 17, 2009.

After the announcement, EchoStar and DISH Network issued this statement:

“We are pleased that the district court did not find us in contempt on the face of the injunction. We look forward to the February bench trial on our software design-around. Our subscribers can continue using their award-winning DVRs from DISH Network.”

TiVo responded with a statement of their own:

“We are pleased that the U.S. District Court has scheduled a hearing on EchoStar’s purported workaround on February 17, 2009. Contrary To EchoStar’s statement today, the Court did not rule on TiVo’s pending motion for contempt of the injunction. The Court will do so after the hearing as well as rule on the amount of damages owed to TiVo beyond the nearly $105 million already paid by EchoStar. This is a positive step, particularly the accelerated discovery ordered by the Court, towards the ultimate resolution of all issues in the litigation and we remain confident that we will prevail in showing that EchoStar’s workaround does not avoid infringement.”

So more jousting on both sides. Now we stay tuned until February.

UPDATE: TiVo issued a revised statement today, note the difference:

“We are pleased that the U.S. District Court has scheduled a hearing on EchoStar’s purported workaround on February 17, 2009. Contrary to EchoStar’s statement yesterday, the Court did not rule on TiVo’s pending motion for contempt of the injunction. The Court will do so after the hearing as well as rule on the amount of damages owed to TiVo (which EchoStar admitted at the September 4, 2008 hearing are owed) beyond the nearly $105 million already paid by EchoStar. This is a positive step, particularly the accelerated discovery ordered by the Court, towards the ultimate resolution of all issues in the litigation and we remain confident that we will prevail in showing that EchoStar’s workaround does not avoid infringement.”

Disclaimer: I work for Sling Media, which is owned by EchoStar.

In a larger article in TWICE about the Community Broadcasters Association (CBA) joining with Dish Network to promote their digital-to-analog converter boxes was a little nugget I found interesting.

Dish Network is selling several converter boxes — the TR-40 CRA, DTVPal, DTVPal Plus and the DTVPal DVR (the latter available latter[sic] this month) — that will receive and convert digital TV signals to analog and pass through remaining low-power TV channels.

Information on the DTVPal DVR, introduced back at CES as the EchoStar TR-50, has been pretty scarce. It is an OTA-only DVR, basically a DTVPal (TR-40) converter box with added DVR features. So it’ll be interested to see those hit the market.

As for the main subject of the article, the CBA will be teaming with Dish Network to promote Dish’s lineup of converter boxes to TV viewers who will be impacted by the February 17, 2009 digital transition.

Disclaimer: I work for Sling Media, which is owned by EchoStar, who makes the boxes for Dish Network.

Following the Supreme Court’s decision Monday not to hear the case, DISH Network yesterday paid TiVo $104,600,472. That covers the initial $74 million damages award, plus interest and supplemental damages through September 8, 2006. TiVo is still pursuing additional damages and seeking to enforce the injunction against DISH in the District Court of Texas. TiVo issued the following statement:

“We are pleased to have received $104,600,472 from EchoStar on October 8, 2008, which includes the initial $74 million in damages awarded by the United States District Court for EchoStar’s willful patent infringement as well as supplemental damages covering the period through September 8, 2006 and interest. We remain confident that the District Court will enforce the injunction and award further damages from EchoStar’s continued infringement of our Time Warp patent.”

Judge Folsom in Texas had said he’d try to render his decision by October 1, but that it may come as late as November. As the decision has not yet been delivered, we may have a few more weeks before the final word. Then, of course, DISH there could be further appeals of his decision.

The US Supreme Court today declined to hear DISH Network’s appeal of TiVo’s patent victory, effectively upholding the ruling. DISH Network will now pay TiVo $104 million, the amount awarded by the jury in 2006 plus interest, which has been held in escrow during the appeals process.

TiVo issued the following statement:

“We are extremely pleased that the United States Supreme Court has denied EchoStar’s petition to review the United States Court of Appeals for the Federal Circuit unanimous ruling that upheld the District Court judgment of willful patent infringement, full award of damages, and a permanent injunction against EchoStar’s infringing DVR products. We look forward to the expeditious receipt of damages awarded by the District Court covering the period through September 8, 2006 and remain confident that the District Court will enforce the injunction and award further damages from EchoStar’s continued infringement of our Time Warp patent.”

DISH Network and EchoStar issued their own statement a short time later:

“As expected, the Supreme Court denied our petition for certiorari today.

The Supreme Court’s decision, however, does not impact our software design-around, which has been placed in DISH DVRs subject to the district court’s injunction, and our customers can continue using their DISH DVRs. We believe that the design-around does not infringe Tivo’s patent and that Tivo’s pending motion for contempt should be denied. We look forward to that ruling in the near future.

Because of the Supreme Court’s decision, we will pay Tivo approximately $104 million (the amount the jury awarded in 2006 plus interest). The money is in an escrow account and will be released to Tivo in the next few days.”

This is not the end however, the US District Court in Texas has yet to rule on additional damages as well as the injunction. TiVo claims that DISH Network continued to infringe after the initial award, and indeed continues to infringe, and therefore TiVo is entitled to additional damages. Further they claim that the DISH Network DVRs are subject to the injunction that is part of the initial ruling, upheld today, and therefore must be switched off.

DISH Network for their part claim that a software ‘design around’ they deployed following the ruling makes their DVRs no longer infringing, and hence means there should be no additional damages and, more importantly, that their DVRs are not subject to the injunction.

So depending on how Judge David Folsom decides in Texas this could be the end, or DISH Network could be facing additional payouts and potentially needing to disable millions of DVRs in the field. (Personally I don’t think it’ll come to that. If they’re ordered to switch them off I expect an 11th hour deal with TiVo to license the patents to keep them on.)

But today’s decision does seem to finally be the beginning of the end for this long legal saga.

Disclaimer: I’m employed by Sling Media, which is owned by EchoStar.

EchoStar Europe just exhibited at the European IBC 2008 trade show and they’re making a big push into cable set top boxes. As they’re show blurb says:

EchoStar is one of the world’s largest vendors of set-top products for PayTV, having shipped more than 53 million digital receiver devices, including more than 3.8 million HD-STBs and 9.7 million DVRs.

From the company’s beginnings as the technology behind US pay TV operation ‘DISH Network’, EchoStar’s broad product spectrum now extends into many millions of homes across Europe and The Americas, encompassing satellite, digital terrestrial and IPTV services.

New at IBC, EchoStar is announcing its arrival onto the Cable TV stage, with the introduction of a global range of high-definition QAM set-tops, including MPEG4 DVR and DOCSIS devices, available with a variety of popular CA and middleware options. EchoStar’s legendary reliability and cost-of-ownership advantages, borne of the company’s network operations experience, offers serious competitive advantage to MSOs and broadcasters everywhere.

EchoStar is also at the forefront of home networking technology, delivering custom multi-room solutions based on HomePlug, MOCA and DLNA. In addition, the place-shifting capabilities of SlingBox and Sling Media, an EchoStar company, are part of the breadth of the EchoStar proposition.

EchoStar not only delivers competitive products to demanding customers but also adds unique value. Our real-world experience ensures the technology works for your business.

Interestingly a press release on their presence at the show really stresses their ability to integrate Sling Media place-shifting features in their set top boxes.

EchoStar Europe is the exclusive provider of Sling Media™ place-shifting functionality in set-top boxes outside North America, with the platform independent solution available for integration in cable, satellite and IPTV STBs. In partnership with Sling Media™, the company will be highlighting the benefits of Sling Media™ software for home networking. A Sling Media integrated STB will provide an instant solution to complex multi-room, multi-screen requirements as encrypted digital Pay TV content can be moved seamlessly over IP using wired or wireless networking technologies to second TVs, PCs, laptops and mobiles.

The Sling set-top box platform emphasises EchoStar Europe’s ability to offer broadcast network operators solutions that differentiate services, increase customer loyalty and potentially increase revenues. At IBC the company is outlining its pioneering achievements in helping develop some of the world’s first DVRs, HD-DVRs and hybrid satellite/IPTV DVRs as part of the EchoStar family and demonstrating its leading position in both time-shifting and place-shifting.

While this is all focused on Europe I think this is a strong indication of what to expect from EchoStar in the US. (And I should say here that, while I work for Sling Media in my ‘day job’, this is just me as a blogger putting two and two together here and not any inside information. Got it?) Keep in mind that EchoStar recently signed the CableCARD and tru2way agreements with CableLabs in the US.

When EchoStar and DISH Network split this was one of the reasons given, to allow EchoStar to branch out into more hardware markets. While EchoStar remains the hardware supplier to DISH Network, no longer being the same entity makes it easier for them to sell hardware to other MSOs who may have balked at buying from a ‘competitor’. EchoStar has extensive experience with set-top box design and production, and with Sling Media under the same roof it gives them the opportunity to incorporate advanced place-shifting capabilities into their products. That should be no surprise as it was a stated goal in the Sling acquisition last year.

EchoStar was also touting their set-top box health monitoring system and advertising behavioral monitoring. Originally developed for DISH Network, but available for all forms of set-top box.

It certainly sounds like there will be some interesting products coming down the pipe.

Disclaimer: I work for Sling Media, which is owned by EchoStar. But a I said above, this is just me as a blogger reporting on what I read from public sources. I almost didn’t post this because I don’t want someone thinking this is backed by inside info, it isn’t. But I think it would be cool.

Back at CES, EchoStar announced the TR-40 ATSC digital converter with an expected MSRP of $39.99. That would make it free after the $40 government coupon. Then it appeared to be rebranded as the DISH Network DTVPal, which launched with a $59.99 MSRP.

To muddy the waters a bit more, DISH Network is now offering the TR-40 CRA for $39.99 - free with a coupon. And it looks like the TR-40 CRA is identical to the DTVPal, save for the labels. From the site’s FAQ:

What is the difference between TR-40 CRA and DTVPal?

TR-40 CRA is a special limited production version of the DTVPal. Offered at the government coupon price of $40, the TR-40 CRA includes the highly-acclaimed features and functionality of the DTVPal.

DTVPal has garnered much praise in recent months and is recommended as a “top choice” by CNET. DTVPal’s amazing features and consumer-friendly technology make it a great value at only $19.99 with a $40 government coupon.

So if you’re in need of a set-top box for the DTV transition you can get the TR-40 CRA free with a government coupon, and get the same hardware and features as the $60 DTVPal, which is $20 with the coupon.

Interestingly the NTIA list of approved set top boxes also includes the EchoStar TR-40 and a DISH Network DTVPal Plus, both of which are listed as approved, but currently unavailable. At first I thought the DTVPal Plus might be the EchoStar TR-50 ATSC DVR shown at CES, but it can’t be as having the TR-50s capabilities make it ineligible for a coupon, hence it wouldn’t be on the approved list. Curious.

Disclaimer: I work for Sling Media, which is owned by EchoStar.

EchoStar Monday announced that they’ve signed a tru2way Host Device License Agreement with CableLabs, which allows them to implement devices using CableCARD and OCAP/tru2way. This may seem odd at first, since EchoStar is often conflated with DISH Network, but remember that EchoStar and DISH split into separate companies, and EchoStar is pursuing non-satellite markets such as OTA with the DTVPal (ironically being marketed by DISH Network) and cable with devices like the SlingModem, from EchoStar subsidiary Sling Media.

This license does open up new possibilities. A CableCARD-enabled Slingbox, perhaps. EchoStar could take their DVR platform, as used by DISH Network, and re-purpose it as a CableCARD DVR for cable MSOs and/or consumers. Something like the recently announced 722s DVR with built-in Slingbox & SlingCatcher features, only for cable, could be quite an interesting product. (Perhaps waiting for the final act in the DVR patent lawsuit with TiVo to remove any uncertainty for customers.) They could produce a whole new cable STB unrelated to any of their current platforms. It will certainly be interesting to see what they do with the license, I’m sure they didn’t sign it just for laughs.

Their press release is below:
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