I think Wednesday must have been a slow news day in Illinois. WCIA Channel 3 decided to do a little filler news piece on the DISH Network vs. TiVo patent suit. It’s a little chopping on the details, not surprising for a <3 minute light piece on a lawsuit that has run for a few years. The main focus seems to be the threat that DISH Network could be ordered to disable their DVRs in the field if they’re found to be in contempt by the court. (Personally I don’t see that happening. If DISH were ordered to disable their DVRs I foresee a very quick license agreement with TiVo to keep them on.) The story also appeared on the associated IllinoisHomepage.net and in their discussion forums.

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

DISH Network just reported their most recent financial results, and Reuters’ MediaFile blog has several quotes from DISH CEO Charlie Ergen on a variety of topics. But the one I was most interested in, and likely of most interest to readers of this blog, was on the ongoing lawsuit with TiVo:

On on-going litigation between DISH and TiVo which might impact 4 to 6 million DISH subscribers if the satellite company loses:

What we did was we designed around the TiVo patent and patent law encourages people to be innovative and our guys were very innovative and used some very sophisticated algorithms and so fourth to design around the TiVo patent. I believe we’ll prevail but TiVo, we’re going to have conversations with TiVo one way or the other about how we work together, and again, I’m just stubborn. I know this case inside and out. I’ve sat through trials. I’ve sat through the engineering models. I’ve sat and had the best and the brightest explain this to us, and I’m just stubborn. We don’t violate their intellectual property today, and I want to prove that. And so we’re going to go to the September 4th hearing and see who is right and so far, TiVo has been right.

We’re a month away from the September 4th hearing, when we’ll see the next chapter in this ongoing saga play out.

Disclaimer: I’m employed by Sling Media, which is owned by EchoStar, which also has Charlie Ergen as CEO.

Friday marked a status conference between TiVo and Dish Network/EchoStar before the trial judge (transcript is here, thanks to Mainer_Ayah at InvestorVillage). Nothing was really accomplished, they’ll meet again on September 4th for a contempt hearing on the injunction against Dish Network. And it looks like the court will not be considering Dish Network’s claim of a workaround with their new software. The court will also consider enhancing the damages awarded to TiVo.

And, seemingly in response to the court not considering their workaround, Dish Network & EchoStar filed suit against TiVo in a Delaware court, asking them to find that their new software does not infringe on TiVo’s ‘389 patent. A victory would allow them to continue selling DVRs with the new software without threat of further litigation. However, it seems highly unlikely that the case will reach the court in Delaware before the Texas court meets again in September. So it isn’t clear what, if any, impact this will have on the existing case.

Multichannel News has some good coverage of the situation.

Responding to TiVo’s recent filing, Dish Network has made their own filing. As expected, they maintain that they are in compliance with the injunction due to their software update. Links to all of the sections of the document can be found at InvestorVillage. They can also be downloaded as a single 10MB zipfile. A collection of all the documents from the case can be found here, via InvestorVillage.

TiVo made a filing with the court yesterday in their case with EchoStar, and it has been posted over at InvestorVillage. Here’s the first part of their filing:

Dear Judge Folsom:

Pursuant to the Court’s April 23, 2008 Order (Docket No. 822), plaintiff TiVo submits two topics of discussion for the status conference on May 30, 2008: (1) Enforcement of the Court’s Permanent Injunction, and (2) Determination of the damages TiVo sustained during the stay of the injunction. The issues relating to each topic are set forth in Section B of this letter.

To provide prompt resolution of these issues, TiVo requests:

• A hearing at the earliest possible date to determine whether EchoStar should be held in contempt for its failure to disable the DVR functionality in the Infringing Products and for its placement of new infringing DVRs (and new EchoStar products that are only colorably different); and

• Permission to serve limited discovery to obtain additional information before determining the damages TiVo sustained during the stay of the injunction, and, if necessary, bringing a motion for an order to show cause why EchoStar is not in contempt for the continuing use of the Infringing Products, changed only by downloading modified, but still infringing, software (and new EchoStar products that are only colorably different).

TiVo is also prepared to address any questions that the Court may have about the pending Bill of Costs that TiVo submitted on September 22, 2006, which is awaiting resolution. TiVo’s requested costs total $333,600.03.

The Honorable David Folsom

There is a lot more in the complete filing, so check it out if you’re interested. TiVo does not agree with EchoStar that the latter’s software update has eliminated the infringement:

On May 12, 2008, EchoStar made its modified source code available for review by TiVo. EchoStar also waived privilege and produced to TiVo three opinions of counsel relating to EchoStar’s modified software. After review of the software that EchoStar provided and the opinion letters, TiVo does not believe that the modifications avoid infringement.

So the saga continues, despite recent analyst speculation that Dish Network is close to settling with TiVo.

Thanks to reader Jack for the heads up on the post.

EDIT: Here’s a link to the full filing with exhibits, as a PDF. Created and posted by ‘Mainer’ from the InvestorVillage boards.

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

The U.S. Court of Appeals has denied EchoStar’s Petition for a rehearing en banc in their patent dispute with TiVo. In response, TiVo released the following 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 on the ruling by the U.S. Court of Appeals for the Federal Circuit in Washington, D.C. to deny EchoStar of its request for a rehearing en banc:

“We are extremely pleased that the United States Court of Appeals for the Federal Circuit today denied EchoStar’s petition for a rehearing en banc, upholding the Court’s unanimous ruling in our favor on January 31, 2008, in EchoStar’s appeal of the district court judgment of patent infringement, full award of damages and an order for the injunction to be reinstated.

Today’s ruling brings us closer to resolution of EchoStar’s infringement and reconfirms the strength of TiVo’s Time Warp patent, which is in addition to the other benefits TiVo has to offer. We look forward to full enforcement of our rights in the near term.”

EDIT: And DISH Network has also released a statement:

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

“We are disappointed that the Federal Circuit did not grant our petition for rehearing. The decision, however, will have no effect on our current or future customers because EchoStar’s engineers have developed and deployed ‘next-generation’ DVR software to our customers’ DVRs. This improved software is fully operational, has been automatically downloaded to current customers, and does not infringe the Tivo patent at issue in the Federal Circuit’s ruling.

“All DISH Network customers can continue to use their DVRs without any interruption or changes to the award-winning DVR features and services provided by DISH Network.

“We intend to appeal the Federal Circuit’s ruling to the United States Supreme Court.”

So now it goes to the Supreme Court, who can decline to hear the case - thus ending the appeal options, or they can accept the case which would extend it until they have the time for the hearing.

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