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.

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.

No, not the Dish Network/EchoStar lawsuit, but rather a suit from Lycos. Back in January 2007 Lycos sued TiVo, Blockbuster, and Netflix for patent infringement over their recommendation engines. The San Jose Mercury News reports that TiVo has settled the suit with Lycos.

Financial terms weren’t disclosed in a May 30 court filing that said the two sides settled their dispute. TiVo General Counsel Matt Zinn said the Alviso-based company paid Lycos an “immaterial amount of money” to end the suit “before the case went very far.”

So that’s off TiVo’s plate, Blockbuster and Netflix remain in the case which is pending in federal court in Boston.

The LA Times has a small blurb about TiVo being subpoenaed by the Missouri attorney general over their rebate practices:

Missouri’s attorney general subpoenaed TiVo Inc. in April for information related to the company’s rebate program.

The maker of set-top boxes that let users fast-forward through commercials is cooperating with the probe, the Alviso, Calif., company said in a regulatory filing. Atty. Gen. Jay Nixon is investigating whether the company was involved in unlawful merchandising practices with its rebates.

“We are not aware that we’re doing anything wrong,” said Matt Zinn, TiVo’s general counsel.

An unrelated blurb on the same page reports that Netflix has sold out of the $100 Roku boxes for streaming Netflix’s Watch Now videos, due to stronger than expected demand.

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.