DISH Network Says it is Investigating Workaround Options for TiVo's "Time Warp" Patent

--However, it Concedes that Doing So May Be Impossible

In a one-sentence filing with a US federal court earlier this week, US satellite-TV provider, DISH Network, said that it is attempting to find another workaround that would enable it to avoid infringing on TiVo's so-called Time Warp Patent. The company "is investigating other potential design-around options, but at this stage, does not know whether a further design-around is even possible," the filing stated, according to a report by Bloomberg News. In a ruling earlier this month in the long-running case in which TiVo is suing DISH Network (formerly EchoStar) for infringing upon the patent, Judge David Folsom found that DISH Network's previous attempts to find a workaround for the technology covered by the patent put it in contempt of court by violating a permanent injunction that Folsom himself had previously issued, and he stipulated that it must inform the court of any additional workarounds that it might attempt. Folsom also found that DISH owes TiVo $103 million (plus interest) in additional damages in the case and that it must disable certain features on all but 193,000 of its approximately 4 million deployed DVR's (a US appeals court subsequently issued a temporary stay of the latter part of the ruling).

The patent dispute between TiVo and DISH dates back to 2004, when TiVo sued the then-EchoStar, alleging that it was violating its US patent, #6,233,389--i.e. the "Time Warp" patent--which was granted to the company in May, 2001. The patent describes methods for recording one program while playing back another, and for watching a show as it is recording, as well as a storage format that supports "trick-play" capabilities, such as pause-live-TV, fast-forward, rewind, instant replays, and slow motion. In 2006, a jury awarded TiVo $74 million in damages; and in January and April of last year DISH/EchoStar's appeals were rejected. Judge Folsom's ruling earlier this month was in response to TiVo's claim that it was owed an additional $220 million in damages for the 18 months during which the jury verdict in the case was stayed while DISH/EchoStar unsuccessfully appealed it.

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