Dish Networks to stop DishDVR service

[ViRaL1]

From ZDNet

A judge has ordered EchoStar Communications to disable the digital video recorders used by several million subscribers to its Dish Network satellite TV service because they infringe on patents held by TiVo.

Thursday's ruling from U.S. District Judge David Folsom in Marshall, Texas, demands that within 30 days, EchoStar must basically render useless all but 192,708 of the DVR units it has deployed.

The decision comes four months after a jury ruled that EchoStar should pay TiVo $73.9 million because it willfully infringed TiVo patents that allow the digital storage of TV programming.

The judge also denied EchoStar's request that the injunction be stayed pending appeal, making it difficult for EchoStar to continue offering its subscribers' DVR functionality without striking a quick licensing deal with TiVo or another DVR maker.

While the injunction battle clearly was won by TiVo, the scrappy pioneer of the DVR industry also was handed a loss Thursday when Folsom ruled against its request that the jury award be tripled. The judge, however, ordered EchoStar to pay an additional $5.4 million in interest payments and $10.3 million in supplemental damages, bringing the amount EchoStar owes TiVo to nearly $90 million.

In ruling against treble damages, Folsom noted that EchoStar was not allowed to present evidence that it received outside legal advice indicating that the DVRs it created did not infringe TiVo's patents. That EchoStar sought such advice before TiVo sued it "could demonstrate a lack of willfulness" on the part of EchoStar, the judge wrote in denying TiVo's request of treble damages.

"The evidence does not show the defendants acted in bad faith, nor does the jury's willfulness finding amount to a finding of bad faith," Folsom wrote.

In asking for an injunction, TiVo argued that, while it would become extinct if unable to protect its patents and sell its DVRs, EchoStar's primary business of satellite TV transmissions does not depend on its ability to offer DVRs.

EchoStar claimed, among other arguments, that TiVo's motive in filing a lawsuit was to gain additional leverage over EchoStar and other prospective business partners in order to strike lucrative licensing deals.

The vast majority of TiVo subscribers, in fact, come by way of a licensing agreement with EchoStar competitor DirecTV. Another agreement with cable giant Comcast won't bear fruit until later this year, and TiVo has had trouble lining up other big players in the pay-TV market, which mostly have been offering their customers generic DVRs.

Siding with TiVo, Folsom wrote that one thing both companies agreed on is that DVR customers are "sticky," meaning that once they obtain a DVR, they stick with it, so business that TiVo has been losing to EchoStar might not be recovered without a ruling of infringement.

TiVo, the judge wrote, "is losing market share at a critical time in the market's development--market share that it will not have the same opportunity to capture, once the market matures."

EchoStar also claimed that the timing of TiVo's lawsuit--several years after EchoStar began selling DVRs--amounted to proof that it was not suffering irreparable injury. Folsom, though, noted that TiVo hadn't sued EchoStar sooner because it was trying to enter into a business deal with it.

EchoStar also said an injunction would unduly hurt its business, an argument Folsom was not entirely unsympathetic to--though, again, he came down on the side of TiVo.

"Although the injunction will likely result in some degree of customer loss and will impact (EchoStar's) ability to compete in the market, (EchoStar) will not be irreparably harmed," he wrote.

Folsom's ruling was filed after the close of regular and after-hours trading on Wall Street, so it did not affect the share prices of EchoStar and TiVo. When TiVo won its jury trial in April, its shares moved up 23 percent in after-hours trading, though the stock has since given back much of that gain.

TiVo shares closed up fractionally Thursday to $6.49, while EchoStar shares fell 1.1 percent to $32.75.



From Dish Networks...

ECHOSTAR ASKS FEDERAL COURT TO STAY TEXAS INJUNCTION
ENGLEWOOD, Colo., August 18, 2006 – EchoStar Communications Corporation (NASDAQ: DISH) issued the following statement regarding recent developments in the Tivo Inc. v. EchoStar Communications Corp. lawsuit:

“This morning, EchoStar will ask the Federal Circuit Court of Appeals to block an injunction issued by a Texas Court yesterday, while EchoStar appeals that decision. The Texas judge did not grant treble damages or attorney fees to Tivo, but he did let stand the jury decision that EchoStar digital video recorders infringe a Tivo patent, and immediately enjoined continued sale of allegedly infringing DVRs. The injunction would also require that allegedly infringing DVRs in consumer homes be shut off within 30 days.

We are pleased the Court concluded EchoStar did not act in bad faith and did not copy Tivo’s technology, and we intend to continue our vigorous defense of this case. We believe that, for a number of reasons, the Texas Court should be reversed in all other respects on appeal. We also continue to work on modifications to our new DVRs, and to our DVRs in the field, intended to avoid future infringement. Existing DISH Network customers with DVRs are not immediately impacted by these recent developments, and we will keep consumers informed as events develop. We hope to have additional information for our customers very soon.”

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As a DishNetwork subscriber, I have to say I'm disappointed. I'll probably unhook my DishDVR until I've gotten to look at all I've already recorded.

[lordsmurf]

Patents are out of hand.
Then again, so is corporate greed.

This should have been settled with DishDVR's turning into TiVo boxes. Easy enough.

[ROF]

Am I reading this correctly? You subscribe to a satelite network service to provide you with a signal for audio/visual viewing on your home televisions. The satelite network service is infringeing on TiVO's patent by offering your either their own or a competing(with TiVO) DVR equipment and the infringement comes by them not going with TiVO because they were first on the block to offer the satelite DVR service?

I must be reading that wrong because this patent fight sounds oddly similiar to anti-competitive practices?

[ViRaL1]

More from DishNetwork...

EchoStar Announces Federal Circuit Blocks Tivo Injunction
ENGLEWOOD, Colo.--(BUSINESS WIRE)--Aug. 18, 2006--EchoStar Communications Corporation (NASDAQ: DISH) issued the following statement regarding recent developments in the Tivo Inc. v. EchoStar Communications Corp. lawsuit:

"We are pleased that this morning, the Federal Circuit Court of Appeals in Washington, D.C. temporarily blocked an injunction issued by a Texas Court, while it considers a longer-term stay of that injunction.

As a result of the stay EchoStar can continue to sell, and provide to consumers, all of its digital video recorder models. We continue to believe the Texas decision was wrong, and should be reversed on appeal. We also continue to work on modifications to our new DVRs, and to our DVRs in the field, intended to avoid future alleged infringement."

Maybe it's not as bad as I thought.

[oldfart13]

In Canada, Dishnetwork's boxes are what Bell Expressvu sells. TiVO is a non player. Even in the UK, I believe that they no longer sell TiVO. Not the great product they thought it was, eh?

[rspar]

Good for Dishnetwork but I still could n't live without my Tivo.

[BJ_M]

never mind

[TBoneit]

I have a Tivo and Echostar and prefer the Echostar interface and speed.