Appeals Court Says EchoStar Infringed TiVo Software Patent
EchoStar infringed software elements of TiVo’s PVR patents, but not those applying to hardware, the U.S. Appeals Court for the Federal Circuit said, partly upholding a lower- court ruling. The appeals court’s ruling, issued Thursday, said the patent violations were sufficient to uphold the $89.6 million a federal court jury awarded TiVo following a trial in April 2006.
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EchoStar argued TiVo’s patent, which described a method for moving a compressed digital multimedia program to a storage device in a set-top device, required software to “extract” audio and video data from a physical source such as a processor chip. But the appeals ruled that software is only capable of controlling hardware to accomplish that task and can’t do that itself. Because the Broadcom chip in EchoStar’s PVR and a temporary data storage buffer worked together to move data from a physical source, “it was reasonable for a jury to find” that the software buffer was an extension where data was stored pending further processing, the appeals court said.
“We agree that the pertinent data and operations do not need to be housed within a particular filing or grouping of lines of code” for EchoStar to “satisfy” the “extracting” limitation, the appeals court said. EchoStar had maintained that its DVRs didn’t use software to extract data from a physical source. But an EchoStar expert witness, Thomas Rhyne, testified during the trial that the company’s PVRs used the same method of “hardware push to temporary buffer” deployed in devices described by a TiVo expert, the appeals court said. The panel also rejected an EchoStar claim that the TiVo patent required that the invention it described mandate use of object-oriented programming software.
TiVo is “extremely pleased” by the appeals court decision, which “is confirmation of the value” of its IP portfolio, the company said in a press release. EchoStar said it was “pleased” with the finding on the software, but “disappointed” with the hardware ruling. The decision won’t affect “current or future” EchoStar customers because the company developed downloadable software that doesn’t infringe the TiVo patent, the company said. - Mark Seavy