TiVo Wins Permanent Injunction Against EchoStar

ZenFodderBoy writes "It's official! Judge Folsom entered his ruling today granting TiVo nearly $90 million in damages, plus granting a permanent injunction calling for the disabling of nearly all of EchoStar's DVRs within the next 30 days. EchoStar's motion to stay the injunction pending appeal was denied. Additionally, the judge reserves the right to grant additional damages in the future, so treble damages may still be coming. Excellent news for TiVo!"

Comments

Stock?

[ekool]

What is this going to do to Tivo stock I wonder? ;)

Re:Stock?

[ZephyrXero]

I'm more concerned about what this means for projects like MythTV...

Re:Stock?

[KokorHekkus]

I'm more concerned about what this means for projects like MythTV...

If MythTV or some other project gets targeted by stuff like this there will always be ways around it. Modularize the system enough to have the major apps hosted in the US (where the problem is). Host rest of prohibited modules where the rest of the world can enjoy them... different game, same tactics as the brightly conceived crypto export regulations

Of course this would be a setback for the projects but it wouldn't be enough to kill them.

/. is an editorial factory

[Anonymous Coward]

"Excellent news for TiVo!" Bad news for consumers.

Re:/. is an editorial factory

[ImTheDarkcyde]

definately, do you have any idea i spent on that DVR?

Re:/. is an editorial factory

[squiggleslash]

Well, you may think it's great news that your 625 will be disabled within a month, I, personally, am not looking forward to it.

In all honesty, the DVR feature is the only thing that's made TV service usable as far as I'm concerned. Barely anything we watch is live, and pretty much everything we record is recorded at times we're not around. Speculation that "EchoStar might buy TiVo" strikes me as premature, and doesn't exactly help during the period our bought and paid for hardware ceases to support advertised critical functionality.

And, personally, I'm having difficulty accepting anything that's in the 625 should be patentable. Once you've thinking in terms of a device that automatically stores programs selected from a TV schedule, pretty much everything else the 625 does follows. But whether it is or it isn't, I'm pissed about the consequences of this. Choices have just been limited. People who have bought service and signed into 18 month contracts are being screwed. Whether it's EchoStar or a combination of TiVo and the current patent system that's to blame, this isn't fair, and we are all worse off for it.

Re:/. is an editorial factory

[MyNameIsEarl]

DirecTV hasn't provided TiVo's to customers for most of this year, they have their own inhouse brand DVR now the R15. They still support their customer with the TiVo's however.

Re:/. is an editorial factory

[raitchison]

Eh, I'm a happy customer of both Dish Network and TiVo and definitely think this is a good thing, including for consumers and even Dish Network customers.

I chose to pair a SA (Stand Alone) TiVo over a DishPVR for a multitude of reasons:

1. Portability, I don't have to toss it in the trash if I switch providers
2. Heard lots and lots of horror stories about the reliability and stablity of the DishPVRs
3. Better features in a TiVo

Of course I lose out too, most notably with occasional channel change mishaps that cause the wrong channel to be recorded as well as the lack of ability to record the digital stream right off the satellite.

Now I have two TiVos

I've been following this case for a while, TiVo pproached Echostar seeking to license TiVo's technology. They even left a demo unit with them (which Echostar "lost"), then Echostar amazingly came out with new DishPVRs that were cheap knockoffs of the TiVo.

If there was ever a case of blatant patent infiringement this is it, umlike the NTP/RIM debacle where a patent troll was exploiting an obviously BS patent where they didn't even make a product, in this case Echostar ripped off TiVos technology in order to compete with them.

We mustn't confuse patent reform with patent abolition, though obviously some people (certianly some /. users) believe patents should be abolished. If every company that came up with an idea could get is usurped by someone else it would only be the evil megacorps of the world that could succeed, the little guys would get destoyed before they could get a foothold in the market.

Thanks

[Anonymous Coward]

Thanks for posting some links to the background of this story and for the detailed introduction and background that you added to your entry and for not just linking to another blog entry elsewhere on the...

Oh wait.

Re:Thanks

[uvajed_ekil]

I understand what you are saying: yes, most /. content essentially amounts to links to outside information. But here we have a very nice collection of news that matters to us (or me, at least). Last time I checked (er, I'm just guessing), /. doesn't have a staff of paid investigative reporters who travel the world, so why would you expect more than a bunch of carefully selected links? The significant commentary and expansions come in the comments after something is posted, when we can all contribute.

This may be largely news from BBC, CNN, NPR, etc., but I don't have all day to scour those sources for the tech/CS/etc. news I want to read. That's why I have /.

This won't be good for tivo in the long run

[Anonymous Coward]

He who lives by the submarine patent claim dies by the submarine patent claim...

Tivo's time will come.

Re:This won't be good for tivo in the long run

[Secrity]

The Barton time warp patent is not a submarine patent. Tivo did not hide the existance of the patent and Tivo claims that they informed Echostar of the pending patents when they first pitched the Tivo to Echostar. It appears to me that Echostar stole Tivo's idea when they showed the prototype Tivo to Echostar. Whether this judgement and Tivo's patents can stand the test of time is an unknown right now. Tivo's most important patents are for the ability to simultaneously record and play back a video stream and for not using the CPU to do the encoding / decoding. Tivo had operating prototypes at the time that they applied for the patent. Although it doesn't really matter because software patents are enforceable in the US, it appears that these Tivo patents are not purely software related, nor are they simply abstract ideas; they involved the use of specialized hardware. I am not sure whether these technologies were obvious or novel at the time that the patent was applied for.

Re:This won't be good for tivo in the long run

[blakestah]

The patents were neither obvious or easy at the time of the patent application. Hardware was so slow back then that video encoding and playback from hard drives were difficult. Today, everything is 10 times faster, so it is easy to think of it as trivial. But you need to think of it in terms of what was available in 1997.

That brings up somewhat obvious questions about the applicability and utility of our patent system. TiVO patented something in 1997 that was novel and non-obvious. However, it would have been both obvious and easy 5 years later. So, they get 17 years of monopoly for being ahead of their time.

I dig it though, I have friends who work there, and they could use the money...

Re:This won't be good for tivo in the long run

[Secrity]

The technology behind most useful patents becomes obvious and easy five years after being patented. Part of it is normal advancement of technology, much of it is because the patent system requires that the technology be disclosed to the public, and in many cases it is because products using the technology become readily available on the market. It is sort of like good magic - the trick is a mystery until somebody puts up a webpage telling how the trick is done.

Re:This won't be good for tivo in the long run

[Dun Malg]

AFAIK no one reads patents to advance their own tech ... creating a product that infringes on someone else's patent, where they can show that you read their patent results in a greater reward (penalty) from the judge... so the lawyers tell the engineers to explicitly not read existing patents when they build something new (to them)...

No, you're confusing copyright with patents, I think. For example, Compaq engineers working to black-box reverse engineer the IBM-PC BIOS were specifically not permitted to see the IBM microcode. This ensured that no copying happened, even inadvertently. This is an iron-clad defense against a charge of copyright infringement. If you've never even seen it, it's impossible for you to make a copy. With patents, you need to see what's patented when designing a competing product in order to implement a non-infringing product. There does not exist an "ignorance" mitigation for patent infringement.

Win for Tivo - Lose for Customers

[nighty5]

Disabling all those PVRs is I guess one way to see justice, but in the end it seems that the customers will wear the brunt of the impact.

There isn't much information on this finding, but I'd take a guess and say that customers that have signed up for EchoStar's service may be in for a rude shock when their PVR stops working.

I'm up for rooting for Tivo but I guess this is business, and if Tivo couldn't find a way to sell their products to the broadcast vendors without going to litigation it makes for a difficult times.

Re:Win for Tivo - Lose for Customers

[sessamoid]

Dish Network owns EchoStar. Does this mean all the Dish customers are screwed as well? I'm all for justice, but disabling all the existing customer's devices seems a bit overkill to me. -Aaron

That's exactly it means. Nearly all of their DVR's must be rendered essentially useless within 30 days unless Echostar can negotiate a licensing deal with Tivo. Though the judge didn't find that Echostar acted in bad faith, what I've followed of their various lawsuits leads me to disagree. Maybe not to the letter of the law, but it seemed to me that they were essentially using the expensive and lengthy legal process to try to bully a smaller and more innovative competitor out of existence by bankrupting them with legal costs and starving them of market share.

IMHO, Echostar got what they deserved. It's a shame their customers may have to suffer for it, but that's the price of protecting the inventors.

Re:Win for Tivo - Lose for Customers

[shawngarringer]

Don't forget to add in the part where KDE had Microsoft come in and show them exactly how to display the multiple windows on the screen, had the source code in their hands, and let Microsoft write a seperate implementation. Then, KDE uses Find & Replace to change the Microsoft name to KDE everywhere, tells Microsoft to take a hike, and sells the product at a great profit.

IMO its about time Dish has to own up.

Re:Win for Tivo - Lose for Customers

[dwandy]

No such luck. ...

RESIDENTIAL CUSTOMER AGREEMENT

C. DISH Network reserves the rights to alter software, features and/or functionality in your DISH Network receivers,

D. DISH Network's PVR/DVR Products allow you to record programming in digital format. ...[snip]... DISH Network does not guarantee access to or recording of any particular programming. ...[snip]... DISH Network may, in its sole discretion, add, change or remove features of its PVR/DVR Products and, upon notice to you, introduce or change fees for the use of PVR/DVR Product features. DISH Network will notify you of any change that is within its reasonable control....[snip]...

I guess making it so it doesn't record anything is just a change of "features"... it's still a clock, right?

More informative Reuters article

[sessamoid]

EchoStar must disable DVRs, judge rules

Re:this isn't that bad...

[badfish99]

Now they have a monopoly, so can charge monopoly prices. I'm sure that's a win for someone, but I'm not sure how it's a win for everyone.

This will do nothing but harm the consumer & T

[Julius X]

Disclaimer: I work for Echostar.

  I'm just a Technical Support Representative, but I've been reading about this case long before I worked there.

The initial ruling, I applauded. Yes, Echostar screwed up with Tivo. Yes, I think they should have to pay for that mistake, in monetary terms. Tivo earned at least that much.

However - DVR functionality at this point is just about commonplace - Dish/Echostar's DVRs perform the same functions that Tivo, and 50 other competing products do, and to tell Echostar that it can no longer compete in this now-established market is tantamount to handing the company over to a Firing Squad.

Nevermind the fact that there are now millions of Dish Network customers that are using DVR recievers, that will find out about this case, find that they've lost the functionality that they have been paying for every month - and place the blame squarely on - guess who? - Tivo.

Now, I like Tivo - and I hope they succeed, and again, I'm more than happy to see them monetarily compensated for the situation. But this is not punishing Echostar/Dish - this is only punishing the consumers who have bought those devices and who use them every day, and continue to do so.

On a personal note - this lawsuit will make my life a living hell, becuase those millions of customers will be calling me to explain why they can no longer use the functionality that they signed up for. The first time I recieve a phonecall asking why our DVR service has disappeared and why they cannot use the hard drive on the device they paid for, is the day that I turn in my resignation.

Re:this isn't that bad...

[muindaur]

No they don't, the whole purpose of patent law allows for a developing party to be the only one allowed to make a certain innovatinve product so they can recover development costs and make a profit off of the idea. Then after a certain period of time they cannot receive funds from companies that wish to develop a product that does the same thing.

This helps encourage innovation by protecting the innovators from competition that could prevent them from recovering development costs. So in the end it does help the consumer because while at first only a few may be able pay for the cost of the product it shows to other companies that it is a product many more would be willing to buy.

Interesting dilemma for Bell ExpressVu customers..

[Hamster Lover]

Here in Canada Bell ExpressVu is essentialy the Dish Network Canada. In fact, I believe that was the original name before it was changed. As such, they rely on Dishnet for all their receiver technolgy including receiver software, as I understand it. I wonder how this will affect ExpressVu customers given that I have a Dishnet 510 PVR, branded as an ExpressVu model 5900, if at all. I guess in the long run the solution is going to involve a lot of money from Dishnet changing hands to Tivo. There is no way that Dishnet will let the situation stand and perhaps they're about to get their ass handed to them much like RIM with the Blackberry.

Working for Cowboys

[Heembo]

I miss consulting for Echostar! All the managers were cowboy hat wearing good ol' boys from Colorado City. It was the most hilarious and fun group of people to ever work with! To bad our product didn't really work (to much Java way to early) but damn they paid well and let us all chew tabacee' at work! Those were the days... *sigh*

The Point

[sahrss]

Isn't anyone else bothered by the fact that all of these customers who BOUGHT this item, can now have it disabled remotely? That's what makes this story interesting to me. Remind me to never buy something that can be taken from me...remotely.

Re:Patents expire

[stinerman]

Eventually the patent should expire and at that point the market would open up and prices would drop significantly.

Yes, after that technology is long obsolete. LZW compression is no longer patented. It isn't widely used anymore outside GIFs, TIFFs, and PDFs because its obsolete. There are better ways of compressing data (see DEFLATE and Burrows-Wheeler algorithms).

What is so bad about patent law? It's a win-win for all.

Your UID is very high, so I'll excuse that remark.

New innovations are protected ecnourageing more innovation and it gives the consumers an appetite for when the patent expires and the market really opens up.

That is how it works in theory. In practice:

1) The patentee gets a patent on something he didn't actually invent, but was first to file.
2) Patents are granted on mundane, obvious inventions. (Queue the "obvious invention on a computer/Internet" patents) These are granted because patent examiners don't have much technical expertise in the field and have limited time to check for prior art.
3) If you do actually invent something non-obvious, and the big guys infringe on your patent, you'll bankrupt yourself via legal fees trying to get them to pay.

Should we get rid of patent law because it creates a monoploy for a period of time?

Dare I say yes?

Dish to Disable DVRs ?

[Douglas Goodall]

I paid extra for receivers with PVR/DVR capability. I pay the DVR surcharge each month for each receiver I have activated that has a DVR. I have 180HRS of recorded programs on my DVR I still want to watch. It looks to me like instead of a deal between Tivo and Dish to make things ok, the Dish customers are going to get royally screwed in this case. We paid, took our time to collect programs to watch, and they are about to be taken away unexpectedly. How about a class action suit on behalf of the Dish customers that are about to lose out? dwg

Re:Dish to Disable DVRs ?

[Phreakiture]

This would not be a first time for Dish.

The Dish Network management knows how to use their customers as leverage. Every time there is a contract dispute between a program provider and Dish, they make sure that it is clear to the customer how to contact that program provider and pitch a bitch.

I would be surprised if a similar tactic didn't get applied here.

Re:This is about Patents

[Lussarn]

From what I understand the patent infrigement is on tivos "Time warping system", which I if I understand it correctly is "pause and rewind live TV" as well as "record one show while watching another".

Basically the number one claim seems to be on seeking in an open file if the file is a multimedia stream. In Linux language:

cat /dev/video0 >/tmp/in0.mpg
mplayer /tmp/in0.mpg

Those two lines would instantly infringe on tivos patent.
The next claim is even fruitier.

cat /dev/video0 >/tmp/in0.mpg
cat /dev/video1 >/tmp/in1.mpg
mplayer /tmp/in1.mpg


I have a hard time beliving tivo actully did this first, and even if they did where is the invention. When I first got a TV card a couple of years ago this is what I did because it was the easiest way to get the media to play. Needless to say, but I didn't feel like I invented something. Maybe I missed something about tivos patent, I'm not a lawyer.

Re:Quick ?

[tonyquan]

DirecTV is actually a TiVo licensee. Up until recently, all DirecTV DVRs actually ran TiVo software. Three months ago, TiVo signed a deal with DirecTV to extend the licensing arrangement until 2009. TiVo will continue to service the ~2 million DirecTV DVRs based on TiVo software, and both parties specifically agreed not to sue each other over patents as happened with Dish Network/Echostar.

http://www.tivo.com/cms_static/press_85.html

Re:Patents expire

[Tim C]

Now some "300,000 series" slashdotter is going to come along and mock me next. Just you wait and see.

Oh, I think we can skip those Johnny-come-latelys, newbie. ;)

Re:This will do nothing but harm the consumer &

[Monoman]

Fuck tivo.

A little misdirected anger?

Maybe you have some other reason to be pissed at Tivo. Don't be mad at Tivo becuase Echostar sold you something they stole from Tivo and got caught.

A stupid judgment that penalises customers...

[jkrise]

Why is it that the customer has to suffer? A while ago, when Microsoft lost a patent dispute, they urged customers to apply a Service Pack for Office, and stop using the version that got shipped on purchase!

What fault is it of the customer, if the vendor from who he purchsaed some product / service is found guilty of patent abuse? If Echostar has abused TiVo's patents and sold a few millions of their products... I think a more equitable judgement ought to be along the lines... like, Echostar to pay TiVo the requisite license money so that existing customers may continue to use their products and services uninterrupted.

A patent should not imply that one single company has exclusive rights to implement, sell and support products based out of the said patent. The true purpose of patents is in fact, to spur innovation... not to build monopolies. Echostar might be directed NOT TO sell future products in violation of patents... it appears UNJUST that existing customers suffer a loss of functionality because of this. What if a patent violation happened in a medicinal drug? Patients must vomit already ingested medicines and die?

Re:A stupid judgment that penalises customers...

[Eric S. Smith]

A patent should not imply that one single company has exclusive rights to implement, sell and support products based out of the said patent.

Patents don't imply that, they are that. But I agree that you're quite right about the injustice of the injunction, and about the most obvious way of settling the matter without injuring third parties.

In the software realm, if, to pick an example close to the hearts of many in the legal profession, WordPerfect were suddenly found to have violated a patent, would it be appropriate to disable all copies of WordPerfect and force users to purchase another product, just so that they could read from and write to their existing files? And how could such users determine that the product they'd been forced to buy wouldn't in turn have a self-destruct injunction filed against it next month?

Re:A stupid judgment that penalises customers...

[udecker]

The true purpose of patents is in fact, to spur innovation... not to build monopolies.

Actually, a monopoly spurs innovation by doing exactly that - granting a temporary monopoly on the patented idea. This is what encourages individuals and companies to invest the time and manpower to create something new: they get to reap ALL of the benefit for a period of time until the idea becomes part of the public domain. This is how it is supposed to work.

I do agree, however, that EchoStar should've been forced to pay the required licensing fees to Tivo, insteead of forcing them to shut off their customers products. This is an example of just because it's possible to disable their patent-infringing product doesn't mean that they should. That's the bad for consumers part, not the fact that EchoStar violated patents.

Re:A stupid judgment that penalises customers...

[acklenx]

The true purpose of patents is in fact, to spur innovation... not to build monopolies.

While true that the purpose is innovation, they very single and solitary way that patents foster such innovation is through [time] limited monopolies on that specific innovation. And I have no problem with that as long as what you've been awarded patent is worthy (truly novel and new).

I think a more equitable judgement ought to be along the lines... like, Echostar to pay TiVo the requisite license money...

This can still happen. And it's very likely to happen as well, but under the free market principal of "Tivo owns the rights and can set their price, others including Echostar can pay that price if they think it's worth it. If Echostar doesn't agree to that price, so be it... unless Tivo decides that it would rather lower the price to keep from losing easy money...". This, I believe, is the way the system was designed to work. (I just don't know that Tivo should have the patent in the first place).

What if a patent violation happened in a medicinal drug? Patients must vomit already ingested medicines and die?

No, and you don't have to unwatch any shows that you watched delayed either. You just can't continue to do so (no more refills on you Rx).

Re:A stupid judgment that penalises customers...

[aeryn_sunn]

Actually, the judgment is not so stupid but has a valid point. Echostar lost the trial and Tivo was awarded damages (we know this)... Echostar does not want to pay, for obvious reasons, and thinks it can either get the verdict overturned on appeal or perhaps get the patents invalidated, but in the meantime Echostar would like to still engage in patent infringement (remember, the jury found that Echostar was guilty)... As Patent law permits, Tivo filed an injuction to stop Echostar's patent infringement,which was reasonably granted... reasonably because Echostar could not convince the court to allow them to continue to infringe the patent while awaiting appeal, which could take years...

The injunction gives bite to the verdict... now Echostar has to either pay up what the verdict says...or work on a settlement agreement... of course, it still can and will appeal, but in the meantime, it cannot continue to infringe Tivo's patent... else, without an injuction option, a guilty verdict in any patent infringement trial would be meaningless if the infringer could continue to well, infringe...

neither the medicinal drug nor another poster's Wordperfect scenarios are pertinent analogies... medicine already ingested is obviously not the same as a service provided by a company... the drug company has no more rights in the sold drugs... if anything, an injunction would prohibit such an infringer from producing and selling any more drugs, but of course, whether a court would order an injunction against a drug company producing a drug, a court would consider other factors in that type of scenario, such as whether the drug is taken for life/health threatening reasons (a cancer drug vs. an erection drug)...and whether there are alternative sources for similar drugs (the actual patent holder produces the drug)...

remember, Echostar's dvr is a service...the customer does not own the dvr software, Echostar does... so the injuction prevents them from continuing their patent infringing service... customers may suffer (although, what do they really suffer? nothing life/health threatening, unless missing Laguna Beach or another retarded episode of The Hills would create mind crushing depression leading to a surge of bulemia among silly girls), but that is Echostar's fault, not Tivo's...

So, the judgment is not stupid...its a tool to enforce the verdict and stop a convicted infringer from continuing their illegal activity

DISABLE YOUR AUTOMATIC UPDATES

[speedlaw]

All Echostar users should go to the setup menu now and "disable automatic updates". It's a pity that updates, which used to mean improvements, can now mean less functionality. Go to your box(es) now, and disable all update check boxes !

Re:DISABLE YOUR AUTOMATIC UPDATES

[RevDobbs]

What good is that going to do when they stop sending out the show listings?

Re:Patents expire

[sterwill]

Hello!

Re:This will do nothing but harm the consumer &

[laird]

The ruling didn't say that Echostar had to kill all of their DVR's. The ruling said that Echostar had 30 days to negotiate a licensing arrangement with TiVo. TiVo has some great leverage in the negotiations, but that's because Echostar refused to negotiate previously, preferring to play "hard ball" in court, and lost.

This is, by the way, how basic patents work. There's no "it's popular, so you don't have to pay to license the patent" rule. For example, Motorolla has a patent on putting a heat sink on a transistor, and every other electronics company pays them for it. There's an engineer that has the patent on on-screen programmable VCR's, and he gets paid for every single VCR manufactured. The way the world works, that engineer doesn't have a monopoly on on-screen programmable VCR's, but every VCR manufacturer has to negotiate a license before they can (legally) ship their product.

This won't affect Echostar customers, or technical support representatives, unless Echostar decides that they'd rather screw their customers than cut a deal with TiVo. At that point, resigning is a reasonable course of action.