Englewood, Colo. - A U.S. Court of Appeals for the Federal
Circuit in Washington affirmed Wednesday a lower court ruling that Dish Network must shut down its digital
video recorders that violate TiVo's patents.
The appeals court also vacated a Texas district court's ruling of
contempt of an infringement provision of the permanent injunction, and vacated
some of the damages awarded to TiVo for EchoStar's continued infringement.
It remanded to the U.S. District Court for the Eastern District
of Texas to review the contempt finding on infringement, to determine whether a
workaround of the product that the appeals court said did not infringe TiVo's "Time
Warp" patent was so different from the originally infringing product.
In a statement on the new ruling, Dish said it would appeal the
ruling to the U.S. Supreme Court.
"Dish Network and EchoStar are pleased that the Federal Circuit
Court of Appeals has unanimously vacated the district court's contempt ruling
regarding our software design around. We are disappointed, however, that the
Federal Circuit in a 7-5 split decision has affirmed the district court's
ruling on the disablement question," Dish's statement said. "We intend to seek
review of that part of the decision by the United States Supreme Court and seek
a stay of the injunction while doing so.
"We also will be making a motion to dissolve the injunction based
on TiVo's recent representations to the Patent and Trademark Office
substantially limiting the scope of the claims at issue in this case."
The satellite TV provider said existing Dish Network customers
with DVRs are not immediately impacted by the decisions.
"The disablement ruling covers only certain older generation
MPEG2 DVRs. We have already upgraded many of these customers and, if we are
unsuccessful in obtaining a stay, we will work as quickly as possible to
upgrade the remaining customers to our current generation DVRs, as these are
not at issue in the ruling," the company said.
TiVo, meanwhile, welcomed the ruling saying it looked forward to
getting a permanent injunction against Dish, and that the ruling, "paves the
way for TiVo to receive substantial damages and contempt sanctions regarding
the DVRs that EchoStar and Dish Network failed to disable."