TiVo Inc. v. EchoStar Corp. Patent Infringement
TiVo Inc. v. EchoStar Corp. patent infringement case was presented in the United States District Court for the Eastern District of Texas as well as the United States Court of Appeals of the Federal Circuit. The case took place between 2004 and 2011.
In this lawsuit, TiVo Inc. was suing EchoStar Corp. claiming that it had infringed its DVR technology patent. Several issues were addressed during the litigation. They included product redesign infringement, injunctions wording, patent infringement, contempt sanctions and court orders’ contempt.
A permanent injunction was issued by the court against EchoStar Corp. However, EchoStar appealed against this judgment in the United States Court of Appeals for the Federal Circuit. The infringement judgment was reversed by the Federal Circuit court after review due to hardware claims. However, infringement due to software claims was affirmed by the court. The injunction issued by the District Court was maintained during the court of appeals’ proceedings.
According to the court, EchoStar Corp was not only in contempt of the court due to its non-compliance with the injunction, but it had also infringed the patent of TiVo Inc. EchoStar appealed against the contempt of court judgment in the Federal Circuit. However, EchoStar Corp arguments did not move the court.
The court affirmed the ruling and EchoStar was mentioned for rehearing at the en banc. After review, en banc Federal Circuit noted that KSM test could not work and it established a new post-infringement contempt proceeding test. The existing contempt test was replaced by the court with a one-step test. This simplified test made it difficult for holders of patent to prove contempt due to repeat infringement.
Upon vacation, en banc Federal Circuit remanded infringement provision of a permanent injunction. However, it affirmed the contempt judgment in respect to violation of Disablement provision. This implied that court held EchoStar in contempt of court. However, the two parties in the case reached an agreement, EchoStar Corp. paid licensing fee to TiVo Inc.
On 29th April 2011, the companies reached a settlement worth $500 million. EchoStar Corp. accepted to license TiVo Inc.’s DVR technology. Additionally, the pending litigations were set for dismissal with prejudice and injunctions dissolved. However, en banc federal did not dismiss the Federal Circuit appeal since a decision had been reached before a settlement. Thus, all parties were free on remand to ask the District court to dismiss complaint and to vacate sanctions that had been imposed before die to settlement.
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