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Another chapter in TiVo versus EchoStar, and another chapter in bad reporting of patent matters

By Lawrence B. Ebert, Esq.

In a post titled US Patent Office Initially Rules For Dish In TiVo Patent Case , Roger Cheng of the WSJ wrote:

The U.S. Patent and Trademark Office initially ruled that TiVo's claims that EchoStar's technology workaround still violated its patents for pausing and rewinding live television was invalid.

Of course, the USPTO is not in the business of determining infringements of patent claims by work-around technology. The USPTO does not determine questions of infringement, period.

Let's work through the sentence of Cheng: We seem to have "TiVo's claims ... was invalid." Lack of agreement between subject and verb, but who cares on the internet. What Cheng seems to saying is that TiVo's patent claims were invalid, hence EchoStar's workaround didn't infringe. It is true that one can't infringe an invalid claim.

Cheng quoted TiVo, and in so doing seemed to recognize that this wasn't a "final" decision: "This is an initial step in the lengthy process known as 'reexamination,' and it is not unusual for the PTO to provide a preliminary finding of invalidity to then later find that the claims are valid after hearing an explanation from the patent owner." This seemed to be only a first Office Action in the re-exam.

In the meantime, TiVo's claims are valid and they are free to sue EchoStar and Dish for infringement (provided they have made a good faith investigation of the situation).

**See also

TiVo's win against Dish/EchoStar sticks

TiVo patent claims survive re-exam intact; EchoStar doomed?

Full post as published by IPBiz on August 04, 2009 (boomark / email).