Patent Cases IM 350 Lamoureux & Baron Sept. 6, 2009

Tivo v. Echostar (Fed. Cir. 2008) Tivo sues Echostar for infringing the ‘389 patent. – Hardware and software claims relating to DVR’s TiVo originally sued EchoStar in 2005 over the DVRs that the satellite provider offers with the DISH Network. In April 2006, a jury found EchoStar liable for patent infringement.liable for patent infringement –$74 million!!! –Lost profits and reasonable royalties In August of that year, TiVo obtained an injunction against EchoStar, ordering it to stop selling DVRs and disable the DVR functionality on its products within 30 days.obtained an injunction In November 2007, the US Patent Office upheld TiVo's "multimedia time warping system" patent, delivering yet another blow against EchoStar.multimedia time warping system

Echostar appeals to Federal Circuit, that, in 2008: – Reverses and remands on hardware claims – Affirms software claims – Affirms damages award – Affirms permanent injunction – which had been stayed pending appeal “Defendants compete directly with Plaintiff – Defendants market their infringing products to potential DVR customers as an alternative to purchasing Plaintiff’s DVRs. The availability of the infringing products leads to loss of market share for Plaintiff’s products.”

Finally, in October of 2008 after the Supreme Court denied the company's request to intervene, EchoStar and DISH Network agreed to pay $104 million to TiVoagreed to pay $104 million to TiVo In June, 2009, A US District Judge rejected EchoStar's latest attempt to work around the TiVo patents in question and went so far as to hold the company in contempt of court. As a result, the judge ordered enforcement of the permanent injunction and awarded another $103 million in damages to TiVo. Plus interest.

Microsoft v TomTom (2009) Microsoft sues TomTom for 8 patent infringements – 5 are GPS technologies – 3 are file management – TomTom countersued against Microsoft’s “streets and trips” (4 counts)

Interesting wrinkle: GPL/Open source implicated Back in 2007, Microsoft made public its claim that Linux violates 235 of Microsoft's patents.made public its claim Three of the eight patents (the file management pieces) in this dispute read on the Linux kernel as implemented by TomTom

Suit settled: March, 2009 (and partially validates Microsoft’s Linux claims) TomTom will pay Microsoft for patent protection related to mapping patents and file- management patents that Microsoft claimed were infringed by TomTom’s use of the Linux kernel. – This means Microsoft will pay to protect TomTom and it’s customers from being sued by… well… Microsoft (and others) for their use of Linux. DOH Microsoft will also get access to the TomTom patents that were cited in TomTom’s countersuit against Microsoft, although Microsoft won’t make any payment to TomTom. countersuit against Microsoft In a statement, the two companies said that the settlement provides TomTom patent coverage “in a manner that is fully compliant with TomTom’s obligations under the General Public License Version 2.” As part of the agreement, TomTom will “remove from its products the functionality related to two file management systems patents” over the next two years. The agreement protects TomTom’s customers under the patents during that time, the companies said. The settlement has a five-year term. Specific financial terms were not disclosed. With respect to Microsoft’s mapping patents and TomTom’s patents, the two companies have agreed to take no further legal action for the duration of the term. In the case of the three file management patents, Microsoft is providing an agreement not to sue customers for their use of TomTom’s products.

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