DISH Network probably wishes it could hit the rewind button on this one.
The satellite TV company and MoFo’s Harold McElhinny lost another round in their long-running patent fight against Tivo and Irell & Manella’s Morgan Chu.(On the other hand, McElhinny may be basking in the glory of having just been named a managing parter at MoFo.)
Two years ago, Tivo and Chu won an injunction and $74 million in damages against DISH for infringing on a patent related to technology that allows viewers to record, fast-forward and rewind television programs. After that, DISH went ahead with a so-called workaround so that its DVR wouldn’t infringe.
Judge David Folsom wasn’t impressed by DISH’s efforts, ruling today (.pdf) that the new software wasn’t much different than the software that was found to be infringing. The Texas judge found DISH to be in contempt of the injunction and still infringing on Tivo’s patent. He awarded an additional $103 million to Tivo, whose hometown is nearby Alviso. DISH, which used to be known as Echostar, had already paid DISH nearly $105 million.
Both Chu and McElhinny declined to comment.
"We are extremely gratified by the Court's well-reasoned and thorough decision, in which it rejected EchoStar's attempted workaround claim regarding the TiVo patent, found EchoStar to be in contempt of court and ordered the permanent injunction fully enforced,” Tivo said in a prepared statement.
DISH said it would appeal and ask for an emergency stay.
“Our engineers spent close to a year designing-around Tivo's patent and removed the very features that Tivo said infringed at trial,” the company said in a prepared statement.
— Zusha Elinson