On Friday, May 14, 2010, the United States Court of Appeals for the Federal Circuit announced that it would grant an ‘en banc’ hearing of the TiVo v. Echostar case. An ‘en banc’ hearing is a decision made by all the judges of a court, where typically only a panel of three judges hear an appellate case. An ‘en banc’ hearing is extremely rare. An ‘en banc’ hearing vacates the earlier appellate decision, and the original briefs and filings will be reexamined. The ‘en banc’ hearing in the present case will address whether a product released by Dish Networks is infringing under the previous decision or whether a new trial is necessary.
Back in 2004, TiVo sued Dish Networks (Echostar) for infringing its patent, U.S. Patent No. 6,233,389 (“the ‘389 patent”), which allows a user to record a television show while simultaneously watching or viewing another program or show. In mid-2006, the Eastern District Court of Texas returned a jury verdict holding that Dish Networks infringed the ‘389 patent and awarded $89.6M in damages and a permanent injunction to TiVo. The permanent injunction prohibited Dish Networks from providing its DVR service. Dish Networks appealed this decision, and in January 2008, the United States Court of Appeals upheld the District Court’s ruling. Throughout this period, Dish Networks continued to sell its DVR system. Dish Networks claimed they made design-around adjustments to the DVR system that would avoid infringement of the ‘389 patent. However, TiVo argues that the changes were insubstantial and seeks additional damages caused by Dish Networks. If the Federal Circuit upholds the permanent injunction, it could mean the end for Dish Networks’ and DirectTV’s recording devices.
Image from: http://lincgeek.org/blog/wp-content/uploads/2008/05/tivo.jpg