TiVo's Patent Reconsideration Shouldn't Affect Its EchoStar Action

The USPTO action finalizes the first phase of the Patent Office reconsideration of TiVo’s patent. The enforceable part of a patent is a series of “claims” (basically descriptions of part of a thing or process). Some of the claims of TiVo’s patent were validated, some were rejected. The claims that were validated are done — they’re now rock solid. The claims that were rejected will now be the focus of further action.

A couple of things can now happen: 1) TiVo can appeal the decision through the appeals process of the Patent Office, then the federal court of appeals, and finally the Supreme Court; and/or 2) TiVo can work with the Patent Office examiner to modify the claims to make them acceptable to the Office. This second option is particularly valuable because two of TiVo’s claims (#1 and #32) form the basis of all the rejected claims.

If they can be “fixed,” all of the rejected claims will likely be validated. Since, in an earlier meeting, the patent examiner agreed that TiVo’s interpretation of the claims distinguished them from prior art, but asked them to show how that was represented in the wording of the claims, it seems that this second route would likely be successful. TiVo has 60 days to respond to this latest action, and will likely do nothing until very close to the end of that period.

In any event, the process will go on for many months or several years, and will therefore likely have no impact on TiVo’s lawsuit against EchoStar. Anyone who doubts this should review NTP v. RIMM. NTP received a huge settlement based on a patent that had been gutted by the USPTO.

Disclosure: Author is long TIVO