EchoStar Technologies Corp. v. TiVo, Inc., 2006 WL 2501494(E.D.Tex. Jul 14, 2006) (NO. 5:05 CV 81 DF)
Judge: Caroline Craven
Divison: Texarkana
Holding: Motion to Stay GRANTED
COMMENTS:
Already heavy press buzz on this one from the other patent law blogs. This case is the second patent infringement case in the ED Tex concerning DVR technology involving the same parties. The first case, TiVo, Inc. v. EchoStar Communications, et. al., C.A. No. 2:04-CV-1, was an infringement action in which Defendent TiVo sued Plaintiff for allegedly infringing on its patents covering DVR technology. That matter was tried before a jury and resulted in a verdict in favor of the plaintiff, Defendant TiVo. In this case Echostar moved the Court for a stay of this action in light of patent reexamination proceedings before the United States Patent & Trademark Office (“PTO”). According to Defendants, on May 25 and 26, and June 9, 2006, they filed requests for reexamination asking the PTO to reexamine and assess the patentability of all asserted claims of the three patents-in-suit. Defendants have requested an ex partes reexamination of the '186 and '804 patents and an inter partes reexamination of the '685 patent.
Judge Craven granted the motion, finding that the equities merited a stay in this case because "[t]he Court finds a high likelihood that results of the PTO's reexamination will have a dramatic effect on the issues before the Court, up to and including dismissal of the entire action if the patent claims are found to be unpatentable. In any event, the Court will benefit from the PTO's expertise and determination on reexamination, and Plaintiff will not be unduly prejudiced by the stay."