EchoStar v. TiVo Patent Case Stayed Pending Inter Partes Reexamination

First, I’m happy to report that one of my favorite patent blogs, the 271 Patent Blog by Peter Zura is back in business. Welcome back Peter.

I’ve been covering the TiVo v. EchoStar case here. Peter has information about the companion case EchoStar v. TiVo here.  In the first case TiVo sued EchoStar for patent infringement, and in the second, EchoStar sued TiVo for patent infringement. This is great fodder for an antitrust article (or blog post). We have what may be a market duopoly with each side holding potentially essential intellectual property rights.

The take-home for patent attorneys involves the second case — the one filed by EchoStar.  That case was recently stayed pending the outcome of an inter partes reexamination filed by TiVo. In its decision to stay, the magistrate judge gave a good amount of weight to the fact that the reexam was inter partes — thus giving both sides an opportunity to continue the litigation in another form — as well as the statutory litigation estoppel effect against TiVo if the validity EchoStar’s patents are reaffirmed in the reexamination process.  In other words, the fact that the reexam is inter partes made the court more likely to stay the litigation.

• Peter Zura’s Analysis of the stay.
• Can someone e-mail the order to me: and here it is. 
• One of the few really good investigative IP reporters, Xenia Kobylarz has more on the story here at Law.com (subscription req’d).

Comments

[Paul Cole]

Not even a combination (Homage to Wolfgang Pauli).

[Paul Cole]

Apologies! Comment posted on wrong item.

[dee]

Tivo's lead patent counsel is Morgan Chu of Irell and Manella, one of the top ten patent litigators in the world.

[Doug Lichtman]

I was puzzled to see that Echostar did not appeal this stay. I had expected Echostar to rush this case forward, thereby maybe giving Echostar something that might counterbalance the pending loss in the companion case. Yet, no. Echostar accepted the magistrate's stay without a fight. Anyone have a theory as to why?

[Rick Mettke]

Good luck on the reexamination. Mine has taken over eight years and is still not done...(patent 5,602,905)

[Steve Sereboff]

Rick, I don't see a reexam of your '905 patent. I do see a reissue application, which has been pending eight years. Coincidentally, in your appeal, the BPAI issued its decision yesterday. I am sorry, but (per PAIR) you lost.

[Rick Mettke]

Flawed decision (of course I'm biased). RCE on the way this week.

I'll get there....