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A federal jury in Marshall has returned an almost $74 million verdict for TiVo Inc. in its patent infringement suit against EchoStar Communications Corp. After a 10-day trial in the U.S. District Court for the Eastern District, the jury found on April 13 that EchoStar, a Colorado-based company, had infringed on TiVo’s “time warp” technology that allows viewers to record one television program while watching another. TiVo is based in Alviso, Calif. Sam Baxter, lead counsel for TiVo and a principal in McKool Smith in Texarkana, says his client filed the suit in the Eastern District of Texas because “they have good common sense juries,” good judges and the district is known for its speedy trials. The verdict gives TiVo the ability to seek licensing fees from other companies that use its technology, Baxter says. According to its amended complaint in TiVo Inc. v. EchoStar Communications Corp., et al., the U.S. Patent and Trademark Office issued TiVo a patent on its “multimedia time warping system” in May 2001. TiVo filed suit against EchoStar in January 2004. Baxter says TiVo had sought $87 million in damages from EchoStar, owner of the Dish Network satellite-television service. However, Baxter says that TiVo had a “marking problem.” To get damages in an infringement suit, the plaintiff must have marked its product with its patent number, he says. While TiVo had marked some of its products with the patent number, it had not marked all of its products, he says. “I think the jury decided the best thing to do was to be conservative and to start [calculating damages] when we filed the suit,” Baxter says. Harold McElhinny, lead counsel for EchoStar and a partner in Morrison & Foerster in San Francisco, declines comment about the suit. In a written statement released April 13, EchoStar says, “This is the first step in a very long process, and we are confident we will ultimately prevail. Among other things, we believe the patent — as interpreted in this case — is overly broad given the technology in existence when TiVo filed its patent. We believe the decision will be reversed either through post-trial motions or on appeal.” “It’s a huge verdict for TiVo,” patent attorney David Judson, a Dallas solo, says of the verdict. But Judson says it was not unexpected that a jury in the Eastern District would return a verdict favoring TiVo. “It’s a very pro-patent owner jurisdiction,” he says. TiVo faces another hurdle, however. Judson says the U.S. Patent and Trademark Office is re-examining the validity of TiVo’s patent to determine whether it should have been issued. Such re-examinations are becoming more frequent, he says.

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