Irell & Manella LLP client TiVo Inc., has secured yet another victory in its long-running patent infringement battle with industry rival EchoStar (now known as DISH Network).

The Court of Appeals for the Federal Circuit yesterday affirmed the finding of contempt entered by the District Court against EchoStar last year.  Judge David Folsom from the Eastern District of Texas had ruled in June 2009, after a three-day evidentiary hearing, that EchoStar has continued to infringe TiVo’s patented “Multimedia Time Warp” technology, even after he issued a permanent injunction in 2006 that required EchoStar to, among other things, disable its DVRs. 

In a 26-page detailed ruling, the Federal Circuit agreed with TiVo on all issues and affirmed the findings of contempt and sanctions against EchoStar.  The total monetary award secured by Irell for TiVo to date is in excess of $400 million for damages, sanctions and attorneys' fees. 

TiVo first brought suit against EchoStar in 2004, alleging that EchoStar digital video recorders infringed a TiVo patent that allowed for the "simultaneous storage and playback of multimedia data" such as television signals.  In April 2006 a jury in the Eastern District of Texas returned a unanimous verdict for TiVo, determining that EchoStar’s infringement had been willful, and levied nearly $74 million in damages. With interest, EchoStar ultimately paid TiVo more than $104 million.  In 2008, the Court of Appeals for the Federal Circuit affirmed the original judgment, and the U.S. Supreme Court denied EchoStar’s cert petition.

EchoStar then claimed it had removed the infringing software from its set-top boxes, but TiVo maintained that its patent was still infringed and both the District Court and the Federal Circuit agreed.  In connection with his 2009 contempt ruling, which was affirmed yesterday, Judge Folsom awarded TiVo an additional $300 million in damages and sanctions (including interest), plus its attorneys fees. 

TiVo's counsel Morgan Chu said, “The affirmance by the Federal Circuit confirms yet again the integrity and strength of TiVo’s intellectual property, and the correctness of its positions.”

The Irell & Manella team involved with TiVo's contempt proceedings included Morgan Chu, Andrei Iancu, Tina Byrd, Perry Goldberg, Babak Redjaian, Jay Chung, and Brian Krechman.  The Irell team worked closely on appeal with Seth Waxman, Ed Dumont and Tom Saunders from Wilmer Hale.  Nick Patton from Patton, Tidwell & Schroeder, and Sam Baxter from McKool Smith acted as local counsel in Texas for the contempt proceedings.