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story category TiVo Sues AT&T, Verizon
For violating DVR-related patents
06:29PM Wednesday Aug 26 2009 by Karl Bode
tags: legal · competition · business · hardware
Tipped by Big Pete 82 See Profile
"TiVo can go around to everyone and say, ‘You have to come to terms with us, we have already taken on Dish and our patents withstood,’" one patent litigator opined last month after TiVO emerged victorious against Dish Network with $104 million in damages and their DVR patents in tow. Guess what? He was right. TiVO today announced they've filed suit against both AT&T and Verizon for their use of TiVo patents 6,233,389 B1 (a "Multimedia Time Warping System"), 7,529,465 B2 (a "System for Time Shifting Multimedia Content Streams"), and 7,493,015 B1 (a "Automatic Playback Overshoot Correction System").

Related:
  1. FTC Investigates Intel for Anti-Trust Issues
  2. Wednesday Evening Links
  3. Wednesday Evening Links
  4. Hardware Vendors Scrapping For Stimulus Cash
  5. TiVo Wins Another Echostar Patent Ruling
  6. Dish, Echostar Must Pay TiVo $200 Million
  7. What Network Neutrality Is REALLY About
  8. Cable Industry: Shucks, Guess Nobody Wants CableCARDs
Forums » TiVo Sues AT&T, Verizon
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blacksurfer

join:2002-07-14
Sherman Oaks, CA

Time to buy...

Tivo stocks!!!

Lee GWB
Yaco
Premium
join:2001-10-13
Allendale, NJ

Re: Time to buy...

I wonder if Cablevison will have a problem with its "Off Site" dvr.
Also, shouldn't Motorola have an issue since the designed the hardware?
Lee
gorehound

join:2009-06-19
Portland, ME
no i don' think os.
i am really sick of these lame patents that get issued.vague stupid and this goverment allows this stuff to be patented.

TIVO does have a good product but these patents seem vague.

Steve
I'm a PC, so shut up
Consultant
join:2001-03-10
Yorba Linda, CA

Re: Time to buy...

said by gorehound See Profile :

TIVO does have a good product but these patents seem vague.
You realize that the title of the patent is not the same thing as the patent itself, right?

nixen
Rockin' the Boxen
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Alexandria, VA
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·Speakeasy

Re: Time to buy...

said by Steve See Profile :

said by gorehound See Profile :

TIVO does have a good product but these patents seem vague.
You realize that the title of the patent is not the same thing as the patent itself, right?
You mean there's more???
--
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Morac

join:2001-08-30
Riverside, NJ
·Comcast

said by blacksurfer See Profile :

Tivo stocks!!!
Only if you think they'll win.

Since the suit was filed in the same court that the Echostar suit was filed in and TiVo won there, chances are AT&T and Verizon will settle long before it gets to court.
--

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Sterlingo

join:2002-03-24
Shingle Springs, CA

Re: Time to buy...

Guess what? It already is in court.

Guess again: A settlement against a bulldozer like AT&T IS a win.

r81984
Fair and Balanced
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Tivo is going to go down for this crap.

Tivo did not invent anything. They got patents for ideas that were already known. Tivo is one of the worst companies of all time.
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joker5656

join:2006-06-23
Dallas, GA

Re: Time to buy...

If AT&T can prove or Verizion can prove they made the device or whatever they can win in court. But if all three say they created then the judge would need to see copies and paper work provening when they created. other than that Tivo wins again.

Morac

join:2001-08-30
Riverside, NJ
·Comcast

said by r81984 See Profile :

Tivo is going to go down for this crap.

Tivo did not invent anything. They got patents for ideas that were already known. Tivo is one of the worst companies of all time.
TiVo is bringing three patents to the table this time: 6,233,389 B1 ("Multimedia Time Warping System"), 7,529,465 B2 ("System for Time Shifting Multimedia Content Streams"), and 7,493,015 B1 ("Automatic Playback Overshoot Correction System").

The last one stands out since before TiVo I'm fairly certain no recording devices did "Automatic Playback Overshoot Correction" so they did invent that. TiVo actually invented a number of other things as well, despite your claim that they didn't even anything. TiVo has a strong case with their win against Echostar. Whether they have the capital to go up against AT&T and Verizon remains to be seen, but they do have a large influx of cash from the Echostar suit.

TiVo and Replay TV were the two first setup DVRs in the market, back before AT&T or Verizon even knew what a DVR was. That doesn't matter, but the fact that TiVo filed a number of patents at that time which were granted, does.
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r81984
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Re: Time to buy...

I read the patents. They are too broad. I would say VCRs, laser disc players, and computers were doing those things before Tivo.

Those patents are for broad ideas that they did not event. They did not patent anything specific. I just cannot see how they think they have a right to pretend they invented those 3 functions.
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KenAF

join:2006-01-23
Arlington, VA

Re: Time to buy...

There's no such thing as a patent on an idea. Patents are on the process / implementation (i.e. how to do it). In Tivo's case, the patents are on the hardware and software means to implement a DVR on low-cost hardware. Prior patents addressed other implementations where the cost of the hardware was not a concern; those patents were used to create $50,000 to $200,000 DVRs for military and industrial use. You can't build a $200 DVR with those patents using today's technology.

There's a good reason why virtually every manufacturer implemented the TiVo patent and not one of the few DVR patents that preceded it. Some obviously feel that TiVo patent is too broad, and that it is too difficult to work around. Of course, well-written patents are supposed to be difficult to work around, so that the inventor is compensated for their work for a period of 20 years. The patent system would be worthless if anyone could take a patent and then make an insignificant change to avoid infringement.

r81984
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Re: Time to buy...

said by KenAF See Profile :

There's no such thing as a patent on an idea. Patents are on the process / implementation (i.e. how to do it). In Tivo's case, the patents are on the hardware and software means to implement a DVR on low-cost hardware. Prior patents addressed other implementations where the cost of the hardware was not a concern; those patents were used to create $50,000 to $200,000 DVRs for military and industrial use. You can't build a $200 DVR with those patents using today's technology.

There's a good reason why virtually every manufacturer implemented the TiVo patent and not one of the few DVR patents that preceded it. Some obviously feel that TiVo patent is too broad, and that it is too difficult to work around. Of course, well-written patents are supposed to be difficult to work around, so that the inventor is compensated for their work for a period of 20 years. The patent system would be worthless if anyone could take a patent and then make an insignificant change to avoid infringement.
If you read the patents they are specifically for an idea.
It is not for actual hardware or software.
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Morac

join:2001-08-30
Riverside, NJ
·Comcast

Re: Time to buy...

said by r81984 See Profile :

If you read the patents they are specifically for an idea.
It is not for actual hardware or software.
Abstract Ideas aren't patentable, but the embodiment of a specific idea is.

So for example, "recording TV" can't be patented. A 61 step process on how to record TV is patentable.

BTW those 61 steps embody the TiVo hardware and software.
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Doctor Olds
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said by r81984 See Profile :

Tivo is going to go down for this crap.

Tivo did not invent anything. They got patents for ideas that were already known. Tivo is one of the worst companies of all time.
So far they are going to Court, presenting their case and winning. $104 Million is nothing to sneeze at (bet you wouldn't complain if you were getting it) and the win shows their patents do hold up in Court which is where it matters the most regardless of your opinion.
--
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NPGMBR

join:2001-03-28
Arlington, VA

I'me a big TiVo fan but I've been using the Verizon Home Media DVR for the past 9 months and I could not be more disappointed. Not to mention that I got Verizon's Home Media DVR when I for got FIOS almost three years ago but promptly sent it back.

Decided to get it again this year with a deal VZ was doing but discovered many of the bugs that were there the first time I tried it are still there. I don't know if I sould fault VA or Motorolla but my term with the Home Media DVR ends in Nov and I'm promptly putting my TiVos back in. Thank God I kept them.

Other than than the issues with the Home Media DVR I love FIOS.
KenAF

join:2006-01-23
Arlington, VA

Re: TiVo sues AT&T, Verizon for DVR patent infringement

During today's conference call, TiVo's CEO said "attempts were made to reach a commercial agreement" with Verizon and AT&T but "could not be reached." Unable to reach an agreement, TiVo decided to "pursue a permanent injunction."

Patent specifics

Multimedia Time Warping System (filed 7/30/1998, granted 5/15/2001, expires 7/30/2018)
System for time shifting multimedia content streams (filed 2/20/2002, granted 5/05/2009, expires 2/20/2022)
Automatic playback overshoot correction system (filed 5/13/2004, granted 2/17/2009, expires 5/13/2024)

Only the first patent was at issue in the Dish Network case, which was filed back in 2004.

TiVo also said the new DirecTiVo product was on track and that it expected to roll out "new product developments" with Best Buy in early 2010. TiVo alluded to some user interface improvements on the new product.

dvd536
as Mr. Pink as they come
Premium
join:2001-04-27
Phoenix, AZ

Re: TiVo sues AT&T, Verizon for DVR patent infringement

said by KenAF See Profile :

During today's conference call, TiVo's CEO said "attempts were made to reach a commercial agreement" with Verizon and AT&T but "could not be reached." Unable to reach an agreement, TiVo decided to "pursue a permanent injunction."

Patent specifics

Multimedia Time Warping System (filed 7/30/1998, granted 5/15/2001, expires 7/30/2018)
System for time shifting multimedia content streams (filed 2/20/2002, granted 5/05/2009, expires 2/20/2022)
Automatic playback overshoot correction system (filed 5/13/2004, granted 2/17/2009, expires 5/13/2024)

Only the first patent was at issue in the Dish Network case, which was filed back in 2004.

TiVo also said the new DirecTiVo product was on track and that it expected to roll out "new product developments" with Best Buy in early 2010. TiVo alluded to some user interface improvements on the new product.
Uhmmmmmmmmm ALL those were filed AFTER the VCR was in existance so tivo is really stepping on their patents when it comes to time shifting content.
-
oh yeah, tivo sucks.
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cdru
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Re: TiVo sues AT&T, Verizon for DVR patent infringement

said by dvd536 See Profile :

Uhmmmmmmmmm ALL those were filed AFTER the VCR was in existance so tivo is really stepping on their patents when it comes to time shifting content.
The first patent is in regards to saving to a MPEG stream. They didn't patent timeshifting, as you pointed out the VCR had long done that. It was the particular implementation where they convert the stream to MPEG (if it's not already) buffer, and then save the stream that is the basis of their patent.

VCRs could not simultaneously record one show while playing back an earlier portion of the same show or an entirely different show at the same time. Nor did VCRs automatically "rewind" a few seconds when you played after fast forwarding.

I'm not commenting on the validity of the patents, just that they are different then just a standard VCR. This is how patents work. They can sometimes be a completely unique invention that is not based on other existing inventions, or they may take an existing invention and improve on it in a significant manner.

milnoc

join:2001-03-05
H3B

One thing's for sure...

At least Tivo isn't a patent troll. They actually manufacture a REAL product, and apparently a good one at that.

I wouldn't know if it's actually good or not. I'm Canadian. We're not allowed to possess decent technology up here.
Gilitar

join:2000-11-20
Mobile, AL

Rediculous!

This is the kind of crap that makes everything more expensive than it should be. These ridiculous generic patents are just an example of why the patent system is broken.

TKJunkMail
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Re: Rediculous!

said by Gilitar See Profile :

This is the kind of crap that makes everything more expensive than it should be. These ridiculous generic patents are just an example of why the patent system is broken.
Ultimately, thru a court loss or a settlement, DVR rental costs will go up at AT&T & Verizon.
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Sterlingo

join:2002-03-24
Shingle Springs, CA

Re: Rediculous!

Until today I'd been feeling foolish about paying $300 for lifetime TIVO service on my new TIVO. Now, I'm thinking I should only run my TIVO under clean-room conditions.
sonicmerlin

join:2009-05-24
Cleveland, OH

That's so completely irrational it's beyond comprehension.

If AT&T and Verizon could so easily raise rental costs, why wouldn't they do so before any patent settlement? Why leave money on the table? The reality is they can't raise prices. Whether due to competition or an unwillingness of consumers to spend anymore than the Big Two currently charge, they will have to eat any settlement money awarded to TiVo.

cdru
Go Colts
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join:2003-05-14
Fort Wayne, IN

Re: Rediculous!

Many providers already pay TiVO for licensing, including DirecTV, Comcast, Cox, etc. They have remained competitively priced for their DVR services even after paying the licensing costs.

DataDoc
My avatar looks like me, if I was 2D.
Premium
join:2000-05-14
Greenville, NC
·Suddenlink

It's not generic, it's a specific product that's being infringed upon.

Here's a good example of why we need patents:
»en.wikipedia.org/wiki/Robert_Kearns
--
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Kearnstd
Elf Wizard
Premium
join:2002-01-22
Mullica Hill, NJ

i tend to think the listed patents should be considered generic, its broad patents like this that stifle innovation.

i mean if someone builds a different kind of box with different software it is not a tivo and shouldnt be considered infringing.
--
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casey727

join:2004-01-22
Plano, TX

When will Coke sue Pepsi???

"A multimedia time warping system. The invention allows the user to store selected television broadcast programs while the user is simultaneously watching or reviewing another program."

Or when will Ford sue Mercedes - Benz?
WhatNow
Premium
join:2009-05-06
Charlotte, NC

Re: When will Coke sue Pepsi???

My computer can do that with two streams. I can download 1 and watch the other. Does that mean every computer maker or owner is breaking the multimedia time warping system?
It is just a regular computer not even a media server.
KenAF

join:2006-01-23
Arlington, VA


4 edits
No, it doesn't.

You'll find hundreds of patents for an "automotive engine." The title is just the title and the summary is just a summary. It means nothing. All that matters are the specific implementation (method) claims described within the patent. TiVo's patents deal with implementations for low-cost (i.e. very slow) processors.

As far as Ford, google "Ford patent infringement" and "Ford patent lawsuit" and you'll find that they've settled dozens of patent infringement claims. Remember that patents are only good for 20 years.

See 8 replies to this post

jpl931

join:2001-02-22
Herculaneum, MO

Charter DVR

Have they sued the sinking ship AKA Charter Comm.???

Freeberg

@comcast.net

Re: Charter DVR

Charter's signed a partnership with TiVo, so it wouldn't make sense to sue them. I'm sure that TiVo gave both phone companies plenty of opportunities to negotiate their way out of this, but they just didn't want to pay. The real question now is what does this mean to the Dish litigation. TiVo would be stupid to settle since they need the patent reinforced to really nail the phone companies. Plus if they don't settle and force Dish to turn off millions of DVR, AT&T and Sprint will watch in horror as they see what one little company can do to a giant. The longer they drag this out, the higher the price goes up. If I was Sprint or AT&T, I would sign the partnership before TiVo finishes Dish. Losing access to your DVR just isn't worth the couple hundred million it would ultimately cost in licensing.
popper

join:2006-05-30
Baton Rouge,

Sue Happy

I wonder what it would be like today if Philips had patented fast-forward and rewind back then.

N O Y B
St. John 3.16

join:2005-12-15
Forest Grove, OR

Re: Sue Happy


We would have fast-future and re(write)-history buttons instead.
sonicmerlin

join:2009-05-24
Cleveland, OH
They wouldn't be able to patent fast-forward and rewind, very general concepts. They would only be able to patent a specific implementation of said features.

And even if they did the patent would have run out by now.

Subaru
1-3-2-4
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clubs:

Wow..

AT&T getting picked on a lot in the past 48 hours
Skippy25

join:2000-09-13
Hazelwood, MO

Re: Wow..

Because the suck and are an easy target.
ccarlin

join:2000-12-28
Deerfield, IL

I had the last one long before the patent application

My Microsoft UltimateTV which according to wikipedia was released in 2000, already had the overshoot correction built in.

Would that constitute prior art? I know I can fast forward at 300x normal speed and when I stop it jumps back. Pretty much exactly the same. So how does stuff like this get thru the patent system and by all the lawyers as well?

See 9 replies to this post
twill1989

join:2009-01-03
Goose Creek, SC
·AT&T Southeast

Verizon and ATT are not Dish

Sorry but Verizon and ATT are not Dish Network. Dish has been struggling for years whereas Verizon and ATT are communications titans. Both companies have the financial capability to make this a long, drawn out process for TiVo.

I think TiVo may have bitten off more than they can chew on this one.

See 6 replies to this post

espaeth
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Maybe ATT and Verizon can help Dish/Echostar out...

Considering they recently convinced the US Patent Office to review the validity of Tivo's patents:

»www.multichannel.com/article/326···view.php

Dish has a pretty compelling case in that patents that pre-date Tivo's "Time Warp" patent basically describe the same system.

See 6 replies to this post
snarkyman

join:2009-05-11
Arlington, MA

Why isn't suing Motorola?

Lee GWB (above) is right.

Why is TiVo suing AT&T and Verizon? Cable, satellite and fiber TV providers don't manufacture DVRs themselves, they buy them mostly from Motorola and rent them to their customers.

Don't sue the customers (AT&T and Verizon) of an infringing product. If anything, TiVo should sue the manufacturer of the infringing product (Motorola).
ravensfan55

join:2008-06-16
Severna Park, MD

Is TiVo crazy?

Why are they suing the content providers? Motorola and Cisco are the big 2 DVR makers. AT&T, Verizon, Charter, Cox, TW just buy the boxes and rent them.

Is it because Motorola makes the Comcast TiVO?
KenAF

join:2006-01-23
Arlington, VA


4 edits

Re: Is TiVo crazy?

Litigation against Motorola or any other hardware-only supplier poses challenges.

Motorola does not ship any boxes with DVR software. None of the Motorola DVRs are functional as delivered. They require software from the cable company to run. Many of TiVo's patent claims relate to the interaction of the hardware and software (i.e. how the software should use the hardware); if there's no software, those claims don't apply.

TiVo does have hardware claims as well, but it's much more difficult to make a case on that alone, because CPUs in these products feature a number of programmable functions. These programmable functions could be used to create a crippled DVR (by today's standards) that does not infringe. No cable provider would offer such a crippled DVR, but since Motorola does not supply the software, they can claim non-infringing uses for their hardware, regardless of whether any MSO would actually use the hardware in that way.

An example of a crippled DVR would be one that does not allow you to watch a recording while you record something else. Another example would be a DVR that does not allow you to use trickplay functions (pause, replay, rewind, etc) on liveTV while you record something else.

digiblur
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Patents are only good if the patent office upholds them

Patents are only good if the patent office upholds them

ENGLEWOOD, Colo. – Aug. 26, 2009 – DISH Network L.L.C., a subsidiary of DISH Network Corporation (NASDAQ: DISH), and EchoStar Technologies L.L.C., a subsidiary of EchoStar Corporation (NASDAQ: SATS), issued the following statement regarding recent developments in EchoStar Communications Corporation vs. Tivo:

“We are pleased the Patent and Trademark Office (PTO) dismissed Tivo’s petition to vacate EchoStar’s re-examination of Tivo’s patent. In the decision, the Director of the Central Re-examination Unit of the PTO specifically found that ‘the references of record may be used to find that a substantial new question of patentability is present, [and] the decision of the [PTO] examiner has not been shown to be in error’ in granting EchoStar’s re-examination petition. The PTO’s decision clears the way for the re-examination to continue, which we believe will result in a Final Office Action invalidating the software claims of Tivo’s patent. These software claims are the very same claims that EchoStar was found to have infringed in the contempt ruling now pending on appeal.”
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Jmartz

join:2000-07-20
Tenafly, NJ

All companies should just have Tivo do their DVR.

Pay the licencing fee to them, and give customers a decent product. Cable DVR's are terrible. This Cablevision network DVR thing is just vaporware at the moment, and from what I can tell, nothing on the market from a third party, with the exception possibly of MOXI can hold a candle to Tivo's reliability.

It makes no sense that a company would not want to team up with Tivo. DirecTV used to have a great Tivo integrated DVR that was built specifically for them, they decided to build their own DVR and it sucks.

It's time for these companies to just pay up. Ultimately they will have to pay, so why not give up their pride and just do it the right way to begin with?
scooper

join:2000-07-11
Youngsville, NC

Re: All companies should just have Tivo do their DVR.

Why should they do that ? Dish has already came up with a different means to do the DVR functions that shouldn't infringe. In fact - they applied for their OWN patent on it.

ablack6596

join:2005-01-28
Scarsdale, NY

Re: All companies should just have Tivo do their DVR.

They should do it because they have an inferior product that sucks. Verizon and AT&T could be advertising that they give their customers the best DVR rather than the same pos that you get from the cable companies.

KrK
Heavy Artillery For The Little Guy
Premium
join:2000-01-17
Tulsa, OK

Re: All companies should just have Tivo do their DVR.

Dish Network has the best DVR I've ever seen. Yet.
KenAF

join:2006-01-23
Arlington, VA
Thus far, every one of Dish Network's implementations was found infringing. They are awaiting the result of the appeal, but as it stands today, they have no non-infringing DVR implementation.

teeevo

@optonline.net

..............

desperate move by a company that will be out of business in 5 years. they lost 16% of subscribers since 1 year ago.

»www.multichannel.com/article/329···ment.php

KrK
Heavy Artillery For The Little Guy
Premium
join:2000-01-17
Tulsa, OK

Gee. Who didn't see this coming.

Funny thing is, some of Tivo's patents just got invalidated.
KenAF

join:2006-01-23
Arlington, VA


1 edit

Re: Gee. Who didn't see this coming.

None of TiVo's patents were invalidated.

Dish Network challenged two claims in the patent and presented its arguments. Based on those arguments, the PTO made a preliminary ruling that those two claims were invalid. This preliminary ruling did not take into account any response or arguments from TiVo. Preliminary rulings go against the patent holder 65+% of the time.

After the preliminary ruling, the patent holder is given the opportunity to respond and present its arguments. Final rulings go against the patent holder closer to 20% of the time. If a final ruling is made against the patent holder, they are given the option to appeal. If the examiner's decision is not reversed on appeal, the patent holder is given the opportunity to amend the claims, and these amended claims become a part of the revised patent.

KrK
Heavy Artillery For The Little Guy
Premium
join:2000-01-17
Tulsa, OK

Re: Gee. Who didn't see this coming.

Valid point. Should be invalidated, but then again, justice doesn't always equal reality.
sonicmerlin

join:2009-05-24
Cleveland, OH

Re: Gee. Who didn't see this coming.

Could you stop talking as if you understand what's actually going on? I myself don't know all the details, but I know it's very dangerous to assume patent claims are all evil, as some anti-patent zealots would have you believe.

KrK
Heavy Artillery For The Little Guy
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Re: Gee. Who didn't see this coming.

And where did I say that? I've been following this Echostar vs Tivo since the beginning, As a Dish network customer who it effects, and because I am a ReplayTV owner and was well aware of Tivo's products and timeline.

Patents are NECESSARY to reward innovation and progress, but in some cases are used to extort money from innocent companies. No I don't know every detail of these patent claims, but I can grasp the overall gist and results of them just fine, thank you very much. So, since you admit you don't know the details, and added nothing useful to the discussion, maybe you should take your own advice, quit flaming or insulting and just back off.

Geesh.
--
"Fascism should more properly be called corporatism because it is the merger of state and corporate power." -- Benito Mussolini
a1rodger

join:2008-05-02
Keller, TX

1 edit

.

never mind answered above

CheezyWhiz

@sbcglobal.net

Actually ...

While Motorola does provide the box, the underlying code is developed by Verizon employees.

They originally used a Microsoft product (the one AT&T uses for U-verse), but switched to an internal team a few years ago for their Interactive Media Guide product.

AT&T is not directly involved in the coding for their product.
waiting4fios

join:2005-04-08
Howell, NJ
·Verizon FIOS


3 edits

Tivo not taking Verizon and at&t seriously

If Verizon and at&t balked at negotiating with Tivo and they obviously knew of the litigation with Dish network, then I think Verizon and at&t probably feel that they can win against Tivo in court or that any damages awarded would probably be significantly less than what Tivo was asking for in licensing fees.
Forums » TiVo Sues AT&T, Verizonpage: 1 · 2


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