& Foerster called on Charlie Ergen, the
company’s founder and then-CEO. Ergen
testified that, prior to launching his company’s DVRs, he spoke with TiVo founder
Mike Ramsay, and that Ramsay had effectively assured him that TiVo wouldn’t
enforce its patent. On cross-examination,
McKool Smith partner Samuel Baxter
pounced on that testimony, pointing
out that in a previous deposition, Ergen
claimed he never discussed patent issues
In the end, it took the jury just 90 minutes to conclude that EchoStar had willfully infringed the patent, and to award
TiVo more than $73 million in damages.
“The speed was dazzling,” says Irell partner and lead TiVo trial counsel Morgan
Chu, calling it one of his quickest jury
verdicts ever. EchoStar responded with a
press release labeling the verdict “the first
step in a very long process.” That, it turned
out, was a bit of an understatement.
F. Scott Kieff
The TiVo Team Weighs In
Quick takes from four who played a role in the long-running EchoStar suit.
irell & Manella’s Morgan
chu, TiVo’s lead trial
counsel, says the jury
came back so quickly that
“the speed was dazzling.”
TiVo gc Matthew Zinn
says that if the companies
hadn’t settled the dispute,
it “could have easily gone
on a few more years.” F.
scott Kieff, a law profes-
sor and TiVo consultant,
says the litigation “hasn’t
been the Federal circuit’s
finest hour.” Wilmer’s seth
Waxman, TiVo’s lead ap-
pellate attorney, says the
case is a lesson in “how
difficult it is for smaller
inventors to enforce their
BY LATE SUMMER 2006, FEDERAL
district court judge David Folsom, who
had overseen the Marshall trial, issued
a permanent injunction ordering Echo-
Star to remove or disable the infringing
features on roughly 4 million DVRs. But
EchoStar asked the Federal Circuit to
injunction by continuing to infringe.
The judge ruled there was “clear and con-
vincing evidence” that EchoStar was flouting
the injunction by continuing to infringe.
overturn the verdict and the injunction
was stayed during the appeal.
In early 2008 the Federal Circuit
found in favor of TiVo and lifted the
stay. EchoStar, however, immediately announced that it had completed a software
redesign on the offending DVRs, which
it claimed made the infringement claims
moot and the injunction unnecessary.
TiVo argued that the supposed fixes really just involved inconsequential coding
changes and moved to have EchoStar held
in contempt for violating the injunction.
After a three-day contempt hearing in
early 2009, Folsom agreed. In a decision
issued that June, he found that the chang-
es to the software did not make EchoStar’s
redesigned DVRs more than colorably dif-
ferent from the older, infringing models
and ruled there was “clear and convincing
evidence” that EchoStar was flouting the
pany claimed that it deserved a new trial.
The Federal Circuit took the case, and
though Folsom had already refused to lift
the injunction while the new appeal was
pending, the higher court decided that it
should in fact be stayed.