TiVo Files Fresh Suit Against Comcast Over Set-Top Box Patents (2)

Jan. 14, 2019, 2:56 PM; Updated: Jan. 14, 2019, 9:56 PM

TiVo Corp.'s Rovi unit has filed a new patent infringement suit in its ongoing battle with Comcast Corp. over video recording technology in set-top boxes.

Rovi Guides Inc. alleges that Comcast’s products, including set-top boxes for X1, an interactive television platform, infringe eight patents covering TV program guides for recording video. It filed the complaint Jan. 14 in the U.S. District Court for the Central District of California.

The lawsuit is TiVo’s most recent salvo in a dispute that started in 2016, when Rovi merged with TiVo and was unable to renew a patent-licensing agreement with Comcast for television set-top box technology. The patent fight spans U.S. federal appeals and district courts, the International Trade Commission and the Patent Trial and Appeal Board.

Rovi’s latest infringement complaint targets Comcast products such as DVR and non-DVR set-top boxes and online video service Xfinity Stream.

Comcast agreed to pay Rovi over $250 million for a fixed-term license to its patent portfolio in 2005, Rovi said in its complaint. AT&T Inc., Charter Communications Inc., Dish Network Corp., and Verizon Communications Inc. have renegotiated licensing agreements with Rovi, but Comcast is holding out, Rovi said.

Numerous global media and entertainment leaders use and license TiVo’s intellectual property, TiVo said in an emailed statement.

“Litigation is always a last resort, but Rovi is committed to taking the necessary actions to ensure Comcast renews its long-standing license for the use of our intellectual property,” TiVo’s chief executive Raghu Rau said in an emailed statement.

Comcast is yet to review Rovi’s latest complaint but will continue to defend against allegations, a Comcast spokeswoman said in an a email.

“Rovi has in recent years deployed its increasingly obsolete patent portfolio in an unsuccessful litigation campaign seeking to charge Comcast and our customers for technology that Rovi did not invent,” she said.

Comcast has been challenging TiVo’s patents at the patent board, in a bid to kill them and reduce the value of TiVo’s patent portfolio. The cable company lobbed 31 petitions at the patent board in November 2018 alone, arguing that Rovi Corp.'s patents are invalid because they aren’t novel. Comcast successfully knocked out 12 Rovi patents in prior proceedings.

Rovi and Veveo’s first lawsuit against Comcast from 2016 is pending in the U.S. District Court for the Southern District of New York.

The TiVo units again sued Comcast in the U.S. District Court for the District of Massachusetts in January 2017. They filed an additional patent infringement complaint a month later at the International Trade Commission, asserting the same patents against Comcast. The district court case has been stayed pending proceedings in the trade agency complaint.

The case is Rovi Guides, Inc. v. Comcast Corp, C.D. Cal., 2:19-cv-00275, Complaint filed 1/14/19

(Updated with TiVo and Comcast statements)

To contact the reporter on this story: Malathi Nayak in Washington at mnayak@bloomberglaw.com

To contact the editors responsible for this story: Rebecca Baker at rbaker@bloomberglaw.com; Keith Perine at kperine@bloomberglaw.com

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