In a setback for the nation's largest cable operator, the US Supreme Court on Monday denied Comcast's petition to review another court's decision focused on two TiVo/Rovi patents covering interactive guide technology and features that allow users to set DVR recordings remotely.
Comcast's petition sought to overturn a Federal Court's decision in March to preserve a US International Trade Commission order barring Comcast from importing X1 boxes, Law360 reported. Comcast, the report added, argued that the ITC's order overstepped the agency's authority and that the boxes, manufactured by CommScope/Arris and Technicolor, don't infringe as they are imported, holding that they can only allegedly infringe when they are integrated onto Comcast's cable system.
According to Comcast's original petition to the Supreme Court filed on March 25, the cable operator sought to vacate the Federal Court's decision and to direct the ITC to vacate its orders regarding two patents – Nos. 8,006,263 and 8,578, 413 – that describe an "Interactive television program guide with remote access." Both patents have expired.
The US High Court did not elaborate on its reasoning for the denial of Comcast's petition.
Law360 also cited a brief from the ITC to the Supreme Court explaining it agreed that the Comcast appeal of ITC's order had become moot because the TiVo patents in question had expired and urged the Supreme Court to take the case. But the ITC also criticized Comcast for challenging its authority to issue the order.
In its petition, Comcast stressed that only 1% of its customers actually use remote recording functionality for X1. In its opposition to the petition, TiVo countered that the number of customers utilizing the remote DVR feature is irrelevant. "One hundred percent of those set-top boxes are 'designed' to 'be used in an infringing manner,'" TiVo claimed.
Comcast declined to comment on the Supreme Court's denial. Xperi, which recently closed its acquisition of TiVo, has been asked for comment.
Lengthy skirmish continues
The Supreme Court denial of Comcast's petition marks yet another chapter in the long patent battle between Comcast and TiVo that is also continuing in other forms at the ITC and in the civil courts.
Comcast's license with TiVo expired on March 31, 2016. Comcast did not renew the license on the belief that technologies underpinning its X1 platform were developed in-house and because the operator did not want to pay what it concluded to be excessive fees for a renewed patent-portfolio license based on intellectual property it viewed as out of date.
In its original petition to the Supreme Court in March, Comcast told the High Court that TiVo/Rovi has asserted a total of 37 patents against Comcast, arguing that many have already been held invalid by the Patent Trial and Appeal Board and in inter partes review proceedings.
Last fall, Comcast restored a remote DVR recording function for video streaming apps for web browsers and mobile devices after the two aforementioned TiVo patents expired. Comcast had pulled that function from its Xfinity Stream app in November 2017 following a limited exclusion order from the ITC favoring TiVo.
Among other recent court activity, TiVo claimed victory in April after the ITC reaffirmed a ruling last year handed down by an ITC administrative law judge that Comcast's X1 platform infringed on certain TiVo/Rovi intellectual property involving the highlighting of text search queries. Comcast said then that the ruling was much ado about nothing because the cable operator had already disabled the feature in question and that the decision to yank it did not prevent search results from being presented to customers.
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— Jeff Baumgartner, Senior Editor, Light Reading