In another sign that TiVo/Rovi is prepared to go to the mat in its legal fight with Comcast, the company has fired off another lawsuit against the MSO, alleging that Comcast is infringing on eight patents.
The lawsuit, filed January 14 in the US District Court for the Central District of California, covers patents describing "advanced" DVR functions, including cloud/network recording and whole-home/multi-DVR arrangements. TiVo Inc. (Nasdaq: TIVO) claims that the asserted patents cover "fundamental DVR technologies at the core of the Comcast X1 system."
In TiVo's view, the accused products include X1 set-tops and DVRs, the Xfinity Stream and TV Remote mobile apps, the Xfinity Stream Portal, and servers that operate in conjunction with the X1 receivers, among other components. (See Comcast Finds More Work for X1 and Comcast Starts to Roll Amazon Prime Video to X1 Boxes .)
X1, Comcast Corp. (Nasdaq: CMCSA, CMCSK)'s IP-capable video platform for set-tops and mobile streaming devices, has been deployed to more than 60% of the MSO's residential video subscriber base. Comcast has claimed that it developed the technologies for X1 in-house.
According to a copy of the suit obtained by Light Reading, TiVo is asserting the following patents in this latest lawsuit:
- No. 9,055,319 -- Interactive guide with recording (June 2015).
- No. 8,448,215 -- Electronic program guide with digital storage (May 2013).
- No. 8,973,069 -- Systems and methods for relocating media (March 2015).
- No. 7,873,978 -- Client-server based interactive television program guide system with remote server recording (January 2011).
- No. 9,232,254 -- Client-server based interactive television program guide system with remote server recording (January 2016).
- No. 8,272,019 -- Client-server based interactive television program guide system with remote server recording (September 2012).
- No. 7,735,107 -- Client-server based interactive television program guide system with remote server recording (June 2010).
- No. 9,118,948 -- Client-server based interactive guide with server recording (August 2015).
The lawsuit joins other legal entanglements involving TiVo and Comcast. It arrives on the scene as TiVo continues to explore options that could lead to the company divesting assets or going private. It also comes after Comcast has had some success with inter partes reviews (IPRs) with the Patent Trial & Appeal Board to invalidate some TiVo claims. (See Tivo Might Sell Off Its Products Business .)
Comcast, meanwhile, has disabled a remote recording feature for X1 following an International Trade Commission ruling. The companies are still battling at the ITC over three other patents and in a set of other district court cases. (See Stakes Run High for Tivo in Comcast Suit.)
Comcast's license with TiVo/Rovi expired on March 31, 2016. In the suit, TiVo claims that Comcast "refuses to renew its patent license on acceptable terms," and that 14 years ago, when Rovi's US patent portfolio was less than half the size it is today, Comcast paid Rovi more than $250 million for a fixed-term license to Rovi's patent portfolio. Rovi acquired TiVo in September 2016 for about $1.1 billion.
"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," Raghu Rau, TiVo's president and CEO, said in a statement. On TiVo's Q3 call, Rau expressed confidence that Comcast "will ultimately pay a license." (See TiVo Tweaks Interim CEO Package as Future Remains in Flux.)
But, like TiVo, Comcast is showing no signs of backing down from the fight.
"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," Comcast said in a statement. "Rovi launched this campaign in April 2016 by asserting infringement of 15 patents -- 14 of which have been held to be invalid and/or not infringed by Comcast, or have been withdrawn by Rovi. While we haven't had an opportunity to review Rovi’s latest complaint, we will continue to defend ourselves against allegations we determine to be meritless."
— Jeff Baumgartner, Senior Editor, Light Reading