Cable Operators

TiVo Sues Time Warner Cable And Motorola

3/26/2012 11:33 AM Eastern

TiVo, after settling patent-infringement lawsuits against Dish Network and AT&T with licensing pacts worth nearly a billion dollars, is now accusing Time Warner Cable and Motorola Mobility of violating three of its patents.

Last year Motorola filed a patent-infringement suit against TiVo after the DVR company sued Verizon Communications, which uses Motorola set-top boxes with its FiOS TV services. Motorola is seeking a judgment of non-infringement on two patents in the Verizon case, and also alleged TiVo DVRs infringe three of its patents.

On Monday, March 26, TiVo filed an amended countersuit against Motorola that included infringement claims against Time Warner Cable and the cable technology supplier.

TiVo asserted patent infringement on three patents against both Motorola and Time Warner Cable: U.S. Patent Nos. 6,233,389 (the "Time Warp" patent at issue in the lawsuits against Dish, AT&T and Verizon), 7,529,465 ("System for Time Shifting Multimedia Content Streams") and 6,792,195 ("Method And Apparatus Implementing Random Access And Time-Based Functions On A Continuous Stream Of Formatted Digital Data").

TiVo is seeking an injunction barring TWC and Motorola from using the patents as well as unspecified monetary damages and legal fees, in addition to a judgment that it does not infringe the Motorola patents. The lawsuits are pending in the U.S. District Court for the Eastern District of Texas.

Time Warner Cable declined to comment.

Motorola, asked to comment, said, "While we do not comment on pending litigation, Motorola Mobility will continue our vigorous defense against TiVo's infringement claims. We are confident in our position and believe we will prevail."

TiVo said in a statement, "Today TiVo filed a response to a patent infringement suit that Motorola initiated against TiVo last year that was stayed until earlier this year. In our response, we have alleged counterclaims accusing Motorola and Time Warner Cable, one of Motorola's customers, of infringing three TiVo patents. We intend to vigorously defend ourselves from Motorola's claims and to diligently enforce our intellectual property rights."

Last week, TiVo and Microsoft said they agreed to drop their patent-infringement lawsuits against each other. That came after the DVR pioneer reached a settlement and patent-licensing deal with AT&T, which uses Microsoft's Mediaroom IPTV platform for U-verse TV.

Microsoft did not grant any patent rights to TiVo under the settlement (and vice versa), and under the agreement no money is changing hands. TiVo disclosed the agreement in an 8-K filed with the Securities and Exchange Commission.

In May 2011, TiVo reached a landmark $500 million settlement with Dish Network, after seven years of litigation. That's on top of $105 million Dish and EchoStar paid to TiVo up to that point. The key patent at issue was TiVo's Time Warp patent, U.S. Patent No. 6,233,389, which covers the simultaneous playback and recording of TV programming.

The Dish deal may have persuaded AT&T to settle out of court. Under the terms of that settlement, announced in January, AT&T will pay a minimum of $215 million - and as much as $300 million - through June 2018. TiVo's case against Verizon is expected to go to trial in the Texas federal district court later this year.

Separately, TiVo this week cut the monthly fee for Premiere DVR customers by 20%, dropping it down to $14.99, and also is reducing pricing on high-end models in the hopes of luring customers away from cable operators' DVR offerings.

TiVo has distribution deals with several pay TV providers, including DirecTV, Charter Communications, Suddenlink Communications, the U.K.'s Virgin Media and RCN. TiVo also has marketing agreements with Comcast and Cox Communications, which have pledged to provide video-on-demand services to cable subscribers with Premiere DVRs.

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