Telco TV

TiVo Settles Patent Litigation With Microsoft

3/22/2012 8:57 AM Eastern

TiVo reached an agreement with Microsoft under which both sides have agreed to drop their patent-infringement lawsuits against each other, after the DVR company reached a settlement and licensing deal with AT&T, which uses Microsoft's IPTV platform for U-verse TV.

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

In January 2012, TiVo announced that it settled its patent lawsuit against AT&T, under which the telco will pay a minimum of $215 million -- and as much as $300 million -- through June 2018.

In a statement, TiVo said, "We are pleased that Microsoft agreed to dismiss its various legal actions against TiVo, resolving all pending litigation. The agreement comes on the heels of the related recent settlement with Microsoft's client AT&T and does not include any money changing hands or TiVo granting any patent rights to Microsoft."

Microsoft confirmed the settlement with TiVo but otherwise declined to comment.

Last year, citing its customer AT&T, Microsoft filed complaints with the U.S. District Court for the Western District of Washington and the International Trade Commission against TiVo, alleging the DVR company infringed four Microsoft patents. That came after Microsoft in 2010 sued TiVo in a California federal court and intervened on behalf of AT&T in TiVo's lawsuit against the telco, which uses Microsoft's Mediaroom IPTV software.

TiVo had countersued Microsoft in the U.S. District Court for the Northern District of California, alleging infringement of  U.S. Patent No. 6,792,195 B2 ("Method and Apparatus Implementing Random Access and Time-Based Functions on a Continuous Stream of Formatted Digital Data").

In May 2011, TiVo reached a landmark $500 million settlement with Dish Network, after seven years of litigation. 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.

TiVo also has litigation pending with Verizon Communications and Motorola Mobility.

TiVo sued AT&T and Verizon in August 2009 alleging infringement of the Time Warp patent as well as two other TiVo-owned patents: U.S Patent Nos. 7,529,465 ("System for Time Shifting Multimedia Content Streams") and 7,493,015 ("Automatic Playback Overshoot Correction System").

March