The U.S. Patent Trial and Appeal Board has once again sided with Comcast in its intellectual property battle with TiVo, invalidating two more of the latter’s patents.
The patents include No. 9,172,987, “Methods and Systems for Updating Functionality of a Set-top Box Using Markup Language”; and No. 8,713,595, “Interactive Program Guide Systems and Processes.” (No. 9,172,987 was ruled invalid on Sept. 7, while No. 8,713,595 was invalidated in an earlier Aug. 27 ruling.)
In its New York Southern District federal lawsuit against Comcast, TiVo now has only one patent left that hasn’t been ruled invalid. Comcast has filed for a summary judgement of non-infringement to strike down that final patent.
In August, the Patent Trial and Appeal Board also determined that Patent No. 8,621,512, which deals with DVR recording features, was also invalid.
Since 2016, TiVo has aggressively targeted Comcast in venues including a New York federal court and the International Trade Commission, seeking to collect licensing fees on technologies that it claims are used in Comcast’s X1 video operating system.
TiVo said its litigation costs increased to $5.6 million in the second quarter, mainly due to its battle with Comcast.
Formed in 2016 following Rovi Corp.’s $1.1 billion takeover of DVR pioneer TiVo, New TiVo has more than 6,000 patents and pending patent applications on file and has been largely successful in getting pay TV operators and technology companies to pay licensing fees.
The inability to bring Comcast to heel could have profound implications to TiVo’s bid to collect on its patents from other complanies moving forward.
“We are pleased that the Patent Office agrees with us that these Rovi patents are invalid,” Comcast said in a statement. “We look forward to rulings from the Patent Office in our challenges to Rovi’s other patents.”
Responded TiVo: “There are over 1,000 different patents in Rovi's portfolio and Comcast's unprecedented effort to try to challenge a handful of them doesn't change the fact that they have already been found in violation of critical Rovi patents and are being forced to punish their own customers by removing popular features. In this particular instance we are optimistic about our appeal options, we expect that Comcast will continue to be found in violation of these and other patents in the future and are unwavering in our commitment to take the necessary legal actions to ensure Comcast renews its long-standing license to fairly compensate Rovi for the use of our IP.”