Rovi, Dish Sign 10-Year Patent License Renewal

Dish also agrees to no-sue clause with TiVo, which is being acquired by Rovi
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Removing an important overhang from its business, Rovi said Monday it has inked a ten-year patent license agreement with Dish Network.

Financial terms were not announced, but Dish will pay Rovi for the period beginning on April 5, 2016 based on a monthly, per-subscriber fee.  

The deal also allows Dish to continue its licensing of Rovi’s Conversational Services natural language platform as well as other Rovi products. Dish introduced a voice remote in July that is compatible with its new Hopper 3 and 4K Joey boxes.

Rovi and Dish also noted the patent license renewal is also subject to certain contingences tied to the closing of Rovi’s proposed $1.1 billion acquisition of TiVo, currently expected to become effective on Sept. 7.

Per those contingencies, detailed in this 8-K filing, Dish has agreed to provide TiVo with a release for all past products and a going-forward covenant not-to-sue under Dish’s existing patents during the 10-year license term in exchange for TiVo providing Dish certain TiVo products during the term and cash payments by TiVo to Dish of $60 million over the next year.

Additionally, Rovi and EchoStar Corp., Dish’s set-top and technology spin-off, “have not entered into a separate license agreement for their respective patents at this time,” the filing added. The final payment due under that settlement in July 2017 shall remain payable to TiVo, they said.

TiVo reached a $500 million settlement with Dish and EchoStar over a key DVR patent (the “Time Warp” patent, U.S. No. 6,233,389) in 2011.

With Dish, Rovi has deals done or renewed with nine of the top 10 U.S. pay TV providers.

The big one remaining is Comcast. Rovi is in a patent battle with Comcast and its set-top suppliers. Rovi has previously indicated that it will pursue that path until the suit is concluded or Comcast opts to take a license.