TiVo Countersues Cisco

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In the latest prong of TiVo's patent-litigation strategy, the DVR company is suing Cisco Systems for allegedly violating four of its patents less than a week after Cisco proactively sued TiVo seeking to void the same patents.

"Cisco is aware of and has had knowledge of the TiVo patents," the DVR company said in its complaint, filed June 4 with U.S. District Court for the Eastern District of Texas.

Cisco declined to comment on the suit.

TiVo noted that it subpoenaed Cisco in its patent-infringement lawsuits against AT&T and Verizon Communications, both of which are Cisco customers. Separately, TiVo also is suing Time Warner Cable -- another large Cisco customer -- and has legal action pending against Motorola Mobility.

Cisco manufactures and supplies TiVo-based DVRs to the U.K.'s Virgin Media and Spanish cable operator Ono. In its lawsuit, filed May 30, Cisco said, "In connection with those transactions, Cisco and TiVo have had licensing discussions where TiVo indicated that it did not want to broadly license TiVo technology to Cisco because providing any such license to a DVR manufacturer such as Cisco would interfere with TiVo's ability to continue to assert TiVo's patents in individual lawsuits against Cisco's customers, the service providers."

The four TiVo patents at issue in the matter are U.S. Patent Numbers 6,233,389 (the "Multimedia Time Warping System" patent Dish Network was found to have infringed); 7,529,465 ("System for Time Shifting Multimedia Content Streams"); 7,493,015 ("Automatic Playback Overshoot Correction System"); 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 order barring Cisco from using the patents as well as unspecified monetary damages. In addition, TiVo is demanding that Cisco "deliver to TiVo all products that infringe the '389, '465, ' 015 and '195 [patents] for destruction at TiVo's option."

For its part, Cisco is seeking a declaratory judgment of non-infringement on the four TiVo-owned patents. In a statement last week, Cisco said its lawsuit against TiVo "is an effort to defend our DVR products and our customers against TiVo's aggressive strategy of wrongfully asserting its patent claims."

TiVo, in announcing earnings last week, said it expects higher legal costs in the second half of its fiscal year 2013 because of the impending patent-infringement trial against Verizon and the lawsuits against Time Warner Cable and Motorola.

In May 2011, TiVo reached a landmark $500 million settlement with Dish after seven years of litigation. That's on top of $105 million Dish and EchoStar paid to TiVo up to that point. The patent at issue was TiVo's Time Warp patent, which covers the simultaneous playback and recording of TV programming.

This March, TiVo and Microsoft 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, under which the telco will pay a minimum of $215 million -- and as much as $300 million -- through June 2018.

TiVo has distribution deals with several pay TV providers, including DirecTV, Charter Communications, Suddenlink Communications, Virgin Media and RCN. In addition, TiVo has marketing agreements with Comcast and Cox Communications, which plan to provide video-on-demand services to cable subscribers using Premiere DVRs. Comcast this spring launched the VOD feature for TiVo DVR users in San Francisco.

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