Taking aim at the two biggest telco TV operators, TiVo has filed patent-infringement suits against AT&T and Verizon Communications for allegedly violating three of its patents.
TiVo filed the lawsuits in the U.S. District Court for the Eastern District of Texas, the same court that found Dish Network and EchoStar Technologies to have violated the DVR maker's "Time Warp" patent and issued a contempt ruling ordering the satellite operator to disable some 4 million digital video recorders. Dish and EchoStar are appealing that decision.
The TiVo patents in the lawsuits against AT&T and Verizon are: U.S. Patent Nos. 6,233,389 B1 ("Multimedia Time Warping System"), 7,529,465 B2 ("System for Time Shifting Multimedia Content Streams"), and 7,493,015 B1 ("Automatic Playback Overshoot Correction System").
TiVo's complaints seek damages from the telcos for alleged past infringement and a permanent injunction, similar to that issued by the court against Dish and EchoStar.
AT&T declined to comment on the TiVo litigation; representatives for Verizon did not immediately respond to a request for comment.
TiVo president and CEO Tom Rogers, on the company's earnings call Wednesday, said TiVo had made unsuccessful attempts to reach commercial deals with AT&T and Verizon similar to those it has with Comcast, Cox Communications, RCN and DirecTV.
"Unfortunately, there are multichannel operators that compete with us through the unauthorized use of our investment portfolio," Rogers said. "EchoStar has been a prime example of this, and we have recently found ourselves in a similar situation with AT&T and Verizon, where business agreements have not been reached yet we need to stop their continued use of our intellectual property."
In response to an analyst's question, Rogers said TiVo has had ongoing discussions with Time Warner Cable about a deal but declined to provide details.
"It's clear that there are many ways to craft an arrangement that we think is beneficial for both us and the cable operator, and [we] continue to be quite open to pursuing those arrangements," he said.
Separately, the U.S. Patent and Trademark Office has dismissed TiVo's petition to vacate EchoStar's re-examination of TiVo's patent.
Earlier this month, the PTO issued a preliminary finding that rejected of two claims in TiVo's "Time Warp" patent at issue in the years-long litigation filed by TiVo against EchoStar and Dish.
In a decision issued Aug. 21, PTO director of the central re-examination unit Gregory Morse denied TiVo's request to vacate the reexamination of the patent, writing that "the references of record may be used to find that a substantial new question of patentability is present, [and] the decision of the [PTO] examiner has not been shown to be in error" in granting EchoStar's re-examination petition.
TiVo declined to comment on the PTO decision.
Dish and EchoStar Technologies, in a statement Wednesday, said: "The PTO's decision clears the way for the re-examination to continue, which we believe will result in a Final Office Action invalidating the software claims of TiVo's patent. These software claims are the very same claims that EchoStar was found to have infringed in the contempt ruling now pending on appeal."