Leave TiVo’s name out of it.
That seems to be the legal strategy going forward, as Xperi Holding Corp. moves forward with a sprawling patent licensing dispute with Comcast following its $3 billion takeover of TiVo.
On Wednesday, Xperi claimed victory, announcing that Administrative Law Judge MaryJoan McNamara of the International Trade Commission had recommended the issuance of limited exclusion and cease-and-desist orders against Comcast related to two technology patents. Xperi says these patents are being infringed upon by the cable operator’s X1 video platform.
The patents, according to Xperi, “cover innovations generally relating to multi-room DVR and communication between multiple set-top boxes using MoCA technology.”
It’s only the latest turn of the screw in a case that involves dozens of patents and many different lawsuits, disputed in a number of legal venues. Last week, for example, the Patent Trial and Appeal Board—a venue that has generally sided with Comcast in the four-year-old dispute—invalidated eight of the patents Xperi is litigating over.
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So how important are these latest rulings? Tough to say, because the long-running battle has gotten so complicated. Perhaps the most interesting thing that came out of Xperi's announcement today was what wasn't in it: TiVo's brand name.
The News Is in the Nomenclature
Xperi, which gave TiVo’s lead patent litigator, Arvin Patel, and his team golden parachutes after the merger, is taking over the fight. The TiVo band name will now be exclusive to Xperi's video products business. This is probably for the best—it’s difficult to sell pay TV operators and other clients advanced video technologies while simultaneously shaking them down for patent licensing fees.
The legal strategy seems the same: Xperi is now championing a legal game plan established by TiVo several years ago against Comcast, whose lack of participation in the TiVo/Xperi patent licensing business represents an existential threat to it. In its legal numbers game, Xperi hopes that at least a few of the patents it disputes will be winners, forcing Comcast to the bargaining table.
But in its announcement Wednesday, Xperi kept referring to the “Rovi patents”—it mentioned TiVo’s name only once, in the “background” section of the press release, explaining how Xperi Holdings amassed 11,000 technology patents. (Yeah, as The Dude might say, this case is complicated: Four years before Xperi bought TiVo, the latter merged with Rovi Corp. in a $1.1 billion deal that created a collection fo 6,000 patents.)
“We are pleased with this decision, which is now our third favorable decision at the ITC against Comcast,” said Samir Armaly, Xperi’s president of IP licensing, in a statement. “While the decision represents a positive and key milestone in our litigation, our ultimate goal remains to ensure that we receive fair value for our innovations and that we reach a mutually acceptable agreement with Comcast to allow the ongoing use of Rovi patented technology, just as we have done broadly with the other major U.S. pay TV providers. Notably, even while being in litigation over the past few years, our IP business has continued to successfully license, renew or extend licensing agreements across the industry.”