Comcast has won another milestone verdict in its long-running patent dispute with TiVo. The US Patent & Trademark office has said that one of TiVo’s patents which outlined how viewers could watch a show while viewing programme listings data, simply should never have been issued.
Comcast has filed many applications to the Patent Office to get Rovi or TiVo-owned patents invalidated. In the November 6th case, Comcast had issued eight formal challenges to a single TiVo patent.
“We’re pleased with the patent office’s latest ruling, which invalidates the final Rovi patent under review by the patent office,” Comcast said in a statement. “By invalidating all 12 of the Rovi patents, these rulings further support the fact that Comcast engineers independently created our X1 products and services.”
However, TiVo hit back in a statement on November 8th, with its CEO Raghu Rau saying: “On the Intellectual Property licensing front, I would like to provide an update on our Comcast litigation. I believe a simple condensed view of what is happening in this multi‐forum dispute over our important patent technologies would be helpful : As you know, nearly every major media and entertainment company licences our intellectual property for its use ‐ and the result has been a massive improvement over the last few years in the innovative product features they deliver to their consumers. For example, when away from home, users can simply set their DVR to record a show, from anywhere in the world, and have user‐friendly guides with which they can find and record any show offered by their cable provider. Last year, the International Trade Commission, or ITC, ruled that Comcast infringed two of Rovi’s remote record patents. Comcast chose to no longer make these popular remote recording capabilities available to their X1 subscribers, rather than negotiate a market rate license agreement.”
“As a result, we are back in the ITC for a second Comcast trial on three additional patents covering different popular features innovated by Rovi. A similar adverse judgment could leave Comcast with the choice of once again removing features its customers consider essential to their viewing experience or entering into a commercially reasonable license with us.”
“In addition, we have a number of District Court cases filed in New York, Massachusetts and California, including one related to the ’034 patent which we believe will become active next year. These district court cases are where Comcast would incur monetary damages if we prevail.”
Rau continued: “While the ITC and district court cases are ongoing, Comcast has been more aggressively pursuing patent challenges in the form of Inter‐Partes Review, or IPRs, with the Patent Trial & Appeal Board, or PTAB, than any previous company. The IPR process, since its creation, has been unfriendly to patent holders. While we have had mixed results at the PTAB thus far, and TiVo intends to appeal many of the adverse determinations, we are encouraged for the future by recent comments from the current US Patent and Trademark Office Chief regarding his intention to change the way PTAB works to make it more equitable for inventors. Importantly, these PTAB challenges and results have not changed the prior ruling that required Comcast to remove the remote recording capabilities.”
“Overall, while the particulars of the various legal fights might be complicated, our message is simple. TiVo is fully committed to protecting its intellectual property from unauthorised use and we expect Comcast will ultimately pay a licence for our innovations, just as its pay‐TV peer companies do and Comcast did in the past.”
“Now, in terms of our day‐to‐day licensing business, we continue to focus on providing relevant IP to content providers as one of our areas for future growth. On that front, we made meaningful progress this quarter, as 21st Century Fox signed a multi‐year patent licence agreement. Additionally, a large American broadcaster expanded its multi‐year patent license agreement to include an acquired network. We now have approximately 45 per cent of the top 250 US channels under license,” concluded the statement.