Rovi sues Comcast for infringing electronic program guide patents

By Gene Quinn
April 6, 2016

gavel_335On April 1, 2016, Rovi Corporation (NASDAQ: ROVI), a pioneer in the field of electronic program guides, filed a patent infringement lawsuit against Comcast in the Eastern District of Texas, Marshall Division. In the complaint filed, which is quite detailed and very long (174 pages), Rovi is asking for a preliminary injunction, a finding that Comcast’s infringement is willful and deliberate, a finding that the case is exception and attorneys fees are appropriate, as well as damages for the infringement.

The lawsuit alleges that twelve years ago Comcast took a license to Rovi’s patent portfolio, but that license expired on March 31, 2016, without being renewed. Rovi says that Comcast has failed to remove any of its products and services from the market and also continues to provide those products and services, all of which are now infringing because of the expiration of the patent license agreement.

“We disagree with Rovi’s accusations and intend to defend the cases vigorously,” said Jenni Moyer, Senior Director of Corporate Communications for Network & Operations at Comcast.  “Beyond that, we can’t comment on pending litigation.”

According to Rovi, they have invested over a billion dollars in research and development for its products and intellectual property over the past twenty-five years in order to create one of the world’s largest media and entertainment patent portfolios. According to the complaint filed, Rovi have invested over $300 million in research and development just since 2013, and has over 800 U.S. based full-time employees supporting the development of new products and platforms.

A press release issued by Rovi explains that the company’s patent portfolio consists of more than 5,000 issued patents and pending applications worldwide, which is broadly licensed throughout the North American pay-TV industry and by eight of the top 10 U.S. service providers, including AT&T, Time Warner Cable and Charter Communications. The complaint filed says that Rovi has amassed a patent portfolio of over 1,200 issued U.S. patents and 500 pending U.S. patent applications.

Rovi says that many of the patents in their current patent portfolio were not in the portfolio at the time Comcast originally entered into its licensing deal some twelve years ago. These newly patented technologies in the Rovi portfolio, which they say consumers have come to expect, include video-on-demand, whole-home DVR technology, and robust mobile access to and control of in-home set-top boxes.

The patents asserted by Rovi in this action are:

  • U.S. Patent No. 8,713,595, titled Interactive program guide systems and processes, which relates to television program guide systems and particularly to interactive television program guide systems and related processes that can automatically tune a television, or program a video cassette recorder (VCR), based on program selections made from program schedule information displayed on a television or other suitable video monitor. More particularly, this invention relates to interactive television program guide systems and related processes that provide an intuitive search utility for allowing a viewer to locate programs of interest by applying a restrictive search selection criterion and a nonrestrictive sort attribute to program schedule information.
  • U.S. Patent No. 8,755,666, titled Interactive television program guide with remote access, which relates to interactive television program guide video systems, and more particularly, to interactive television program guide systems that provide remote access to program guide functionality.
  • U.S. Patent No. 7,996,864, titled Method and apparatus for displaying television programs and related text, which relates to the field of television and, more particularly, to a method and apparatus for simultaneously displaying video programs and related text on a television screen.
  • U.S. Patent No. 9,172,987, titled Methods and systems for updating functionality of a set-top box using markup language, which relates to video systems, and more particularly, to interactive television program guide systems which provide for the flexible modification of program guide user screen layouts and program guide functionality.
  • U.S. Patent No. 7,895,218, titled Method and system for performing searches for television content using reduced text input, which generally relates to a method and system for performing searches for television content and, more particularly, to a method and system for performing searches with text entry by a user reduced to prefix substrings representing elements of a namespace containing a set of names composed of one or more words that are either ordered or unordered.
  • U.S. Patent No. 8,122,034, titled Method and system for incremental search with reduced text entry where the relevance of results is a dynamically computed function of user input search string character count, which covers a method and system are provided for processing a search request received from a user operating a text input device and for performing searches for television content, channels and other items.
  • U.S. Patent No. 8,433,696, titled Method and system for processing ambiguous multiterm searches queries, which generally relates to processing search queries and, more particularly, to methods and systems for processing ambiguous, reduced text, multi-term search queries.
  • U.S. Patent No. 6,725,281, titled Synchronization of controlled device state using state table and eventing in data-driven remote device control model, which relates generally to dynamic connectivity among distributed devices and services, and more particularly relates to providing a capability to access device- or service-specific operational information and perform remote automation and control of embedded computing devices using a data-driven remote programming model, such as in a pervasive computing environment.

“For over a decade, Comcast built its business using Rovi’s patented technology, which it licensed for a fixed term,” said Tom Carson, president and CEO, Rovi. “Comcast’s decision to continue using Rovi’s pioneering technology as an unlicensed infringer is simply intolerable. After numerous attempts at negotiations, Rovi was left with no choice but to defend its intellectual property from unlicensed use. Rovi has taken this action to protect not only its patent portfolio, but also its stakeholders and licensees. While we are disappointed that Comcast remains unlicensed, we believe it needs a license to offer many of its personalized discovery features to its customers.”

Rovi has not changed its financial estimates for 2016, which were issued on February 11, 2016 and anticipated possible litigation with Comcast. Rovi’s estimates planned for legal expenses and excluded any licensing or advertising revenues from Comcast after March 31, 2016.

 

The Author

Gene Quinn

Gene Quinn is a Patent Attorney and Editor and founder of IPWatchdog.com. Gene is also a principal lecturer in the PLI Patent Bar Review Course and an attorney with Widerman Malek. Gene’s specialty is in the area of strategic patent consulting, patent application drafting and patent prosecution. He consults with attorneys facing peculiar procedural issues at the Patent Office, advises investors and executives on patent law changes and pending litigation matters, and works with start-up businesses throughout the United States and around the world, primarily dealing with software and computer related innovations. is admitted to practice law in New Hampshire, is a Registered Patent Attorney and is also admitted to practice before the United States Court of Appeals for the Federal Circuit. CLICK HERE to send Gene a message.

Warning & Disclaimer: The pages, articles and comments on IPWatchdog.com do not constitute legal advice, nor do they create any attorney-client relationship. The articles published express the personal opinion and views of the author and should not be attributed to the author’s employer, clients or the sponsors of IPWatchdog.com. Read more.

Discuss this

There are currently 6 Comments comments.

  1. Standard these days April 6, 2016 10:03 am

    Aaaaaaaand most of their portfolio is invalid per Alice. No question that’s why Comcast didn’t renew the license and happily continues to infringe. These patents will be knocked out on early summary judgment and the Fed. Cir. will affirm.

  2. Gene Quinn April 6, 2016 12:29 pm

    Standard these days-

    Have you actually looked at the Rovi patent portfolio? If their patents are invalid then we have a de facto rule that software patents are per se patent ineligible.

    -Gene

  3. Curious April 6, 2016 12:35 pm

    If their patents are invalid then we have a de facto rule that software patents are per se patent ineligible.
    Read enough Office Actions being issued out of Tech Center 3600 and one would come to the conclusion that the USPTO believes the same. Then again, the same patent applications, had they been examined in Tech Center 2100, probably wouldn’t be subject to 101 rejections.

    The “Standard these days” is unknowable (thank you Federal Circuit and SCOTUS!) and based upon what is being knocked out at the District Court and Federal Circuit level, if one is to make an assumption, it would be safer to assume that software is per se patent ineligible.

    This isn’t to say that I agree with any of this — I’m just calling it like I see it without sugar-coating anything.

  4. Gene Quinn April 6, 2016 3:18 pm

    Can anyone explain to me why patent owners refuse to make equal protection arguments?

    I understand they are fact specific, but it is about time that someone stand up and say what we all know to be true. Patent owners similarly situated are treated vastly differently based on where their patents are categorized by the Office. Patent owners are also treated vastly different depending upon the district court where their patents are litigated. If this is not a systemic equal protection problem I don’t know what it means to be treated equally.

  5. Curious April 6, 2016 5:15 pm

    Patent owners similarly situated are treated vastly differently based on where their patents are categorized by the Office
    The difficulty lies in establishing the same (or sufficiently similar) facts. Examiners love to trot out arguments that each application stands or falls alone and that what is said in one application doesn’t apply to their application (despite that I’m asking them to construe identical language that is supported by identical language within the specification).

  6. theonepercentraise June 14, 2016 2:25 pm

    I work for Rovi and every time we lose one of these suits a bunch of low level people that actually work on real products get laid off. We are sure to lose this one too.