TiVo settlement with Samsung is latest successful litigation outcome involving DVR patents

“TiVo (252 / 365)” by Casey Fleser. Licensed under CC BY 2.0.

On Thursday, November 3rd, media outlets were reporting that digital video recording (DVR) development company TiVo had settled patent infringement litigation, which it had filed last year against South Korean electronics giant Samsung (KRX:005930). The settlement includes an intellectual property licensing agreement which will be in force for at least five years which will allow Samsung to continue providing DVR technologies in the U.S. market.

TiVo first filed suit against Samsung last September in the U.S. District Court for the Eastern District of Texas (E.D. Tex.). The patent infringement complaint alleged that set-top boxes produced and marketed by Samsung to television service providers offered DVR technology which infringed upon a series of four TiVo patents:

• U.S. Patent No. 6233389, titled Multimedia Time Warping System. It claims a process for the storage and playback of multimedia data which involves accepting television broadcast signals, tuning to a specific program, converting the program into MPEG video and audio streams and storing both streams on a storage device.
• U.S. Patent No. 6792195, titled Method and Apparatus Implementing Random Access and Time-Based Functions on a Continuous Stream of Formatted Digital Data. This patent protects a process for capturing and storing a video signal and defining it as a virtual segment in such a way that enables meaningful pause, rewind and fast forward options on a continuous video stream.
• U.S. Patent No. 7558472, entitled Multimedia Signal Processing System. It discloses a system for the simultaneous storage and playback of multimedia data providing a versatile system architecture which simplifies production of DVR equipment for several markets, including digital satellite, digital cable and analog cable.
• U.S. Patent No. 8547476, same title as the ‘472 patent. It claims a similar system of storing and retrieving multimedia data in such a way that reduces the requirements for microprocessor and system equipment.

TiVo’s patent infringement allegations accuse Samsung of actively inducing the infringement of TiVo’s patents by offering infringing equipment for sale to Time Warner Cable and other television service providers. The complaint also identifies smartphones and other mobile devices produced by Samsung which infringe upon the patents covering DVR technology, including Samsung’s Galaxy, Galaxy Note and Galaxy Tab lines of portable electronic devices. “The ability to access and view multimedia content on the Samsung Mobile Devices is an essential feature and function of these devices,” the complaint reads.

As the complaint notes, TiVo itself is “a pioneer in home entertainment” which created the first commercially available DVR system to consumers. Founded in 1997 and enjoying “a heralded debut at the 1999 Consumer Electronics Show,” TiVo has been in the DVR market for more than 15 years. TiVo alleged that Samsung had learned of the TiVo technologies either through product patent markings or reports of other patent infringement cases filed by TiVo.

TiVo announced the settlement with Samsung in the corporation’s earnings report for 2016’s third quarter, although it didn’t identify the amount of royalties Samsung would pay. TiVo’s prayer for relief in its original complaint against Samsung asked the E.D. Tex. court for compensatory damages for infringing activities, an award of attorney’s fees and costs as well as a finding of willful infringement under 35 U.S.C. § 284, which could allow the court to triple the amount of damages awarded for reasonable royalties.

The license agreement with Samsung follows a string of successful lawsuits filed by TiVo against other players in the DVR sector, many of which involved the same patents-in-suit. In April 2011, the U.S. Court of Appeals for the Federal Circuit (Fed. Cir.) handed TiVo a positive judgment in a patent infringement suit filed against video delivery developer EchoStar resulting in a $500 million settlement for TiVo. At the beginning of 2012, American telecom giant AT&T (NYSE:T) entered into a $215 million settlement with TiVo to practice DVR technologies; this settlement also included terms that would increase the amount paid by AT&T based upon the size of AT&T’s DVR subscriber base. In September 2012, American wireless broadband provider Verizon (NYSE:VZ) entered into a licensing arrangement with TiVo worth $250 million for DVR and on-demand technologies offered by Verizon. In June 2013, TiVo reached a settlement with mobile device developer Motorola Mobility, telecom firm Time Warner and networking giant Cisco Systems (NASDAQ:CSCO) which pays TiVo $490 million. Not counting the recent agreement with Samsung, the damages and settlements earned by TiVo for its DVR technologies have earned the company more than $1.6 million.