On January 11th, San Carlos, CA-based technology company TiVo Corporation (NASDAQ:TIVO) announced that its subsidiaries had filed patent infringement suits against Philadelphia, PA-based telecommunications conglomerate Comcast Corporation (NASDAQ:CMCSA). The pair of legal actions are the latest steps which TiVo has taken in the hopes of resolving the renewal of a long-term licensing agreement which TiVo has already has already finalized with other major pay-television providers in the United States.
TiVo subsidiary Rovi Guides is listed as the plaintiff in a patent infringement suit filed against Comcast in the Central District of California. Rovi Guides is asserting a series of six patents in the case, including:
- U.S. Patent No. 7827585, titled Electronic Program Guide with Digital Storage. It covers a method for allowing a user to select storage options for storing programs using an interactive television program guide implemented on user television equipment which enables the digital storage of programs with more advanced features, such as program information associated with the recorded program.
- U.S. Patent No. 9369741, titled Interactive Television Systems with Digital Video Recording and Adjustable Reminders. This patent claims a system having storage circuitry and control circuitry configured to access a database to retrieve an archived video copy.
- U.S. Patent No. 9668014, titled System and Methods for Identifying and Storing a Portion of a Media Asset. It covers a method of resolving a voice command for a media asset where the voice command does not expressly name the media asset, allowing a user to request a video clip such as a specific scene or trailer on-demand.
In the District of Massachusetts, TiVo subsidiary Veveo, Inc. has also filed a patent infringement suit against Comcast asserting a pair of patents covering advanced search methods. These patents include:
- U.S. Patent No. 7779011, titled Method and System for Dynamically Processing Ambiguous, Reduced Text Search Queries and Highlighting Results Thereof. It claims a method of processing unresolved keystroke entries by a user from a keypad with overloaded keys in which a given key is in fixed association with a number and at least one alphabetic character.
- U.S. Patent No. 7937394, same title as the ‘011 patent. It covers a similar method of processing unresolved keystroke entries which are directed at identifying an item from a set of items.
TiVo’s recent litigation campaign against Comcast stems back to an unresolved licensing agreement that expired in April 2016 and which TiVo has attempted to renew with the major American pay-TV provider. Rovi first signed licensing agreements with the top pay-TV providers in the U.S., including Comcast, Dish Network, DirecTV and Time Warner, back in 2003 and 2004 with each deal lasting for a period of 12 years. In 2015 and 2016, around the same time that Rovi acquired TiVo for about $1.1 billion, the company began proactively engaging in licensing talks, again striking long-term deals like 10-year agreements with both AT&T and Dish. Of the top 10 pay-TV providers in the United States, Comcast is the last holdout who has not signed a licensing deal with TiVo.
“We knew and our stakeholders knew that our licensing agreements were set to expire, so the company set upon a proactive renewal process to develop the right type of approach well in advance of the renewals,” said Samir Armaly, strategic IP advisor to TiVo who had previously served as the head of the company’s IP licensing division for a decade. “One thing that we’re proud about is that these renewals weren’t just short-term renewals. Our broad and deep patent portfolio allowed us to strike long-term deals.” Rovi’s acquisition of TiVo, including a patent portfolio which Armaly said had been “under-monetized” prior to the purchase, has been helpful to the corporation’s overall licensing revenues. On TiVo’s call to investors regarding the company’s earnings for the third quarter of 2017 the company reported combined IP licensing revenues for TiVo and Rovi of $94.3 million, a year-over-year increase of $11.2 million from the third quarter of 2016 and a significant portion of the total $197.9 million in revenues that TiVo took in during 2017’s third quarter.
The recent lawsuits in Central California and Massachusetts follow consistent legal actions which TiVo has pursued against Comcast since April 2016 when Rovi filed a patent suit in the Eastern District of Texas days after the company’s original licensing agreement with Comcast expired. TiVo also brought its legal action to the U.S. International Trade Commission (ITC), which in May 2017 issued a final initial determination of Section 337 patent infringement violations that had been alleged against Comcast. Last November, the ITC issued a limited exclusion order and cease and desist orders to Comcast. The exclusion order is directed at remote scheduling functionality which Comcast makes available through its X1 set-top boxes. Since that order was issued, the 60-day Executive Branch review period has passed and the limited exclusion order is in force, although Armaly notes that Comcast has initiated proceedings with U.S. Customs and Border Protection to show that the infringing features have been removed or have been designed out of the X1 products, which would give Comcast the ability to import new set-top boxes. In the meantime, Comcast has been unable to provide remote scheduling services to its subscribers and it has hurt the user experience for its consumers as is evidenced by negative reviews of the XFINITY TV Remote app.
TiVo is hopeful that its patent litigation campaign will result in the renewal of its licensing agreement with Comcast, which the company views as more beneficial than any potential monetary damages for patent infringement which could be awarded at district court. “Our business is a licensing business,” Armaly said. “We view litigation as a path of last resort when commercial negotiations have failed.” Given that Comcast is the lone remaining holdout without a license in the U.S. pay-TV market, Armaly noted that TiVo was confident that a licensing deal would be finalized at some point. This was a point reiterated by TiVo’s Chief Financial Officer Peter Halt in a question and answer session during this January’s Citi Global TMT West Conference where he said that, “So I think there are some expectations people had that [the Comcast license] could be a matter resolved rapidly, and it’s going to be a matter that’s going to take some time. For us, the company, as we keep saying, for us it’s really a question of when, not if, they come under license.” Armaly added that TiVo’s licensing rates for top-tier pay-TV companies like Comcast are typically priced at about 25 cents per subscriber per month, or about $3 per subscriber per year. Given that Comcast’s 2017 third quarter earnings report lists a total video subscriber base of 22.39 million customers, a licensing agreement with Comcast could conceivably net TiVo upwards of $60 million annually in IP licensing revenues.