TiVo Fires Back at Motorola Mobility in Patent Battle
TiVo fired back at Motorola Mobility, claiming the set-top box supplier along with its customer Time Warner Cable infringed three patents, including the so-called time-warp patent that’s been at the heart of recent multimillion-dollar settlements. Google has agreed to buy Motorola. TiVo on Monday filed counterclaims in U.S. District Court, Tyler, Texas, in response to a patent infringement suit Motorola filed against it in February 2011. TiVo also asked to have Motorola’s three DVR-related patents found invalid. Motorola sued TiVo alleging it infringed three patents, including those covering a DVR with archival storage and a method for implementing playback features for compressed video that were originally issued in 2001 and 1999 to Imedia Corp.
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TiVo’s time-warp patent, which covers a means for recording one program while watching another, was key to the company’s settlements with EchoStar and AT&T, who agreed to pay $500 million and $214 million. A separate TiVo suit involving Verizon is scheduled to go to trial in November, while Motorola Mobility is on tap for an April 2013 court date, according to court documents. Motorola first introduced DVR-equipped set-tops in 2005 and counts Verizon and Time Warner Cable among its customers. Other TiVo patents involved in the case include one describing a method for implementing random access and time-based functions on a stream of formatted digital data, while another is for a system for time-shifting multimedia content streams granted in 2009.
"Unless enjoined, Counterclaim defendants Motorola and Time Warner Cable will continue to infringe the time-warp patent and TiVo will suffer irreparable injury as a direct and proximate result of Motorola’s and Time Warner’s conduct,” TiVo said in court papers. Time Warner and Motorola Mobility officials weren’t available for comment.
TiVo has been granted 238 foreign and domestic patents and has another 413 applications pending, the company said in a 10-K SEC filing. The time-warp patent expires in July 2018, while the “majority” of other patents extend beyond that date, TiVo said. In the AT&T case, TiVo was paid $51 million on Jan. 4. It will get $5 million payments within 30 days of the end of the first four calendar quarters this year. In subsequent calendar quarters, TiVo will be paid $6.5 million, ending June 30, 2018, TiVo said. AT&T granted a limited license to TiVo for patents it claimed had been infringed. TiVo also reached an agreement with Microsoft on March 21 to settle suits pending in federal court as well as a complaint with the International Trade Commission. Terms of the agreement weren’t released.