Washington DC
11 November 2016
Reporter: Barney Dixon

TiVo’s appeal cut short

The US Court of Appeals for the Federal Circuit has affirmed a district court ruling against two patents in a five-year infringement lawsuit between Netflix and TiVo.

The Federal Circuit offered no opinion in its 7 November affirmation, and merely ordered and adjudged the US District Court for the Northern District of California’s ruling to invalidate two patents relating to bookmarks for resuming playback across different devices and generating viewing recommendations.

Netflix originally filed a declaratory judgement action against TiVo (formerly Rovi) seeking to invalidate five patents, including the two asserted in the appeal, that cover the same areas in broader terms.

Ruling in July 2015, Judge Phyllis Hamilton considered TiVo’s five patents to be ‘basic’ and said that the inventive concept “places no importance on the novelty of the abstract idea”.

She added: “A novel abstract idea is still an abstract idea, and is therefore unpatentable.”

In response to the ruling, Rovi said it is “disappointed the Federal Circuit upheld the district court’s invalidity decision regarding these patents”.

“These two patents represent a small portion of Rovi’s extensive IP portfolio of more than 6,000 issued and pending patents worldwide, which media and entertainment industry leaders around the world have continued to license for enabling the features that consumes use every day.”

Despite Rovi’s $1.1 billion acquisition of TiVo, a prominent technology brand, earlier this year, the company has maintained its focus extracting licensing revenue from its patent portfolio, although it is avoiding litigation when it can.

CEO Tom Carson, commenting on the company’s Q3 2016 financial results, said “Rovi acquired TiVo to form the new TiVo”, which he described as “an entertainment technology leader with a global customer base, robust intellectual property portfolios, best-in-class product development capabilities and financial strength”.

TiVo recently secured a broad long-term intellectual property license agreement with Samsung that provides rights under TiVo’s patent portfolio for Samsung’s mobile, consumer electronic and set-top box businesses.

Of the Samsung deal, Carson said: “This agreement with Samsung not only validates the relevance and longevity of the acquired TiVo intellectual property, but also highlights our preference for commercially reasonable deals over ongoing litigation.”

“This deal demonstrates the value that can be created with our IP portfolios and is a good proof point of revenue synergies resulting from the combination of Rovi and TiVo

TiVo has also recently agreed an early renewal of the product and IP licences that it has in place with Panasonic, and signed a 10-year patent licence renewal with DISH Network, covering traditional and next-generation pay TV services.

The company now has nine of the top 10 US pay TV service providers under licence, with seven of those agreements being signed in the last seven financial quarters.

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