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6 June 2019

Comcast claims TiVo on the ropes in latest patent tiff

Is it a bird? Is it a plane? No, wait, it appears to be an incredibly rare sighting of smiling faces at both camps of long-term adversaries Comcast and TiVo. In fact, Comcast must have breathed a huge sigh of relief, as the operator emerged relatively unscathed after losing just 1 out of 3 cases in the latest patent battle, while we get the impression TiVo is downplaying its displeasure.

Don’t hold your breath though, for while it is easy to interpret recent events as an impending end to one of the video industry’s most infamous litigation cases, the debacle is far from over.

Comcast’s one and only flesh wound came after the ITC ruled that the cable giant’s X1 technology had infringed on a Rovi patent relating to a “method and system for dynamically processing ambiguous, reduced text search queries and highlighting results.” However, while TiVo won this particular scalp, Comcast is claiming overall victory this time around as two additional TiVo patent cases were dismissed this week by Administrative Law Judge MaryJoan McNamara.

“We view today’s initial determination to be a victory for Comcast because the administrative law judge found no violation as to two of the three patents addressed. We look forward to the full Commission’s review of the one remaining patent later this year, but we are confident, regardless, this ruling will not disrupt our service to our customers. Rovi also was unsuccessful on five other patents that it had previously withdrawn from this case,” said a statement from Comcast.

The ongoing spat with Comcast has long overshadowed TiVo amid growing concerns over the sale of the company’s Products division. While analyzing TiVo’s spin out strategy last month and ultimately feeling disappointed by the dillydallying around a sale and unclear roadmap, Faultline Online Reporter said that if TiVo could prevail against Comcast in the latest lawsuit, then it could trigger a momentous turn of events for the vendor.

This projection appears to have fallen by the wayside though with a score of 2-1 in Comcast’s favor, or indeed Comcast could even claim a score of 7-1 if the 5 patents cited as being withdrawn from the case are included. Yet TiVo shares were up 20% after hours on Tuesday, so investors will be pleased. Of course, TiVo has been the more successful party overall since the very public quarrel began in 2016.

Rather than pay licensing fees to TiVo, Comcast has been forced to remove features from its service entirely in the past, including the remote record function following an ITC ruling in November 2017 which found Comcast guilty of infringing on two Rovi patents relating to remote record functionality. This came after Rovi issued the cable giant with a lawsuit extending to its Xfinity X1 DVR, non-DVR set tops and broadband gateways in April last year.

Comcast has won some recent battles, with the US Patent and Trademark Office in November 2018 ruling that a TiVo patent describing a way to watch a show while viewing schedule information for other programs should never have been issued. TiVo was quick to deflate Comcast’s victory parade, saying the decision had no material importance on the broader reality of the operator’s ongoing infringement.

This was the last of over 40 reviews Comcast had sought with the agency to challenge TiVo patents for features that cable viewers had become accustomed to. Comcast’s essential stance has been that TiVo did not invent many of the features it has had patents issued for.

Next up, McNamara has another six patent infringement investigation cases to sift through, following the filing by Rovi last month relating of allegations pertaining to the X1 Sports App, multi-room DVR features and the integrations of apps into set tops.

Arvin Patel, EVP and chief IP officer at Rovi said, “This decision demonstrates Comcast’s repeated infringement of Rovi’s patents. We hope that today’s decision will encourage Comcast to pay the necessary licensing fees so their customers can once again access advanced cable features.” As jested in our opening gambit, don’t hold you breath.

In a fitting series of events, the decision comes in the week marking the 42nd anniversary of the VHS videocassette format being introduced in North America. You couldn’t write it.