The Patent Trial and Appeal Board on Tuesday sided with Comcast in its broad-reaching patent war with TiVo, negating TiVo’s claim that a Comcast X1 feature that lets users watch a channel while recording a show on another network violates one of the tech company’s patents.
In its final decision, the board invalidated Patent No. 8,621,512, held by TiVo’s Rovi division, ruling that the technology would be “obvious” to anyone engaged in the “art” of designing digital video recorders.
“We are pleased that the Patent Office agrees with us that the claims in U.S. Patent No. 8,621,512, asserted in litigations by Rovi against Comcast, are invalid. We look forward to rulings from the Patent Office in our instituted challenges to Rovi’s other patents," said Comcast, in a statement.
TiVo has successfully carved out technology licensing deals with most major constituents in the pay TV business. But Comcast has been a notable holdout. The two parties have sued each other in federal court, with Comcast contesting a reported three-dozen patents held by TiVo’s Rovi and Viveo operating units.
TiVo, which is the corporate outcome of a $1.1 billion purchase of DVR pioneer TiVo by intellectual property licensor Rovi, claims Comcast uses numerous TiVo patents in its X1 video platform. Comcast has said TiVo’s patents are obsolete and that it now develops most of its X1 technology in-house.
Court-mandated settlement talks occurred in June. But sources close to those negotiations said they went nowhere.
Late last year, the International Trade Commission ruled that Comcast’s X1 platform does indeed violate two TiVo patents related to remote recording. The cable operator responded by removing the feature from X1, claiming that few customers used the associated feature.
The ruling was mixed, with the ITC also invalidating most of the patents TiVo was looking to enforce. Both sides have since ramped up the legal action, filing suits, petitions and appeals in various venues.
According to law firm Banner & Witcoff, Baker Botts and Ropes & Gray, Comcast was the biggest petitioner against patent claims in all of tech in 2017, and 44 of its 45 filed petitions were directed at TiVo’s Rovi division. Rovi, meanwhile, was the biggest target for such petition, with 44 petitions targeting the company.
TiVo is set to report its second quarter earnings today at 5 p.m. EST.
During its first quarter call, recently departed company president and CEO Enrique Rodriguez told investors, “I am confident that Comcast will ultimately be licensed to use our intellectual property for the benefit of their business and their consumers.”
He added that TiVo’s court battle with Comcast remains a “top priority.”