After TiVo’s successful, though lengthy and ongoing, DVR patent infringement case against DISH Network & EchoStar, the company set its litigation sights on AT&T (U-Verse) and Verizon (FiOS TV).
As AT&T neither manufactures their DVR hardware (Motorola, Microsoft) nor their timeshifting software experience (Microsoft), Microsoft has struck back at TiVo twice (here and here) on their behalf. But we hadn’t heard much from Verizon since TiVo’s initial complaint. Until yesterday.
VZ’s FiOS TV DVR experience runs on Motorola… and they dug deep through their patent playbook to mount a counterattack. From the new complaint lodged by Motorola and embedded above:
General Instrument, a subsidiary of Motorola Mobility, owns multiple patents that disclose and claim fundamental inventions related to digital video recorders (“DVRs”), which are now ubiquitous in American households. In light of TiVo’s aggressive litigation history, TiVo’s accusations of infringement against QIP set-top boxes, TiVo’s requests for detailed Motorola technical information related to the accused QIP set-top boxes and Verizon’s indemnification demand, an actual controversy exists between Plaintiffs and TiVo regarding questions of infringement and validity of the TiVo Patents.
Interestingly, Bloomberg reports that Verizon insists Motorola Mobility is on the hook for any and all potential losses in the case. Yet, in the end, I suspect this will all amount to costly and time consuming posturing as the various parties negotiate reciprocal licensing deals or minimize potential licensing fees.
But never mind all that, let’s do the Time Warp again!
If that last line makes no sense, one of the patents frequently in play is known as “Time Warp” – given the scenario, it lines up nicely with the similarly titled Rocky Horror song. :)
“If that last line makes no sense, one of the patents frequently in play is known as “Time Warp”
The line worked even without knowing that, but the reference does make it better.
I love TiVo and am rooting that their lawyers beat the other guys’ lawyers in the big game this time.
It’s oddly fun being a customer of a company that manages to make the least worst DVR’s in the world as a front for their real business of patent trolling.
I’d prefer if TiVo would innovate instead if litigate, but if there was ever an example of the intent of our patent system, I think this would be it. We have to protect those who have good ideas and follow through on bringing them to market.
Very interesting Dave!
It’s a common practice for a TV System Operator to require their vendor to indemnify them from any and all technology infringement claims. Note the phrase “indemnification demand” in the Motorola complaint. This makes it clear that Verizon formally notified Motorola that they were sued by TiVo over Motorola technology and that Motorola is expected to defend the claim. Motorola provides all of the equipment used by Verizon FiOS TV, so this fight is definitely between TiVo and Moto directly.
TiVo may regret picking this fight. Moto has more set-top box and cable TV patents than anyone, and they will take close look at TiVo DVRs to see how and where they infringe Motorola patented technology. The Bloomberg article makes it clear that Motorola believes that they have “prior art” that will invalidate the TiVo time-shifting patent. If this actually goes to trial it will be interesting to see all of the patents and inventions that Motorola brings to the fight in its counter attack.
Although both TiVo and Moto have shown a willingness to litigate to the death, I agree with you that it would make more sense to negotiate a license agreement (Moto will insist that they have technologies that are worth as much or more than TiVo’s technologies, and so it would be a cross-license agreement). It wouldn’t surprise me at all if Moto ends up buying TiVo to settle this matter. If TiVo faces a choice between having their crown jewel patent invalidated or selling the company to Motorola, I think they might agree to an acquisition. Of course, if TiVo was willing to entertain an offer there are a number of companies that should be interested including Cisco and Microsoft.
Tom, yeah I understand the Verizon/Motorola relationship here. But what makes it odd is that AT&T is having the DVR software manufacturer (Microsoft) go after TiVo instead of their box maker (Motorola). Whereas, Verizon is the FiOS software manufacturer (Interactive Media Guide, IMG) but is saying responsibility lies with a different tier of hardware/software interface. So does U-verse not use that middleware and/or they figure Microsoft has better ammunition to pressure TiVo with? As I said, I assume the respective companies are just looking for anything to make this costly and time consuming for TiVo, to use as leverage. Will be interesting to see how far it all goes. TiVo has a large stockpile of cash and has shown resilience in weathering DISH’s continual protestations, appeals, etc…
Thankfully, I had the foresight to register a patent on Charlie Sheen™ a decade ago. Since then, I’ve been just biding my time. But now I think it’s finally time to Unleash the Lawyers. I wonder who I should sue first…
A quick disclaimer… my expertise is with PC video player software, and I don’t have intimate personal knowledge of the design or functionality of Motorola, Verizon, AT&T, TiVo or Microsoft set-top box hardware or software. I have friends at most of these companies, and I am not interested in making any enemies. These companies employ hundreds of extremely brilliant and innovative engineers working to develop amazing new products and capabilities.
In most technology product markets it’s more likely than not that different engineering teams are working to solve the same problems, and that new designs in the R&D labs of competing companies have lots of similarities. A patent fight always comes down to specifics, and we haven’t seen all the specifics. As fans of their work, I think we would all rather see these talented engineering teams collaborating and leveraging each other’s talents, versus spending time with their respective legal teams. Technology license agreements should be in the interest of all involved.
To answer your question, it is my understanding that AT&T U-verse is built on Microsoft MediaRoom middleware (OS / applications platform), while Verizon FiOS is built on Motorola’s platform.
I guess it’s a question of whether it’s the hardware or the software that provides the capability that TiVo claims as their unique invention. The primary “Time Warp” patent (6,233,389) doesn’t use the word “software” even once. Instead, it refers to logical / functional concepts like encoders, decoders, buffers and pointers… as well as user interface functionality like channel selection, play, pause and rewind. As you know, a modern set-top box is a dedicated purpose computer with a CPU, operating system, and software applications. To implement a capability like pausing and rewinding live TV the logic (and the user interface) must be implemented in the application software, but the software must be running on hardware that would support the desired functionality (switching the stream from one source to another… among other things).
My understanding is that TiVo developed a way to parse the media stream and mark it with pointer and employ buffers to provide the smooth trick play functionality and to make it easier to play back a video while it was also still recording. These algorithms also allowed for off the shelf hardware thus bringing the cost of the box down to a consumer level.
DISH was found to be using the same algorithms in a willful way initially, and TiVo only dropped going after the willful part to save court resources.
If AT&T or Verizon, through their suppliers is found to have the same alogoritms then the specifics are there and TiVo should benefit from their innovation being used elsewhere. If those specifics are not there then TiVo should not benefit.