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Microsoft Sues TiVo

1/23/2010 2:00 AM Eastern

TiVo's latest legal foe: the world's largest software company.

Microsoft last week filed a lawsuit against TiVo alleging the DVR company infringes two of its patents, as part of defending its customer AT&T against TiVo's own patent-infringement lawsuit against the telco.

In August 2009, TiVo sued both AT&T and Verizon for allegedly violating three of its patents, including the one for the “Multimedia Time Warping System”—the patent that EchoStar and Dish Network were found to have infringed, for which they've been ordered to pay at least $400 million to TiVo. AT&T delivers U-verse TV using Microsoft's Mediaroom IPTV platform.

Microsoft struck back, claiming TiVo violated the software giant's patents related to a system that displays programmable information and a secure method for buying and delivering video programs. The suit seeks an order declaring Microsoft's patents valid as well as an order barring TiVo from infringing them, plus unspecified monetary damages.

However, Microsoft is “open to resolving this situation through an intellectual-property licensing agreement, and we have initiated discussions to engage TiVo in negotiations,” Microsoft director of public affairs Kevin Kutz said.

In a statement, TiVo said: “Microsoft's recent legal actions … do not bear on whether the AT&T products and services that are the subject of TiVo's complaint infringe the patents asserted by TiVo. Rather these actions are part of a legal strategy to defend AT&T. We remain confident in our position that AT&T will be found to infringe on the TiVo patents asserted.”

In an interview with Multichannel News in November, TiVo president and CEO Tom Rogers said, “We always prefer to partner and come to commercial arrangements … but sometimes you have to protect yourself.”

TiVo's growth prospects are tied to cutting distribution deals with cable and satellite operators, which the DVR pioneer hopes will offset declining retail sales (see “Can TiVo Reinvent Itself?,” Dec. 14, 2009, p. 12).

Microsoft filed the lawsuit against TiVo Jan. 19 in the U.S. District Court for the Northern District of California. Earlier, Microsoft challenged TiVo's patents in the Texas district court where the DVR company sued the telcos, arguing that the disputed features are provided by Mediaroom.

TIMELINE

TiVo's Legal Brawls

SOURCE: Multichannel News research
January 2004: TiVo files lawsuit against EchoStar.
April 2006: Federal jury finds against EchoStar.
August 2006: Texas district court issues injunction against EchoStar ordering Dish Network to disable infringing DVRs.
June 2009: Texas court finds EchoStar/Dish in contempt for violating 2006 injunction; awards TiVo $103 million more.
August 2009: TiVo sues AT&T and Verizon over patent infringement.
November 2009: U.S. Court of Appeals for the Federal Circuit hears EchoStar/Dish appeal of contempt ruling; that decision remains pending.
January 2010: Microsoft sues TiVo over two patents, intervening on behalf of its customer AT&T.


September