The Federal Circuit ruled Monday November 7, 2016 that two patents on interactive program guides and on-demand media that TiVo (Rovi Corp), a digital entertainment guides provider accused Netflix of infringing are invalid for claiming only abstract ideas under the Alice standard, upholding a lower court just days after arguments in the appeal.

The litigation between the two companies began in 2011, when Netflix sued to invalidate a batch of patents on Rovi’s digital entertainment guides, for which Rovi had demanded Netflix pay licensing fees.

  • The patents described ways of navigating TV and other video content online.
    7,065,709 – Client-server electronic program guide
  • A client-server interactive television program guide system is provided. An interactive television program guide client is implemented on user television equipment. The interactive television program guide provides users with an opportunity to define expressions that are processed by the program guide server. The program guide server may provide program guide data, schedules reminders, schedules program recordings, and parentally locks programs based on the expressions. Users’ viewing histories may be tracked. The program guide server may analyze the viewing histories and generates viewing recommendations, targets advertising, and collects program ratings information based on the viewing histories.
  • 7,103,906 – User controlled multi-device media-on-demand system
  • A method for providing configurable access to media in amedia-on-demand system also can include delivering the media to a first client device in a format compatible with the first client device; interrupting the delivery of the media; recording a bookmark specifying a position in the media where the interruption occurred; and resuming delivery of the media to a second client device, the resumed delivery beginning at a position in the media specified by the recorded bookmark. The method further can include identifying device properties for each of the first and second client devices; delivering the media to the first client device in a format compatible with the identified device properties for the first client device; and, delivering the media to the second client device in a format compatible with the identified device properties for the second client device.

Even after Netflix lawyers bested Rovi at the International Trade Commission and then pounded all five patents out of existence at district court last year, Rovi said it would push forward with an appeal. Now it’s clear that Rovi’s strategy to patent digital TV guides has hit a wall. Just a few days after Rovi’s lawyers made their oral argument, a panel of judges at the Federal Circuit upheld (PDF) the lower court’s decision in its entirety without comment. Rovi’s patents covered very basic ways of organizing video content, including one on using “combination categories” like “sports dramas” or “romantic comedies.” Another was on bookmarking shows across devices, which Rovi argued was a new idea when it filed its patent. “A novel abstract idea is still an abstract idea,” US District Judge Phyllis Hamilton informed the company in her opinion, which has now been upheld. Rovi sued and settled with other companies over its patents, including Amazon, Hulu, Toshiba, Sharp, and China-based Haier.

In April, Rovi acquired TiVo, another company that has turned its patents into a revenue stream. It soon took on TiVo’s name. Executives of the merged company told investors they were going to focus more on licensing IP than building hardware. But even with TiVo’s big litigation wins, the company couldn’t ultimately stop itself from becoming an afterthought. The big bets that companies like TiVo and Rovi made on software patents aren’t panning out, especially since the Supreme Court’s Alice decision has made it substantially easier to invalidate patents that describe basic business processes.

Keywords: TiVo, Patent, Patent Infringement, Rovi, Netflix, TV guide, Media in demand.