TiVo Inc., makers of the famous TiVo had sued Samsung back in 2015 for patent infringement, alleging that Samsung’s digital video recorders violate four of TiVo’s patents. This isn’t the first time TiVo has sued competitors over DVR-related patents: The Company has quite a litigious history, and in the past filed lawsuits against EchoStar/Dish, AT&T, Verizon, Motorola and Cisco. Basically, if a company makes a digital video recorder and has enough cash on hand, there’s a good chance that TiVo has filed a lawsuit against it at some point.
A pioneering DVR company, TiVo’s high-priced products have struggled in the marketplace in recent years, as many consumers have opted for renting set-top boxes from their cable providers. TiVo has been adapting to that model, with about 5 million of its 6 million customers now renting TiVo DVRs through deals with their cable providers, not from TiVo directly.
According to them it is not only Samsung set- top boxes that are found infringing but several smartphones and tablets have also been accused of infringement. In total Samsung products have been charged with the infringement of four of TiVo’s patents which are –
- Multimedia Time Warping System (U.S. Patent No. 6,233,389)
- Method And Apparatus Implementing Random Access And Time-Based Functions On A Continuous Stream Of Formatted Digital Data ( U.S. Patent No. 6,792,195)
- Multimedia Signal Processing System (U.S. Patent No. 7,558,472)
- Multimedia Signal Processing System (U.S. Patent No. 8,457,476).
The former two patents are older in comparison to the latter two, and have been a part of previous litigations. This is TiVo’s first litigation in the past three years. TiVo’s argues that Samsung mobile devices have rightly been included in the suit as they are “specifically designed and configured with hardware and software components that allow for the simultaneous storage and playback of movies, videos, television shows, and other multimedia content. TiVo maybe the pioneering DVR manufacturer, but in recent times the company has seen dwindling sales, where customers are now preferring to rent set top boxes instead of purchasing them. This is due to the high-priced products offered by TiVo, which has led to the slump in its sales.
Taking this into consideration, it is safe to say that what it loses in sales, TiVo tries to make up in royalty payments. With the eventual demise or extinction of the DVR technology, TiVo is aggressively trying to make its day dream last a tad longer. The Samsung suit seems pretty in sync with TiVo’s IP litigation strategy as seen in the previous cases. With its most popular patent, the Time Warp System, expiring in 2018, it may be an uphill journey from then on for TiVo.
On November3, 2016 TiVo and Samsung Electronics have agreed to terms regarding a broad intellectual property license that will provide certain rights under TiVo’s patent portfolios for Samsung’s leading mobile, consumer electronic and set-top box businesses. As part of the agreement, the parties will seek an immediate stay of all pending litigation and patent challenges between the two companies and, upon satisfaction of certain conditions in Q4 2016, will seek dismissal thereof. TiVo Inc. will end its patent infringement suit against Samsung Electronics Co. Ltd. in exchange for a long-term licensing agreement.
Keywords: Patent, patent Infringement, TiVo, Samsung, Multimedia, DVR, smartphones.