TiVo and its new parent company, Xperi Holdings, have renewed two more patents, inking intellectual property licensing extensions with U.K. telecom Vodafone and Korean consumer-electronics giant Sharp. 

Since TiVo settled its four-year IP battle with Comcast in November, the company has also struck deals with Cox Communications, TCL and Sony. 

Vodafone, which operates video services across Europe and parts of Africa, providing more than 22 million customers with TV/video, will continue to have access to TiVo products including content discovery, conversational voice and insight data analytics.  

“With this extension of TiVo’s services, Vodafone is maintaining its service offerings and keeping audiences engaged in the hugely competitive entertainment landscape,” Matt Milne, chief revenue officer for Xperi, said in a statement. 

Under its multiyear exemption, Sharp will use TiVo’s “G-Guide” products, including G-Guide HTML, G-Guide xD and remote schedule recording service, across compatible television and Ultra HD Blu-ray recorder products in the Japanese market. This includes the latest Aquos-branded 8K TVs.

Xperi, which controls more than 10,000 patents and patent applications, said during its third-quarter earnings call that it expects its IP licensing business to generate around $350 million in revenue in 2021. 

Xperi reports fourth-quarter earnings on Feb. 23.

TiVo has announced a renewal of its IP licensing deal with Chinese consumer electronics company TCL, the No. 2 seller of smart TVs in North America. 

“TCL North America values its long-standing relationship with TiVo, and is proud to continue this partnership to support our growing product line-up,” said Jonathan King, VP of corporate & legal affairs for TCL, in a statement. “This expanded agreement further demonstrates TCL’s commitment and respect for intellectual property as we continue introducing industry-leading features and capabilities for our loyal users.”

Also read: TiVo Renews Patent Deal with Xfinity X1 Licensee Cox Communications

TiVo was purchased last year by San Diego tech company Xperi, creating an IP licensing powerhouse of more than 10,000 patents and patent applications. 

Xperi said during its fourth quarter earnings call that it expects its IP licensing business to generate around $350 million i revenue in 2021. 

The company recently settled a four-year legal dispute with Comcast, the lone maverick in the video technology business not paying it IP licensing fees. 

“We are thrilled to extend and expand our licensing partnership with TCL, America’s second largest TV brand, including its award-winning line of TCL TVs,” said Samir Armaly, president, IP licensing of Xperi. “We believe this agreement further demonstrates the continued relevance of our IP portfolio in the consumer electronics space. The licenses provided under our expanded agreement will enable TCL to continue delivering the very best experience for its customers, even as the television industry undergoes rapid transformation and change.”

In a big victory for the smart device essential patents holder, a three-judge panel of the Ninth Circuit Court of Appeals has reversed a district court decision and lifted a permanent, worldwide, injunction against Qualcomm. 

Computer companies will appeal that decision to the full circuit.

The Federal Trade Commission had contended that Qualcomm had unlawfully monopolized the "code division multiple access ('CDMA') and premium long-term evolution ('LTE')" cellular modern chip markets, and the district court agreed.  

 Related: DOJ Issues New Advice on Standard Essential Patents 

But a three-judge panel of the Ninth Circuit was unpersuaded. Writing for the majority, Judge Consuelo M. Callahan said that the district court "erred in holding that Qualcomm was under an antitrust duty to license rival chip manufacturers." 

In May 2019, a California district court ruled that the way Qualcomm licensed its modem chips for handsets was anticompetitive--siding with the Federal Trade Commission, which had sued the company for having "harmed competition in two markets for baseband processors [modem chips]."   

But saying that Qualcomm has demonstrated "serious questions" about that district court's decision, the U.S. Court of Appeals for the Ninth Circuit subsequently stayed that decision, the latest twist in a year's-long legal battle. 

Qualcomm had refused to license standard essential patents for smart phone technology in promises it made to standards-setting bodies and charged excessive royalty rates, the district court concluded, agreeing with the FTC that Qualcomm was preserving its monopoly of the LTE chip market, effectively levying a surcharge on competitor's chips.  

Not so fast said the Ninth Circuit panel. Callahan said that panel concluded that Qualcomm's policy for licensing its standard essential patents, "however novel," did not violate the Sherman Act prohibition on anticompetitive conduct.  

The FTC had argued that even if Qualcomm was not under an antitrust duty to license its patents to original equipment manufacturers (OEMs) it was engaged in anticompetitive conduct, but the court said it had not sufficiently explained how Qualcomm's alleged breach of a contractural commitment by itself impaired its rivals.  

She said given that the FTC failed on that count, it looked less critically at Qualcomm's pro-competitive arguments for its OEM-level licensing policy, which the judge said, in any case, "appeared to be reasonable and consistent with current industry practice." 

The district court held that Qualcomm's licensing royalty rates equated to an anticompetitive surcharge. Wrong, said Callahan. "The panel held that Qualcomm’s patent-licensing royalties and 'no license, no chips' policy did not impose an anticompetitive surcharge on rivals’ modem chip sales. Instead, these aspects of Qualcomm’s business model were 'chip-supplier neutral' and did not undermine competition in the relevant markers," she wrote.

As to the two agreements with Apple (2011 and 2013) that were the subject of the FTC complaint and court decision, Callahan wrote: "The panel held further that Qualcomm’s 2011 and 2013 agreements with Apple have not had the actual or practical effect of substantially foreclosing competition in the CDMA modem chip market. Also, because these agreements were terminated years ago by Apple itself, there was nothing to be enjoined." 

“Judge Koh's [district court] opinion detailed how Qualcomm’s anticompetitive business practices have driven its competitors out of the modem business and raised prices in the cellular industry," said Joshua Landau, patent counsel for the Computer & Communications Industry Association (CCIA). "The 9th Circuit ignored those factual findings and greenlit Qualcomm's anticompetitive business practices.

"CCIA is disappointed in the 9th Circuit's deeply flawed decision and hopes that the Federal Trade Commission will ask for review en banc to correct the numerous errors in the panel opinion."

TiVo’s general counsel and chief compliance officer, Pamela Sergeeff, and its chief intellectual property officer, Arvin Patel, will not be part of the company following the closure of its merger with Xperi, SEC filings reveal.  

The merger of TiVo Corp. and Xperi Corp. closed earlier this week, creating one of the largest patent licensing business, with more than 11,000 patents and patent applications, falling under the Xperi brand. 

As noted by this Bloomberg Law report, Xperi chief legal officer Paul Davis remains on the management team. But TiVo’s top corporate legal counsel are being bought out. Patel—who has spearheaded TiVo’s well-publicized and ongoing patent dispute with Comcast, is receiving a $1.8 million golden parachute, according to the filings $450,000 of it in cash. 

Also read: TiVo Trumpets ITC’s Final Ruling—Comcast Violated Patent on Search Highlight Feature

We sent a note to Xperi Holdings reps today to try to find out how the departure of TiVo’s top legal personnel might impact the litigation with Comcast, which has been routinely mentioned as a high priority by TiVo, despite the substantial cost to maintain it. They’ve yet to respond.

It’s notable that prior to the announcement of the $1.1 billion deal, TiVo was looking to separate its products business, which makes things like the new TiVo Stream 4K OTT dongle, from the intellectual property business formed when it merged with Rovi Corp. five years ago. 

Much of the logic came from the fact that TiVo was trying to sell products to a market that it was also trying to, in some cases, enforce patent licensing upon. And that hasn't always been easy to do.

In early 2017, for example, as its dispute with TiVo/Rovi ramped up, Comcast replaced TiVo with Gracenote as its metadata vendor. 

TiVo viewed separating the patent licensing business as a priority. And now that operation will function under the Xperi brand name.

TiVo is touting a U.S. Appeals Court ruling as a win in its ongoing patent battle with Comcast.

The U.S. Court of Appeals for the Federal Circuit affirmed jurisdiction for the International Trade Commission (ITC) to ban Comcast set-tops that it determines have infringed on TiVo patents. 

TiVo has filed numerous lawsuits in multiple jurisdictions against Comcast dating back to 2016, trying to get the cable company to resume paying it licenses on pay TV technologies. And in this battle, TiVo has had most of its success in the confines of the ITC. 

Also read: Comcast Gets Federal Circuit Win Against TiVo

In late 2017, for example, the ITC ruled that a remote recording feature included in Comcast’s X1 platform violated patents held by TiVo’s Rovi division. Comcast worked around the issue by removing the feature from the X1 platform. And the patent under dispute has since expired. 

But TiVo has two more batches for patents, in two other ITC filings, that will soon be ruled on by the ITC. 

“The Federal Circuit affirmed the ITC’s Final Determination and what we at TiVo have known for years—Comcast infringed Rovi’s patents and its business is subject to the ITC’s jurisdiction,” said Arvin Patel, executive VP and chief intellectual property officer at Rovi Corporation, in a statement. 

“This ruling maintains the ITC’s import ban against Comcast’s set-top boxes and showcases the strength of Rovi’s battle-tested patent portfolio,” Patel added. “We understand the value of our patented technology and why Comcast has relied on it heavily since launching its X1 platform. But Comcast cannot continue to use Rovi’s patented technology without paying for a license. We are hopeful today’s announcement will encourage Comcast to put their customers first and license our IP just as the other top 9 U.S. Pay-TV providers do.”

Comcast said in a statement the ruling is irrelevant: “The Federal Circuit Court’s ruling applies to expired patents that have already been invalidated by the patent office and therefore are irrelevant to what Comcast offers customers today.  Rovi is misleading the public by suggesting that there is an import ban on any Comcast X1 set-top boxes--that’s just not true.” 

TiVo has publicly stated that its strategy is a kind of war of attrition. By filing so many lawsuits, I so many places, covering so many patents, it hopes to win enough rulings to disrupt Comcast and bring the cable company to heel. 

TiVo has conceded that not having the No. 1 U.S. cable company pay it licensing fees is a profound existential threat to its IP licensing business. 

In a move that should please patent-holder Qualcomm, but not iPhone maker Apple, the Justice Department has issued a new advisory on standards-essential patents that makes clear that the requirement to patent those technologies on reasonable terms does not mean that patent holders lose legal rights to protect them.

Standard-essential patents are ones for technologies that are essential for the functioning of a baseline technology, like Qualcomm chips in smart phones.

Related: Apple, App Developers: SEP Injunctions Should Not Be Easy

“Today’s policy statement recognizes that when licensing negotiations fail, appropriate remedies for patent infringement, including injunctive relief, should be available to SEP holders," said antitrust chief Makan Delrahim. "The availability of the full range of remedies is necessary in order to preserve competition and incentives for innovation, and for continued participation in standards-setting activities, which can produce substantial benefits for American consumers.”

So, when a patent owner promises to make the patent available to competitors at reasonable rates and on reasonable terms, it still has the full legal arsenal if it thinks its patents are being misused, i.e. that there is no special set of rules. Justice said the 2013 joint statement had appeared to suggest that special, unprotected, status when it said that seeking an injunction against use of those essential patents as part of a legal challenge could potentially harm competition.

"We hope that the new policy statement helps create greater efficiency in SEP licensing by achieving a healthier balance in leverage between patent-holders and licensees," said a Justice official speaking not for attribution. "That will ultimately reduce transaction costs and fuel the speedy incorporation of cutting-edge technologies into a broader range of products. Doing so will help foster dynamic competition that benefits the American consumer."

On whether the shift now favors patent holders--like Qualcomm--they said no, arguing that courts have consistently said patent holders have the right to seek injunctive relief. He said that the new policy statement just recognizes that SEPs have that right and that exercising it "does not raise competition concerns and is not in tension with the antitrust laws."

Antitrust Chief Makan Delrahim said in a speech last year that DOJ was rethinking its position on standards-essential patents (SEPs), including withdrawing from the Obama-era (2013) joint “Policy Statement on Remedies for Standards-Essential Patents Subject to Voluntary FRAND [fair, reasonable and nondiscriminatory] Commitments.”

Delrahim suggested that the 2013 statement had conveyed the wrong impression of DOJ's position on when and how patent holders can exclude competitors from using their essential technologies. "Since injunctions against infringement frequently do serve the public interest in maintaining a patent system that incentivizes and rewards successful inventors through the process of dynamic competition, enforcement agencies without clear direction otherwise from Congress should not place a thumb on the scale against an injunction in the case of FRAND-encumbered patents," Delrahim said at the time, presaging this week's statement.

Apple earlier this month had asked the Trump Administration not to withdraw from the statement, arguing that it "fully allows for appropriate monetary remedies if patent infringement is proven, while also recognizing appropriate limits for exclusionary relief when the SEP owner has instead promised to grant fair, reasonable, and nondiscriminatory (FRAND) licenses."

ACT|The App Association, Apple and others representing $100 billion in R&D are calling on the Department of Commerce not to withdraw U.S. support from a 2013 Joint Policy Statement on standard essential patents (SEP). The Department of Justice withdrew at the beginning of the year.

That came in a letter to Commerce Secretary Wilbur Ross and Andrei Iancu, head of the Patent and Trademark Office.

Standards essential patents are ones for technologies that are essential for the functioning of a baseline technology, like Qualcomm chips in smart phones.

Apple and The App Association said the 2013 statement "fully allows for appropriate monetary remedies if patent infringement is proven, while also recognizing appropriate limits for exclusionary relief when the SEP owner has instead promised to grant fair, reasonable, and nondiscriminatory (FRAND) licenses."

Stepping back from that statement could hurt the rollout of 5G, chill the development of connected devices, and more, they say.

Commerce has said that the “presence or absence of good faith during negotiations can be a factor in the setting of remedies for infringement of FRAND-encumbered SEPs." But Apple and company say that, as the 2013 statement recognizes, SEP injunctions can disrupt commerce and product development, so it should be tough to get an injunction.

Any guidance that focuses on negotiation conduct without also expressly recognizing that the key factors weigh against SEP injunctions would both fail to faithfully reflect U.S. law and constitute poor innovation policy."

TiVo today announced yet another new IP licensing extension, this one with LG Electronics.

The agreement expands on a previous patent agreement with the Rovi side of TiVo’s business, adding patents that fall under the legacy TiVo umbrella.

“Our licensing agreement with LG further solidifies our long-term partnership with them,” said Arvin Patel, executive VP and chief IP officer, TiVo, in a statement. “We are thrilled to be working with a leading consumer electronics brand and are excited to help further enhance their customers’ ability to discover and enjoy entertainment content on multiple devices.”

Related: TiVo Extends Patent Deal with Canada’s Shaw

The announcement came one day after TiVo touted a new extension with Canadian cable company Shaw Communications. Notably, Shaw licenses the X1 video platform from Comcast, which is currently battling TiVo in more than half a dozen venues over IP licensing.

TiVo is currently looking to split its IP licensing business from its products business. The former saw revenue drop 8% in the first quarter to just over $66.9 million. IP licensing revenue from consumer electronics makers like LG Electronics was down only 4% to $8.6 million, and revenue from international constituents was up 15% to nearly $16.2 million.

But the TiVo/Rovi patent business continued to struggle with domestic pay TV operators—the biggest segment of the company’s IP licensing operation. Revenue from this sector was down 16% year over year to $42.1 million.

TiVo attributed $8.9 million of the Q1 drop to the “expiration of legacy Time Warp agreements.”

UPDATE: On Wednesday, the Patent Trial and Appeals Board invalidated Patent No. 8,578,413. 

Comcast received another minor victory in its broad-reaching patent war with TiVo, with the Patent Trial and Appeals Board (PTAB) invalidating another TiVo patent.

However, a bigger win for Comcast might be in store for down the road, with the PTAB set to issue a more influential ruling later this week. That decision could ultimately enable Comcast to turn back “on” a remote DVR recording feature that the cable operator disabled 11 months ago, after the International Trade Commission (ITC) ruled against the company.

Related: Comcast Gets Two More TiVo Patents Invalidated

TiVo and its Rovi division have filed numerous lawsuits covering over a dozen patents, in myriad venues, against Comcast, attempting to make the cable operator pay licensing fees on technologies used in its X1 video platform. Comcast has been appealing each of these patents with the PTAB, trying to invalidate them one by one. 

On Monday, the PTAB invalidated Rovi patent No. 8,566,871, which is tied to a TV programming guide feature. This patent was part of Rovi’s first lawsuit, and the ITC already ruled in Comcast’s favor on it late last year.

Related: Comcast Pulls Remote DVR Scheduling Feature From Stream App

Notably, ITC did rule last November in Rovi’s favor on two patents related to remote DVR recording—No. 8,006,263 and 8,578,413. Comcast subsequently removed the remote DVR recording feature in its X1 platform, as it moved on with its legal fight. This was a crucial TiVo victory, sources close to the company told Multichannel News: the more features Comcast is forced to disable, the more likely it is that the cable company will settle.

However, in September, the PTAB invalidated one of the two remote-recording patents that Rovi received favorable ITC rulings on—No. ‘263. The PTAB is set to rule on the other one,  ‘413, later this week. An individual close to Comcast said that a favorable ruling could ultimately enable the operator to re-instate the remote DVR recording feature.

TiVo reps, meanwhile, noted that Comcast would still have to clear a major legal hurdle before restoring the feature. Comcast, they said, would first need to convert its win at the PTAB level--should that happen--to a victory in its circuit court appeal of the ITC ruling.. 

Asked for comment, Comcast issued only a statement responding to the invalidation of patent No. ‘871: “We are pleased that the Patent Office agrees with us that all of the claims in the Rovi patent asserted against Comcast are invalid,” the cable operator said.

TiVo responded with this statement: “Today's decision does not have any material impact on the broader reality that Comcast has been found in violation of Rovi patents on remote record technology by the ITC and will not be able to add this feature back into the platform.

"We disagree with the PTAB ruling and are optimistic about our appeal options, but more central to our dispute with Comcast are the positive rulings we've received from the ITC which have caused Comcast to remove features as well as future decisions we expect on additional patents in the coming months. We remain committed to take the necessary legal actions to ensure Comcast renews its long-standing license to fairly compensate Rovi for the use of our intellectual property, just as hundreds of other media and entertainment leaders do.”

An invalidation of '413, and subsequent re-introduction of remote DVR recording on X1, would be a major blow to Rovi's legal strategy. However, it's unlikely that the technology company would quit its battle with Comcast. 

TiVo has patent licensing agreements in place with every major U.S pay TV operator. But Comcast hasn’t paid TiVo royalties since its last agreement expired in April 2016. And TiVo, which saw its patent litigation costs increase to $5.6 million in the second quarter, says it it’s not going to quit trying to chase down the No. 1 U.S. cable operator until it pays up.

“It would be untenable to let someone free ride when rest of the industry is paid,” an individual close to the company’s legal team told MCN last month. 

Comcast has filed a motion at the U.S. Court of Appeals for the Federal Circuit as it looks to expedite the briefing and hearing schedule for an appeal of its case at the International Trade Commission.

In November, the ITC issued a limited exclusion order prohibiting importation of certain DVR and hardware and software. That followed an initial determination last May finding that various respondents, including Comcast, had violated two TiVo patents – No. 8,006,263 and 8,578,413 -- that describe “Interactive Television Program Guide with Remote Access,” while four other patents asserted by TiVo/Rovi in the case “were found to have no violation at this point.”

RELATED: TiVo Notches Win in ITC Patent Battle with Comcast

As Comcast seeks its appeal of the ITC decision, the operator has disabled a feature from its Stream appfor mobile devices and web browsers that enables customers to schedule DVR recordings remotely.

Comcast said the filing of the new motion is a procedural step. CableFAX reported that Comcast is arguing that the ITC overstepped its authority with the ruling handed down late last year.

It’s not clear how much Comcast’s motion, if granted, will expedite the appeal (a decision on whether to grant it might be made before the end of February). Typically, it might take the Federal Circuit about a year to reach a decision. Without an accelerated briefing schedule, the hearing on Comcast’s appeal might get under way this fall. With it, it might get moved up to June or July, a personal familiar with the situation said.

RELATED: TiVo Notches Win in ITC Patent Battle with Comcast

In the meantime, TiVo, which merged with Rovi Corp. in the fall of 2016, has recently filed a companion to the ITC case that involves the same eight patents that are being asserted in a new round of litigation filed in district courts in California and Massachusetts. Those patents describe features such as pausing and resuming shows on different devices and some advanced search and voice functionality.

RELATED: TiVo Hits Comcast With More Lawsuits Targeting X1

That move essentially enables TiVo to put in parallel the patents and intellectual property it’s asserting in the district courts, where it would be seeking monetary damages, as well as with the proceedings at the ITC, which is instead focused on remedies that usually involve exclusion orders that would prevent infringing products from being imported to the U.S.

It’s expected that the cases at the district courts will get stayed until the appeals at the ITC get played out.

And there’s still no telling how long all of this will play out, as both sides have shown no signs of budging.

People familiar with the situation believe that Comcast will hold firm and fight it out in the courts rather than sign a deal, and that TiVo will continue to keep the pressure on Comcast with multiple lawsuits in the absence of a new licensing agreement.

TiVo has argued that the patents in the new complaints represent a “very small” part of its portfolio. At CES in January, recently named TiVo CEO Enrique Rodriguez said the goal is to “have the right relationship with Comcast” and that litigation is considered a “last resort.”

Comcast has been countering that TiVo’s patents have aged and are “increasingly obsolete” and that Comcast’s own engineers independently created X1 products and services.

TiVo said it has expanded its multi-year patent license agreement with Google that includes YouTube TV, the OTT TV service launched last April.

RELATED: YouTube TV Tunes in 35 More Markets

Financial terms were not announced, but TiVo said the agreement covers Google’s use of TiVo’s patented technologies worldwide, and offers a license for Google’s products and services across internet-based platforms and devices.

TiVo, meanwhile, continues to battle with Comcast in the courts. 

Last week, Rovi Corp, a unit of TiVo, filed two lawsuits against Comcast that take aim at the features and capabilities offered on the MSO’s X1 platform, and assert a total of eight patents.

RELATED: TiVo Notches Win in ITC Patent Battle with Comcast

Comcast countered that X1 was developed independently by its own engineers, arguing that Rovi’s is attempting to extract “unfounded payments for its aging and increasingly obsolete patent portfolio…”

Sprint is targeting Mediacom Communications in a lawsuit alleging that the cable operator has violated 13 Sprint patents tied to VoIP services, the Kansas City Business Journal reported.

Mediacom declined to comment on the suit, as it’s still reviewing the claim. Sprint filed the suit in a federal court in Delaware last Friday (December 1), the paper said, noting that Sprint is seeking damages yet to be determined along with a permanent injunction.

Sprint has had some success going after cable operators with patent suits. In October, Comcast disclosed in a 10-Q filing that it had paid $250 million to Sprint to settle a lawsuit stemming from claims that the MSO’s digital voice service was infringing on several Sprint patents.

RELATED: Comcast Settles Sprint Patent Spat

Time Warner Cable (now part of Charter Communications) lost its case with Sprint in a judgement handed down earlier this year. Sprint’s suit against Cable One was dismissed by the court in November 2016, according to court documents.

RELATED: Sprint Sues Comcast, TWC, Cox And Cable One Over VoIP Patents

Comcast has yanked a feature from its Stream app for mobile devices and web browsers that enables subscribers to schedule DVR recordings remotely.

The removal of that feature comes a few days after the International Trade Commission issued a final ruling that Comcast had violated two TiVo patents, and a “limited exclusion order” that prohibits the importation of certain DVR receivers and software components.

That ruling is now undergoing a 60-day presidential review period. Comcast, which disagreed with the ITC’s ruling, has removed the remote recording feature as it prepares to appeal.

Though Comcast customers currently can’t set recordings remotely on the Stream app, they can still set recordings via the set-top box. Additionally, Comcast customers can still use the Stream app to playback (and download) DVR-recorded content (that component is enabled by X1’s cloud DVR service).  

GeekWire was first to report that Comcast had removed the remote recording feature from the Stream app, and noted that Comcast has yet to update its FAQs (for the Stream app and the Xfinity TV Remote App) to reflect the change.

In the meantime, the ComcastCares Twitter handle has been responding to customers who are confused as to why that feature is currently unavailable.

@XFINITY@comcastcares@comcast What happened to the “Record Program” functionality from the Stream TV app? I no longer have the option to record a show using my phone. What gives? pic.twitter.com/RioWsrGWAs

— Gary Awesome (@wizwit101) November 30, 2017

That functionality has been removed from our apps. If you’re away from your DVR box and cannot schedule a recording and miss a show, check to see if it’s available on XFINITY On Demand! We apologize for the inconvenience.- RO

— ComcastCares (@comcastcares) November 30, 2017

I apologize for the inconvenience. Due to a judicial ruling, we are disabling this feature while we pursue an appeal. - Noah

— ComcastCares (@comcastcares) November 30, 2017

As Comcast’s primary supplier of video products, Arris “could face challenges importing X1 boxes” to the MSO following yesterday’s ruling by the International Trade Commission that Comcast had violated two TiVo patents, Simon Leopold, an analyst with Raymond James, opined in a research note issued Wednesday.

The ruling, announced Tuesday (November 21), now moves to a 60-day presidential review before it takes effect, but it could prohibit Comcast from importing boxes equipped with software that is subject to the TiVo patents.

RELATED: TiVo Notches Win in ITC Patent Battle with Comcast

For its part, Comcast said it respectfully disagrees with the ITC’s decision and that it will remove the feature while it pursues an appeal. The feature, in this case, is functionality that lets video customers schedule DVR recordings remotely from mobile devices that they would watch later via the set-top box.

Two set-top makers – Arris and Technicolor -- were identified as respondents in the case. Pace was also named (Arris acquired the U.K.-based company in early 2016).

Arris and Technicolor have been asked for comment regarding the ITC ruling.

UPDATE:Arris issued this statement Wednesday: "ARRIS was again found not to have infringed on any of Rovi’s patents; however, we are nevertheless disappointed and respectfully disagree with the ITC’s determination that there was infringement by any of the parties in this matter. Going forward, we will continue to support Comcast's appeal. We believe that the inclusion of ARRIS was improper based on our existing agreements with Rovi, which was borne out by the Commission's ruling."

Arris, Leopold wrote, “could face challenges importing X1 boxes for Comcast with this ruling.”

Leopold said Arris management “expressed a lack of worry when we spoke to them about this risk, which suggests they have some insight, but citing the litigation and the fact that the issue is in the hands of their top customer, they declined to elaborate.”

Update: In the wake Comcast's statement and its temporary work-around to remedy the situation following the ITC ruling, Leopold issued a follow-up note today that "[w]e expect this to reduce overhang on ARRIS stock." 

That seems to be playing out so far, as investors don’t appear to be concerned. Arris shares were up 12 cents (0.41%) to $29.15 each in mid-day trading Wednesday.

In view of similar cases, the situation here could affect the timing of shipments, but not the long-term demand, Leopold noted.

“Comcast will buy video equipment based on its deployment plans, which are unlikely to change, so what doesn’t get ordered during a period where the product is unavailable, should likely be ordered later,” he added.

Leopold said he expects Comcast and TiVo to continue negotiations during the 60-day review period, but also outlined several options that are available to Comcast:

-To pay the license fee for the feature and keep it as is (Leopold said TiVo’s recent renewal/extension with AT&T has a Most Favored Nations clause that “likely sets a floor” on what might be acceptable).

-To implement a work-around in the code.

-To important boxes without software and install the software in the U.S. “This may buy time and shift jurisdiction, but is likely just a stalling tactic,” the analyst wrote.

-Remove the offending feature from the software code and possibly negotiate to add it back.

TiVo shares rose more than 10% in after-hours trading Tuesday after the International Trade Commission handed down a final ruling finding that Comcast had violated two TiVo patents.

According to the notice posted today, the ITC, following its investigation, has issued a “limited exclusion order prohibiting the importation of certain digital video receivers and hardware and software components” and had “issued cease and desist orders…directed to the Comcast respondents. The investigation is terminated.”

In addition to Comcast, other respondents in the ITC case include set-top suppliers such as Technicolor, Arris and Pace Ltd. (Arris acquired U.K.-based Pace in January 2016). 

“Rovi is pleased the International Trade Commission issued its final ruling in our favor and found that two Rovi patents are valid and infringed by Comcast’s X1 products, and issued an exclusion order that bans Comcast from importing and selling X1 devices that infringe our valuable intellectual property,” Rovi, a TiVo company, said in a statement. “Today’s Commission Opinion reinforces the need for Comcast to take the necessary licenses to our IP.”

TiVo and Rovi completed their merger last fall. Though TiVo/Rovi has recently renewed and/or extended patent and licensing deals with several other major MVPDs, including AT&T of late, it and Comcast have not yet come to terms on a new agreement. The ITC ruling could hasten a new deal between TiVo and Comcast. 

Update: Comcast issued this statement:“We respectfully disagree with the ITC’s decision in this matter. In fact, Rovi has never disputed that Comcast or its predecessors independently developed our X1 platform and our cloud- and app-based technology. While we believe the ITC reached the wrong decision, we will remove this feature from those offered to our subscribers while we pursue an appeal.”

The feature Comcast is referring to is functionality that lets video customers schedule DVR recordings remotely from mobile devices that they would watch later via the set-top box. 

Comcast also has deals in place to license/syndicate its X1 platform to other MSOs, including Cox Communications (it inked a multi-year intellectual agreement with Rovi in 2010)  and three based in Canada (Rogers Communications, Shaw Communications, and Videotron), which seemingly would have no bearing as this is a U.S.-focused case). Shaw is already facing a legal challenge from Nagra and OpenTV over the MSO's BlueSky TV service, which leans on Shaw's X1 syndication deal with Comcast. 

The ITC’s final ruling follows an initial determination in May finding that various respondents, including Comcast, had violated two TiVo patents – No. 8,006,263 and 8,578,413 that describe “Interactive Television Program Guide with Remote Access”– and that other four patents asserted by TiVo/Rovi in the case “were found to have no violation at this point.”

RELATED: TiVo Shares Soar on Prelim ITC Ruling Against Comcast“Having examined the record in this investigation, the Commission has determined to affirm the Final ID’s conclusion that Comcast has violated section 337 in connection with the asserted claims of the ’263 and ’413 patents,” the ITC said in the notice issued today. “More particularly, the Commission affirms the Final ID’s determination that Comcast imports the accused X1 set-top boxes (“STBs”), and takes no position as to whether Comcast is an importer of the Legacy STBs. The Commission also takes no position on as to whether Comcast sells the accused products after importation.”

Regarding what’s next, the final ITC notice now heads to a 60-day Presidential period, where the exclusion order will be reviewed and a decision will be made as to whether there’s a public health policy reason to suspend it. That’s considered unlikely in this instance.

Comcast also has the option to appeal the notice to the federal circuit, though such action isn't expected to slow TiVo’s ability to stop infringing boxes from entering the U.S.

The ITC ruling doesn’t factor in any monetary damages. TiVo is seeking those in two separate court cases occurring in the Southern District of New York. One involves the same patents covered in the ITC case, which had been under a stay until the Commission determined a final ruling.

In 2016, prior to its merger with TiVo, Rovi filed a patent suit against Comcast in the Eastern District of Texas, Marshall Division, alleging that the cable operator, together with a handful of its set-top suppliers, including Arris/Pace, Technicolor and Humax, are infringing on 14 patents that, it claims, covers features such as remote recording and search for Comcast’s X1 platform.

TiVo’s business has been rapidly shifting from hardware to software, and that business shift was clear as day in the company’s third-quarter results.

“TiVo has moved well beyond a hardware company and is now an innovative entertainment technology company,” Thomas Carson, TiVo’s president and CEO, said on the company's earnings call Thursday (Nov. 2). “To that point, 95% of our revenues this quarter came from software, services, advertising and licensing.”

Though it’s not a core focus, TiVo is still keeping its hand in the retail hardware business amid the launch of a new lineup of Vox-branded products that add voice navigation and a new user interface.

RELATED: TiVo Refreshes Retail Lineup With Voice-Powered 'Vox' Devices

TiVo said Q3 revenue rose 29%, to $197.9 million, driven by the merger between TiVo and Rovi that closed last fall. That was paired with a net loss of $17 million, versus net income of $49.9 million a year ago that factored in a $83.4 million tax benefit. TiVo expects full-year revenue in the range of $810 million to $830 million, with about $35 million coming from hardware sales.

Carson, who plans to retire from the company (a search for a successor is ongoing), reiterated that TiVo’s business now covers three categories: Platform Solutions (user experience software for pay TV operators in developed and emerging markets); Software and Services (metadata, advanced search and recommendations, voice search and advertising); and Licensing.

Though TiVo has made progress on that last category, having signed recent deals with AT&T and Liberty Global, the overhang continues due to the lack of a deal and a protracted legal battle with Comcast.

RELATED: TiVo Shares Soar on Prelim ITC Ruling Against Comcast

Getting Comcast under license “remains one of our top priorities,” Carson said. 

Regarding the pending action at the International Trade Commission, Carson said TiVo expects a final determination to be issued on Nov. 9.

Comcast paid $250 million to Sprint to settle a lawsuit stemming from claims by Sprint that the cable operator's digital voice service was infringing on  several Sprint patents. 

The amount was disclosed this week in a 10-Q filingspotted by thePhiladelphia Inquirer.

Sprint filed the original suit in December 2011 in a Kansas district court, alleging that Comcast’s Digital Voice/Xfinity Voice offering infringed on twelve Sprint patents covering various aspects of a telecommunications system.

The suit also targeted other MSOs, including Time Warner Cable (now part of Charter Communications), which lost the case in a judgement handed down earlier this year. Sprint’s suit against Cable One was dismissed by the court in November 2016, according to court documents.

RELATED: Sprint Sues Comcast, TWC, Cox And Cable One Over VoIP Patents

In the 10-Q, Comcast noted that in January 2017, the court favored Comcast on Sprint’s claims for infringement of two of the patents, with Sprint indicating in March that it would not proceed to trial on three of the patents.

However, a trial with respect to the four remaining patents, including the patent for which the court had already granted partial summary judgment to Sprint, was set to begin on October 23, 2017. 

Comcast and Sprint, the filing noted, entered into a settlement agreement on October 17 that dismissed all claims and resolves the disputes asserted in the remains of the case. Tied to the settlement, Comcast recorded a charge of $250 million in Q3 2017.

TiVo said it has renewed and extended its products agreement with Liberty Global, the Denver-based operator that serves cable and broadband customers across Europe and in parts of Latin America.

Financial terms of the agreement weren’t announced, but the deal also includes a multi-year extension to an intellectual property for TiVo’s patent portfolios that covers all Liberty Global subsidiaries. That includes Virgin Media, the U.K.-based MSO that has been using TiVo’s software and services platform as the centerpiece of its flagship video products.

RELATED: Virgin Media Rejuvenates Video Platform

The deal salts away another important patent and IP deal for TiVo, which remains at odds with Comcast.

RELATED: TiVo Shares Soar on Prelim ITC Ruling Against Comcast

“We have a long-standing, wide-ranging relationship with Liberty Global around the world as a trusted technology supplier,” Tom Carson, TiVo’s president and CEO, said in a statement. “Liberty Global’s expanded license helps them optimize entertainment experiences for their customers and underscores the value TiVo brings to modern TV and broadband leaders around the world.”

Ensuring that the two won’t be battling in the courts anytime soon, The Kudelski Group and Roku have struck a patent cross-license and technology collaboration agreement.

RELATED: OpenTV, Nagravision Sue Shaw, Target MSO's X1-Based TV Service

Financial terms weren’t announced, but the agreement gives each side the “freedom to operate with respect to the other’s patent portfolios,” Kudelski said.

The deal also factors in a framework for the companies to collaborate on incorporating Kudelski’s security solutions on Roku’s platforms.

RELATED: Kudelski Group and Turner sign patent license agreement

TiVo said it has extended its intellectual property and patent license with AT&T that will cover AT&T through 2025.

Finalization of the extension comes after the companies had announced a seven-year license renewal at the end of 2015.

The new agreement gives AT&T some important air cover on TiVo licenses that would be attributable to AT&T’s range of pay TV services, including U-verse, DirecTV (satellite) and the new OTT-delivered DirecTV Now offering.

For TiVo, which merged with Rovi last year, AT&T ensures that one of the nation’s largest MVPDs has secured key intellectual property license. The big overhang: Comcast, which still has not come to terms with TiVo on a new deal and the two remain locked in a court battle.  

RELATED: TiVo Shares Soar on Prelim ITC Ruling Against Comcast

“We are pleased that AT&T has extended its existing license agreement,” Tom Carson, TiVo’s president and CEO, said in a statement. “TiVo’s IP helps leading pay-TV providers deliver unique and personalized entertainment to consumers, now and well into the future.”

RELATED: TiVo President and CEO Thomas Carson to Retire

MPEG LA jumped into the ATSC 3.0 mix by announcing a call for patents that are “essential” to the next-gen TV transmission standard that will blend over-the-air and broadband capabilities, support mobile devices and 4K and other new formats.  

MPEG LA said the call for patents is a “first step in creating a one-stop license” for ATSC 3.0.  Parties that believe they have patents that are essential to the 3.0 standards have until Sept. 8, 2017 to submit them.

RELATED: Sinclair Takes Aim at MVPDs Over ATSC 3.0

MPEG LA has created similar patent pools for standards such as EVS (Enhanced Voice Services), HEVC, DASH, MPEG-2, and AVC/H.264), as well as earlier versions of ATSC.

RELATED: ACA: Broadcasters Aren't Walking the Talk

MPEG LA said it recognizes that the ATSC 3.0 standards were developed by the Advanced Television Systems Committee (ATSC), a group that MPEG LA isn’t affiliated with, but holds that the call for patents aims to “facilitate creation of a joint license is in response to market interest in a convenient licensing alternative.”

RELATED: Why Sinclair Has the Hots for ATSC 3.0

“ATSC 3.0 represents a significant technological leap over current ATSC broadcast standards, developed some 20 years ago,” Larry Horn, president and CEO of MPEG LA, said in a statement. “MPEG LA is pleased to begin the process of creating an efficient one-stop license offering access to key intellectual property rights that will help make ATSC 3.0’s benefits available to consumers without delay.”

Avid said its patent infringement case against Harmonic is set to proceed to trial.

In a case that got underway in 2011 in the United States District Court for the District of Delaware, Avid said it is seeking a “multimillion-dollar damages” over allegations that Harmonic is infringing on two patents.

Avid said the case centers on Harmonic’s MediaGrid storage system and Avid’s U.S. Patent Nos. 6,760,808 and 7,487,309 (Computer system and process for transferring multiple high bandwidth streams of data between multiple storage units and multiple applications in a scalable and reliable manner), and the Harmonic’s Spectrum media server system and Avid’s U.S. Patent No. 5,495,291 (Decompression system for compressed video data for providing uninterrupted decompressed video data output).

Following the latest rulings by the U.S. Court of Appeals for the Federal Circuit in Washington, D.C. and the United States Patent and Trademark Office, Avid said it plans to proceed to trial against Harmonic.

Avid said its case of infringement against Harmonic’s Spectrum products is scheduled for trial in November 2017, and noted that the court ordered a new trial in the MediaGrid case in 2016.

Harmonic sought to have the USPTO cancel the patent claims in Avid’s ‘808 and ‘309 Patents, but on May 12, 2017, the USPTO upheld the claims of Avid’s 309 Patent, but found the claims of the ‘808 Patent unpatentable (Avid plans to appeal that decision).  With the ‘309 Patent confirmed as patentable, Avid said its infringement case against Harmonic and its MediaGrid system is expected to proceed to the new trial ordered by the Federal Circuit.

“Based on expert testimony, Avid expects its claim against Harmonic could result in up to $35 million in damages through 2013,” Avid said.

Harmonic, which outlined details of Avid’s legal actions in May via this 8-K filing, has been asked for further comment.

Update:Harmonic said it is not commenting about the case beyond what's stated in its SEC filings. 

A bipartisan bill has been introduced that would restore the presumption of injunctive relief if a valid patent is infringed, and takes other steps to sew up what the authors say is a court weakening of patent rights.

In fact, the STRONGER (Support Technology & Research for Our Nation’s Growth and Economic Resilience) Patent Act is actually a stronger version of the STRONG Act.

The goal of the bill is to make it easier and less costly for patent holders to enforce patents. While that would not sound like a partisan issue, the legal pursuit of patents by so-called "trolls" that buy up patents and try to extort payments is an issue that implicates patent enforcement, and the bill has at least on Republican backer.

Sen. Dick Durbin (D-Ill.), one of the bill's supporters, says the legislation manages to thread that needle. “We must preserve and strengthen the ability of legitimate patent holders to protect their innovations, while taking steps to narrowly target and deter abusive patent troll behavior," he said. "This bill strikes that balance.”

Others sponsoring the bill were Senators Chris Coons (D-Del.), Tom Cotton (R- Ark.), and Mazie Hirono (D-Hawaii.).

Among the changes from the STRONG Act introduced in the last Congress are "repetitive, harassing petitions in the administrative reviews at the USPTO, reducing duplication between these reviews and district court, and providing a new approach to amending patent claims during them."

Medical Device manufacturers also saw it as a good compromise.

Mark Leahey, president and CEO of the Medical Device Manufacturers Association (MDMA), issued the following statement regarding introduction of the the act in the U.S. Senate:

“MDMA applauds the bipartisan work of Senators Tom Cotton, Chris Coons, Dick Durbin and Mazie Hirono for devising legislation that thwarts frivolous patent lawsuits while leveling the playing field for inventors," said Leahey. "The ‘STRONGER Patents Act’ provides a balanced, targeted approach to end abuse, support innovation and spur the lifesaving cures and therapies that patients and providers desperately need."

The U.S. International Trade Commission announced Wednesday that it voted to start an investigation in response to a complaint lodged by Sony Corp. regarding claims that certain boxes and gateways imported and supplied by Arris to Comcast and DirecTV infringe on certain Sony patents.

Arris declined to comment on the investigation, but the ITC said the probe includes Arris set-tops supplied to Comcast for its Xfinity brand and boxes supplied to DirecTV for its Genie brand, as well as “media or telephone gateway products.”  

Arris is a key box supplier for Comcast’s X1 platform. AT&T closed its acquisition of DirecTV in July 2015.
Per the ITC, the complaint alleges violations of section 337 of the Tariff Act.

Various units of Arris and Pace are both listed as respondents in the investigation (337-TA-1049)

Arris acquired U.K.-based Pace plc in January 2016, a move that broadened Arris’s lead in the set-top sector and filled a satellite TV gap in Arris’s set-top business. That followed Arris’s purchase of Motorola Home in April 2013.

RELATED: Arris Wraps Up Pace Acquisition

The US ITC said it will make a final determination in the investigation “at the earliest practicable time," but will set a target date for completing the investigation within 45 days after institution of the investigation.

Cox Communications this week asked the Supreme Court to hear its challenge to a decision that its VoIP service infringes various Sprint patents.

Sprint claimed Cox was employing the patents in its voice service without permission.

RELATED: Sprint Sues Comcast, TWC, Cox And Cable One Over VoIP Patents

In a filing for a writ certiorari, Cox told the Supreme Court that the U.S. Court of Appeals for the Federal Circuit errored when it overturned a lower court decision that Cox had not violated the Sprint patents. That is the federal appeals court that specializes in patent and trademark cases.

Cox had claimed that Sprint's patents were "indefinite" and impermissibly asserting a claim over "every way of performing a function on a general-purpose computer."

Cox asserts that "It has long been “well understood” that a “patentee may not by claiming a patent on the result or function of a machine extend his patent to devices or mechanisms not described in the patent."

RELATED: Sprint Awarded $139.8M in TWC Patent Suit

The company says the Federal Circuit broke with Supreme Court precedent, the Federal Circuit's own precedents, and turns the "indefiniteness" standard on its head.

It says the Supremes need to take the case "to confirm that functionally claimed structures are indefinite—a question of immense practical importance, especially for computer- and software-implemented inventions."

Cox also points to a circuit split over whether "general purpose computers" provide "sufficient structure for software functions." The Federal Circuit found that "processing system" was a sufficiently "definite" structure.

Differing decisions from lower courts is one of the reasons the Supremes will agree to hear an appeal.

The OpenTV and Nagravision units of The Kudelski Group have filed a patent lawsuit against Shaw Communications that’s seeking to halt the rollout of BlueSky TV, a next-gen pay TV offering from Shaw that relies on Comcast’s X1 platform.

The lawsuit, filed against Shaw in the Federal Court of Canada, alleges that Shaw’s system infringes on six Canadian patents owned by Nagravision and OpenTV covering and related to pay TV purchasing, distribution, viewership monitoring and interactive television systems.

Per information posted at the court, the patents in question are:

-CA 2,378,692: Impulse purchase system for pay-television
-CA 2,270,723: Configurable monitoring of program viewership and usage of interactive applications 
-CA 2,333,716: Module manager for interactive television system
-CA 2,432,609: Data distribution system 
-CA 2,270,727: Reminder system for broadcast and non-broadcast events based on broadcast interactive applications
-CA 2,391,859: Method and device for filtering information

“The lawsuit seeks a preliminary injunction prohibiting deployment of Shaw’s recent release of ‘BlueSky TV,’ which is a licensed version of Comcast’s X1 platform,” Nagra and OpenTV said.

The Kudelski-owned companies are lobbing the lawsuit against Shaw just weeks after the MSO started to rollout BlueSky TV, a new pay TV offering that is powered by Comcast’s X1 platform that uses a new cloud-based interface and voice remotes and other advanced features.

Shaw, which initially licensed X1 for a mobile app called Free Range TV, launched BlueSky TV initially in Calgary in January, and expanded it to Vancouver last month.

RELATED: Shaw Launches ‘BlueSky TV,’ Powered by Comcast’s X1 Platform

Shaw and Comcast have been asked for comment.

UPDATE:  A Shaw spokesperson issued this statement: “We can confirm that a claim was served on Shaw last Friday, Feb 24 and Shaw has engaged counsel and is assessing the claim, but otherwise we have no comment at this time.”

RELATED: X1 Licensing Not a ‘Big Financial Mover’ for Comcast

Fellow Canadian cable operator, Rogers Communications, has also announced that it will tap X1 for a new IPTV service that’s expected to debut by early 2018. Cox Communications has also licensed X1 for a new version of its “Contour” video service, which has already given Cox’s video subscriber results a lift.

RELATED: Rogers to Tap Comcast’s X1 Platform for IPTV Shift

OpenTV, a video software and apps subsidiary of The Kudelski Group, said Monday (January 16) that it has filed a patent infringement suit against NFL Enterprises LLC in the U.S. District Court for the Eastern District of Texas.

The lawsuit alleges that the NFL is infringing on seven U.S. patents owned by OpenTV, and specifically goes after several streaming and interactive services, including NFL.com, NFL Network/NFL RedZone, NFL Now, NFL Game Pass, NFL Mobile, the NFL App, and NFL Fantasy Football.

Update: According to the complaint, Open TV alleges that NFLE directly and indirectly infringes on the following U.S. patents:

-7,996,861: “Flexible Interface for Secure Input of Pin Code.”

- 7,421,729: “Generation and Insertion of Indicators Using An Address Signal Applied To A Database.”

-7,028,327: “Using The Electronic Program Guide To Synchronize Interactivity With Broadcast Programs.”

- 7,950,033: “Utilization of Relational Metadata In A Television System.”

-7,055,169: “Supporting Common Interactive Television Functionality Through Presentation Engine Syntax.”

-7,020,888: “System And Method For Providing An Omnimedia Package.”

-6,233,736: “Media Online Service Access System and Method.”

Kudelski took control of OpenTV in late 2009, and sold OpenTV’s advanced advertising business unit to Imagine Communications in 2014.

The NFL lawsuit notwithstanding, Kudelski has been busy settling other patent-related lawsuits, including those with Apple, Yahoo and Verizon/AOL.

Netflix and TiVo, which merged with Rovi in September, said they’ve inked a string of deals tied to licensing, intellectual property and products.

RELATED: TiVo CEO: Rovi Deal Not a Patent Play

Among them is a product partnership in which TiVo will continue to integrate Netflix into its set-tops boxes distributed at retail and through a growing group of MVPDs.

A separate intellectual property agreement provides Netflix a license to the TiVo patent portfolios and a license to the Intellectual Ventures patent portfolio for over-the-top services. They said the agreement represents one of the first licenses granted under an exclusive partnership that Rovi and Intellectual Ventures announced earlier this year.

Prior to merging with TiVo, Rovi and Netflix had been battling in the courts over patent claims.  Last year, a California court moved to invalidate five Rovi patents and entered a judgement in favor of Netflix in the case. At the time, Rovi said it intended to appeal.

“The partnership between Netflix and TiVo dates back to our early days of streaming video,”  Bill Holmes, Netflix global head of business development, said in a statement. “Building on this history, the agreements provide consumers freedom to watch their favorite TV shows and movies whenever and wherever, with an integrated experience across more devices.”

“Our agreements with Netflix represent a major milestone for TiVo as we expand our offerings for the fast-growing OTT space, and further demonstrates our commitment to delivering innovative technologies to new and emerging markets,” added TiVo CEO Tom Carson.  “From products to patented technologies, TiVo is helping companies quickly adapt to a rapidly changing media industry and create beautiful user experiences that keep consumers connected to their favorite entertainment.”

TiVo’s patent infringement lawsuits against Comcast are moving ahead, but the company is still hopeful that it can get a deal done without having to take those cases to the bitter end.

RELATED: Rovi Sues Comcast and MSO’s Set-Top Suppliers

“Our approach has been to do our best to try to avoid litigation and to get a reasonable deal done,” TiVo president and CEO Tom Carson said Thursday on the company’s earnings call, pointing out that TiVo and Samsung have come to terms and will avoid a court showdown.

RELATED: TiVo, Samsung Bury The Hatchet

With a renewal with Dish Network (including Sling TV) completed done following the completion of the TiVo-Rovi merger in September, the maker of user interfaces and supplier of metadata services now has deals salted away with nine of the top 10 U.S. pay TV providers.

"Frankly I have a hard time seeing how Comcast doesn’t take a license,” Carson said. “I would hope that all of the deals we have now sends a message to Comcast that the industry I set in terms of what the rates are…We're very, very open to trying to come up with a creative solution with Comcast like we have with everybody else.”

Samir Armaly, TiVo’s VP, intellectual property and licensing, said the expectation that the International Trade Commission case will go to trial by mid-December, and the pending district case likely won’t reach that stage until mid-to-late 2018.

On the financial front, TiVo posted Q3 revenues of $153.1 million, up 33%  year-over-year, reflecting the recent closing of the merger and the Dish licensing renewal.  TiVo posted Q3 net income of $49.9 million, versus a year-ago net loss of $18.5 million.

Service provider revenue was $126 million, up from $94 million a year earlier. Service provider revenues represented 82% of all revenues, versus 16% from the consumer electronics market, and 2% “other.”

TiVo said it’s comfortable with its $100 million-plus synergy target from the merger, and expects to exit 2016 with over $40 million of run-rate cost synergies, putting it ahead of plan to achieve 65% of its target within 12 months of the closure of the Rovi-TiVo deal.

RELATED: Rovi Seals Deal for TiVo

While integration is a near-term focus, Carson said there’s a longer-term significant growth opportunity for the company as it looks to strike deals for 17 million homes on legacy iGuide and Passport EPGs to the higher-end and higher ARPU TiVo experience.

“This will take some time, but operators around the world are migrating toward IP or IP hybrid solutions,” he said, noting that a TiVo-branded platform mixes OTT with an operator’s VOD and linear TV offerings. 

TiVo and Samsung have called a truce in the form of a long-term, worldwide intellectual property license that will provide certain rights under TiVo’s patent portfolio’s for Samsung’s mobile, consumer electronics and set-top box businesses.

Financial terms weren’t announced, but as part of the agreement, TiVo and Samsung said they will seek an immediate stay of all pending litigation and patent challenges between the two companies and will seek dismissal of all claims based on “satisfaction of certain conditions in Q2 2016,” they said.

The agreement comes more than a year after TiVo filed a patent infringement suit against Samsung in Texas that centered on four patents that had been litigated previously by TiVo. 

It also arrives less than two months after Rovi completed its merger with TiVo. The combined company, which kept the TiVo name, is expected to discuss the Samsung agreement in more detail today during its Q3 earnings call.

Update: Speaking on the call, TiVo CEO Tom Carson said the length of the deal is greater than five years, and that Samsung will pay for licenses for some previously sold set-top boxes and CE devices. 

RELATED: Rovi Seals Deal for TiVo

“TiVo is pleased we were able to reach the terms of an agreement with Samsung, one of the world’s most valued brands, and we look forward continuing to work with Samsung to advance the consumer entertainment experience,” Carson said, in a statement. “We believe this agreement with Samsung demonstrates the ongoing relevance of our intellectual property well into the future, as well as in key markets such as mobile. The arrangement also exemplifies the synergistic opportunities created by Rovi’s acquisition of TiVo to deliver significant value to our customers.”

TiVo said it has renewed its product and intellectual property licensing deal with Panasonic.

The deal, which follows the recent merger of TiVo and Rovi (the combined company is keeping the TiVo brand), includes a multi-year extension of its products for the Japan market, including G-Guide, G-Guide HTML and G-Guide xD, as well as a multi-year worldwide license renewal to Rovi’s entertainment discovery patent portfolio. Financial terms were not disclosed.

RELATED: Rovi Seals Deal for TiVo

“Our continued collaboration with Panasonic further reinforces the need for technologies and solutions to power next-gen entertainment services while enhancing the overall user experience,”Michael Hawkey, senior vice president and general manager of user experience at TiVo, said in a statement. “Our innovative products help companies like Panasonic deliver seamless navigation experiences that help users find the content they want to watch no matter where they are or what device they are watching from.”

TiVo, which remains at odds with Comcast over licenses and patents, is scheduled to announce Q3 results on Thursday (Nov. 3).

Limelight Networks and Akamai Technologies have come to an agreement that puts a long-standing patent fight between the content delivery network rivals to bed.

Limelight announced this week that it has entered an agreement that settles the spat centering on the ‘703 patent (US. No. 6,108,703, describing a “Global hosting system”) and certain other patents in the form of a settlement that converts the $51 million judgment handed down last year into a $54 million license that will be paid in twelve equal quarterly installments starting August 1.

Both companies have also waived all rights to appeal as part of the agreement, and Akamai will release the $51 million letter of credit that bonded the judgment.

As a result, Limelight said it will regain access to the full amount in restricted cash supporting the letter of credit this month.

Dan Rayburn, EVP for StreamingMedia.com and principal analyst at Frost & Sullivan, tweeted that the agreement settles a protracted legal battle.

Limelight Networks will pay the $54M it owes to Akamai over the next 3 years. - 10 year patent suit finally over. https://t.co/IibFFbwQSF

— Dan Rayburn (@DanRayburn) August 1, 2016

However, the agreement excludes patents that Akamai asserted as counterclaims in the patent infringement case filed by Limelight against Akamai and XO Communications in the Eastern District of Virginia in late 2015 and does not otherwise impact Limelight’s rights in that case, Limelight said.

“We are pleased by the outcome of this agreement. It eliminates the continuing risk from the ‘703 patent and allows us to extend the $51 million payment over a three-year period at an attractive interest rate,” Robert Lento, chief executive officer of Limelight, said in a statement.  “This agreement, coupled with the series of financial and operational improvements, further enhances our confidence in Limelight’s value creation opportunity.”

Last month, Limelight posted a Q2 net loss of $54.9 million (53 cents per basic share) on revenues of $43.6 million, flat from $43.8 million in the year-ago quarter.

The Kudelski Group said it has entered into a comprehensive patent license agreement with Apple.

Financial terms were not disclosed, but the parties agreed to dismiss all pending patent litigation, Kudelski said.

Kudelski has been busy mending fences of late.

Kudelski and Yahoo, whose operating business is being acquired by Verizon, settled their patent squabble in May.

The Kudelski Group’s  OpenTV and Nagra France SAS subsidiaries filed a patent infringement suit against Verizon Communications and its AOL division in late 2015 over claims that they are infringing on a batch of U.S. patents tied to streaming video services. In February, Kudelski and Verizon entered a multi-year patent cross licensing agreement that dismissed all pending patent litigation that related to Verizon’s Fios TV service, video advertising capabilities, and OTT streaming services, including AOL.

Shares in TiVo were up almost 6% in after-hours trading Thursday after Rovi announced it had rescheduled its earnings call from Thursday afternoon to Friday morning.

Investors apparently believe that the delay could mean that TiVo and Rovi are close to tying the knot.  The New York Times reported last month that the companies were in “advanced negotiations” about a merger. Bloomberg reported on April 14 that Rovi and TiVo were quibbling over the longer-term value of their patent portfolios and other intellectual property, adding then that no deal was imminent  and that a proposed merger could still fall apart.

Rovi was originally scheduled to post Q1 earnings and hold a call with reporters an analyst Thursday afternoon; the call is now slated for Friday (April 29) at 8 a.m. ET.  Rovi did not announce a reason for the delay.

UpRamp, an accelerator initiative introduced by CableLabs in February that's billed as an “executive MBA for startups,” said it has opened the R&D organization’s patents to program participants.

“Every company that enters the Fiterator will be granted a non-exclusive, royalty-free license to all CableLabs patents, with annual mutual renewal option,” Scott Brown, managing director of UpRamp, and head of technology outreach at CableLabs, explained in this blog post.

CableLabs lists its granted patents here. Patents granted to CableLabs in 2016 include those describing a “Method and system of advertising;” “Offer Inclusion For Over The Top (OTT) Content;” and “Multiple-Input Multiple-Output (MIMO) Communication System.”

As noted on the UpRamp site, Fiterator is a next-gen startup accelerator in the form of a three-month, non-resident program that “combines C-level mentorship from the industry with over $120k in available financing.”

“Unlike traditional startup accelerators,” it adds, “the outcome of your time in the Fiterator is actual deals & references from Fortune 1000 customers.”

Providing access to CableLabs’s intellectual property, Brown wrote, “gives any graduate of the Fiterator ‘freedom to operate’ within the scope of these highly relevant technologies. It doesn’t give you the right to go out and act like a patent troll, but it does give you IP protections to operate within some of these interesting technology areas.”

Applications for UpRamp’s Fiterator program are open through May 13.

In a rare legal setback for TiVo, a New York federal judge ruled this week that three patents TiVo Research asserted against TNS Media Research, including TiVo’s “holy grail” targeted-ad patent, are invalid, Law360 reported.

Per the report, U.S. District Judge Shira A. Scheindlin found that they were invalid under the U.S. Supreme Court’s Alice standard, which takes aim at abstract ideas that aren’t eligible for patent protection.

"We are reviewing our options with respect to the patent ruling, but the other important claims in the suit, including trade secret theft and breach of fiduciary duty remain unaffected by this ruling,” TiVo said in a statement.

Per the report, the TiVo patents at issue are No. 7,729,940 (Analyzing return on investment of advertising campaigns by matching multiple data sources); 8,000,993 (Using consumer purchase behavior for television targeting); and 8,112,301 (Using consumer purchase behavior for television targeting).

Despite this apparent legal setback, TiVo, historically, has had success defending its intellectual property. TiVo, which filed a suit against Samsung last fall focused on four patents, has previously settled other disputes with Motorola Mobility/Google, Cisco Systems, Time Warner Cable, Dish Network, AT&T and Verizon.

Rovi shares soared more than 15% Friday after the company posted Q4 results that beat analyst expectations.

Rovi, a key maker of interactive guide technology and a major supplier of metadata, pulled down  Q4 net income of $26.3 million (65 cents per share), on revenues of $149.5 million, up 11% on a year-over-year basis. Analysts were expecting earnings of 40 cents.

Rovi attributed the rise in revenue in part to catch-up payments from AT&T and Sony. Rovi posted service provider revenues of $124 million in Q4, up 18%.

On Thursday’s earnings call, Rovi CEO Tom Carson said the strong quarter was “led by licensing,” noting it had renewed its intellectual property deal with AT&T (which acquired DirecTV last year), Sky, Europe’s largest pay TV operator, and inked a new deal with Canadian operator Shaw Communications. The Shaw deal, he said, includes its new Free Range TV mobile video app, which is powered by Comcast’s X1 platform.

Rovi has also salted away a multi-year license with Charter Communications, which is in the process of acquiring Time Warner Cable and Bright House Networks.

“Assuming the Time Warner Cable acquisition closes, we will have two of the big four U.S. service providers under new contracts,” Carson said.

Carson said Rovi is working to get renewals done with the other two – Comcast and Dish Network.

But it’s not counting those chickens yet. Rovi forecasted 2016 revenues of $490 million to $520 million, and earnings of $1.35 to $1.65 per share. “We are excluding any revenue associated with renewing these two deals from our estimates, including any advertising or TV Everywhere revenues from Comcast after Q1,” Carson said.

In addition to getting those renewals done, Rovi said another big focus this year involves Fan TV, the video navigation platform Rovi acquired in 2014for $12 million.

Though IP-connected Fan TV devices are no longer part of Rovi’s game plan (Time Warner Cable stopped selling those last fall), Rovi has since evolved Fan TV into a modular entertainment discovery platform for service providers and developers, offering it via APIs, apps and as an operating system for set-top boxes.

Carson said a “large European service provider agreed to use the Fan TV platform,” but won’t be saying more until after that customer announces their product and service plan that will rely on Fan TV.

Rovi said it expects to announce new deals for Fan TV, both as a full solution, and as an element that complements other discovery services during the course of the year.

The Kudelski Group said its OpenTV and Nagra France SAS subsidiaries have filed a patent infringement suit against Verizon Communications and its AOL division over claims that they are infringing on a batch of U.S. patents tied to streaming video services.

The suit, filed in the United States District Court for the Eastern District of Texas, alleges that Verizon and AOL are infringe seven patents owned by OpenTV and Nagra France, and identify a range of products and services, including FiOS TV and its authenticated TV Everywhere services, Redbox Instant by Verizon  (an SVOD service that was shut down in October 2014), Go90, Verizon’s new mobile-first OTT video offering, AOL’s Spot On advertising and streaming video services. Verizon closed its acquisition of AOL on June 23, 2015. 

Update: Verizon said it does not comment on pending litigation. 

Kudelski took control of OpenTV, a company that also specializes in set-top middleware and applications, in late 2009, but sold OpenTV’s advanced advertising business unit to Imagine Communications about a year ago.

The Kudelski Group, headquartered in Switzerland, said it currently holds over 4,500 issued and pending patents worldwide. 

Rovi Corp. said it has inked an extension of its existing interactive program guide license and distribution agreement and patent licensing pact with Time Warner Cable.

Financial terms and the length of the extension were not announced, but the deal comes amid Charter Communications’ proposed merger with TWC and Bright House Networks

Rovi announced it has struck a multi-year year deal with Charter in April, which came to be as Rovi looked to lock up new licensing deals with its so-called “big-four” -- Comcast, Time Warner Cable, DirecTV (now part of AT&T) and Dish Network.

“We are pleased to continue our business relationship with Time Warner Cable,” Tom Carson, Rovi’s president and chief executive officer, said in a statement.

Rovi shares were up 8 cents (0.81%) to $9.95 each in Monday morning trading. 

TiVo rekindled its litigation strategy Tuesday by filing a patent infringement suit against Samsung in the Eastern District of Texas.

TiVo, which announced the suit as it announced fiscal second quarter results, said the complaint centers on four patents, including two that have been litigated previously (its ‘389 Time Warner patent and ‘195 Trick Play patent), as well as two patents that are related to the '389 patent “but have expiration dates further into the future.”

“Today's action should help address one of the questions regarding the value, breadth, and applicability of TiVo's IP portfolio post the 2018 expiration of the '389 patent,” TiVo president and CEO Tom Rogers said, in a statement.

Update: In an interview, Rogers said the two latter patents, which have not been litigated, have a patent license that extends to 2023. He said TiVo’s core patent portfolio, of which there are hundreds, have an average duration of 13 years. 

TiVo’s legal assault on Samsung, a provider of set-tops to U.S. operators such as Time Warner Cable and Cablevision Systems and a top maker  of video-capable tablets and smartphones, comes after TiVo had successfully settled several other lawsuits. In June 2013, TiVo announced it would get an upfront lump-sum payment of $490 million to settle pending patent litigation with Motorola Mobility (then part of Google) and Cisco Systems, while also settling its suit against Time Warner Cable. TiVo had previously raked in more than $1 billion from past settlements with Dish Network, AT&T and Verizon Communications.

“People know that we have quite a track record when it comes to our litigation and they also know that we don’t pursue these things unless we believe there is significant damage opportunity," Rogers said. 

On the subscriber front, TiVo improved its retail stance while continuing to build its base through MSO partnerships.

TiVo added 37,000 TiVo-owned gross adds in the quarter, up 37% year-on-year, while net additions dropped 3,000, narrowed from a year-ago loss of 2,000 net additions. TiVo also added 284,000 subs through MVPD/MSO partnerships, about what it added in the quarter in the year-ago period.

TiVo ended its fiscal Q2 with 6.03 million total subs (941,000 TiVo-owned, and 5.09 million through MSO partners).

Rogers chalked up TiVo’s latest retail momentum on its whole-home platform, which includes the TiVo Mini. Also playing a part is the growth of streaming services that enable some consumers to build their own bundles in a way they hadn’t necessarily had before, he said. 

Rogers wouldn't shed much light on Bolt, the brand for TiVo's next-gen platform, but acknowledged that there's something new in the works. “I won’t deny that we're going to be introducing a new retail product over the course of the quarter at some point," he said. 

On the financial side, TiVo pulled in service and software and technology revenues of $99.1 million, above it’s guided range of $94 million to $97 million, and improving on $86.6 million in the year-ago quarter. Revenues at Digitalsmiths, TiVo's video search and recommendation unit acquired in 2014, grew 65%.

Net income was $8.3 million, compared to guidance of $7 million to $10 million, but down from $9.3 million in the same quarter last year, which did not include $3.5 million consisting of $1.7 million of non-cash amortization and transfer tax expenses from TiVo’s recent acquisition of Cubiware and tax adjusted interest of $1.8 million from its 2% convertible notes issued in September 2014. Excluding those items, Non-GAAP net income grew 28% to $11.9 million compared to the year ago quarter, TiVo said. 

A judge with the U.S. District Court for the District of Delaware has voided a $27.6 million verdict that found that Comcast had infringed on two Sprint fiber optic patents, holding that Sprint presented the jury an “incorrect” infringement theory. Comcast will be getting a new trial as a result. 

U.S. District Judge Richard G. Andrews granted Comcast's bid for judgment on Friday, Aug. 7., a decision that comes about six months after a Delaware federal jury found that Comcast had infringed on two Sprint patents tied to fiber optic data delivery:  U.S. No. 5,742,605 and U.S. No. 6,108,339, which describe synchronous optical network using a ring architecture -- essentially SONET systems for use in large geographic areas that utilize “self-healing” rings that are interconnected.   

“Sprint presented an incorrect infringement theory to the jury, which may have ‘unfairly influenced the verdict,’" the judge wrote, according to court documents obtained by Multichannel News.  "Therefore, allowing the verdict to stand would result in ‘a miscarriage of justice.’ It follows that Comcast is entitled to a new trial on the issue of infringement.”

Comcast filed a motion for post-trial relief on March 6, 2015. Sprint filed the original complaint on Aug. 28, 2012.

“In sum, Sprint's infringement claims fail as a matter of law in all seventy-nine accused networks,” the judge wrote. “Seventy-three of the accused networks share SONET platforms that perform all the functions of a ‘ring terminal,’ and thus do not have ‘unique ring terminals.’”

The judge also ruled that the two accused Seattle networks do not have “direct" or "DCS" connections, and the two networks could only be connected by a "common switch fabric" in a shared SONET platform.

“Thus, the two accused Seattle networks either lack a ‘plurality of connections’ and ‘connection system,’ or do not have ‘unique ring terminals,’” the judge wrote in the August 7 opinion.  “Sprint failed to present evidence that the DCS connections between the four accused networks in Portland and San Francisco are actually ‘operational to provide interconnectivity’ or ‘configured to groom SO NET traffic.’ Thus, a reasonable jury could not have found infringement for any of the seventy-nine accuse networks.”

Sprint, the judge noted, argued that Comcast waived its right to seek a new trial by failing to object to Sprint's statements at trial, but said Comcast countered that it had objected at trial to Sprint's position that the Court's claim constructions do not require "ring terminals" to connect in both directions around a ring.

Sprint has been asked to comment on the judge’s opinion in the case.

Update: Sprint declined to comment on the judge's opinion. 

Cablevision Systems has landed a U.S. patent that covers audience measurement and analytics at the set-top box level.

The patent – U.S. No.  9,071,370 – is titled “System and Method for Set Top Box Viewing Data” and covers “critical aspects” of the cable operator’s system for capturing, synthesizing, and running analytics against viewing data. Leveraging granular data in a secure, anonymized and privacy compliant manner supports Cablevision Media Sales clients as they seek to optimize media campaigns and provide actionable results, the MSO noted.

Cablevision filed for the patent on Aug. 3, 2010. It was granted on June 30, 2015.

“Cablevision is firmly committed to addressing clients’ need to reach audiences across multiple platforms with data-driven and measureable solutions,” Ben Tatta, president of Cablevision Media Sales, said in a statement. “This new patent further demonstrates our commitment to developing census-based measurement and analytics that serve the needs of programmers and advertisers. It is a result of more than five years of commitment to census-level measurement and provides the foundation to work towards scaling these capabilities as the industry eyes broader deployment.”

For more about Cablevision’s use of and strategy behind census- and impression-based viewing measurement, please see this recent Q&A (subscription required) with Tatta.

Rovi shares were down more than 16% Thursday morning after a California court moved on Wednesday (July 15) to invalidate five Rovi patents and entered a judgement in favor of Netflix in the case.

Rovi intends to appeal.

“While we are pleased that the Court sided with Rovi on the key claim construction issues, we are disappointed in, and strongly disagree with, the Court’s decision finding the five patents invalid and plan to appeal that decision,” Samir Armaly, Rovi's EVP of intellectual property and licensing, said in a statement.

Update: Netflix issued this statement: "We are gratified by the Court’s judgment, which confirmed that Rovi’s patents are so broad and abstract as to be invalid."

Rovi and Netflix have been battling in the Northern District Court in Oakland even though the U.S. International Trade Commission, in November 2013, affirmed an earlier rulingthat Netflix’s streaming software did not infringe on Rovi patents tied to IPG technology.

Rovi noted that Judge Phyllis J. Hamilton found that the patents were invalid on the ground that they are not directed to patentable subject matter based on the Supreme Court’s 2014 ruling in Alice Corp. Pty. Ltd. v. CLS Bank International.

In a statement, Armaly pointed out that Netflix’s litigation with Rovi was filed in 2011, more than two years before the Alice ruling.

“We are committed to enforcing our intellectual property against Netflix until the necessary licenses are in place,” he said. “As we do so, we will be selecting patents from our diverse patent portfolio with the benefit of having the Alice decision and its reasoning factored into that patent selection.”

Rovi also said Judge Hamilton also issued a claim construction ruling in the case in which the Court construed the nine disputed claim terms in the case, but only adopted Netflix’s proposed construction of a single term. The court, Rovi, added, also rejected attempts by Netflix to limit the scope of the patents to set-top box implementations.

Rovi, Amraly added, has been successful in licensing its technology to other OTT providers, including Apple, Google and Hulu, “and we remain confident that Netflix requires a similar license.”

Rovi recently renewed its deal with Charter Communications, and is in discussions to do the same with its so-called “big four” -- Comcast, Time Warner Cable, DirecTV and Dish Network.

Rovi shares were down $2.85 (16.25%) to $14.69 each in mid-day trading Thursday.

Offering another hint about its evolving mobile voice strategy, Comcast has recently locked up a patent that describes a method and a system that supports re-establishing a dropped call or communication.

The patent (No. 9,060,258 -- “Callback tokens for dropped calls), spotted by The Donohue Report, was filed on June 4, 2013, and issued on June 16, 2015. Comcast principal engineer Ross Gilson is listed as the inventor.

“Experiencing too many dropped communications is often one of the most common customer complaints received by service providers,” the patent notes in the description of the problem it's trying to solve. “Service providers have attempted to address the complaint in various ways, including expansion of their home network coverage, increased cell capacity, and offering refunds for individual dropped calls.”

The patent goes on to describe a token-based system that’s used to re-established dropped calls using in-band or out-of-band signaling. “If the call or communication drops, the terminal possessing the token then initiates communication to the other terminals,” the patent filing explains. “In addition, a plurality of tokens may be used when there are more than two terminals in a call. The terminals may be partitioned into groups, where one of the terminals in each group possesses a token."

The patent comes to light as speculation continues to swirl about Comcast’s future mobile services strategy, and whether that will include a so-called “WiFi-first” approach that will prefer WiFi, when available, and fall back to a cellular connection when it isn’t.

Through a mix of deployments in public and business locations and in home-side routers, Comcast’s WiFi network now spans more than 8.6 million hotspots. Comcast has been using them primarily as a free perk to its cable modem subs. Comcast also has MVNO deals in place with  Sprint and Verizon Wireless, but has yet to activate them.

“We’re still working on our wireless strategy and how that will manifest itself,” Neil Smit, president and CEO of Comcast Cable, said last month on the company’s first quarter earnings call.

Interactive program guide vendor and metadata supplier Rovi Corp. said it was victorious in an infringement proceeding in Italy initiated by Card Mania and Italvideo.

Those two CE companies had alleged that the Italian portions of two European Rovi patents (EP 0969662 and EP 1377049) are invalid and not infringed, while Rovi counterclaimed the exact opposite.

Rovi said the Court of Turin in Italy issued its decision in May that Rovi is entitled to a total combined judgment of approximately $1 million, noting that the court had previously found the asserted patents valid and infringed by Card Mania and Italvideo.

“We’re pleased that the Italian Court upheld these two patents, found them infringed and awarded Rovi a substantial damages award, demonstrating the strength, relevance and value of Rovi’s patents,” said Samir Armaly, executive vice president of intellectual property and licensing, Rovi, in a statement. “These are only two patents in our larger portfolio. Rovi has a well-established licensing program with many of the consumer electronics companies in Italy and throughout Europe. We look forward to growing our licensing program in this market.”

In the U.S., Rovi is still in a battle with Netflix in a case at the Northern District Court in Oakland that’s being heard after the U.S. International Trade Commission, in November 2013, affirmed an earlier ruling that Netflix’s streaming software did not infringe on Rovi patents tied to IPG technology.

Activist investor Engaged Capital was successful in winning two board seats at video software and interactive guide specialist Rovi, ousting Jim O’Shaughnessy and board chairman Andrew Ludwick, according to preliminary voting info provided by Rovi’s proxy solicitor.

In their place, Rovi stockholders elected Raghavendra Rau, most recently the CEO of SeaChange International, and Glenn Welling, the founder and chief investment officer of Engaged Capital.

Engaged Capital, which has been unhappy with Rovi’s financial performance and strategy, had also originally put forth two other candidates for board seats at Rovi: David Lockwood, now CEO and president of EnergySolutions and a previous director of BigBand Networks (now part of Arris), and Philip A. Vachon, founder and a principal owner of IPMG AG. 

Rovi said Wednesday (May 13) that, per the company’s bylaws, Tom Carson,  Rovi’s president and CEO, will assume the role of interim chairman of the board.

In addition to Carson, Rovi stockholders also re-elected Alan L. Earhart; N. Steven Lucas; James E. Meyer; and Ruthann Quindlen. 

“We thank our stockholders for their efforts and consideration in re-electing five of our directors, and the continued confidence they have expressed in Rovi’s Board and strategy,” Carson said, in a statement. “We also value insights and feedback we have received from our stockholders over the past several weeks.  We look forward to welcoming Glenn and Raghu to the Board, once the vote has been certified, and to working with them constructively to build value for Rovi stockholders over the long term.”

In addition to thanking Ludwick and O’Shaughnessy for their service to Rovi, Carson said “Rovi has extremely exciting opportunities ahead, and we look forward to building on our leading IP portfolio and next-generation suite of products to deliver significant growth for years to come.”

Engaged Capital owns 550,000 shares of Rovi common stock.

“Our nominees will contribute fresh, independent, shareholder perspective to the boardroom, and bring extensive experience in developing and implementing strategies that increase shareholder value,” Welling said, in a statement. “Engaged Capital believes that Rovi has the potential to deliver significant value to shareholders. While we would have preferred to avoid a protracted proxy contest, we believe that this process provided shareholders with a forum to express an unequivocal preference for change.”

Before the vote, Rovi had hired Credit Suisse to help it defend against actions being led by Engaged, Reuters reported. Reuters reported in February that Rovi has received interested from private equity firms that have focused on a possible sale of all of Rovi or portions of the company, but said it was not yet clear whether Rovi was open to a sale.  

aioTV, a Denver-based maker of video software and HDMI “pass-through” boxes, said it has scored a patent for metadata normalization and video playback, elements that can help MVPDs and other providers offer a blend of linear, on-demand and OTT video.

The patent (U.S. No. 9,027,065) describes a “Method and system for creating video channels for delivery of content from multiple platforms,” was filed on March 18, 2014, and issued on May 5, 2015. 

“The system includes a package generation module by which a service provider may define a package of both traditional and OTT channels to offer to subscribers in a unified programming interface,” the patent filing notes. “When a user uses the interface to select a set of video channels, the system compiles the set of the video channels in a subscriber package of both television and OTT channels.”

According to Mike Earle, aioTV’s CEO, MVPDs are struggling with the massive amount of metadata coming at them from an increasing number of sources.

“This patent and the associated methods in our metadata normalization engine are key to solving an industry wide problem that has immediate attention on it all the way to the C suites in these companies,” he said.

Last fall, aioTV and Midcontinent Communications  announced they were working on a “strategic project” that will enable the MSO to pair traditional live TV services with a new UI that will also support over-the-top video applications and services. Under that plan, Midcontinent will link legacy,  QAM-only set-tops (many from U.K.-based supplier Pace plc) to aioTV’s Android-powered, IP-connected “PassBox” via an HDMI cable. 

The Kudelski Group said it has inked a multi-year patent license agreement with The Walt Disney Company that covers Kudelski’s patent portfolio, “subject to certain limitations.”

They did not disclose the financial terms of the agreement.

"The Kudelski Group continues to invest heavily in developing technology and intellectual property that help enable industry leaders like The Walt Disney Company to deliver their popular, world-class video and entertainment platforms to the market through streaming video properties, such as ESPN.com and ABC.com,” said Joe Chernesky, Kudelski’s SVP of intellectual property and innovation, in a statement. “We’re very pleased to enter into this agreement with The Walt Disney Company, a market leader in video distribution. This agreement further underpins the relevance of our patent portfolio in an expanding technology footprint.”

Switzerland-based Kudelski Group said it holds more than 4,500 issued and pending patents worldwide.

Of recent note, Kudelski and Netflix announced in January that they had settled a patent-related dispute.