Cisco Systems this week filed a federal lawsuit against TiVo, seeking to void four of the DVR maker's patents -- including the infamous "Time Warp" patent that Dish Network was found to have infringed -- opening a new front in the litigation battle over cable set-tops.
TiVo declined to comment.
Separately, TiVo is suing two of Cisco's big service-provider customers -- Verizon Communications and Time Warner Cable -- alleging patent infringement, and has legal action pending against Motorola Mobility as well.
"Cisco is focused on its work with service providers to reinvent the television experience," the networking giant said in a statement. "Together we are transforming how consumers engage with video -- bridging entertainment, social media, communications and mobility together through IP technologies. Cisco's suit against TiVo is an effort to defend our DVR products and our customers against TiVo's aggressive strategy of wrongfully asserting its patent claims."
Cisco manufactures and supplies TiVo-based DVRs to the U.K.'s Virgin Media and Spanish cable operator Ono.
In its lawsuit, Cisco said that, "In connection with those transactions, Cisco and TiVo have had licensing discussions where TiVo indicated that it did not want to broadly license TiVo technology to Cisco because providing any such license to a DVR manufacturer such as Cisco would interfere with TiVo's ability to continue to assert TiVo's patents in individual lawsuits against Cisco's customers, the service providers."
Cisco is seeking a declaratory judgment of non-infringement on four TiVo-owned patents: U.S. Patent Numbers 6,233,389 (the "Time Warp" patent at issue in TiVo's lawsuits against Dish, AT&T, Verizon, TWC and Motorola); 7,529,465 ("System for Time Shifting Multimedia Content Streams"); 7,493,015 ("Automatic Playback Overshoot Correction System"); and 6,792,195 ("Method And Apparatus Implementing Random Access And Time-Based Functions On A Continuous Stream Of Formatted Digital Data").
"Absent a declaration of invalidity and/or non-infringement, TiVo will continue to wrongfully allege that Cisco DVRs and Cisco's customers infringe the TiVo patents, and thereby cause Cisco irreparable injury and damage," Cisco said in its lawsuit.
Cisco filed suit May 30 in the U.S. District Court for the Northern District of California. The case is docket no. 12-02766. Cisco is represented by law firm Weil, Gotshal & Manges LLP.
TiVo, in announcing earnings Wednesday, said it expects higher legal costs in the second half of its fiscal 2013 because of the impending patent-infringement trial against Verizon and the lawsuits against Time Warner Cable and Motorola.
In May 2011, TiVo reached a landmark $500 million settlement with Dish after seven years of litigation. That's on top of $105 million Dish and EchoStar paid to TiVo up to that point. The patent at issue was TiVo's Time Warp patent, U.S. Patent No. 6,233,389, which covers the simultaneous playback and recording of TV programming.
This past March, TiVo and Microsoft agreed to drop their patent-infringement lawsuits against each other. That came after the DVR pioneer reached a settlement and patent-licensing deal with AT&T, under which the telco will pay a minimum of $215 million -- and as much as $300 million -- through June 2018.
TiVo has distribution deals with several pay TV providers, including DirecTV, Charter Communications, Suddenlink Communications, Virgin Media and RCN.
TiVo also has marketing agreements with Comcast and Cox Communications, which plan to provide video-on-demand services to cable subscribers using Premiere DVRs. Comcast this spring launched the VOD feature for TiVo DVR users in San Francisco.
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