I guess with the Microsoft fight off their plate TiVo’s legal eagles had room for a new bout, as they’ve just filed a counter suit against Motorola – and Motorola’s customer, Time Warner Cable. Just over a year ago, in February 2011, Motorola filed a suit against TiVo claiming patent infringement. That suit was largely seen as retaliation for TiVo’s patent infringement suit against Verizon, filed way back in August 2009. The Verizon FiOS systems in question in that suit are largely supplied by Motorola.
So TiVo sued Verizon. Then Motorola sued TiVo in apparent retaliation (much like Microsoft sued TiVo after TiVo sued AT&T). Now TiVo is filing a counter suit against Motorola (as they did against Microsoft), and to top it off they’ve included Motorola customer Time Warner Cable in the new suit. There’s some high stakes legal poker going on here.
Tongue out of cheek, the timing is primarily due to the stay on the Motorola suit, which was in place while the AT&T & Microsoft cases proceeded as they involved the same patents, being lifted. As long as the case was stayed TiVo was under no pressure to file a counter suit, but not things are moving forward. TiVo announced the suit in a simple SEC filing:
On March 26, 2012, the Company filed an answer and amended counterclaims in response to a patent infringement suit that Motorola initiated against the Company in the Eastern District of Texas in 2011 that was stayed until earlier this year. In its response, the Company alleged counterclaims against Motorola and Time Warner Cable, one of Motorola’s customers, for infringing U.S. Patent Nos. 6,233,389, 7,529,465, and 6,792,195 owned by TiVo.
The full court filing has been posted on Scribd (thanks to Sam Biller):
TiVo files answers and amended counterclaims against Motorola & Time Warner Cable
The patents involved are the same core patents behind the EchoStar/DISH Network and AT&T settlements, as well as the ongoing case against FiOS. TiVo’s been successful so far, 2 for 2, so that’s a good sign. Time Warner Cable is the only remaining top five MVPD in the US that TiVo doesn’t have a business agreement or a legal settlement from. TiVo has business agreements with the top two, Comcast and DirecTV, and fifth place Cox Communications. Third place DISH Network settled with TiVo. That leaves TWC in fourth place, and many investors have wondered when TiVo would take some form of action against TWC if they didn’t come to an agreement.
These legal fights tend to drag on for years, so I’m not going to hold my breath waiting on any outcome just yet.