TiVo Patent Nixed in Comcast’s Patent Office Challenge

  • Combination of earlier inventions made patent obvious
  • Comcast has filed over three dozen petitions challenging TiVo patents

Comcast Corp. has convinced the U.S. Patent and Trademark Office to invalidate a TiVo Corp. patent on technology that lets viewers search television content.

The office’s Patent Trial and Appeal Board held July 25 that TiVo’s patent is invalid and obvious in light of prior inventions. The patent covers technology to process a user search through text inputs in television guides.

The ruling is a win for Comcast, which has filed more than three dozen petitions challenging patents owned by Tivo’s Rovi and Veveo units. Comcast still faces a district court infringement lawsuit by TiVo involving the patent and other patented technologies.

The patent dispute arose after Rovi, which merged with TiVo in 2016, and Comcast were unable to renew a patent licensing agreement for television set-top box technology. Comcast had asked for an inter partes review, which is an administrative challenge, against Veveo’s U.S. Patent No. 8,433,696 and several others after being sued for infringement in the U.S. District Court for the Southern District of New York in 2016.

That case was stayed in October last year pending rulings on Comcast’s patent board challenges. Proceedings in the case, however, are ongoing on another TiVo patent that was also challenged by Comcast in a petition that the board refused to examine.

The board agreed with Comcast’s argument that the ‘696 patent’s claims were unpatentable, as they were covered by a combination of three prior inventions.

TiVo’s district court infringement lawsuit seeking damages from Comcast isn’t affected by the U.S. patent office’s decision invalidating U.S. Patent ‘696, Bloomberg Intelligence analyst Matt Larson said. “The Comcast victory does marginally reduce TiVo’s leverage in settlement talks by lowering exposure to the patent in subsequent litigation,” he said.

TiVo and Comcast didn’t immediately respond to Bloomberg Law requests for comment.

The case is: Comcast Cable Communications LLC v. Veveo Inc., P.T.A.B., IPR2017-00715, 7/25/18

To contact the reporter on this story: Malathi Nayak in Washington at mnayak@bloomberglaw.com

To contact the editor responsible for this story: Rebecca Baker at rbaker@bloomberglaw.com