TiVo Loses Bid to Trim Motorola Suit over DVR Patents

Lisa Shuchman

The Litigation Daily

01-29-2013

TiVo Inc. and its lawyers at Irell & Manella and McKool Smith may be on a billion-dollar roll in patent litigation over digital video recording technology, but TiVo hasn't yet settled with all its adversaries in the DVR wars. On Friday, TiVo lost a bid to deflect patent infringement claims by Motorola Mobility Inc. and its lawyers at DLA Piper, when a judge in East Texas refused to throw out part of Motorola's two-year-old suit.

U.S. District Court Judge Rodney Gilstrap in Marshall, Tx., denied TiVo's motion to dismiss and strike four causes of action in the complaint, ruling that TiVo's arguments that Motorola's claims are defective and time-barred are "without merit."

TiVo asked Gilstrap to trim the case in May, targeting Motorola's claims to correct patent inventorship and ownership and for unjust enrichment and patent infringement. But the judge found that Motorola had raised issues related to inventorship and ownership that the court could adjudicate, and he concluded that TiVo had failed to demonstrate "beyond doubt" that Motorola’s claims fell outside the statute of limitations.

Gilstrap did leave TiVo room, however, to continue to argue the suit should be time-barred. "Should discovery produce evidence otherwise," he wrote, "a motion for summary judgment may be appropriate in the future, and nothing about the Court's instant ruling forecloses that prospect."

Motorola filed the suit in February 2011, alleging that TiVo infringes several patents related to DVRs, including some invented by a group of engineers whose company was later bought by a Motorola subsidiary.

In 1995, Motorola claims, the inventors of these patents, who had a company called Imedia, met with Geoff Yang, a representative of a Silicon Valley venture capital firm seeking investment in their company. Imedia ultimately selected a different funding source. Yang, the company claims, later led an investment that purchased 2 million shares of TiVo stock, became a TiVo director, and communicated the Imedia inventors' conception of the DVR to TiVo, which ultimately applied for and received patents that use the same technology that the Imedia engineers invented earlier.

In March, TiVo countersued Motorola and Time Warner Cable, claiming their set-top boxes infringed TiVo's patents related to DVR functionality. This created complications for Google Inc., which had purchased Motorola Mobility and was looking for a buyer for its set-top box division that supplies cable television providers with set-top boxes and other equipment. In December, Google announced it is has sold the division, but as part of the deal, it indemnified the buyer against potential losses in the Motorola-TiVo patent fight.

TiVo has been on a winning streak lately in litigation related to its DVR patents. It won $500 million from Dish Network and more than $250 million from Verizon. In addition, AT&T, which TiVo sued at the same time it sued Verizon, agreed to pay $215 million in a settlement. Verizon and AT&T both settled right before they were scheduled to go to trial.

Neither Morgan Chu, Andrei Iancu, nor anyone else on the TiVo team from Irell & Manella were available for comment. Motorola counsel John Allcock of DLA Piper didn't immediately return a call seeking comment.