TiVo Inc. announced a $250 million settlement with Verizon Communications Inc. on Monday, pushing Irell & Manella’s recent recovery for the company past the $1 billion mark. The same day, Verizon agreed to pay more than $260 million to end to a costly patent fight with ActiveVideo Networks Inc. and its lawyers at Morgan Lewis & Bockius.
Verizon’s settlement with TiVo, which calls for a $100 million upfront payment followed by quarterly installments until 2018, resolves a patent infringement suit TiVo brought over DVR technology. Irell & Manella partners Andrei Iancu and Morgan Chu led the way for TiVo, along with McKool Smith and Robins Kaplan Miller & Ciresi. Kellogg Huber Hansen Todd Evans & Figel represents Verizon. The case was scheduled to go to trial in October in federal district court in Marshall, Texas.
Verizon is just the latest TV provider to settle claims that it infringes TiVo’s “time warp” patent, which covers technology that lets users record TV programs while watching another program at the same time. In 2011, Echostar and DISH Network agreed to pay a combined $500 million to end a roller-coaster case Irell brought for TiVo in 2004, as we reported here. And in January, AT&T agreed to pay $215 to resolve similar claims. The AT&T deal, like Monday’s settlement with Verizon, also came right before the start of an East Texas trial.
TiVo also has pending patent cases in East Texas against Motorola Mobility LLC and Cisco Systems over their set-top boxes. The Motorola case is scheduled for trial in 2013. Chu and Iancu are representing TiVo in both cases.
“The settlement is a fabulous result for TiVo,” Iancu told us. “It once again validates TiVo’s revolutionary patents and shows how fundamental TiVo’s technology is.”
Also on Monday, fresh on the heels of TiVo’s announcement, ActiveVideo announced that it had reached its own patent settlement with Verizon. As we reported last month, on Aug. 24 the U.S. Court of Appeals for the Federal Circuit affirmed that Verizon owes ActiveVideo $260 million for infringing three of its patents. Back in May ActiveVideo’s lawyers at Morgan Lewis urged a federal judge in Alexandria, Va., to impose additional damages on the grounds that Verizon failed to meet an eight-month deadline for designing around the infringed patents. Rather than wait for a potentially costly ruling on the design-around issue, Verizon has agreed to pay the $260 million judgment as well as “an additional unspecified amount of money” to end the case. Kellogg Huber and Simpson Thacher & Bartlett represent Verizon.
Morgan Lewis partner Daniel Johnson Jr, who represents ActiveVideo, told us his client was pleased with the settlement but declined to comment further.