TiVo Inc. and its lawyers at Irell & Manella and McKool Smith have secured yet another settlement in their patent litigation campaign against the digital television industry. The latest TiVo foe to cut a deal is Google Inc.’s Motorola Mobility unit, which faced a jury trial next week in U.S. district court in Marshall, Texas.
The terms of the settlement aren’t yet public, but investors seem to think TiVo came out OK. The company’s stock price jumped 8.3 percent when news of the deal spread on Thursday afternoon.
TiVo debuted its digital video recording technology in 1999, but in the years that followed the company began losing market share to rivals. In 2004 TiVo hired Irell partners Morgan Chu and Andrei Iancu to bring an infringement case against Echostar Corp., which operated DISH Network at the time. After a roller coaster litigation, including a $74 million jury verdict for TiVo, EchoStar finally settled for $500 million in 2011.
AT&T Inc. settled a similar TiVo lawsuit for $215 million in January 2012. Eight months later, TiVo wrested a $250 million settlement from Verizon Communications Inc. Like Thursday’s deal with Motorola, both of those settlements came on the eve of trial.
The Irell duo of Chu and Iancu has represented TiVo in all the cases. In the Verizon case, TiVo also had Ronald Schutz of Robins Kaplan Miller & Ciresi and Samuel Baxter of McKool Smith.
Motorola kicked off its battle with TiVo in February 2011, alleging infringement of several of its own patents. TiVo responded with patent infringement claims of its own a month later. TiVo lost a bid to dismiss Motorola’s claims in January. Trial in the case was set to begin next Monday before U.S. District Judge Rodney Gilstrap in Marshall.
DLA Piper originally served as lead counsel for Motorola. But at the close of discovery earlier this year the company brought on Charles Verhoeven of Quinn Emanuel Urquhart & Sullivan, a leading IP trial lawyer, to take the lead role. (Incidentally, Verhoeven is Recorder sibling publication Litigation Daily‘s Litigator of the Week this week for helping Samsung Electronics Co. win a controversial injunction against Apple Inc.)
Verhoeven declined to comment. Iancu didn’t respond to an email seeking comment.
Jan Wolfe is a senior reporter with The Litigation Daily, a Recorder affiliate.
Update: In a press release on Friday, TiVo said it will receive an upfront payment of $490 million as part of Thursday’s settlement. Read more about the deal’s terms here.