First, as Motorola discloses deep in the 17-page complaint, it’s bringing claims against TiVo in the face of an indemnification demand by its own customer. In 2009 TiVo sued Verizon for infringing three key digital video recording patents in Verizon’s FIOS system. Motorola Mobility makes the Verizon set-top boxes that allegedly infringe TiVo’s patents. TiVo has subpoenaed Motorola Mobility in the Verizon suit, and Verizon, according to the new Motorola complaint, has demanded indemnification from Motorola.
If this all sounds familiar, it’s because the same exact same scenario is playing out in TiVo’s patent infringement suit against AT&T. As we reported last January, Microsoft sued TiVo for patent infringement after AT&T demanded indemnity from Microsoft, which created software for the allegedly infringing AT&T products.
Moreover, the new Motorola suit claims TiVo’s famous Time Warp patent–which allows viewers to simultaneously watch one television show while recording and storing another–is invalid. That’s hardly a novel theory. EchoStar and Dish Networks, in their epic patent battle with TiVo, persuaded the U.S. Patent and Trademark Office to conduct a re-examination of the Time Warp patent. Unfortunately for EchoStar (and presumably for AT&T, Verizon, Microsoft, and Motorola), the PTO reaffirmed the validity of all the patent’s claims last October. TiVo’s counsel in the re-exam, Greg Gardella of Irell & Manella, told us at the time that the PTO’s decision would offer TiVo broad protection against Time Warp invalidity assertions. “If you’re AT&T or Verizon, then your situation just got less attractive. In essence, our patent is now armor-plated,” Gardella said.
Motorola is represented by DLA Piper in the suit against TiVo. Partner John Allcock told us Motorola’s invalidity arguments against the Time Warp patent are different from EchoStar’s, but didn’t call us to elaborate. Motorola’s complaint asserts that TiVo’s DVR patents were preceded by patents Motorola acquired from a company called Imedia; TiVo’s technology (including the Time Warp patent and at least one other), infringes the Imedia patents.
It’s not yet clear who will be representing TiVo in the new Motorola case, according to Ronald Schutz of Robins, Kaplan, Miller & Ciresi, who’s co-lead counsel for TiVo (along with McKool Smith) in its suit against Verizon . Irell & Manella is representing TiVo in the litigation with AT&T and Microsoft, which is ongoing. We left e-mail messages with Irell partners Morgan Chu and Greg Gardella but didn’t hear back.