TiVo Announces Settlement of Patent Litigation with AT&T

Discussion in 'TiVo Coffee House - TiVo Discussion' started by sbiller, Jan 3, 2012.

  1. Jan 3, 2012 #1 of 30

    sbiller Active Member

    May 10, 2002
    Tampa, FL


    TiVo and AT&T Enter into a Patent Licensing Arrangement
    ALVISO, CA -- 01/03/2012 -- TiVo Inc. (NASDAQ: TIVO) announced today that it has settled its pending patent litigation with AT&T and that the
    companies have entered into a mutual patent licensing arrangement. Under the terms of the settlement, AT&T agreed to pay TiVo an initial payment of $51 million, followed by recurring quarterly guaranteed payments through June 2018, totaling $164 million, which together yield minimum payments of $215
    million. In addition to these minimum payments, AT&T will pay incremental recurring per subscriber monthly license fees through July 2018 should AT&T's
    DVR subscriber base exceed certain levels.

    As part of the settlement, TiVo and AT&T agreed to dismiss all pending litigation between the companies with prejudice. The parties also entered
    into a cross license of their respective patent portfolios in the advanced television field.

    "We are extremely pleased to reach an agreement with AT&T, which acknowledges the value of our intellectual property," said Tom Rogers, CEO and President of TiVo. "This settlement, on the heels of our recent operational success that has resulted in the growth of TiVo's overall subscriber base, is another major accomplishment for TiVo and we believe a great outcome for our shareholders. The combination of guaranteed payments and future additional fees paid to TiVo in the event that AT&T's pay TV business continues to grow in-line with consensus analyst expectations, represents hard-earned compensation for our IP enforcement efforts. The settlement also provides us rights to innovate TiVo products and services under license from AT&T and allows us to avoid significant legal expenses that we expect would have been incurred by us during and after trial.”
  2. Jan 3, 2012 #2 of 30

    JosephB Member

    Nov 19, 2010
    Atlanta, GA
    Would've been even better if AT&T announced a UVerse TiVo :)
  3. Jan 3, 2012 #3 of 30

    lrhorer Active Member

    Aug 31, 2003
    In a round-about way, that may well be exactly what happens, or rather the mirror of what happens. Depending on the actual agreement, it could pave the way for TiVo to make their DVRs, even possibly their existing DVRs, functional on U-Verse systems.
  4. Jan 3, 2012 #4 of 30

    aadam101 Tell me a joke

    Jul 14, 2002
    Didn't ReplayTV have any patents that are being infringed on? I would imagine since Tivo and ReplayTV were first to market they would have had some too. Is anyone cashing in?
  5. Jan 3, 2012 #5 of 30

    Resist Well-Known Member

    Dec 21, 2003


    I'd hope now that Tivo won all this money, that they will use it to fix some of the long standing software bugs.
  6. Jan 3, 2012 #6 of 30

    DaveDFW Member

    Jan 25, 2005
    Richardson, TX
    Surely you're kidding--that money will go straight into executive bonuses! Software fixes are out of the question. :)
  7. Jan 3, 2012 #7 of 30

    aadam101 Tell me a joke

    Jul 14, 2002
    Tivo would never dream of putting this money into software development. They might hire some more people to make deals with cable companies.
  8. Jan 3, 2012 #8 of 30

    sbiller Active Member

    May 10, 2002
    Tampa, FL
    TiVO has been spending more than $20M per quarter on development. Arguably much of it has been work related to Virgin Media and other cable operator implementation but now that there is a common series 4 platform the retail TiVo boxes will start to benefit.
  9. Jan 3, 2012 #9 of 30

    stevel Dumb Blond TCF Club

    Aug 23, 2000
    Nashua, NH
    DirecTV owns the ReplayTV patents. TiVo and DirecTV have cross-licensing agreements. I know Intel has at least one patent in this area too, but they aren't doing anything with it.
  10. steve614

    steve614 what ru lookin at?

    May 1, 2006
    Dallas, TX
    I thought I read somewhere that DirectTV bought the ReplayTV patents...

    ...I could be wrong, though (ETA, maybe not :p).

    I got an e-mail about the settlement and was hoping to read what patents got cross licensed...what does AT&T have that TiVo would want to use and vice versa.
  11. aadam101

    aadam101 Tell me a joke

    Jul 14, 2002
    Thank you. I knew that. You have refreshed my memory.
  12. CuriousMark

    CuriousMark Forum Denizen

    Jan 13, 2005
    TiVo was given licenses to the patents that ATT says TiVo infringed in their countersuit, which was also dropped as part of this settlement. I am not sure what those patents covered.
  13. sbiller

    sbiller Active Member

    May 10, 2002
    Tampa, FL
    A quick-look at the AT&T patents makes me conclude that they aren't very interesting to TiVo.

  14. JosephB

    JosephB Member

    Nov 19, 2010
    Atlanta, GA
    The first one is a patent on hierarchical rules, which is so broad I don't see how it's a valid patent. Would cover everything from season passes to your gmail filters. It's very generic

    The second one applies to bookmarking a user's spot in an audio recording. It specifically cites audio recordings, so it'd be difficult IMO to apply this to TiVo, but, if the court included video then it would apply to TiVo remembering your position in a show when you stop watching it and come back to finish later

    The third one has to do with broadcast TV and decoding UHF signals addressed for specific receivers. Don't know how that'd apply to TiVo

    The fourth one would've been the kicker. It applies to assembling all the data you generate via keypresses, what you watch, when you fast forward, how long you watch, thumbs, etc. to generate ratings to sell to programmers.
  15. aaronwt

    aaronwt UHD Addict

    Jan 31, 2002
    Well at least it didn't drag out as long as the Dish lawsuit. This one took, what, around 2.4 years to complete?

    Just less than half the time of the Dish lawsuit. At least that gets them some guaranteed money coming in over the next six years.

    That combined with the continuing money from Dish and new subscribers from cable deals will hopefully push TiVo into the black for multiple quarters.
  16. nrc

    nrc Cracker Soul

    Nov 17, 1999
    Living in a...
    With this settlement in the bag it will be interesting to see how Microsoft proceeds. It's been assumed that they were suing TiVo to defend AT&T's use of their DVR platform. They could back off now, but they will have to contend with similar TiVo suits against anyone else using their platform.

    If Microsoft chooses to continue their suits against TiVo will TiVo now counter-sue Microsoft directly to ensure that they enough ammunition in the fight?
  17. replaytv

    replaytv gun talk ignore list

    Feb 20, 2011
    Denver ish...
    Not likely. Tivo has been losing money for so long except for what they have won from lawsuits.
  18. unitron

    unitron Well-Known Member

    Apr 28, 2006
    semi-coastal NC
    A quick look at the figure of $215,000,000.00 makes me conclude they're very interested in that.:D
  19. dwarner

    dwarner Member

    Feb 14, 2003
    Yes.. Tivo should have made a deal with them to supply U-Verse-compatible Tivos. They'd get to sell more hardware, and AT&T would gain more customers.

    The only thing preventing me from leaving Charter for U-Verse is their DVR.
  20. Chris Gerhard

    Chris Gerhard Well-Known Member

    Apr 27, 2002
    I didn't realize this suit was going to settle this quickly, great news for TiVo and its shareholders. I can also hope it works out to the benefit of TiVo's customers.

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