The telcos have struck back: AT&T and Verizon Communications have separately filed countersuits against TiVo -- which previously sued both telcos over patents -- alleging the DVR company is infringing their intellectual property.
The countersuits were detailed in TiVo's 10-K annual report filed Wednesday.
Separately, TiVo is awaiting the resolution of its six-year-old litigation against Dish Network and EchoStar, which have been ordered to pay $300 million in damages and sanctions to the DVR company. Last week, the Texas district court judge overseeing the case gave Dish an extension until April 30 on a previously issued stay on the injunction ordering the satellite TV operator to disable infringing DVRs.
Perhaps emboldened by a legal victory over Dish and EchoStar last summer, TiVo filed separate lawsuits in August 2009 against AT&T and Verizon.
TiVo argued that the DVRs provided with AT&T's U-verse TV and Verizon's FiOS TV infringed three TiVo patents: U.S. Patent Nos. 6,233,389 B1 ("Multimedia Time Warping System") -- the one that Dish and EchoStar were found to have violated -- as well as 7,529,465 B2 ("System for Time Shifting Multimedia Content Streams") and 7,493,015 B1 ("Automatic Playback Overshoot Correction System").
Now TiVo is the target of countersuits from AT&T and Verizon.
On Feb. 24, Verizon answered TiVo's lawsuit and Verizon asserted counterclaims. The counterclaims seek declaratory judgment of non-infringement and invalidity of the patents TiVo asserted against Verizon in the August complaint.
Additionally, Verizon alleged TiVo DVRs infringe five patents: U.S. Patent Nos. 5,410,344 ("Apparatus and Method of Selecting Video Programs Based on Viewers' Preferences"), 5,635,979 ("Dynamically Programmable Digital Entertainment Terminal Using Downloaded Software to Control Broadband Data Operations"), 5,973,684 ("Digital Entertainment Terminal Providing Dynamic Execution in Video Dial Tone Networks"), 7,561,214 ("Two-dimensional Navigation of Multiplexed Channels in a Digital Video Distribution System"), 6,367,078 ("Electronic Program-Guide System with Sideways-Surfing Capability").
On March 15, Verizon filed an amended answer further alleging infringement of U.S. Patent No. 6,381,748 ("Apparatus And Methods For Network Access Using A Set Top Box And Television"). Verizon seeks unspecified damages and a permanent injunction.
AT&T, for its part, filed a complaint March 12 against TiVo in the U.S. District Court for the Northern District of California alleging infringement of four patents U.S. Pat Nos. 5,809,492 ("Apparatus and Method for Defining Rules for Personal Agents"), 5,922,045 ("Method and Apparatus for Providing Bookmarks when Listening to Previously Recorded Audio Programs"), 6,118,976 ("Asymmetric Data Communications System") and 6,983,478 ("Method and System for Tracking Network Use"). AT&T's complaint seeks damages for past infringement and a permanent injunction.
Microsoft has entered the legal fray as well.
In January, Microsoft moved to intervene in the action TiVo filed against AT&T and also sued TiVo in the U.S. District Court for the Northern District of California for infringement of the following two patents: U.S. Patent Nos. 6,008,803 ("System for Displaying Programming Information") and 6,055,314 ("System and Method for Secure Purchase and Delivery of Video Content Programs").
Meanwhile, Verizon earlier in March also sued Cablevision Systems, alleging the New York-area cable operator's set-top boxes violate eight of its patents. Four of the eight patents at issue in the Cablevision case are cited in Verizon's counterclaims against TiVo (the '979, '214, '078 and '748 patents).
