In another example of cloud-based technologies and services falling victim to increased patent litigation surrounding the cloud space, Rovi Guides, Inc. (a TiVo subsidiary) filed another patent campaign against its once-licensee and development group partner Comcast Corporation. Rovi, founded under the Macrovision Solutions name in the 1980’s, proclaims itself as a leader in digital entertainment technology solutions. For decades they have facilitated consumer access to and discovery of television programs and other audiovisual media through personalized search and recommendation, advertising and programming promotion optimization, and other data and analytics solutions. Their technology has been widely used in electronic TV guides, DVRs, and video-on-demand services. In recent years, however, since Rovi’s acquisition of TiVo in 2016 from which they adopted its iconic namesake, their business model has shifted from in-house hardware production to primarily intellectual property licensing.

Even prior to 2016 Rovi was no stranger to the licensing game. For well over a decade, Rovi has benefited from numerous non-exclusive license agreements with virtually the entire traditional Pay-TV industry in the United States, including media giants such as AT&T (which recently acquired DirectTV), Charter/Spectrum, DISH/Echo Star, and Time Warner Cable, as well as non-traditional (online, mobile) video providers, manufactures, and distributors. In 2004, for example, Rovi and Comcast entered into multiple agreements with each other. Chief among them was a long-term, non-exclusive patent license agreement that allowed Comcast to utilize Rovi’s (then named Gemstar-TVGuide) intellectual property and technology, including the TVGuide brand and the content on its interactive program guides. The license agreement, for which Comcast paid a one-time payment of $250 million, expired March 31, 2016.

When Comcast refused to renew its 2004 license agreement, Rovi first brought suit against Comcast in the U.S. District Court for the Eastern District of Texas in 2016 for patent infringement. Specifically, Rovi alleged that without a license Comcast’s remote DVR (rDVR) programming service, AnyRoom DVR, and X1 Search services infringed upon fourteen of its U.S. patents. Rovi additionally brought an enforcement action at the International Trade Commission (ITC) for patent infringement, asserting seven patents against various Comcast DVR hardware and software components.

In November 2017, the ITC issued an order partially in Rovi’s favor barring Comcast from importing and distributing Comcast’s infringing set-top boxes (STBs) in the United States. As a consequence, in addition to its infringing STBs, Comcast was forced to disable multiple cloud-based features the ITC ruled infringed two of the seven Rovi asserted patents. The feature that made the most resounding impact when removed was the rDVR programming service rolled out in 2010 to iOS, Android, and Blackberry users. The feature enabled Comcast customers to remotely schedule and manage their recordings online via the Comcast Mobile Application. Removal of this cloud-based feature loved by many caused considerable backlash by subscribers that now no longer have the ability to record their favorite programs from anywhere via their mobile devices. Notwithstanding the ITC order and its dissatisfied customers, Comcast still refuses to renew its license with Rovi and is appealing the ITC order.

The above photos are two screenshots of a Comcast subscriber who reached out to Comcast after learning Comcast’s remote recording feature on the Xfinity TV Remote application had been disabled. It also details Comcast’s response. (Twitter Photo/ @JoshEdits)

The below photos show four screenshots of additional Comcast customers reaching out to the media provider after learning the remote recording functionality had been disabled. It also details Comcast’s response, attributing the disabled functionality to its patent litigation with Rovi. (Twitter Photo / @WizWit101); (Twitter Photo / @cdawg2610)

Despite Rovi’s partial win with the ITC, Rovi has filed a second suit against Comcast. According to Rovi’s First Amended Complaint filed on February 8, 2018, in the U.S. District Court for the Central District of California, their most recent lawsuit again stems from Comcast’s refusal to renew its 2004 license agreement with Rovi. This time, asserting six additional U.S. patents, Rovi alleges Comcast is willfully infringing Rovi’s intellectual property with their continued use and marketing of both the Comcast X1 IPG Product, a “cloud-enabled video platform that transformed the TV into an interactive, integrated entertainment experience” (Complaint, ¶57), and the Comcast Xfinity IPG application which provides “access to [Comcast’s] TV cable services, … live and on demand programming and cloud DVR recordings, and will be viable on partner’s smart TVs, TV-connected devices, and other IP-enabled video devices” (Complaint, ¶67). Rovi seeks a preliminary injunction preventing the continued leasing or offering for lease of its X1 IPG products, a preliminary injunction preventing the continued offering or providing to any cable customers or consumer end user any infringing IPG products solution, a permanent injunction from any further infringement of Rovi’s asserted patents, and an increased damages award based on alleged willful and deliberate infringement (Complaint’s Prayer for Relief, ¶¶1–6).

This case is still in its early stages, and Comcast has not yet filed its Answer to the case. Interestingly, Rovi has experienced speedbumps in the past when asserting its patents against other media providers, particularly in the post-Alice era, with some in the media industry characterizing Rovi’s patents as merely covering the basic idea of an electronic TV guide. In just one example, Rovi asserted its patents against Netflix in the U.S. District for the Northern District of California. There, U.S. District Judge Phyllis Hamilton invalidated five of Rovi’s interactive programing guide “do-it-on-the-Internet” patents. Judge Hamilton found that Rovi’s patents generally covered categorizing shows using combination categories, selectable categories, user viewing histories, and bookmarking across devices were abstract under Section 101 of the Patent Statute. It wouldn’t be surprising if Comcast, in addition to filing an Answer, filed a counter lawsuit claiming Rovi’s six asserted patents are invalid under Section 101 based on the recent success of Netflix and other entertainment media streaming services against Rovi. Further, this could be one of Rovi’s final patent strikes in this space, with its aging patent portfolio, the development of newer technologies, and the growing frequency of Alice­-based patent invalidation. What is likely on most Comcast customers’ minds is when (or if) they will see the return of their beloved cloud-based remote and mobile digital recording features. Unfortunately, we will have to wait for the outcome of Rovi’s pending litigation with Comcast to learn the answer to that question. In the meantime, the rDVR feature is another victim of the ever-increasing patent litigation in the cloud space.