AT&T, TiVo reach $215M deal in DVR patent suit

Michelle Clancy ©RapidTVNews | 05-01-2012

After a high-profile back-and-forth dispute over ownership of DVR technology, AT&T and TiVo have agreed to a cross-licencing of their respective patent portfolios to settle patent-infringement litigation.
But it's expected that AT&T will serve up at least $215 million in licencing fees to boot. AT&T has agreed to make an initial payment of $51 million to TiVo, followed by recurring quarterly guaranteed payments that total $164 million through June 2018. AT&T also will pay TiVo licence fees through July 2018 if AT&T's DVR subscriber base exceeds certain levels.
In August 2009, TiVo filed complaints in federal district court against both AT&T and Verizon, accusing both IPTV providers of infringing on its patented DVR technologies. An agreement with Verizon has yet to be reached. Last year it also reached a $500 million settlement and cross-licencing with Dish Network Corp. and EchoStar Corp. over a similar issue.
"The combination of guaranteed payments and future additional expectations, represents hard-earned compensation for our IP enforcement efforts," TiVo President and CEO Tom Rogers said in a statement. "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 use during and after trial."
The patent wars for time-shifting have been heating up lately. Verizon for instance has been ordered to pay $11 million+ in royalties per month to ActiveVideo in order to continue providing FiOS IPTV subscribers with video on demand (VOD) services.
A court ruled that certain technologies that Verizon is using have been found to violate the patent holdings of the California-based ActiveVideo, which won a $115 million verdict in August in a jury trial. Three months later, that had ballooned to $139.1 million and US District Judge Raymond Jackson in Norfolk, Va. ordered Verizon to pay $2.74 per FiOS television subscriber, beginning 1 December 2011. Meanwhile, the telco incumbent has about six months--until 23 May, 2012--to find a workaround to ActiveVideo's technology or discontinue its VOD service.