March 1, 2005 5:00 AM PST

TiVo records new DVR patents

TiVo is revving its patent engine to get a jump on the growing number of competitors in the market it pioneered.

The Alviso, Calif.-based digital video recorder company announced Tuesday it has been issued five patents from the U.S. Patent and Trademark Office. TiVo has also been issued three grants from the Chinese and Japanese patent offices, as well as an exclusive license to one of the first DVR patents--called the Goldwasser Patent--filed with the U.S. Patent and Trademark Office. The company has a considerable number of patents, 70 so far with 106 still pending, but it hasn't been able to translate its intellectual property to significant financial success.

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Many industry watchers say the value of TiVo's overall patent portfolio lies in the potential muscle it brings to its ongoing patent infringement lawsuit against satellite television company EchoStar Communications.

"These new patents might bring TiVo a little bit of money, but not enough to make a significant difference to the bottom line," said Van Baker, an analyst with research company Gartner. "The make-or-break thing is their EchoStar case; if they don't win that case they don't truly have valuable IP," or intellectual property.

Uncertainty regarding the value of its patents is one of the last things TiVo needs as it tries to fend off competitors, such as Comcast and Time Warner, which have begun offering DVR service to their customers. Initially viewed as potential customers, cable companies and even TiVo's biggest partner, DirecTV, are bypassing TiVo to use other DVRs. And without key patents that have been deemed defensible by a court, TiVo hasn't been able to hold rivals accountable.

"In my conversations with cable companies, they have always felt TiVo didn't have anything proprietary," said Rob Sanderson, equity research analyst with American Technology Research. "Even with a robust patent portfolio...patent lawsuits are long, hard and expensive."

TiVo declined to comment on the EchoStar case, and executives were not available to discuss licensing terms for the new patents.

"We have placed great emphasis on developing, licensing and protecting our intellectual property, including our patents, copyrights, trademarks and trade secrets," Jim Barton, chief technology officer at TiVo, said in a statement.

An attorney representing EchoStar said the case was still in the discovery stage.

Doing the time warp
TiVo's case against EchoStar revolves around its "multimedia time-warping system" patent, which it received in May 2001 from the U.S. Patent and Trademark Office. Some set-top boxes used with EchoStar's satellite service come with DVR capabilities.

Despite the legal challenges ahead, the time-warping patent does have some teeth, said patent lawyer Bruce Sunstein of Boston-based Bromberg & Sunstein, who reviewed the claims of the patent.

"The claims are relatively broad, so there is a real threat," Sunstein said. "But unless EchoStar does exactly what the claim says, then they not infringing."

TiVo's latest domestic patents are for features of its DVR service that are already being used, including the capability to control streaming media in a digital device and TiVo's user interface. TiVo also received the exclusive license for the Goldwasser patent, which covers devices that simultaneously record and play back video with a time delay between recording and playback of a video segment.

The company was awarded the patent for the time-warping system by the Japanese patent office.

There's been no shortage of turmoil for TiVo lately. An ongoing struggle to reach profitability has led to rumors that TiVo is on the block, despite comments from the company's chief executive to the contrary. And recently TiVo's president resigned and the company said it is looking for a successor to Michael Ramsay, chief executive of TiVo. Ramsay is staying on as CEO until a replacement can be appointed. Ramsay will remain the company's chairman.

But there's been progress as well. TiVo announced, for instance, that it has signed up more than 3 million subscribers and that it's creating new features as part of its Tahiti strategy to attract more consumers. Tahiti will include services that allow TiVo DVR subscribers to use the Internet to download movies and trailers, buy products, and search local movie theater listings.

In addition, the company announced earlier this year a partnership with Microsoft to make its TiVoToGo feature compatible with the Windows operating system.

And TiVo has made headway licensing its technology to consumer electronics companies, including Pioneer Electronics, Sony Electronics, Toshiba and Humax.


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It's beginning to look like....
both TiVo and SCO are trying to ride the same dead horse.
Posted by Earl Benser (4310 comments )
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The patent office has been recklessly extending patents to ideas that aren't even original. I wrote computer programs more than 20 years ago that wrote part of their own interpreted code on the fly using IBM's SHR file type, and as a public employee at the time I believe what I did became part of the public domain. I fail to see how TIVO's time warp technology is either original or not an obvious use of the SHR file type which I believe IBM invented.

Where TIVO has outdone its competitors is in how well it has developed its programming along the lines of how users think, rather than just computer logic. TIVO also allows the transfer of TV programs to PC and portable devices, whereas Comcast does not currently support this, even though the DVR hardware looks built to be capable of it. I hate the interface on my Comcast DVR which was just recently upgraded because it has often caused redundant recording of TIVO shows, and Comcast shows less information per screen than TIVO. At the same time I don't expect to renew my TIVO contract when the DVR is included in the starter digital service price with Comcast at no separate charge.

TIVO should be spending less in resources on lawyers and more on programmers so that it can perfect its own software.

In general software patents have been to the detriment of users. The system needs to be changed to arbitrate intellectual property payments and do so only for ideas that catch on. I can't imagine how difficult it is to be a modern computer programmer if you have to avoid every obvious solution to problems because someone patented the obvious idea. Pretty soon computer programming is going to have to be integrated with the teaching of patent law. The result will be the fall of the USA from the world stage as a software inventor.
Posted by Walter L. Johnson (187 comments )
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