Videotron facing patent infringement claim from TiVo

Quebecor Inc.’s Videotron is being sued for patent infringement by TiVo Inc. and one of its subsidiaries, on a claim that the Canadian telecom is unlawfully using its intellectual property after failing to renew licences that expired at the end of 2016. In a statement of claim filed with the Federal Court on June 23, TiVo alleges that Videotron set-top boxes are using features enabled by six of its patents — two held by TiVo, and four held by subsidiary Rovi Corp., which purchased TiVo in 2016 and adopted its brand. According to the documents, “Videotron approached Rovi to seek a license to its patent portfolio in 2009,” and was licensed as of 2010. “Videotron twice renewed this licence, most recently in December 2015 (effective through December 31, 2016), but has now failed to renew it further.” The patents in question “relate broadly to fundamental aspects of the IPG and DVR experience,” the statement of claim said, including pausing, rewinding and recording live TV, keeping a directory of recorded programs, simultaneously watching and recording different shows, and looking for show listings. “Since the expiry of the Second Amended License Agreement, the defendants have neither obtained a license from Rovi that would cover their infringing activities, nor otherwise attempted to compensate Rovi for their infringement, directly and/or by inducement and procurement, of the Rovi Asserted Patents,” the claim said, adding that no license for TiVo’s patents has ever been negotiated. The claim is asking the court for “an interlocutory, interim, and permanent injunction as well as damages” of more than $50,000 from Videotron, “or an accounting of profits at their election.” Videotron declined to comment on the proceedings. Canada’s largest telecoms are all licensed to use Rovi’s patents, the documents state, claiming agreements with BCE Inc., Rogers Communications Inc., Shaw Communications Inc., Cogeco Inc., as well as with small provider Cable Cable Inc., which serves an area north of Peterborough, Ont. “The combined market share of Rovi’s current Canadian Pay-TV licensees represents over 5 million subscribers, amount to approximately half of the Canadian cable, IPTV, and direct-to-home (DTH) satellite market,” the claim said, adding that the company’s reach in the United States is similarly broad. All of the American pay-TV providers have at some point been licensed to use Rovi’s patents, the claim said, “with only Comcast currently not under license and subject to patent infringement lawsuits filed by Rovi in the U.S.” Similar to the action against Videotron, Rovi’s Comcast suit centres on the company not renewing previously held licences for patents. Though the case is still ongoing in the courts, Rovi has claimed a tentative early victory on one front through the U.S. International Trade Commission (ITC), which investigates trade disputes. Its April 2016 ITC complaint said that Comcast was unlawfully importing set-top-boxes into the country that made use of Rovi’s patents. On May 26, the ITC issued an initial determination that Comcast had infringed two of Rovi’s patents (though they were initially arguing the infringement spanned seven patents) “in the importation into the United States, the sale for importation, or the sale within the United States after importation of certain digital video receivers and hardware and software components thereof.” A final determination is expected in the fall and the commission is currently consulting on its proposed order to exclude the infringing products from entry into the U.S. — With reporting by Charelle Evelyn at cevelyn@thewirereport.ca and editing by Anja Karadeglija at akarad@thewirereport.ca

Videotron facing patent infringement claim from TiVo

Broadcast | July 17, 2017

Unlock all the Canadian telecom, broadcasting and digital media news you need.

FREE TRIAL

SUBSCRIBE

Inside The Wire Report

Information

Hill Times Publishing

Get in Touch With Us

Videotron facing patent infringement claim from TiVo

Broadcast | July 17, 2017

Unlock all the Canadian telecom, broadcasting and digital media news you need.

FREE TRIAL

SUBSCRIBE

Related Stories

Quebecor seeks to review and vary Bell MVNO decision

Quebecor’s revenue, profits drop in Q3 2024

Quebecor acquires advertising business, expands ad reach in Canada

Quebecor announces two executive appointments at Videotron, Freedom

Reuse & Permissions

Inside The Wire Report

Information

Hill Times Publishing

Get in Touch With Us