Jessica Karmasek Sep. 10, 2015, 12:29pm


MARSHALL, Texas (Legal Newsline) - TiVo Inc., the self-described “pioneer in home entertainment,” sued Samsung this week, alleging the Korean electronics giant has “capitalized” on TiVo’s innovation and success by selling DVRs and mobile devices that infringe its patents.

TiVo, based in Alviso, Calif., filed its lawsuit against Samsung, one of the world’s largest electronics companies, in the U.S. District Court for the Eastern District of Texas Tuesday.

The lawsuit was filed in the plaintiff-friendly Eastern District of Texas because Samsung has offices and facilities in the district, including Samsung Telecommunications America’s headquarters in Richardson.

TiVo alleges in its 25-page complaint that Samsung is utilizing its patented inventions “without license or authority” from TiVo -- four patents, in particular:

- U.S. Patent No. 6,233,389, entitled “Multimedia Time Warping System,” which was issued on May 15, 2001;

- U.S. Patent No. 6,792,195, entitled “Method And Apparatus Implementing Random Access And Time-Based Functions On A Continuous Stream Of Formatted Digital Data,” which was issued on Sept. 14, 2004;

- U.S. Patent No. 7,558,472, entitled “Multimedia Signal Processing System,” which was issued on July 9, 2009; and

- U.S. Patent No. 8,457,476, entitled “Multimedia Signal Processing System,” which was issued on June 4, 2013.

TiVo alleges Samsung is illegally using its patents in Samsung’s set-top boxes. Samsung makes boxes with DVR functionality and supplies them to Time Warner Cable, among others.

TiVo also alleges Samsung is infringing its patents through Samsung’s smartphones and tablets, noting in its complaint that Samsung’s phones and tablets are specifically designed and configured with hardware and software components that allow for the simultaneous storage and playback of movies, videos, television shows, and other multimedia content.

“The ability to access and view multimedia content on the Samsung Mobile Devices is an essential feature and function of these devices,” TiVo wrote.

TiVo says it believes Samsung swiped its technology as a result of TiVo’s patent marking on retail products; through its litigation with others, including EchoStar, AT&T, Verizon, Motorola and Cisco; and through communications with Time Warner, a Samsung customer with which TiVo used to be in litigation.

TiVo, obviously irritated by Samsung’s alleged infringement, writes how it has “expended substantial time and resources” in order to secure and protects its intellectual property rights.

The company has been issued more than 160 U.S. patents and has more than 320 pending applications, according to its filing.

TiVo also appears to be confident in its case against Samsung, pointing out that it has received nearly $1.6 billion in awards and payments from other companies for similar infringement.

“Before TiVo, the television experience involved watching a television program on a TV as it aired or perhaps recording the program on a videotape with a video cassette recorder or ‘VCR,’” it wrote. “VCRs relied on timers that were difficult to program and made recording unreliable.

“TiVo transformed the television watching experience. VCRs became history.”

Founded in 1997, TiVo released its first digital recorder in 1999. In fact, the original TiVo DVR was placed in the U.S. Patent and Trademark Office’s National Inventors Hall of Fame.

In its complaint, TiVo asks the federal court to enjoin Samsung from infringing on its four patents; that Samsung be forced to deliver all products that infringe the patents “for destruction” at TiVo’s option; that Samsung be ordered to pay compensatory damages, along with pre-judgment and post-judgment interest; that Samsung be ordered to provide an accounting; that Samsung be ordered to pay supplemental damages, including without limitation interest; that the damages be increased to three times the amount found or measured; and that the court deem the case exceptional and award attorneys’ fees and costs to TiVo.

The case has been assigned to Judge Rodney Gilstrap.

Law firm McKool Smith PC, of Marshall, Texas, is representing TiVo, with Los Angeles firm Irell & Manella LLP serving as co-counsel.

A spokeswoman for Samsung declined to comment on the filing.

From Legal Newsline: Reach Jessica Karmasek by email at jessica@legalnewsline.com.

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