DCT

5:10-cv-00240

Microsoft Corporation v. TiVo, Inc.

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I. Executive Summary and Procedural Information

  • Parties & Counsel:
  • Case Identification: 5:10-cv-00240, N.D. Cal., 06/30/2010
  • Venue Allegations: Venue is alleged to be proper in the Northern District of California because Defendant maintains its corporate headquarters and principal place of business in the district, is subject to personal jurisdiction, and has allegedly offered for sale, sold, and imported the accused products and services in the district.
  • Core Dispute: Plaintiff alleges that Defendant’s Digital Video Recorder ("DVR") set-top boxes, subscription services, and related software infringe seven patents related to interactive program guides, secure content delivery, network communication management, and user interface controls for video display.
  • Technical Context: The dispute centers on technologies fundamental to the operation of DVRs and interactive television systems, a market segment that experienced significant growth in the early 2000s.
  • Key Procedural History: This document is a First Amended Complaint. For several patents-in-suit, the complaint alleges that Defendant gained knowledge of the patents upon service of the original complaint in this action, a fact that may become relevant to allegations of ongoing or willful infringement.

Case Timeline

Date Event
1994-11-29 U.S. Patent No. 6,008,803 Priority Date
1995-03-28 U.S. Patent No. 5,648,824 Priority Date
1995-05-05 U.S. Patent No. 5,654,748 Priority Date
1995-05-05 U.S. Patent No. 5,677,708 Priority Date
1996-03-22 U.S. Patent No. 6,055,314 Priority Date
1996-06-03 U.S. Patent No. 5,896,444 Priority Date
1997-07-15 U.S. Patent No. 5,648,824 Issued
1997-08-05 U.S. Patent No. 5,654,748 Issued
1997-10-14 U.S. Patent No. 5,677,708 Issued
1999-04-20 U.S. Patent No. 5,896,444 Issued
1999-06-11 U.S. Patent No. 6,725,281 Priority Date
1999-12-28 U.S. Patent No. 6,008,803 Issued
2000-04-25 U.S. Patent No. 6,055,314 Issued
2004-04-20 U.S. Patent No. 6,725,281 Issued
2010-06-30 First Amended Complaint Filed

II. Technology and Patent(s)-in-Suit Analysis

U.S. Patent No. 6,008,803 - "System for Displaying Programming Information"

  • Issued: December 28, 1999

The Invention Explained

  • Problem Addressed: As the number of available television programs expands dramatically with technologies like cable and satellite, traditional time-based program guides become "less manageable" for viewers seeking specific types of content (’803 Patent, col. 2:15-20). A viewer interested in a specific genre, like sports, must manually scan all time slots to find relevant programming (’803 Patent, col. 1:45-53).
  • The Patented Solution: The invention proposes a category-based system for displaying program information (’803 Patent, Abstract). The system presents a schedule display with distinct, interactive areas for "categories" (e.g., Sports), "subcategories" (e.g., Basketball), and specific "programs" (e.g., NCAA Illinois vs Indiana) (’803 Patent, col. 3:1-9). By selecting a broad category, the user narrows the scope of displayed programs to a more relevant and manageable list, which can then be further refined by subcategory (’803 Patent, col. 3:11-24).
  • Technical Importance: This approach provided a user interface paradigm that shifted program discovery from a linear, time-centric model to a hierarchical, content-centric model, better suited for navigating the large content libraries enabled by digital television.

Key Claims at a Glance

  • The complaint asserts infringement of "one or more claims" without specifying which ones (Compl. ¶8). Representative independent claim 1 is analyzed here.
  • Claim 1 Elements:
    • A method for retrieving and displaying electronic information comprising category and information items.
    • Scrolling a category display until a first category item appears within a viewing panel.
    • Moving an indicator along the viewing panel to an information display.
    • Scrolling the information display that corresponds to the first category, until a first information item appears within the viewing panel.
  • The complaint does not explicitly reserve the right to assert dependent claims.

U.S. Patent No. 6,055,314 - "System and Method for Secure Purchase and Delivery of Video Content Programs"

  • Issued: April 25, 2000

The Invention Explained

  • Problem Addressed: The delivery of valuable video content, such as first-run films, via digital networks or physical media like DVDs creates a significant risk of piracy through illicit interception, copying, and redistribution (’314 Patent, col. 1:29-33). Traditional security focused on encrypting the transmission path, but this did not prevent copying once the content reached the viewer's device (’314 Patent, col. 1:40-47).
  • The Patented Solution: The invention discloses a system where security is tied to a portable integrated circuit (IC) card, such as a smart card, issued to the viewer (’314 Patent, Abstract). Instead of just purchasing content, the user purchases "decryption capabilities" for a specific program, which are securely downloaded and stored on the IC card (’314 Patent, col. 2:28-34). The video content itself is distributed in an encrypted format, and the IC card works with the viewer's set-top box to decrypt it, without exposing the core decryption keys to the potentially insecure set-top box hardware (’314 Patent, col. 2:35-43).
  • Technical Importance: This architecture decoupled the security from the playback hardware, making the system more robust against hardware compromises and allowing for security protocols to be updated via the portable and replaceable IC card.

Key Claims at a Glance

  • The complaint asserts infringement of "one or more claims" without specification (Compl. ¶16). Representative independent claim 1 is analyzed here.
  • Claim 1 Elements:
    • A video content delivery system comprising a video content provider, a remote viewer computing unit, and a distribution medium.
    • A video encryption device at the provider to supply an encrypted video data stream using a cryptographic program key.
    • An integrated circuit card that couples to the viewer computing unit.
    • The card has a memory to store an encrypted program key and is configured to decrypt it with unique capabilities and then at least partly decrypt the video data stream.
  • The complaint does not explicitly reserve the right to assert dependent claims.

U.S. Patent No. 5,654,748 - "Interactive Program Identification System"

  • Patent Identification: U.S. Patent No. 5,654,748, issued August 5, 1997.
  • Technology Synopsis: The patent addresses the problem of users "channel surfing" and being unable to identify a program, especially during commercial breaks (’748 Patent, col. 1:22-34). The solution is a system where a user command prompts the display of an "identification panel" overlaid on the program, showing the program's title and channel, which is retrieved from a central head end (’748 Patent, col. 2:1-4).
  • Asserted Claims: One or more claims (Compl. ¶24).
  • Accused Features: The complaint accuses Defendant's "set-top box products, subscription services and software" generally (Compl. ¶24).

U.S. Patent No. 5,677,708 - "System for Displaying a List on a Display Screen"

  • Patent Identification: U.S. Patent No. 5,677,708, issued October 14, 1997.
  • Technology Synopsis: The patent describes a user interface method for displaying lists of items (e.g., menu choices) on a television screen, which has variable "safe title" zones (’708 Patent, col. 3:1-12). To indicate that a list extends beyond the visible screen area, the first and last items in the list are shown only partially, providing an intuitive visual cue that the list is scrollable without requiring separate scroll bars or arrows (’708 Patent, col. 4:35-42).
  • Asserted Claims: One or more claims (Compl. ¶32).
  • Accused Features: The complaint accuses Defendant's "set-top box products, subscription services and software" generally (Compl. ¶32).

U.S. Patent No. 5,896,444 - "Method and Apparatus for Managing Communications Between a Client and a Server in a Network"

  • Patent Identification: U.S. Patent No. 5,896,444, issued April 20, 1999.
  • Technology Synopsis: The patent addresses disruptions to a client-server connection over a telephone line, such as from a "Call Waiting" signal (’444 Patent, col. 1:50-62). The patented method involves the client automatically disconnecting upon interruption, saving its state, waiting a period, and then attempting to re-establish the connection with the server to resume the session, thereby gracefully handling the interruption without data loss or requiring manual reconnection (’444 Patent, col. 5:55–col. 6:24).
  • Asserted Claims: One or more claims (Compl. ¶40).
  • Accused Features: The complaint accuses Defendant's "set-top box products, subscription services and software" generally (Compl. ¶40).

U.S. Patent No. 6,725,281 - "Synchronization of Controlled Device State Using State Table and Eventing in Data-Driven Remote Device Control Model"

  • Patent Identification: U.S. Patent No. 6,725,281, issued April 20, 2004.
  • Technology Synopsis: The patent describes a model for controlling networked devices where a "controlled device" maintains a "state table" representing its operational state (e.g., power on/off, current channel) (’281 Patent, Abstract). Other devices acting as "user control points" can obtain this table and subscribe to notifications of any changes. This "eventing model" ensures that all control points have a synchronized and accurate depiction of the device's state, even if a change is initiated from the device's own front panel (’281 Patent, col. 2:7-18).
  • Asserted Claims: One or more claims (Compl. ¶48).
  • Accused Features: The complaint accuses Defendant's "set-top box products, subscription services and software" generally (Compl. ¶48).

U.S. Patent No. 5,648,824 - "Video Control User Interface for Controlling Display of a Video"

  • Patent Identification: U.S. Patent No. 5,648,824, issued July 15, 1997.
  • Technology Synopsis: The patent addresses the complexity of remote controls with many dedicated buttons for functions like "play," "pause," and "rewind" (’824 Patent, col. 2:27-34). The invention provides a user interface where an on-screen icon mirrors the physical layout of a multi-direction pad on the remote. Shuttle control symbols (play, pause, etc.) are arranged around this icon, creating an intuitive visual map that allows the user to control video playback by pressing the corresponding physical location on the multi-purpose pad without looking away from the screen (’824 Patent, Abstract).
  • Asserted Claims: One or more claims (Compl. ¶56).
  • Accused Features: The complaint accuses Defendant's "set-top box products, subscription services and software" generally (Compl. ¶56).

III. The Accused Instrumentality

Product Identification

  • The accused instrumentalities are Defendant TiVo's "set-top boxes known as digital video recorders or 'DVRs'," as well as its associated "subscription services and software" (Compl. ¶¶ 5, 8, 11).

Functionality and Market Context

  • The complaint describes the accused products and services as enabling users to "obtain, control and watch television, videos, movies, pictures and other content from cable, broadcast, broadband, satellite and/or other sources" (Compl. ¶5). These functionalities are provided through network connections between the set-top boxes and computer servers (Compl. ¶5).
  • The complaint alleges a substantial market presence for the accused products, noting that Defendant's subscriber base includes approximately 2.7 million households (Compl. ¶5). It also alleges that TiVo licenses and provides software to media content providers for use in set-top boxes and servers (Compl. ¶5).
  • No probative visual evidence provided in complaint.

IV. Analysis of Infringement Allegations

The complaint does not provide sufficient detail to construct a claim chart or analyze specific infringement theories on an element-by-element basis. The infringement allegations are pleaded generally, stating that Defendant's products, systems, and processes fall "within the scope of one or more claims" of each asserted patent (Compl. ¶¶ 8, 16).

  • Narrative Infringement Theory (’803 Patent): The complaint alleges that TiVo's DVRs and subscription services, which permit users to navigate and watch television content, infringe the ’803 patent's claims for a system of displaying programming information (Compl. ¶8). A potential point of contention may be whether TiVo's program guide, which allows users to find and record shows, implements the specific "category display," "subcategory display," and "viewing panel" structure required by the claims.
  • Narrative Infringement Theory (’314 Patent): The complaint alleges that TiVo's system, which delivers content to set-top boxes, infringes the ’314 patent's claims for securely purchasing and delivering video programs (Compl. ¶16). The analysis may turn on whether TiVo's security architecture for delivering subscription or pay-per-view content utilizes a portable "integrated circuit card" that performs decryption functions as claimed, or an alternative security mechanism.
  • Identified Points of Contention:
    • Evidentiary Questions: A primary question for the litigation will be what specific evidence Microsoft adduces to map the elements of its asserted claims onto the specific functionalities of the various TiVo DVR models and software versions. The complaint's high-level allegations do not identify which specific features of the TiVo system (e.g., the "TiVo Guide," "Season Pass," "WishList" searches) are alleged to practice the claimed methods.
    • Scope Questions: The dispute may involve claim construction questions regarding the scope of key terms. For example, regarding the '314 Patent, a central question may be whether the security hardware integrated into TiVo's set-top boxes meets the definition of an "integrated circuit card" as that term is used and described in the patent specification.

V. Key Claim Terms for Construction

  • Patent: '803 Patent

    • The Term: "viewing panel"
    • Context and Importance: This term appears in independent claim 1 and is central to the claimed user interface structure. Its construction will be critical to determining whether the visual layout of TiVo's electronic program guide infringes, as the analysis will depend on whether TiVo's interface contains a distinct element that meets the definition of a "viewing panel" through which category and program tiles are presented.
    • Intrinsic Evidence for Interpretation:
      • Evidence for a Broader Interpretation: The claims describe the viewing panel functionally as the area where items "appear" (e.g., '803 Patent, col. 20:1-5). This could support an argument that any fixed region of a guide where selected items are displayed or highlighted constitutes a "viewing panel."
      • Evidence for a Narrower Interpretation: The specification consistently depicts the "viewing panel" as a distinct, horizontal bar that extends across all three display columns (category, subcategory, program), creating a single focal row for the user ('803 Patent, FIG. 2, item 58). This may support a narrower construction requiring a visually distinct, multi-column highlight bar, not just a simple selection cursor within a single list.

  • Patent: '314 Patent

    • The Term: "integrated circuit card"
    • Context and Importance: This term is a core component of the system claimed in independent claim 1. The infringement analysis for the '314 patent will likely depend on whether the security components within TiVo's DVRs, such as a CableCARD or an embedded security chip, can be construed as an "integrated circuit card" as envisioned by the patent.
    • Intrinsic Evidence for Interpretation:
      • Evidence for a Broader Interpretation: The abstract refers to the IC card more generally as being configured to "store decryption capabilities." The specification mentions "a smart card or PCMCIA card" as examples, suggesting the term is not limited to one specific form factor ('314 Patent, col. 2:30-31).
      • Evidence for a Narrower Interpretation: The patent repeatedly describes the IC card as a portable device that a purchaser can physically carry to a merchant or insert into a home computing unit ('314 Patent, col. 5:16-21, col. 5:35-37). This context may support a narrower construction that excludes security chips permanently integrated into the motherboard of a set-top box.

VI. Other Allegations

  • Indirect Infringement: For each asserted patent, the complaint alleges both contributory infringement and active inducement. The inducement allegation is based on claims that Defendant actively "instructing, directing or advising its customers and/or licensees" to operate the accused products in an infringing manner (Compl. ¶¶ 1, 19, 27, 35, 43, 51, 59). The contributory infringement allegation is based on claims that components of the accused products are "especially made or especially adapted for use in practicing the invention" and are not "staple articles of commerce suitable for substantial noninfringing uses" (Compl. ¶¶ 9, 17, 25, 33, 41, 49, 57).
  • Willful Infringement: While the complaint does not use the word "willful," it lays a foundation for such a claim by alleging knowledge. For the '803 and '314 patents, knowledge is alleged from "having received service of the original Complaint" (Compl. ¶¶ 11, 19). For the remaining five patents, knowledge is alleged "at least through receipt of the allegations herein," suggesting these patents may have been added in the amended complaint (Compl. ¶¶ 27, 35, 43, 51, 59). These allegations may be used to support a claim for enhanced damages based on post-filing infringement.

VII. Analyst’s Conclusion: Key Questions for the Case

  • A central issue will be one of claim construction and technical scope: can key terms from patents drafted in the mid-to-late 1990s, such as "viewing panel" and "integrated circuit card," be construed to cover the specific user interface and security architectures implemented in TiVo's more modern DVR systems? The resolution of these definitional disputes will likely be dispositive for several of the asserted patents.
  • The case will also present a key evidentiary question: given the complaint's lack of specificity, what technical evidence will Microsoft present to demonstrate that the accused TiVo hardware and software practice each limitation of the asserted claims? The defense may focus on alleged mismatches between the specific operation of TiVo's proprietary software and the steps required by the patent claims.
  • A further question relates to damages and industry practice: should infringement be found, the assessment of damages may involve complex questions regarding the value of these patented features relative to the entire TiVo system and what constitutes a reasonable royalty in an industry characterized by extensive cross-licensing and competition.