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Microsoft Agrees to Drop Set-Top Box Patent Suits Against TiVo

TiVo Inc. said Microsoft Corp. agreed to drop patent-infringement litigation that could have led to a U.S. import ban on TiVo’s television set-top boxes.

TiVo said in a regulatory filing it didn’t grant patent rights to Microsoft, and it agreed to drop counterclaims against the Redmond, Washington-based software maker.

Microsoft filed patent-infringement complaints at the U.S. International Trade Commission in Washington and in federal court in San Jose, California, after TiVo sued Microsoft client AT&T Inc. AT&T agreed to pay TiVo at least $215 million in January to end that dispute.

TiVo, based in Alviso, California, has asserted its patent rights after increased competition in the market for digital-video recording services it pioneered.

In the ITC case, a judge was scheduled to release his findings next month, while a mirror case filed in federal court in San Jose was on hold while the ITC matter was under way. A second case in California, alleging infringement of additional Microsoft patents, was put on hold while the U.S. Patent and Trademark Office took a second look at the patents.

TiVo still has pending litigation against Verizon Communications Inc.

The cases settled are Microsoft Corp. v. TiVo Inc., 10cv240, U.S. District Court for the Northern District of California (San Jose), Microsoft v. TiVo, 11cv2896, U.S. District Court for the Western District of Washington (Seattle). The ITC case is In the Matter of Set-Top Boxes, 337-761, U.S. International Trade Commission (Washington).

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