TiVo Inc. said it may be entitled to billions of dollars in damages should it win its patent-infringement lawsuit against Google Inc.’s Motorola Mobility unit over digital-video recording technology.
“Motorola’s massive production of infringing DVRs dwarfs the numbers of accused products at issue in TiVo’s previous cases,” TiVo said in a filing yesterday in federal court in Marshall, Texas. “TiVo’s damages claim is likely to run into the billions of dollars.”
TiVo disclosed the figure in a request to consolidate the case against Motorola Mobility with one involving Cisco Systems Inc. to address pre-trial issues, saying it would speed the process and conserve resources. The companies make set-top boxes for Time Warner Cable Inc., which is a defendant in both cases. TiVo said it also will seek an order to force Motorola Mobility to stop selling products that infringe TiVo patents.
In an Oct. 9 filing, Motorola Mobility said TiVo waited too long to make its request, since the judge had already split the case to have the claims against Motorola Mobility and Cisco handled separately. The Motorola Mobility case is further along than the Cisco one, it said.
Motorola Mobility, based in Libertyville, Illinois, said it also has its own patent-infringement claims against TiVo that are unrelated to Cisco. The company said it would seek to have TiVo give up patent-licensing revenue it claims was “wrongfully derived from Motorola’s inventions.”
Alviso, California-based TiVo is basing its damages estimate in part on previous patent settlements including the $600 million it received from Dish Network Corp., more than $215 million from AT&T Inc. and more than $250 million from Verizon Communications Inc.
Mountain View, California-based Google, which bought Motorola Mobility for $12.5 billion in May, is seeking to sell the unit that supplies cable television providers with set-top boxes and other equipment. The TiVo litigation could make that difficult, said Kevin Stadtler, principal of Stadtler Capital Management LLC in Fort Worth, Texas, who owns TiVo shares and is projecting they will rise.
“It is highly improbable Google can sell the set-top box division without settling with TiVo considering the threat of an injunction and a potential claim like this,” he said.
The cases are Motorola Mobility Inc. v. TiVo Inc., 11cv53; and TiVo Inc. v. Cisco Systems Inc., 12cv311, both U.S. District Court for the Eastern District in Texas (Marshall).