Comcast customers may soon be facing even more disappointment as the company’s use of cloud and multi-room DVR features is being challenged in court for patent infringement. The complaint, announced Monday by TiVo-company Rovi, is the latest chapter in a years-long legal battle that has left Comcast customers without some basic service features considered standard in the cable industry.
As all too many Comcast customers have learned over the past year and a half, it is already impossible to set a Comcast DVR to record remotely. It was once possible, but alas, no more—a disappointing downgrade of technology for customers of a company that is more disliked than big banks and the IRS.
Beginning in November 2017, the cable giant, one of America’s most-hated companies, was forced to disable the remote-record feature after the International Trade Commission ruled against it for violating patents owned by TiVo.
Comcast customers continue to voice their anger as they discover their cable bills keep rising but their features have been downgraded. Just do a quick search on Twitter and find that many complaints to @ComcastCares are customers who wished to set a recording from their phone. Comcast responds to let the customers know that feature has been disabled. Sometimes the company will note there was a “legal reason” for the change.
Customers of other cable companies are still able to record programs remotely. This is because those companies pay licensing fees to TiVo for the technology. In fact, nine out of the ten largest pay-TV providers license TiVo’s patents. This was also once true of Comcast, which paid licensing fees to TiVo for over a decade up until 2016 when the deal expired. Rather than renew, Comcast opted to continue using TiVo technology without paying to license it. This led to the ruling against Comcast before the U.S. International Trade Commission (ITC) for infringing on two TiVo patents. An import ban was implemented on Comcast’s X1 set-top boxes, and the remote-record feature was disabled.
Upon losing before the ITC, many companies might decide to reach a licensing deal to provide customers with the service they expect. But Comcast, already known for its bullying tactics with its own customers, instead turned to the U.S. Patent Trial and Appeal Board (PTAB), filing a number of inter partes review petitions and systematically working to invalidate TiVo’s patents.
PTAB is the product of 2011 legislation intended to aid inventors by making the patent appeal process cheaper, faster, and fairer. But Republican Congressman Steve Stivers of Ohio says, “Unfortunately, what we got was a system that threw the proverbial baby out with the bathwater and encouraged gamesmanship of the [inter partes review] process. Combined with some precedential court rulings, we have been left with a patent system that has devalued intellectual property and encouraged willful efficient infringement.” Stivers has worked across the aisle with Democratic Congressman Bill Foster of Illinois to resolve problems with the legislation, but that has yet to see much movement on Capitol Hill.
With some irony, PTAB is run by the U.S. Patent and Trademark Office (PTO), where inter partes reviews are made by administrative judges employed by the PTO. IP Watchdog notes that the PTO claims its patent examiners are correct in patent issuance determination 92.4 to 96.5 percent of the time. And yet, when patents are reviewed by PTO employees at PTAB, 82.5 percent are found defective. In examining 220 patents found valid by federal court, 168 (76.5 percent) were determined to be defective by PTAB.
There are a wide range of risks to patent holders posed by PTAB. Research conducted by the Regulatory Transparency Project has found patents often face multiple challenges, being cited in dozens of petitions. Large companies with deep pockets are empowered by a system that allows those with resources to fight a war on multiple fronts. A large company sued for patent infringement in court can turn to PTAB to invalidate the patent. A lone inventor with limited resources will be faced with unaffordable legal bills. Oftentimes, patent offenders will file with the PTAB simply to force a legal settlement, as patent holders know the odds are stacked against them when the case is considered by PTAB.
Even more advantage goes to the corporate behemoths and tech giants by allowing for “cluster-bombing” of petitions in PTAB. A single petitioner with enough legal resources can file multiple petitions to invalidate a patent. The biggest offenders of this practice? Perhaps unsurprisingly, it’s some of the world’s largest companies.
Apple is the top filer for inter partes review, and 56 percent of its petitions to PTAB are duplicative. The next largest filers are Samsung, Google, Microsoft, and LG—all of which file a high proportion of duplicative petitions, according to a study from the Alliance of U.S. Startups and Investors for Jobs (USIJ) and conducted by the law firm Robins Kaplan. Comcast, for its part, has often filed multiple challenges to a single patent and in one instance has filed at least eight formal challenges to a single TiVo patent.
“Congress never intended the PTAB to become a tool for large, incumbent corporations to delay and repeatedly attempt to kill a valid patent. But this is what the board has become,” says Chris Israel, Executive Director of USIJ.
And so Comcast sees hope in being able to avoid paying the licensing fees that all the other large pay-TV providers acknowledge are owed to TiVo. Comcast’s potential for success lies with a rogue patent board that sides against inventors and in favor of big corporations more often than not. Win or lose, in the interim, its customers will have to get by without standard services.
