What changed in this filing

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Item 1. Legal Proceedings

2022-08-08 compared with 2022-05-09 · 45 added, 30 removed, 39 unchanged (66% of the section changed)

1 unchanged sentence

In the normal course of our business, we are involved in legal proceedings.

In the past, we have litigated to enforce our respective patents and other intellectual property rights, to enforce the terms of license agreements, to protect trade secrets, to determine the validity and scope of the proprietary rights of others and to defend ourselves or our customers against claims of infringement or invalidity.

In the past, we have litigated to enforce our patents and other intellectual property rights, to enforce the terms of license agreements, to protect trade secrets, to determine the validity and scope of the proprietary rights of others and to defend ourselves or our customers against claims of infringement or invalidity.

We expect to continue to be involved in similar legal proceedings in the future, including proceedings regarding infringement of our patents and proceedings to ensure proper and full payment of royalties by licensees under the terms of our license agreements.

2 unchanged sentences

Patent Infringement Litigation

From time-to-time in the ordinary course of our patent licensing business, we are required to engage in litigation to protect our intellectual property from infringement.

From time-to-time in the ordinary course of our IP licensing business, we are required to engage in litigation to protect our intellectual property from infringement.

While litigation is never our preference and we prefer to reach mutually agreeable commercial licensing arrangements with third parties, it is sometimes a necessary step to effectively protect our investment in patented technology.

As a result of these lawsuits, defendants have often filed Inter Partes Review (“IPR”) petitions with the U.S.

Patent Office’s Patent Trial and Appeal Board (and other similar post-grant proceedings outside of the U.S.) seeking to invalidate one or more of the patents-in-suit.

As a result of these lawsuits, defendants have often filed Inter Partes Review (“IPR”) petitions with the U.S.

Patent Office’s Patent Trial and Appeal Board (and other similar post-grant proceedings outside of the U.S.) seeking to invalidate one or more of the patents-in-suit.

We are currently engaged in multiple lawsuits with several third parties.

2 unchanged sentences

and TiVo Solutions Inc.

(together, “TiVo”) filed a patent infringement complaint against Videotron Ltd.

and Videotron G.P.

(together, “Videotron”) in Toronto, Canada, alleging infringement of six patents (“Videotron 1”).

Videotron was a prior licensee under the Rovi patent portfolio.

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The closing arguments were held in January 2021.

On May 6, 2022, the Court posted a docket entry stating that it intends to issue the Confidential Reasons and Judgment in Videotron 1 on June 3, 2022.

On May 21, 2021, Rovi filed a patent infringement complaint against Videotron in Toronto, Canada, alleging infringement of four patents (“Videotron 2”).

On June 10, 2022, the Court issued its decision in the case finding in favor of Videotron and its legacy illico platform.

Specifically, the Court found invalid each of the asserted claims of the four patents involved in the case.

In Canada, the prevailing party in patent litigation is entitled to reimbursement of certain of its costs and expenses.

Accordingly, while the exact reimbursement amount has yet to be determined, we have accrued $2.2 million for estimated expense reimbursement.

On May 21, 2021, Rovi filed a patent infringement complaint against Videotron in Toronto, Canada, alleging infringement of four patents (“Videotron 2”).

On July 21, 2021, the Federal Court of Canada held a case management conference in Videotron 2, shortly before which Videotron filed a motion to strike various portions of the statement of claim.

On October 22, 2021, the Court held a hearing on Videotron’s motion to strike.

On March 22, 2022, the Court issued an order on Videotron’s motion to strike, dismissing the motion in its entirety.

On April 1, 2022, Videotron filed an appeal of the Court’s order dismissing Videotron’s motion to strike.

A hearing on Videotron’s appeal is scheduled for May 31, 2022.

A case management conference is scheduled for June 6, 2022.

On October 22, 2021, the Court held a hearing on Videotron’s motion to strike.

On March 22, 2022, the Court issued an order on Videotron’s motion to strike, dismissing the motion in its entirety.

On April 1, 2022, Videotron filed an appeal of the Court’s order dismissing Videotron’s motion to strike.

On June 30, 2022, the Court issued its decision in Videotron's appeal in which it ruled in Rovi's favor and dismissed Videotron's appeal.

The Court has not set the trial date.

Bell and Telus Patent Infringement Litigation

On January 19, 2018, TiVo filed a patent infringement complaint against Bell Canada (and four of its affiliates) in Toronto, Canada, alleging infringement of six patents (“Bell 1”).

On February 2, 2018, TiVo filed a patent infringement complaint against Telus Corporation (and two of its affiliates) in Toronto, Canada, alleging infringement of the same six patents (“Telus 1”).

Bell Canada and Telus Corporation were previously indirectly licensed to some of Rovi’s patents through a prior agreement between Rovi and one of their suppliers.

Bell 1and Telus 1 are being heard together for purposes of pre-trial and trial proceedings.

On January 19, 2018, TiVo filed a patent infringement complaint against Bell Canada (and four of its affiliates) in Toronto, Canada, alleging infringement of six patents (“Bell 1”).

Bell Canada and Telus Corporation were previously indirectly licensed to some of Rovi’s patents through a prior agreement between Rovi and one of their suppliers.

Bell 1and Telus 1 were heard together for purposes of pre-trial and trial proceedings.

On August 27, 2019, the Court issued an order bifurcating the liability phase from the damages phase of the cases.

There is no set trial date or procedural schedule for the damages phase of the cases.

The liability and injunction trial on four patents was held from July 13 – August 6, 2020.

The liability and injunction trial on four patents was held from July 13 through August 6, 2020.

The closing arguments were held in January 2021.

On May 6, 2022, the Court posted a docket entry stating that it will advise the parties of the anticipated date of the judgment in Bell 1 and Telus 1 promptly after it issues the Confidential Reasonings and Judgment in Videotron 1 on June 3, 2022.

On June 13, 2022, the Court posted a docket entry stating that it anticipates it will issue the judgement and reasons in Bell 1 and Telus 1 to the parties on a confidential basis by August 31, 2022.

On July 27, 2021, Rovi filed a patent infringement complaint against Bell Canada and four of its affiliates, Telefonaktiebolaget L M Ericsson and Ericsson Canada Inc., and MK Systems USA Inc.

and MK Mediatech Canada Inc.

(collectively, “Defendants”) in Toronto, Canada, alleging infringement of four patents (“Bell 2”).

The Defendants filed a motion to strike various portions of the statement of claim in Bell 2.

On October 22, 2021, the Federal Court of Canada held a hearing on Defendants’ motion to strike.

On March 22, 2022, the Court issued an order on Defendants’ motion to strike, dismissing-in-part

and granting-in-part.

On April 1, 2022, the Defendants filed a Notice of Motion to Appeal the Court’s order on Defendants’ motion to strike.

A hearing on Defendants’ appeal is scheduled for May 31, 2022.

No further dates have been set.

On October 22, 2021, the Federal Court of Canada held a hearing on Defendants’

motion to strike.

On March 22, 2022, the Court issued an order on Defendants’

motion to strike, dismissing-in-part and granting-in-part.

On April 1, 2022, the Defendants filed a Notice of Motion to Appeal the Court’s order on Defendants’

motion to strike.

On June 30, 2022, the Court issued its decision in Defendants' appeal in which it ruled in Rovi's favor and dismissed Defendants' appeal.

The Court has yet to set the trial date.

NVIDIA Patent Infringement Litigation

On May 8, 2019, Invensas Corporation and Tessera Advanced Technologies, Inc.

filed a complaint against NVIDIA Corporation (“NVIDIA”) in the United States District Court for the District of Delaware, alleging infringement of five patents, and requesting, among other things, that NVIDIA be ordered to pay compensatory damages in an amount no less than a reasonable royalty.

NVIDIA answered the complaint on July 1, 2019 and subsequently moved to transfer the case to the United States District Court for the Northern District of California.

The court denied NVIDIA’s motion to transfer on September 17, 2019.

In September 2020, the Patent Trial and Appeal Board (“PTAB”) instituted IPRs of several patents-in-suit.

The court denied NVIDIA’s motion to transfer on September 17, 2019.

In September 2020, the Patent Trial and Appeal Board (“PTAB”) instituted IPRs of several patents-in-suit.

The parties stipulated to an order staying the litigation pending resolution of the IPR proceedings, and to dismissal of claims relating to two patents.

6 unchanged sentences

Invensas filed its opening brief on March 14, 2022.

NVIDIA’s response brief is due May 25, 2022, and Invensas’s reply brief is due June 15, 2022.

On June 8, 2022, NVIDIA filed its response brief.

On July 22, 2022, Invensas filed its reply brief.

No date has been set yet for oral argument.

The District Court Litigation will remain stayed pending the outcome of the IPR appeals.

Ri sk Factors

There were no material changes to the risk factors previously disclosed in Part 1, Item 1A.

of our Annual Report on Form 10-K for the year ended December 31, 2021, and Part II, Item A of our Quarterly Report on Form 10-Q for the quarter ended March 31, 2022, which are incorporated by reference herein.

Unregistered Sales of Equity Securities and Use of Proceeds

Not applicable.

Defaults Upon Senior Securities

Not applicable.

Mine Safety Disclosures

Not applicable.

Compared sentence by sentence after normalising whitespace, quotation marks, case and digits, so re-formatting and restated figures do not read as changed language. Wording changes appear as one removal and one addition. The current filing and the prior one are authoritative.

What changed 10-Q

Item 1. Legal Proceedings