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Item 3. Legal Proceedings

2022-02-24 compared with 2021-02-26 · 30 added, 30 removed, 34 unchanged (64% of the section changed)

11 unchanged sentences

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

Comcast Patent Infringement Litigation

Since April 1, 2016, TiVo’s subsidiary Rovi Corporation and various of its subsidiaries (collectively, “Rovi”) have been involved in a series of lawsuits against Comcast Corporation (“Comcast”) pending in the United States International Trade Commission (the “ITC”) and United States District Courts.

The lawsuits arose when Comcast’s twelve-year patent license with Rovi (and its predecessors) expired on March 31, 2016.

After being unable to agree on terms for a renewal before the license expired, Rovi initially filed multiple lawsuits against Comcast, and subsequently filed additional lawsuits against Comcast in various venues in the United States.

Rovi filed three ITC investigations (along with four companion district court cases asserting the same patents) and two standalone cases in various United States District Courts involving a total of 37 patents.

Comcast filed IPRs against all of the patents involved in these actions.

In the first ITC investigation, the ITC issued (1) a limited exclusion order prohibiting the unlicensed entry of certain digital video receivers and hardware and software components thereof that infringed two particular Rovi patents and (2) a cease and desist order prohibiting Comcast from conducting in the United States several enumerated activities, including, among others, selling and leasing any infringing set-top boxes that it had already imported.

In addition, the ITC found certain of Rovi’s asserted patents either not infringed by Comcast or its set-top box suppliers, lacking a domestic industry or invalid.

All appeals of the first ITC investigation have been exhausted and the ITC’s decision is final.

In the second ITC investigation, the ITC issued (1) a limited exclusion order prohibiting the entry into the United States of infringing digital video receivers and related hardware and software components that infringed one of Rovi’s asserted patents, and (2) a cease and desist order directed to Comcast.

The ITC also found certain of Rovi’s asserted patents either not infringed by Comcast, lacking a domestic industry or invalid.

Both Rovi and Comcast have filed appeals of the ITC’s final determination in the second ITC investigation.

In the third ITC investigation, the Administrative Law Judge issued her Final Initial Determination in which she found that Comcast’s X1 platform infringes two Rovi patents and recommended the issuance of a limited exclusion order and cease and desist order.

On October 13, 2020, the ITC issued its notice of its decision to review in part the Final Initial Determination and requesting written submissions on various issues.

The ITC determined to review certain issues.

All of the pending district court cases that Rovi has filed against Comcast were stayed pending either (a) the final outcomes in their corresponding ITC cases, or (b) final rulings (including all available appeals) of pending IPRs, with one exception being that one case was proceeding with respect to a single patent.

On November 9, 2020, we announced that we entered into a license agreement with Comcast.

In connection with the license agreement, the parties settled all outstanding litigation, pursuant to which all pending ITC investigations and district court cases between them have been terminated or dismissed.

This matter is now concluded.

Videotron Patent Infringement Litigation

On June 23, 2017, Rovi Guides, Inc.

and TiVo Solutions Inc.

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

(“ Rovi ”) and TiVo Solutions Inc.

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

and Videotron G.P.

2 unchanged sentences

The first week of trial on four patents was held the week of March 9, 2020.

The Federal Court of Canada closed due to COVID-19 on March 16, 2020, and the trial was temporarily stayed.

The Federal Court of Canada closed due to the COVID-19 pandemic on March 16, 2020, and the trial was temporarily stayed.

The trial resumed on May 25, 2020, conducted remotely by video, and concluded on June 17, 2020.

The parties filed their written closing submissions on September 30, 2020.

The closing oral arguments were held in January 2021.

There is no set date for the court to issue its judgement.

The closing arguments were held in January 2021.

No date is set by the Court to issue its judgement.

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

On July 21, 2021, the Federal Court of Canada held a case management conference, 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.

To date, the Court has not ruled on the motion.

No further dates have been set.

Bell and Telus Patent Infringement Litigation

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The Bell Canada and Telus Corporation cases are being 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 case.

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

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

1 unchanged sentence

The closing arguments were held in January 2021.

There is no set date for the court to issue its judgement.

No date is set by the Court to issue its judgement.

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.

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

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

To date, the Court has not ruled on the motion.

No further dates have been set.

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.

On May 8, 2019, Invensas Corporation (“Invensas”) and Tessera Advanced Technologies, Inc.

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.

1 unchanged sentence

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 the two patents.

For the remaining IPRs, oral arguments are scheduled for June 2021, and final decisions are expected in September 2021.

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

As a result, there are three patents-in-suit remaining.

One patent has no IPRs pending against it.

Two patents are subject to IPRs.

On June 9, 2021, the PTAB held oral arguments in the IPRs.

On September 1, 2021, the PTAB issued final written decisions in the IPRs in which it found all challenged claims of the two patents invalid.

On November 1, 2021, Invensas filed appeals of each of the IPR decisions with the United States Court of Appeals for the Federal Circuit, with Invensas’s opening brief due March 14, 2022, NVIDIA’s response brief due April 25, 2022, and Invensas’s reply brief due May 16, 2022.

No date has been set yet for oral argument.

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

Mine Safety Disclosures

1 unchanged sentence

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-K

Item 3. Legal Proceedings