TiVo: License first, litigate later

“We’ve been inventing the future for the past three decades,” says Arvin Patel, chief IP officer of TiVo.

While some industry players may worry about major disruption to the entertainment landscape, where traditional delivery channels evolve and content creation becomes more democratic, TiVo is prepared.

TiVo is perhaps best known for its digital video recorder (DVR)—also named the TiVo. Founded in the US in the late 1990s by Mike Ramsay and Jim Barton, the company unveiled its first working prototype of the TiVo in January 1999.

Now it’s inventing next generation technology, and while we may all be guilty of binge-watching TV series on Netflix, TiVo’s ‘watch next episode’ technology has helped us to do this. Other next-gen technologies on which TiVo is working include multiple screen, voice recognition, metadata, and others.

“We have something of a gold rush mentality in the entertainment industry, and there’s lots of innovation throughout the entire value chain,” notes the IP executive, adding that the disruption plays right into TiVo’s “wheelhouse”.

He goes on to claim that TiVo is the leading innovator in the entertainment technology space, “making the ultimate entertainment experience a reality”.

TiVo agreed to be acquired by Rovi in April 2016 for $1.1 billion.

Patel notes that the acquisition was a product-driven deal, so patents were not a driving force.

“But from a patent perspective, the portfolios are complementary—Rovi and TiVo both have foundational IP for the entertainment industry,” he adds.

One of the company’s key differentiators is the way it approaches research and development (R&D). Over the past decade, TiVo has spent $2 billion on R&D, and $193 million in the past four quarters alone.

For the operation to run as a well-oiled engine, Patel explains, the IP team is embedded into the product development process from the point of innovation. This means that the team works with the inventors in a collaborative and cohesive way.

When asked to define innovation, Patel states that it’s the intersection of insight and meaningful invention (a mantra that the company lives by).

The “entertainment junkies” at the firm help to provide the business insight on where the market is going and how customers want to interact.

The result: more than 5,000 issued and pending patents, in addition to its 750 trademarks worldwide. This compares to the 3,000 patents owned by entertainment industry participants Dish and Comcast, and the nearly 18,000 owned by AT&T, which also include many patents beyond media and entertainment.

Some of this strategy may stem from Patel’s time at IBM, where he spent six years as global leader of the technology company’s IP strategy. During that time he worked with David Kappos, a former director of the US Patent and Trademark Office (USPTO).

To use an American football analogy, Patel is now on the offensive line for TiVo, ensuring that the company’s portfolio allows it to make the moves it wants.

TiVo is in a unique position, according to Patel, with roughly half of its revenue stemming from IP and the other half from product/solution sales.

In fiscal year 2016, the company recognised around $400 million in IP licensing.

“IP licensing is one of many channels to market for us, another mechanism to get our inventions out to consumers through our licensees,” says Patel. The licensing team reports to him, and he reports directly to the CEO, Enrique Rodriguez.

TiVo has undertaken some major deals over the past few years with big players in the industry.

January marked the signing of an expanded agreement with Google, to include YouTube TV, a streaming service that lets users watch live TV. This engagement reinforces the relevance of TiVo’s patents for the new media cord-cutting entrants into the entertainment industry.

One year before this, TiVo signed a long-term IP licence with HBO, a subsidiary of Time Warner, while AT&T and Sony renewed their licences in September and October 2017, respectively.

In addition, TiVo has licensing deals with nine of the top ten pay-to-watch TV companies.