Questioning TiVo's Patents

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Digital video recorder (DVR) company TiVo filed lawsuits yesterday against Verizon and AT&T in regard to various aspects of their DVR technology patents. I have long wondered why anyone would bother buying a TiVo when you can get virtually the same service through your cable provider with a DVR box. This partially answers my question: TiVo has patents. And yet, my new Verizon FiOS package has strikingly similar DVR capabilities. Hence, the lawsuit. So I decided to see whether or not I'm convinced that TiVo's patents should hold up in court.*

First, what is TiVo suing about? According to a Financial Times article about the lawsuit:

TiVo argued in its complaints that these services infringed on three of its patents, including ones for a "multimedia time-warping system" and a "system for time-shifting multimedia content streams."

I somehow managed to find the two patents they mention on the U.S. Patent and Trademark Office Website. Let's focus on the latter, because I think we'll probably draw pretty similar conclusions about both. Here's the description of the time-shifting patent, from the USPTO website (if you're interested, here's the other one):

A multimedia time warping system. The TV streams are converted to an Moving Pictures Experts Group (MPEG) formatted stream for internal transfer and manipulation and are parsed and separated it into video and audio components. The components are stored in temporary buffers. Events are recorded that indicate the type of component that has been found, where it is located, and when it occurred. The program logic is notified that an event has occurred and the data is extracted from the buffers. The parser and event buffer decouple the CPU from having to parse the MPEG stream and from the real time nature of the data streams which allows for slower CPU and bus speeds and translate to lower system costs. The video and audio components are stored on a storage device and when the program is requested for display, the video and audio components are extracted from the storage device and reassembled into an MPEG stream which is sent to a decoder. The decoder converts the MPEG stream into TV output signals and delivers the TV output signals to a TV receiver.

I am pretty sure that means that in English this means you can record a TV show and watch it later. But this explains how TiVo does that process, precisely. It sounds easy in English, but this description shows that there's a heap of technology behind it. And that's what TiVo patented -- the process by which they record digital video media.

Now, let's think about what's patentable to see if this idea conforms. It's my understanding that for something to earn a patent, it must pass the following test, conforming to all of these criteria:

Patentable Subject Matter

This essentially means that the subject matter of the patent is not a law of nature, natural phenomenon or abstract idea. Check!

Utility

Is the process useful? Considering I don't know how I ever lived before DVR, I'd certainly say so.

Novelty

This one gets tricky. Here's the gist of how Cornell's Law School describes this criterion:

The novelty criterion requires that the invention not be known prior to the filing of the patent application.

Hmmmm. This gets tricky. The invention is technically novel, but the general idea certainly is not. We all used to record TV shows on our VCRs before DVR came out. Does the fact that TiVo was the first to figure out a good way to do this digitally mean that they get exclusive rights to do so? I'm not entirely convinced. Their method might show technological novelty, but I'm not a computer scientist, so I can't really judge that.

Non-Obviousness

The process can't be obvious. Here's how Cornell Law explains this one:

The nonobviousness criterion disallows a patent's issuance if the invention only differs from a previously patented invention by making obvious modifications. A modification is obvious if "the differences between the subject matter sought to be patented and the prior art are such that the subject matter a whole would have been obvious at the time the invention was made to a person having ordinary skill in the art to which the subject matter pertains."

Again, here it looks like, technically, it may pass this criterion. But in a practical sense, it seems pretty obvious to say that multimedia content could be digitally recorded just like it was recorded non-digitally by VCRs in the past. Could obvious modifications get you there? I guess that depends on how good a computer scientist you are. Do I think that there were students at MIT recording .mpegs of their favorite episodes of "The Simpsons" prior to this patent's issuance in 2002? Absolutely. So I'm a little unconvinced about this criterion too.

Written Description

Finally, you have to be able to provide a written description of the process. See excerpt above from the USPTO.

This leaves us in kind of murky water. I'm not sure that the criteria of novelty and non-obviousness are clearly fulfilled, but I grant that it's close. From what I've read, TiVo filed a similar suit against Dish Network and Echostar. So far it seems to be winning, though the cases are under appeal. So we'll just have to see the ultimate ruling. I think it's safe to say that TiVo's future depends in large part on being victorious in these lawsuits.

* Please also see my comment below what several commenters wrote where I address some concerns with my analysis.

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Daniel Indiviglio was an associate editor at The Atlantic from 2009 through 2011. He is now the Washington, D.C.-based columnist for Reuters Breakingviews. He is also a 2011 Robert Novak Journalism Fellow through the Phillips Foundation. More

Indiviglio has also written for Forbes. Prior to becoming a journalist, he spent several years working as an investment banker and a consultant.
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