Having originally sued and initiated a complaint to the ITC against the maker of the popular TiVo boxes, Microsoft has dropped all of its litigation against the company, ending threats of a ban that could have seen its set-top boxes from being imported to the US and being sold domestically.
Microsoft filed its US trade complaint on January 24, 2012 and saw the continuation of a lawsuit filed against TiVo a year earlier, accusing the company of infringing on its video purchasing and delivery patents. The filing came after the Redmond-based giant had intervened in a case between AT&T and TiVo.
As a result, TiVo filed a counterclaim against Microsoft.
TiVo announced the update in an 8-K filing with the SEC, in which it is compelled to disclose such information to its investors:
On March 21, 2012, TiVo and Microsoft reached an agreement whereby Microsoft has agreed to dismiss all of its pending litigation against TiVo, including its action in the United States International Trade Commission and both of its cases in the United States District Court for the Northern District of California. In conjunction with these dismissals, TiVo has agreed to dismiss its counterclaim against Microsoft in the United States District Court for the Northern District of California. No patent rights were granted to Microsoft by TiVo.
According to Microsoft, “TiVo’s products infringed on one or more claims of U.S. Patent Nos. 5,585,838 (“the ’838 patent”), 5,731,844 (“the ’844 patent”),6,028,604 (“the ’604 patent”), and 5,758,258 (“the ’258 patent”). The Microsoft Patents are valid and enforceable United States Patents, the entire right, title and interest in and to which Microsoft owns by assignment.”
TiVo says that “no patent rights were granted to Microsoft by TiVo,” we have contacted the companies involved to enquire how an agreement was reached.