Sony Sues Asserting Its PlayStation Does Not Infringe Rovi and TiVo Patents

On Friday in the Northern District of California, plaintiffs Sony Corporation, Sony Electronics Inc., and Sony Interactive Entertainment LLC  filed a redacted complaint for declaratory judgment of patent noninfringement regarding the asserted patents of defendants Rovi Guides, Inc.; Rovi Technologies Corporation; and TiVo Solutions, Inc., who are digital entertainment companies that, among other things, provide TiVo a digital video recorder.

According to the complaint, Rovi Guides is a subsidiary of Rovi Technologies, which is a subsidiary of TiVo. Previously, Sony and the defendants engaged in various patent license negotiations. According to the complaint, in December 2015, Sony and Rovi “executed a Worldwide Patent License Agreement” and in 2017, the parties began discussing a renewed license, which SONY noted ultimately led to an amendment of the 2015 license in September 2017, entitled “SONY Amendment One to Worldwide Patent License Agreement.” This amendment added TiVo as a party to their agreement. Furthermore, Sony and TiVo entered a Non-Disclosure Agreement (NDA). However, Sony alleged that the licensing discussions were unsuccessful. Specifically, Sony averred that it “is not licensed under the Asserted Patents for particular products and services sold after expiration of the 2017License Agreement and does not believe there is any reason to take such a license because the Asserted Patents do not cover any of SONY’s products and services.” Moreover, Sony claimed that it “reasonably believes the Parties to be at an impasse with respect to their respective rights under the Asserted Patents.” Sony proffered that the defendants “assert rights under the Asserted Patents based on identified ongoing activities of SONY, and SONY contends that it has the right to engage in the accused activities without a license from defendants.”

Sony claimed that its PlayStation video game console and other similar products do not infringe the defendants’ asserted patents because its accused products allegedly do not practice the described information in the asserted patented claims. As a result, Sony stated that there is no need for it to license these asserted patents.

Sony reiterated that “actual controvers[ies] exists between SONY and Defendants…and th[ese] controvers[ies are] likely to continue. Accordingly, SONY desires a judicial determination and declaration of the respective rights and duties of the parties with respect to the” purported controversies.

Sony has sought for the court to issue a judgment and declaration that Sony has not and does not infringe any claims of the asserted patents either directly, contributorily, or by inducement nor has it otherwise violated the defendants’ rights; an injunction against the defendants from charging Sony with infringement or initiating legal action against Sony for infringement in relation to the asserted patents; an award for costs and fees; and other relief.

Sony is represented by Kwun Bhansali Lazarus LLP and Wolf, Greenfield & Sacks, P.C.