Google and Cisco Systems will pay TiVo an upfront sum of $490 million to settle the DVR company’s patent litigation — much less than Wall Street anticipated — and TiVo also announced that it has resolved its lawsuit against Time Warner Cable.
The payments from Google and Cisco bring the total from awards and settlements related to the use of TiVo’s patents to roughly $1.6 billion, including previous deals with Dish Network, AT&T and Verizon, according to TiVo. In conjunction with approving the terms of the settlement, TiVo’s board approved a major expansion of the company’s stock repurchase program.
However, investors and analysts had expected TiVo’s payout from Cisco, Google (which acquired Motorola Mobility) and TWC to be higher — with some estimates around $1 billion for Motorola alone. TiVo itself had said in court filings that it could be entitled to “billions of dollars” in royalty fees from Motorola Mobility based on the number of Motorola DVRs deployed by Time Warner Cable.
On the lower-than-expected size of the settlements, TiVo shares opened down 19% Friday from the previous closing price, after the stock climbed Thursday afternoon on early word about the Google-Motorola settlement.
TiVo said it will recognize a portion of the $490 million payment as past damages during the second quarter of 2013 and the remainder over time.
“We are pleased to reach an agreement that brings our pending litigation to an end and further underscores the significant value our distribution partners derive from TiVo’s technological innovations and our shareholders derive from our investments in protecting TiVo’s intellectual property,” TiVo president and CEO Tom Rogers said in a statement.
TiVo’s total $1.6 billion take from its patent-litigation strategy, which it will accrue over the next several years, exceeds the gross revenue the company has generated over the past six years, from 2007 to 2012.
As part of the settlement, TiVo and Google/Motorola, Cisco and Time Warner Cable agreed to dismiss all pending litigation between the companies. In addition, TiVo entered into cross-licensing agreements with Google and Cisco and agreed to grant Arris Group (which acquired the Motorola set-top unit from Google) a limited license to four patents.
Both Cisco and Time Warner Cable issued statements saying that they were “pleased” with the outcome of the litigation. Google’s Motorola Mobility unit did not immediately respond to a request for comment; Arris declined to comment.
Google assumed the liability of the TiVo patent litigation after it bought Motorola Mobility last year for $12.4 billion in cash. The Internet giant sold the Motorola cable set-top and broadband division to Arris, a supplier of communications equipment to cable operators, for $2.35 billion earlier this year. Google retained Motorola’s mobile phone division. Under the terms of the Arris-Google deal, Arris was responsible for a maximum of $50 million in damages and royalties in connection the TiVo litigation.
TiVo’s agreement with Google will expire on July 31, 2018. The agreement with Cisco will expire 10 years from its effective date, while the pact with Arris will expire when the last of the licensed patents expire.
With the settlements, TiVo’s board doubled the size of the stock-repurchase authorization, from $100 million to $200 million, and extended the plan for an additional two years until August 29, 2015. To date, the company has acquired nearly $57 million of equity acquired through open-market purchases and from tax withholdings on employee-restricted share vesting. According to TiVo, the expanded repurchase authorization means the company will have more than $160 million of unused stock repurchase authorization.