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In Part I of this series, IPTV Magazine introduced you to Acacia Research Corporation and their portfolio of patents relating to streaming media. In this issue, IPTV Magazine explains how these patents might relate to IPTV.
Note: This is a general overview of Acacia's DMT patents and IPTV systems. This is not legal advice. For advice regarding your own specific circumstances, IPTV magazine urges the reader to consult an attorney.
Acacia Research Corporation, through its subsidiary Acacia Media Technologies Group (Nasdaq: ACTG), manages the rights to a portfolio of patents Acacia calls Digital Media Transmission (DMTŪ) technology. The DMTŪ patents relate to on-demand audio and video, audio and video streaming, and audio and video downloading via TV, satellite TV, Internet, fiberoptic, and wireless.
Currently, Acacia has received five U.S. patents on DMTŪ. These include U.S. Patent 5,132,992, U.S. Patent 5,253,275, U.S. Patent 5,550,863, U.S. Patent 6,002,720, and U.S. Patent 6,144,702. Each patent claims the priority date of the '992 patent and shares a common specification.
Acacia Media Technologies has also acquired corresponding patents in many
other countries.
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A search of the
European Patent Office's esp@cenet database indicates national patents corresponding to U.S. Patent 6,144,702 have been issued in Austria, Australia, Germany, Denmark, Spain, Greece, Japan, and Mexico. The global patent family includes 19 U.S. applications, 5 U.S. patents, 9 European patents, and a PCT application.
Acacia asserts that its DMTŪ patents cover "video-on-demand and video streaming via cable TV, satellite TV, Internet, fiberoptic and wireless." Although Acacia claims nearly 300 licensees to its DMTŪ patents, not everyone apparently agrees. The DMTŪ patents are currently the subject of consolidated litigation in the U.S. District Court for the Northern District of California. On Feb. 24th, 2005 by the Judicial Panel on Multidistrict Litigation ordered that eight co-pending DMTŪ litigations filed by Acacia be consolidated into one. In April 2005, Acacia Media Technologies Corporation added Time Warner Cable, Cablevision Systems Corporation, Insight Communications Company, Cebridge Connections and Bresnan Communications to the DMTŪ patent infringement litigation. Lawsuits filed in the U.S. District Court for the Southern District of New York and the Easter
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District of New York were transferred to the Northern District of California for consolidation with the existing litigation in accordance with the Transfer Order. A lot is thus riding on this case.
At the heart of Acacia's patent claims are U.S. Patents 5,132,992 and 6,144,702. The '992 and '702 patents relate to "a system for storing information at one location and for transmitting parts of the information to a user of the system who is located elsewhere. The stored information is digitized and the respective stored parts are separately identified so that they can be selectively retrieved by the user." Whilst this is the general thrust of the patents - one that does indeed appear very broad - it is the claims that define Acacia's specific patent rights.
On July 12, 2004, U.S. District Judge James Ware issued his Markman order in the consolidated case. The Markman order is essentially the judge's instruction to the jury as to what the patent claims mean and how the claims should be read. In the Markman order, the court issued its ruling on independent claims 1 and 41 and 1, 17, and 27 of U.S. Patents 5,132,992 and 6,144,702, respectively.
In the court's ruling on the '992 patent, Acacia did not fare very well. Among other things, the court declined "to include a human" and "dispatching control software" as corresponding structures in its construction of 'identification encoding means." More importantly for the
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defendants, the court found the term indefinite and invited the Defendants "to file a motion for summary judgment that the term 'identification encoding means' is indefinite, rendering claims 1, 3, 4, 5, 9, 10, and 11 of U.S. Patent 5,132,992 to be invalid, respectively, pursuant to 35 USC § 112, 2. At the same time, Defendant may file a motion for summary judgment pursuant to § 112, 1." If the motion for summary judgment were accepted, it would mean that the judge would declare these claims as invalid and unenforceable.
Because the issues raised by the court have to do with sufficiency of disclosure in the specification, and both patents share the same disclosure, Acacia fared only slightly better on the '702 patent.
It would appear from the Markman order that Acacia's patent claims were pruned more than watered. What impact this will have on the eventual determination of infringement remains to be seen. The case is still pending.
In the next installment, IPTV magazine will provide more information about Acacia's DMTŪ licensing approach, some of the companies that have agreed to a license, and collective attempts that have been made to defend against the DMTŪ patents.
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