Almost two weeks after a deadline passed for notified Internet companies to sign licensing deals and receive waivers for claimed past due fees and royalties, Acacia Research Corp. has signed its 100th licensing deal for the streaming media patent claims they call Digital Media Transmission.
The company didn't reveal who the 100th licensee is, but they did say the deal was also the 59th such license agreement so far in the fourth quarter of 2003.
Earlier this fall, Acacia said they would offer waivers on claimed past due royalties and fees for the DMT patents through Nov. 30. Senior vice president Robert Berman said those who contacted the company before Nov. 30 – whether Internet companies who actually stream media, or Webmasters of sites that link to such streaming content providers – would still be offered the waivers.
"We received many e-mails from Webmasters about the deadline," Berman told AVN.com. "And we haven't been able to get back to all of them yet. But those who contacted us prior to the deadline, we will continue to honor the pre-Nov. 30 rates… Those who have, be patient. We will get to you, and we will continue to honor our pre-Nov. 30 rates for you."
Those who weren't among the people trying to contact Acacia before the past-due waiver deadline, but who sign licensing deals in December, Berman said, would pay the new rates. But he said they would not have to pay a new contract administration fee that will begin in January and will rise each month. "So, there's still the incentive to license with us sooner than later," he said.
The contract administration fee – which a licensee will be required to pay only once – will be $500 for the entire month of January 2004. From Feb. 1-29, it will be $750; from March 1-31, $1,000; from April 1-30, $1,250; from May 1-31, $1,500; from June 1-30, $1,750; and, from July 1-31, $2,000.
New Destiny/Homegrown Video chief Spike Goldberg said he wasn't impressed that Acacia had signed its 100th such DMT license. "After sending out 10,000 letters and getting 100 licenses," he said, "I think it's pretty clear that Acacia should find a new line of work."
VideoSecrets chief Greg Clayman said that deal wouldn't bear at all on the court challenge in which New Destiny/Homegrown and VideoSecrets leads a group of adult Internet businesses challenging the Acacia patent claims. "It is obviously a desperate way of trying to spin the lack of acceptance that this patent had across the whole Internet," Clayman said of the 100th licensing deal announcement.
Acacia's streaming media patent claims have been challenged by a group of adult Internet companies led by New Destiny/Homegrown and VideoSecrets. A Markman hearing – in which a federal trial judge hears evidence and definitions and then determines asserted patent claims as matters of law – is set for Feb. 6, 2004, in federal court in Irvine, California.
Neither side expects quick resolution of the patent issue. The case was transferred from U.S. District Judge Alicemarie Stotler to U.S. District Judge Joseph Ware earlier this fall.
"We have a very good judge," Goldberg said after the Markman hearing was scheduled. "We actually have a very good thing that's happened. If the judge defines streaming as what we all do on the Internet, fine. If the judge looks at the word 'transmission,' and if transmission means data going from point A to point B, as opposed to the judge saying transmission means streaming on the Internet, that's why this is so substantial."
