Call it a triple play for Acacia Research Corp.: They've finished the acquisition of 27 patent portfolios and promoted two key personnel, including executive vice president Robert Berman.
Berman becomes Acacia’s chief operating officer, while former Global Patent Holdings chief operating officer Dooyong Lee joined Acacia in Berman’s former position. Acacia bought the patent portfolios from Global Patent Holdings, signing a letter of intent last year for the assets of the company that owned 11 patent licensing firms.
The Global Holdings deal gives Acacia ownership of portfolios including 120 American patents and “certain” foreign counterparts, Acacia said January 31. Acacia paid $5 million cash and issued about 3.9 million shares of Acacia stock, paying another $2 million cash over two years, the company added.
The portfolios include patents for peer-to-peer network communications, image resolution/enhancement, data transmission, and encryption activation, among others.
"This acquisition significantly expands and diversifies our revenue generating opportunities and accelerates the execution of our business strategy of acquiring, developing and licensing patented technologies,” said Acacia chief executive Paul Ryan, announcing the deal. “We will continue to acquire additional patent portfolios, as Acacia moves toward its goal of becoming the leading technology licensing company."
Other technologies covered in the newly-acquired portfolios include broadcast equipment, cache coherency, credit card receipt processing, data file synchronization, datamatrix bar codes, dynamic manufacturing models, handheld endoscopes, interactive simulation systems, interstitial Internet advertising, programs for resource scheduling and displaying interrelated tables, spreadsheet programs, and video noise reduction and audio-video synchronization.
Berman elected not to comment about his promotion when reached by AVNOnline.com, but Ryan had warm words for Berman and Lee as he announced the promotions. "[His] promotion reflects his outstanding contributions to Acacia and the new position anticipates the growth in our business resulting from the acquisition of the rights to 27 new patent portfolios from Global Patent Holdings," Ryan said of Berman. Of Lee, he said his two decades plus experience in patent licensing and technology management plus business development “will be instrumental in the continued growth of our company.”
Lee had been Global Patent Holdings’ chief operating officer since May 2003, around the time Berman was promoted to Acacia’s executive vice president. Berman received that promotion two years after he became senior vice president for business development and general counsel.
Berman has become a familiar figure to the Adult Internet, ever since Acacia’s effort to license its Digital Media Transmission streaming media patent group was met with a challenge from a group of Adult Net companied led by New Destiny/Homegrown Video and VS Media, a group challenging the validity of the patent group in federal court.
Ironically, Lee co-founded FRI, an intellectual property consulting firm under the sponsorship of Fish & Richardson – which represents the lead challengers in the court battle over Acacia’s DMT.
A case management conference with U.S. District Judge James Ware in the battle between Acacia and the Adult Internet is set for February 28, following a so-called multi-district panel getting together to determine whether DMT litigation – against mostly cable and satellite television defendants – in Arizona, Ohio, Minnesota, and northern California, should all be moved to the California central district’s southern division, where the Acacia/Adult Net battle is ongoing.
Last July, Ware held in a tentative Markman-process ruling that some of the claim terms in the DMT group were deemed undefinable, a ruling that moved the New Destiny/Homegrown-VS Media challengers to file a motion for summary judgment last fall to declare the DMT group invalid. In December, a hearing on that motion was cancelled to consider whether a number of other litigation cases Acacia has filed in other states should all be heard in California.
