A full day hearing has been set for November 21 before the federal judge newly assigned to the case of Acacia Media Technologies and several adult Internet companies challenging Acacia's streaming media patent claims.
And, according to an unsigned message obtained by AVN.com, U.S. District Judge James Ware in a November 7 conference on the case "took a dim view" of claims unrelated to the patent issues at hand, suggesting "any action on these claims and the claims Acacia brought against (the companies) for unfair competition, interference with economic advantage, and trade libel would likely be stayed if the parties did not agree to remove them from the case."
Acacia senior vice president Robert Berman said the message was inaccurate and a bid to interfere with the company's effort to pursue licensing deals for its patent claims.
Ware reportedly vacated the briefing schedule on an Acacia motion to dismiss counterclaims against them for unfair competition and abuse of process, according to the same message, which also said the judge favors an early so-called Markman hearing – deciding "as a matter of law what the claims of Acacia's patents cover and what they do not.
"The hearing will be held in April 2004," the message continued, "and will be of critical importance to all who have received 'the package' from Acacia."
If this is true, said a source close to the controversy who asked not to be identified, it "is very encouraging. A judge would be a little bit surprised or taken aback by how fast they were moving and how aggressive. By getting a patent-savvy judge, I think most people would understand that the law and/or the U.S. Patent Office wasn't designed or meant for a tool to manipulate or try to get people to capitulate. It's going to be based on the fact and not the fluff. And that is what this is all about."
The court, the message said, "will finally determine whether Acacia's outrageously overbroad statements about what its patents cover have any merit, or whether Acacia's patents cover very specific systems and methods that are probably not used by those in our industry." The court also suggested, the message said elsewhere, that it may "stay all discovery that does not relate to claim construction.
"Because claim construction should be done without looking at the systems or methods that are accused of infringement, it is unlikely that Acacia will be able to find out how the Defendants' systems work and then tweak its claim construction arguments to make its infringement case," the message continued. "This is a huge victory because the documents that Acacia has given the Defendants thus far make clear that Acacia does not know how Defendants' systems work, and that it lacked a good faith basis for filing these suits in the first place.
"(Ware) also nixed Acacia's threatened motions for preliminary injunction," the message continued. "While Acacia has been threatening these motions for months as part of its effort to scare companies into paying up, it has not filed and has admitted that it does not have enough information to make such a motion. Reasoning that he would need to fully understand the case and the applicable defenses before he could even consider such extraordinary relief, (Ware) indicated that he would not even permit such a motion until after the conclusion of claim construction."
Ware also reportedly asked Acacia attorneys if "all the parties it planned to sue were before the court," the message said. "The attorneys responded that they were not and that they had placed additional companies on notice. When Acacia told (Ware) that they had sent out thousands of cease and desist letters, (Ware) seemed very surprised."
The November 21 hearing will occur twelve days before Acacia's previously declared deadline for offering waivers on claimed past due royalties or fees by companies who have not yet signed licensing agreements for the streaming media patents.
Acacia has entered into licensing deals with several adult Internet players and a few mainstream companies like Radioio in the past several months. The Newport Beach, California company has also reportedly begun sending notice to adult Internet players who don't stream content directly but who either link to or otherwise deal with such content providers: Webmasters, affiliate programs, adult verification services, and such.
"I don't expect their tactics to cease," said the source close to the controversy, "unless the judge says to them they can no longer file lawsuits, because their whole method (has been) to say license or sue."
Berman said the November 7 hearing was a conference call just to introduce Ware to the attorneys in the case. "The 'anonymous' description that took place is filled with inaccuracies," he said, when queried by AVN.com , "and is clearly an attempt by somebody to fictionalize the call for the purpose of attempting to further interfere with our licensing activities by spreading misinformation about the case."
Berman said nothing substantive was done or decided other than scheduling the November 21 hearing. "I can see why the author was anonymous, as opposed to standing by his or her remarks," he said. "We are receiving many e-mails and calls from Webmasters that want licenses and expect to receive more signed agreements by our November 30 deadline."
