Whether Acacia Research Corp. actually invented the combined process it calls Digital Media Technologies, or whether it merely grouped previously existing technologies into a broad new application claim, took up much of the first round of the case's Markman process, in which the judge hears evidence and definitions before determining asserted patent claims as law matters.
At the Feb. 6 hearing, Acacia's legal team asserted that the "novel architecture" of the DMT patents was its "combination of all the elements," as attorney Roderick Dornan phrased it during one of his presentations. "There is no prior art that includes all the elements together."
The legal team for New Destiny/Homegrown Video and its co-respondents, who are all challenging Acacia's DMT patent claims, countered that Acacia sought to "harmonize" existing technologies and aim not for "novel architecture" but user convenience – the user being able to control when and where he could view or hear streaming media.
The Markman hearing is named for a U.S. Supreme Court decision that held that the limits of a patent "must be known for the protection of the patentee, the encouragement of the inventive genius of others, and the assurance that the subject of the patent will be dedicated ultimately to the public… Otherwise, a zone of uncertainty… would discourage invention."
Both sides said after this first hearing that they were pleased with the beginning of the process, though neither expected the case to go to full trial any time soon. Ware's decisions on the Markman points may not even come until late in, or at the end of, summer.
"There are going to be many hearings about many terms," said New Destiny/Homegrown chief Spike Goldberg. "This won't end quickly. But at the same time, I feel like the defense seemed to put on a very good argument."
Asked if he thought he heard anything that would prove a major long-term impact in the proceedings to come, Goldberg said it depends on characterization. "If you go one way, based on the way we are claiming ourselves, and saying what we are saying, we don't infringe the patents," he said. "If you go the other way, and you go with what Acacia's broad definition is, there it's prior art. But this isn't a new invention."
"I think both parties made their arguments, and unfortunately you're not going to see a decision on this for several months," Acacia executive vice president Robert Berman said after the hearing. "We just went over… eight claims out of one patent. We still have another patent to start interpreting claims. And the judge isn't making clear whether he's going to start ruling after eight claims are heard, whether he's going to wait to hear all the claims' interpretations. There probably isn't going to be a ruling on any of these issues until the end of the summer."
Ware proposed to bring in a technical expert to counsel the court on technical questions, and offered both sides the ability to bring in testimony from their own technical experts as well. He also questioned each side carefully on matters like intended and defined users' control over what he views when, and whether the inventors of the original patents "contemplated user-directed transmission."
The sides also conflicted on the definition of "remote locations" – whether it includes the source of the streaming media library or whether it means strictly locations other than the source, and where the user can control what he receives, when he receives it, and when he decides to view of hear it, among other points. Both attorneys also took pains to keep the atmosphere comparable enough to an academic debate, with neither raising his voice or injecting personalities into the presentations.
Both sides said they were impressed with Ware's conduct in this first round, including his questioning both sides for clarifications on various technical points involving the patent claims. "The judge asked some good questions," Berman said, "which shows that he was following the arguments. And I think that as long as he follows the law, we'll prevail."
Steven Cherry, a senior associate editor for Spectrum, the members' magazine of the Institute of Electrical and Electronics Engineers, said after the hearing that he thinks this case has implications beyond the Internet toward all manner of digital media, including and especially cable and satellite broadcasting.
"It's actually impossible to judge now," he said, when asked who to this point has the stronger case between the two litigants. "But it would also be very easy to be misled by some of the questions the court asked. My experience is that you can never tell at this stage."
An attorney representing a few non-adult entertainment respondents in the Acacia litigation declined to comment after the hearing.
