Questions about an invention's elements and sequencing highlighted the second session of the Markman hearing process, in the litigation between Acacia Research Corp. and a group of adult Internet companies challenging Acacia's Digital Media Transmission patents.
In the April 9 session in U.S. District Court, the legal team representing New Destiny/Homegrown Video, VS Media, and a group of several other adult Internet companies asserted that the elements of an invention, and their sequencing, are significant in assessing the validity of the entire invention.
Acacia's legal team countered that there is no strictly required sequencing of elements in order to validate an invention. "Patentees talk about preferred embodiments of inventions," attorney Roderick Dornan argued. "They don't write preferred embodiments of elements."
Victor de Gyarfas, one of the New Destiny/VS Media legal team, said after the hearing that patents typically describe preferred embodiments of inventions, but that that means the way the inventor believes is the best way to practice or use the invention – including singular consideration of the elements that make it.
And he said that if one element of an actual or purported invention were to be invalidated, "the entire invention itself could be invalidated as a unique object. If the court were to find, as the defendants have argued, that certain elements have not been described adequately," de Gyarfas continued, "the claim can be found invalid, and every claim that relies on or uses that meaningful function element can be found invalid."
Acacia executive vice president Robert Berman said after the session that the company remains encouraged by the court process so far, "and the success of our DMT licensing program. We are confident that we will prevail, as (will) the many companies that have studied the issues and elected to license our patents."
New Destiny/Homegrown chief Spike Goldberg said he, too, was encouraged by the court process so far, but that was where the similarity ended. "They say their thing, we say our thing, and that's that," he said. "They're going to try to find the most broad way of describing their patents possible. We, obviously, do not think that. At the end of the day, it's all going to be he-said, she-said. We have to let the judge decide this."
The Markman hearing process – a judge weighing evidence and definitions before determining patent claims as law matters – is named for a Supreme Court ruling that a patent's limits must be known to protect the patentee, encourage invention, and assure "that the subject of the patent will be dedicated ultimately to the public," or "zone(s) of uncertainty…would discourage invention."
The next Markman hearing session in the Acacia litigation is a three-day session set for May 18-20, with two-day sessions also set for June 23-24 and July 7-8.
