Earlier this month, the Electronic Frontier Foundation all but declared war on what it deems frivolous patents, soliciting entries in a Patent Busting Contest to determine the “top 10 most frivolous patents.” And number-one on the hit list, according to results released June 30, is Acacia Research Corp.'s controversial streaming media patents, known as Digital Media Transmission, now the subject of a court battle between the Newport Beach, Calif. firm and a group of adult Internet businesses.
EFF staff attorney Jason Schultz would not reveal the exact results of the month-long contest survey. But he did say the contest – aiming at what EFF calls "crimes against the public domain" – drew almost 200 submissions, and Acacia's DMT claim was "by far the most common" listing of patents participants considered frivolous. He also said the results had nothing to do with the battle between Acacia and the adult Internet, from all appearances.
The EFF survey determined Acacia's DMT claim is a "laughably broad patent [that] would cover everything from online distribution of home movies to scanned documents and MP3s," and zapped Acacia for "threatening dozens of small companies, including many homegrown adult Websites" and an infringement campaign "threaten(ing) to chill freedom of expression by limiting small companies' and individuals' ability to stream their content online."
"We were mostly interested in getting a sense from the public as to where they saw the patents," Schultz told AVNOnline.com. "And, overwhelmingly, people saw Acacia as a threat to their ability to express themselves via audio and video over the public Internet. It's not just about porn companies or other folks, it's about everyone's right to use basic technology to communicate."
"I think that this is great," said VS Media chief Greg Clayman, whose company, along with New Destiny/Homegrown Video, co-leads an adult Internet court counterattack against the Acacia DMT litigation, when he learned of the Patent Busting Contest results.
"It is nice to see the attention is now being brought in on this company and their frivolous patents," added New Destiny/Homegrown Video chief Spike Goldberg. "Evidently, it's harder to dip one's beak than previously thought."
Acacia executive vice president Robert Berman did not return a query for comment from AVNOnline.com before this story went to press. But Schultz said EFF has already had contact with Acacia about the Patent Busting Contest results, saying Acacia said the company would be "happy to discuss the patents with us. And I'm happy to take them up on the offer, and give them a chance to explain why they deserve to own this technology. Generally, [Acacia and the other companies] are defending their rights to own what they think they own."
Second on the frivolous patent hit parade was Clear Channel's Instant Live, a patent they recently bought that covers technology used to produce instant recordings of live music concerts. Clear Channel was reported earlier this month to be hunting performers who have been known to sell compact discs of their concerts to fans right after the concerts are finished.
Clear Channel was not exactly thrilled to have turned up on the EFF survey, and disputed EFF claims that they are trying to threaten individuals and businesses, or chill freedom of expression. "We want the practice of live recordings being made available immediately after concerts to be in widespread use and welcome all legitimate and serious conversations with those interested in licensing our patent," said Clear Channel chief executive Brian Becker in a formal statement. "But we will not conduct licensing conversations in public or via the media. Nor will we put artists in the middle of those business negotiations – or try to hide behind them as we negotiate."
All these patent holders, EFF fears, are specifically targeting smaller companies, though Acacia has already filed DMT infringement litigation against a number of cable/satellite television companies, including such heavyweights as Comcast, DirecTV, Charter Communications, and Cox Communications.
As for what the EFF plans to do with the Patent Busting Contest results, Schultz said they would examine each of the 10 patents that made the frivolous patent top 10 and determine where each patent might be vulnerable.
"We'll start collecting prior art," he said, "both through our own research and from the public, and start to build a case against them." But he wouldn't suggest just where the EFF might come down following those analyses.
"I think it's premature to come down hard one side or the other," he continued. "Our gut reaction like most people is, 'You gotta be kidding me.' We found evidence already that early audio and video transmission over a packet-switching network, which is part of [Acacia's] claim, has been around since the mid-1960s, in one form or another."
"We all know these guys did not invent streaming technology," Homegrown’s Goldberg said. "All they have done is modified the way in which somebody sues companies for frivolous lawsuits, and at the end of the day that's all they'll be known for, pursuing people for things they weren't guilty of."
Otherwise, the EFF plans to work with a network of database searchers, private patent attorneys, and other volunteers to compile whatever case against the patents in question needs to be built. Just when those cases would be brought to the U.S. Patent Office for review, Schultz said, was still an open question, though he indicated the EFF hoped to begin by the end of the year.
"Some will be easier than others. Some we will file sooner than others," he said. "At this point, it's hard to predict, because we want to cross all our T’s and dot all our I’s and make a strong case to the Patent Office on each one."
The EFF will also collaborate with other organizations like the nonprofit Public Patent Foundation in New York, as well as a number of as-yet unidentified law schools, for this project.
"At this point it's sort of a big coordination effort," Schultz said. "I'd say by the end of the year we could file at least two or three petitions with the patent office. You take the best prior art you can find, and you package it together, and you write essentially a cover memo on top explaining why it invalidates the patent and you send to the PTO and ask them to take a second look."
But Schultz was asked whether, strictly speaking, the Patent Office had already decided when they issued the patents in question in the first place? "Well, yes, but we think they didn't have all the evidence," Schultz said. "We think there's a little bit of information they'd be interested in taking a look at. And on second thought we think they might come to a different decision."
Schultz said EFF does not expect any of the companies making the top 10 frivolous patents list to get angry enough about it to think about suing EFF. "I don't see this as something we'll end up with in a court of law," he said. "I think this is really a question of, are these particular patents valid or not, and that's for the Patent Office to decide.
These results became public a week before the next scheduled phase in court between Acacia and the New Destiny/VS Media group. The session beginning July 7 could find U.S. District Judge Joseph Ware handing down tentative rulings on construction of some of the patent claim terms, as well as whether to grant Acacia's bid to group some of the adult Internet cases as a class action suit.
