Acacia Research Corp. has signed another licensing deal for its controversial streaming media patent group, Digital Media Transmission. Acacia said the deal with Denver, Colo.-based On Command, perhaps the world’s largest provider of in-room interactive entertainment to the hotel industry, was aimed at settling litigation between the two companies.
Acacia also suggested the deal indicates a day of reckoning is forthcoming for adult Internet companies who continue to challenge the validity of the DMT patent group in court.
"On Command, as a wholly owned subsidiary of Liberty Media, is part of a technologically savvy group of companies," said Acacia executive vice president Robert Berman. "They were represented by a large New York law firm with expertise in patent law, who have been present at all of the [federal court] hearings. They certainly have a good sense of how the litigation is going."
That alludes to the so-called Markman pre-trial process, in which a judge is weighing evidence and definitions before determining patent claims as matters of law, with both sides presenting how they view the claim language. But Acacia – which said the On Command deal makes for the 123rd DMT license – also said the deal included neither side conceding or admitting anything about the merits of the litigation.
"Rob Berman's been saying the same thing since the dawn of time," said New Destiny chief Spike Goldberg, who, along with VS Media/VideoSecrets, co-leads the adult Internet's challenge to the validity of Acacia’ DMT patent group. "All I'm hearing is the same stuff over and over again, and all I see are fewer and fewer licensings happening every couple of months now. I don't think any one of us thinks that this actually has anything to do with the patents, but the normal spin control that Acacia is known for. Here is just another move in Acacia's attempt to dip its beak into our business."
On Command was acquired by Liberty Media in 2003, making it part of a media family that includes such other Liberty properties as cable television networks QVC, the Discovery Channel, Starz!, and Encore.
Acacia's bid to make its DMT litigation against the adult Net a class-action suit could be decided by U.S. District Judge Joseph Ware in early July. The judge may also hand down tentative rulings on construction of some of the patent claim terms both sides discussed in the earlier Markman sessions.
Berman said those adult Internet companies continuing to challenge the DMT patent group's validity could be looking at serious damage the longer the impasse lasts.
"The hearing for our class action motion is scheduled for July 7," he said. "A lot of adult companies are going to be subject to past damages and higher royalty rates by doing nothing. They have ignored the decisions to license our patents by the top companies in their industry such as Playboy, Hustler, Cyberheat, and others. [The Internet Media Protective Association], which supposedly represents the industry and is supposed to look out for the interest of small companies, has done nothing to help its members, which will cost them a lot of money in the long run."
VS Media chief Greg Clayman said both Berman's notions and understanding of the group are way off, including an Acacia offer to settle with the IMPA member companies in a group licensing deal, the details of which were not disclosed.
"Berman thinks the IMPA supposedly represents the industry and has done nothing to help its members," Clayman said. "What Berman doesn't understand is that the IMPA is made of member companies and individuals who join the group to share in ideas and concerns that the industry is having.
"The IMPA does not blanket the entire industry’s interests, the IMPA looks after its member interests and Berman is throwing mud now that we won't settle given his insulting offer," he continued. "And as far as who will spend the money... Berman sure seems confident that he is right and we are wrong; however, last time I checked, he was not the judge."
On Command representatives familiar with the Acacia litigation and licensing deal were unavailable for comment before this story went to press.
