A question of whether several litigation cases involving Acacia Research Corp.'s streaming media patent group should be heard in California has prompted cancellation of a scheduled December 2 hearing on a motion for summary judgment by several Adult Internet companies challenging the patents.
But a mid-October court filing by Acacia showed that, well before the hearing was cancelled, Acacia planned to ask a federal judge to strike the motion on grounds that the challengers didn’t file a so-called Statement of Uncontroverted Facts and Conclusions of Law on time.
According to an October 19 court filing from attorney Roderick G. Dorman, a copy of which was obtained by AVNOnline.com, Acacia also chose to “stop assert[ing]” 18 claims that included “identification coding means” in one of the patents comprising its controversial DMT patent group
Dorman was not available for comment December 2, but another attorney for Acacia, Alan Block, said the dispute over the Statement of Uncontroverted Facts had no bearing on the cancellation of the December 2 court date.
“The cancellation was the fact that a motion for transfer was pending involving cases in Arizona, Minnesota, and Ohio,” Block said, referring to DMT litigation Acacia has against several cable television companies in those states. “That filing is just part of the entire summary judgment motion. It had nothing to do with the fact that the hearing isn’t going today.”
A so-called multi-district panel is coming together to decide whether DMT litigation against mostly cable and satellite television defendants in Arizona, Ohio, Minnesota, and northern California, should be moved to California's central district's southern division, where the battle between Acacia and a group of Adult Net companies led by New Destiny/Homegrown Video and VS Media has been ongoing since last year.
The panel convenes in such an instance in which different litigation cases in different federal courts are related, as they are involving the DMT patent group. U.S. District Judge James Ware has set a case management conference for February 28, 2005, though just where that conference will be held hasn't yet been decided.
The challengers their motion for summary judgment in late September, a motion that sought to declare the DMT group invalid based upon U.S. District Judge James Ware’s summertime finding that several claim terms in the patent group couldn’t be defined.
On October 1, Dorman asserted in his filing, the challengers filed the Statement of Uncontroverted Facts, though it “bears a date and signature… of September 20, 2004. I conclude from these facts,” he continued, “that defendants’ counsel knew that their summary judgment motion was not properly premised on legally relevant facts, that their Statement exposed that legal insufficiency, that they intentionally decided not to file their Statement and that, but for my written threat to move to dismiss their motion, they would not have filed the Statement.”
In preliminary Markman process rulings in July, Ware ruled that “identification encoding means” could not be defined because no corresponding structure in the patent specification links to the functions recited in the claim, and, if the court adopted that finding as its final conclusion in due course, it would render indefinite seven claims in a key portion of the patent.
Dorman said in the October 19 filing that during an August status conference telephone call, Acacia sought no evidentiary hearing before Ware but expected, instead, to provide expert testimony against a move for summary judgment at the now-cancelled December 2 hearing.
Dorman said in the filing the concern was whether an evidentiary hearing would end up waiving Acacia’s right to a jury trial involving its DMT litigation against adult Internet companies like New Destiny and VS Media.
“[B]ecause it was clear that the defendants would shortly be filing summary judgment motions directed to invalidity issues based upon indefiniteness and non-enablement,” Dorman wrote in the filing, “I advised the Court and the parties to the status conference that I expected Defendants to file motions for summary judgment without providing any expert testimony and that Acacia would be providing expert testimony in opposition to those summary judgment motions.
“By providing expert testimony in opposition to these anticipated summary judgment motions and by not seeking a formal evidentiary hearing before this Court,” Dorman continued, “it was my intention on behalf of Acacia to place before the Court the relevant factual information useful to the Court for claim construction purposes in connection with the indefiniteness and enablement issues while asserting that Acacia preserved its jury trial rights for all factual issues triable to a jury.”
Dorman then went on to declare Acacia would not assert claims one through eighteen in the 992 patent – claims “having the term ‘identification encoding means’” – that is part of the DMT patent group. “Therefore,” he continued, “there was no longer a case or controversy requiring any further motion practice or judicial action relating to claims 1-18 of the 992 patent in this litigation.”
Acacia executive vice president Robert Berman chose not to comment on the October 19 filing.
“You’re looking at a company that went and told everybody they spent millions of dollars and many years researching these patents,” said New Destiny chief Spike Goldberg. “To say 1-18 are indefinite sparks a huge [suggestion of] negligence.”
"We're obviously disappointed that we weren't able to have the hearing," Goldberg continued. "But I think this prospect presents a new chapter in this long-running saga, where there's going to be a greater involvement by all the parties that are related to this case. Either way, all it does is postpone the inevitable. Either way, the results will still be the same. The opposite of what Acacia has always said, and exactly the same thing as we've always said."
"Acacia has more time to scare people," said VS Media president Greg Clayman. "But is it really worthwhile licensing? That's always been the eternal question. Everything they've said all the way through looks to be thrown completely into flux right now."
