Ten element claim terms – individual functions and devices believed pertinent to Acacia Research Corp.'s streaming media patent claims – will highlight the next round of the so-called Markman pre-trial determination process in the litigation between Acacia and several adult Internet companies challenging those claims.
This hearing is set to occur May 18-20.
The 10 claim terms figuring in the coming round will be the sequence of addressable data blocks and ordering means; compressed data storing means; storing the compressed, formatted, and sequenced data blocks as a file; transmission systems at first locations; identification encoders; sequence encoders; popularity codes; digital decompressors; transceivers; and, temporary storage devices.
"It's all about those words," said New Destiny/Homegrown Video chief Spike Goldberg, who with VideoSecrets chief Greg Clayman co-leads the group challenging the Acacia patent claims. "We're getting that much closer to understanding just what these claims actually are… And that's just one step closer to us not being badgered by these fly-by-night artists."
Acacia executive vice president Robert Berman declined to comment for this story.
Victor de Gyarfas, a patent attorney on the adult Internet companies' defense team, said he expected this next Markman round to go at least two full days and "maybe a part of the third, but who knows. It seems to non-patent lawyers that, wow, they're spending a lot of time arguing about a few words. But a lot of times, patent cases boil down to what one or two words mean."
"This is a judge who doesn't waste any time," Clayman said of federal judge Joseph Ware, who is presiding over the case. Ware has impressed each side with his attentiveness to the details involved in the arguments and the claims. "He wants to get through with it. You can't ask for a better situation right now."
Named for a Supreme Court ruling saying a patent's limits must be known to protect the patentee and encourage invention, a Markman hearing is a pre-trial process in which a judge weighs evidence and definitions before determining patent claims as matters of law, with both sides presenting how they view the claim language.
In April, during the second Markman session, the legal team representing the adult Internet challengers 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 for Acacia. "They don't write preferred embodiments of elements."
Earlier this month, the challengers' side got a boost when adult star Jenna Jameson, whose ClubJenna.com was hit with legal action from Acacia in late December, joined the challenge. Jameson said May 6 she wants to help fight off what she called Acacia's "strong-arm tactics, which effectively want to put a tax on every single person using the Internet for video-on-demand services, Internet radio, pay-per-view movies, video news clips from sites like CNN.com, and even songs from iTunes or Amazon.com."
The 10 Element Claim Terms
The pre-trial Markman hearing process this week is expected to focus on 10 element claim terms considered pertinent to Acacia Research Corp.'s streaming media patent claims known as Digital Media Transmission. Following are the terms in question, and how they are viewed now by Acacia and by the group of adult Internet companies challenging the validity of the DMT patent group:
Sequence of Addressable Data Blocks
Acacia: A series of digital data bytes representing frames of video and/or audio data in which relative time markers assigned to the audio and/or video data makes the frames and/or samples of data addressable within particular items of information.
The Challengers: The sequence indicates a continuous series of memory units that contain digital information that can be given an identifier.
Compressed Data Storing Means
Acacia: A compressed data formatter and a compressed data library (i.e., a large capacity storage or mass storage device), and all equivalents.
The Challengers: This term cannot be defined because the specification failed to identify any corresponding structure.
Storing the Compressed, Formatted, and Sequenced Data Blocks as a File
Acacia: The compressed, formatted and sequenced data blocks for a first item are placed into a file, the file for the first item being addressable through a unique identification code assigned to the first item; thereafter, the compressed, formatted and sequenced data blocks for at least one additional item are each placed into a file, each file being placed in a location for later use, the file for each additional item being addressable through the unique identification code assigned to each additional item.
The Challengers: This term cannot be defined because the specification failed to identify any corresponding structure.
Transmission System at First Locations
Acacia: An assembly of elements, such as people, machines, and/or methods, capable of functioning together to transmit signals. The transmission system may be located in one facility or may be spread over a plurality of facilities.
The Challengers: "Transmission system" is an assembly of elements that function together to transmit electrical signals; "at a first location" / "at a second location" means that the transmission and reception systems are each located at a single premises, different from each other.
Identification Encoder
Acacia: A device or software (1) capable of expressing a character or message in terms of a code; (2) capable of producing a unique combination of a group of output signals in response to each of a group of input signals; (3) capable of applying the rules of a code; or (4) capable of representing data in symbolic form using a code or a coded character set such that reconversion to the original form is possible.
The Challengers: This term cannot be defined because the specification failed to identify any corresponding structure.
Sequence Encoders
Acacia: A device or software capable of producing a unique combination of a group of output signals in response to each of a group of input signals.
The Challengers: This term cannot be defined and is indefinite.
Popularity Codes
Acacia: The symbols, letters, or words or combinations thereof used to represent the popularity of a particular item.
The Challengers: A code that is used by the transmission system to determine the appropriate location and media format for storage of compressed data associated with the code based on the relative popularity of the compressed data among users of the transmission system.
Digital Compressor
Acacia: A device or software that decompresses previously compressed digital data.
The Challengers: A digital compressor. (Note: By certificate of correction, "digital compressor" was changed to "digital decompressor" by the U.S. Patent Office in April 2003.)
Transceiver
Acacia: A device that is capable of both transmitting and receiving data.
The Challengers: A transmitter and a receiver in a common housing that uses common circuit components for both transmitting and receiving.
Temporary Storage Device
Acacia: A device into which data may be placed, retained for a limited time, and retrieved.
The Challengers: A device that stores electronic data that can be overwritten.
