Written by Brandon Shalton



Read the Markman Order document.

Markman Order Summary: Buh-Bye


The long awaited conclusion of the Markman Hearing for the Acacia DMT patent infringement case has finally arrived. Judge Ware concluded the Markman with the Markman Order, released on July 12th.

Acacia’s claims to owning the process of downloading/streaming any audio/video file from a webserver is based on US Patent numbers 5,132,992 (the ‘992 patent) and 6,144,702 (the ‘702 patent).

The purpose of the Markman Hearing is to "construe the disputed terms and phrases of the asserted claims.", meaning to come to a definitive understanding of the definitions of words and phrases claimed by Acacia.

The court’s objective is to "determine the plain meaning, if any, that those of ordinary skill in the art would apply to the language used in the patent claims". Defense against a patent infringement case is many times based on the ability to demonstrate that similarly technical people as the inventor would understand what the inventor documented in the patent.

This article draws from the Markman Order as well as including my observations and commentary of this Acacia Saga since my first involvement on August 12, 2003.

The Court requested that the parties submit a list of disputed terms and phrases for the Markman.

The disputed terms and phrases are highlighted in bold, quoting from Claim 1 of the ‘992 patent:

A transmission system for providing information to be transmitted to remote locations, the transmission system comprising:

Library means for storing items containing information; identification encoding means for retrieving the information in the items from the library means and for assigning a unique identification code to the retrieved information;

Conversion means, coupled to the identification encoding means, for placing the retrieved information into a predetermined format as formatted data;

Ordering means, coupled to the conversion means, for placing the formatted data into a sequence of addressable data blocks;

Compression means, coupled to the ordering means, for compressing the formatted and sequenced data blocks;

Compressed data storing means, coupled to the data compression means, for storing as files the compressed, sequenced data blocks received from the data compression means with the unique identification code assigned by the identification encoding means; and

Transmitter means, coupled to the compressed data storing means, for sending at least a portion of one of the files to one of the remote locations.


Claim 1 is the starting point for the patent and within the tightly written descriptions are the points of contention between the Defendants and Acacia.

Each item in bold was contested by the Defendants during the four Markman Hearing sessions to demonstrate how the interpreted claims by Acacia did not apply.

The one issue that stood out from the Order is the following:

"identification encoding means for retrieving the information in the items from the library means and for assigning a unique identification code to the retrieved information"

The "identification encoder" is one of the key terms that the Defendants challenged. In the patent, it demonstrates that the unique identification code must be assigned by the identification encoding process prior to the information being compress and stored in the compressed data library.

Acacia contends "identification encoder" can be computer software. However, the specification only defines the identification encoder by its function of assigning a unique identification code and does not disclose any structure, not even computer software.

The Judge goes to state: "In this case, the Court cannot define the term "identification encoding means" because there is not corresponding structure in the specification that is linked the functions recited in the claims. If the Court adopts this finding as its final conclusion on this matter, this would render claims 1,3,4,5,9,10, and 11 of the ‘992 patent indefinite."

To have claims rendered "indefinite" means that these claims are not valid. If any part of the patent is found invalid, then the overall patent infringement claims fall down like dominoes. The Judge has found the "identification encoder" to be indefinable that it means that the defendants are not using this step.

The Judge went on to state : "The Court invites the Defendants to file a motion for summary judgement that the term "identification encoding means" is indefinite, rending claims 1,3,4,5,9,10, and 11 of US Patents 5,132,992 to be invalid, respectively, pursuant to 35 USC 1123.2 At the same time, Defendant may file a motion for summary judgement pursuant to 112.1"

[Acacia 0, Defendants 1]

With this paragraph, the Judge is suggesting that Acacia’s patent claims are not holding up and that the Defendants can now submit a summary judgement motion to get a final verdict of non-infringement.



The next major section for Markman was from the ‘720 patent, Claim 1:

A communication system comprising:

A transmission system at a first location in data communication with a reception system at a second location, wherein said transmission system comprises

A sequence encoder,

An identification encoder, and

A compressed data library in data communication with said identification encoder,

Wherein said identification encoder gives items in said compressed data library a unique identification code; and

Wherein said reception system comprises

A transceiver in data communications with said transmission system,

A storage device in data communication with said transceiver,

User playback controls in data communication with said storage device,

A digital compressor in data communication with said storage device, and

A playback device with said digital decompressor.



The highlight of this section involved the term "sequence encoder": which the Judge says never appears in the specification of the ‘702 patent. The legal consequences of claiming an apparatus which has no plain meaning and which is not defined or referred to in the specification for the Court to declare the patent claim indefinite.

Acacia acknowledges that "sequence encoder" does not appear in the specifications of the ‘702 patent. To avoid indefiniteness, Acacia asserts the description of a time encoder in the specification clarifies that the time encoder is sequence encoder. This translates into Acacia making up stuff to try and make things fit to their interpretation.

"With absolutely no reference or drawing, one of ordinary skill in the art would not know what a sequence encoder is, or what structure the encoder has, and how it interacts with other elements of the transmission system. Furthermore, a person skilled in the art would not find a time encoder that "places the blocks of converted formatted information from converter 113 into a group of addressable blocks" to be synonymous with a "sequence encoder". A time encoder that is described in defendant claim 7 of the ‘702 patent is a limitation describing an additional function of the sequence encoder but does not assist one skilled in the art with defining the boundaries of the claimed element"

In the footnote, it was written "In the case at hand, Acacia cannot suggest the one of ordinary skill in the art is on notice of the scope of the term "sequence encoder" as the term never appears in the specification."

The Order goes on to state: "If the Court adopts this finding as it s final conclusion on this matter, this would render claims 1,7,17,18,32,33 of US patent No. 6,144,702 indefinite."

The Court invites the Defendants to file a motion for summary judgement pursuant to 112.1 and 112.2 regarding the term "identification encoder".

[Acacia 0, Defendants 2]


It has been observed by some legal experts that having the judge suggest filing for summary judgement within a Markman Order is unusual, but twice??!?!?!

Most of the 40 pages were addressing subtle points of words and definitions. Some points, the judge agreed with Acacia, and with others, the judge agreed with the Defendants. The two major strikes against Acacia from the Markman Order will carry forward to cases like the one against the cable industry, as well as leading to non-infringement by the defendants.

While the final verdict is not in, I do have one thing to say after being involved in this Acacia Saga for over a year and shouting out that this patent was bogus… I told ya so :)




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