Written by Brandon Shalton
Roxio's motion to dismiss the case was rejected by the court in
this court document.
Interesting side note, Roxio sold off its CD recording software
and patents to Sonic Solutions (NASDAQ: SNIC) as documented in this
Looks like Sonic might be acquiring the locked-on target of Optima
Nothing like taking on baggage that you didn't know about.
3,2004 Press Release
Yowsa, "..every company in the CD burner industry may be
infringing. ..... "for those companies who incorporate
the OSTA UDF 1.5 standard; this, of course, will only apply to that
portion of the standard that infringes Patent 5,666, 531."
For those tracking
the postings made on FightThePatent.com, you will have noticed a
common theme of patent abuse in the posts. IP Licensing companies
sometimes make broad (and made-up claims) as to what they think
or want their patent to mean. These imagined "motherload of
patent infringement" claims are looked gleefully upon by executives
who see monetary gain through legalized extortion.
have been targeted for patent infringement have to divert profits
from their company to legal fees, in order to fight off the patent
infringement claims. The most tragic and most abhorrent cases are
ones where very broad claims are asserted that, under scrutiny,
show the equivalence of invisible clothes.
patent holders will also typically have a large warchest set aside,
dedicated and marketed towards for the intimidation and "regretful"
follow-up of litigation. For businesses who are faced with the challenge
by a patent-wielding foe, it is many times the Goliath looking to
huff and puff at the business door.
battles take place everyday. Not all patent infringements are as
evil as I portray. Many cases are very legitimate, where the asserted
patent claims do match what is in the patent and there is no prior
art to invalidate the patent. In some cases, it is smaller companies
that have the patent that larger companies infringe upon, whether
blatantly or inadvertently.
A recent example
of this has come to my attention from a small company called Optima
Technology which has the patent for writing to a CD-R like it was
a hard drive. When I first came across this patent, I immediately
thought of Windows XP having this feature. There was also DirectCD
and other software that did the same thing. To have a patent on
the ability to write to a CD-R like it was a hard drive smelled
right off as being a broad assertion.
in this patent turns out to be Roxio who provides the technology
to Microsoft as well as in their own products. CEO, Robert Adams,
contacted me after doing a search about 'Markman Hearings' since
he was about to enter into one with Roxio. The story caught my attention
because Roxio tried to assert that Optima Technology was infringing
upon their patent as a counter-salvo.
The two sides
went into Federal Court for the Markman, and the smaller company
prevailed. In reading the Markman Order (my new hobby), it's pretty
clear that things did not go the well for Roxio, a larger and more
made by an observer of the Markman Hearing:
strategy of accusing Optima of infringing Roxio's patent backfired.
By trying to redefine 6,091,686 to cover 5,666,531 they have substantially
weakened '686. In the process, they will also lose 6,226,241.
to build a case for offsetting infringement they have, instead,
helped support Optima's position that Roxio's products infringe
A copy of the
Markman Order can be found at Optima's website (http://www.optimatech.com)
observation looks like firing back with Roxio's own patent infringement
claim was an attempt to roll-over Optima as a defensible position.
Another tactic used by litigants is to out-bank-roll their opposed
in a financial tug-of-war.
It remains to
be seen what will be the final outcome of this issue, but having
a Markman Hearing go in your favor is always a hopeful sign, much
like with the defendants against Acacia.
If prior art
cannot be produced or there were no misrepresentations by the inventor
at filing, then this could be a clear example of how a patent holder
(with legitimate claims and no prior art) should prevail against
those that infringe upon their inventions.