Written by Brandon Shalton

updated 18-Mar

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 Press Release

Looks like Sonic might be acquiring the locked-on target of Optima Technology.

Nothing like taking on baggage that you didn't know about.


Dec 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."


Patent Wars

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.

Businesses who 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.

The patent-abusing 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.

Patent infringement 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.

The infringer 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 profitable company.

Some comments made by an observer of the Markman Hearing:

"Roxio's 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.

By attempting to build a case for offsetting infringement they have, instead, helped support Optima's position that Roxio's products infringe on '531."

A copy of the Markman Order can be found at Optima's website (http://www.optimatech.com)

The outside 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.

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