Written by

Brandon Shalton

3-May-2004

Reference This!

For those following the Acacia Saga, it does become overwhelmingly confusing on how can a group of lawyers take a patent and broadly interpret it to mean something so ubiquitous as owning all downloading and streaming of audio/video files from a web server.

As soon as you saw "group of lawyers", you should have been tipped off that this is where the problem starts.

The problem doesn't start with the patent office granting the patent (though that is one good place to start), it starts when the Yurt Patent was acquired by the IP licensing business model company, Acacia Research.

Robert Berman, Executive Vice President Business Development and General Counsel, has been quoted in various articles about bragging that over 160 other patents have referenced the Yurt patent. This citation is an attempt to prove some validity to the patent, but in this referencing comment, lies one of the paradoxes and absurdities of the patent claims.

The paradox is quite simple:

How can Acacia claim the DMT patent to be so broad in scope when 160 subsequent patents limited the scope, but are still subject to their patent claims?

An example might be a business that has purchased the InterVu (acquired by Akamai in 2000) video streaming system to deliver video content over the internet.

Intervu has patents for their video system that also references the Yurt patent in its filing. This business could then be "marketed" by Acacia that they are infringing upon the DMT patent. From Acacia's perspective, the use of video matches the DMT patent.

The business, in this hypothetical situation, is confused on how can a later patent that was cited by InterVu, end up being able to charge the business with patent infringement.

In doing a patent search for patents that reference the Yurt patent, you find over 160 patent references. If you click on the link you will see many patents that describe ways for downloading video content.

As Acacia sees it, the software or processes of those subsequent processes are inmaterial, that it's broader interpretation supercedes them.

How can this be?

The other paradox that I have pointed out in previous articles is that USA Video has a broad claim of their patent to mean downloading video "faster than real time". They are testing the waters with their patent in their lawsuit against MovieLink.com

CinemaNow.com, a competitor to MovieLink.com, has licensed with Acacia. What would happen if Acacia "marketed" to MovieLink.com to license its patent?

How can a business be subjected to two patents that have an overlap for the same end-result functionality?

How can this be?

Clicking your heals three times and repeating "there's no place like home" won't get any business faced with patent infringement out of this nightmare.

5-May Update

I presented this article to a patent attorney who helped to inform me more about how the patent system works. In the example I gave above about InterVu, according to patent law, their patent would exclude people from doing things the way their patent describes. InterVu could be infringing upon the DMT patent, with the DMT being claimed as being a foundational patent, and thus would be subject to licensing royalties from Acacia.

Companies like Real Networks, Microsoft, and Apple would have to license from Acacia for their own streaming video patents.

The problem is that even if a person gets a patent, they could be subject to another patent, making patents even more murkier.

The DMT patent is not a foundational patent as what the prior art shows. If Acacia is successful in getting its broad definitions approved by the judge in the outcome of the Markman Hearing, it opens up even more prior art.

The next Markman Hearing is a three day event, scheduled for May 18-20.