Adult v. Acacia Gets Another Day in Court

Gretchen Gallen
SANTA ANA, Calif. - The second Markman hearing proceeding took place Friday in U.S. District Court as Judge James Ware heard testimony regarding four terms and phrases at issue in the ongoing litigation process between Acacia Technologies Group and 13 defendants in the adult entertainment industry.

The case represents an ongoing patent infringement lawsuit between Acacia and adult companies (among many other industries) whose streaming and downloadable videos allegedly infringe on Acacia's DMT patents.

A Markman hearing is when a judge looks at evidence and definitions before determining patent claims.

Both the defendants and the plaintiffs had an opportunity to present their case to Ware, who listened intently and questioned both sides about their positions.

The majority of the court day was spent defining the fundamental language that is applicable to Acacia's patents; a determination that will eventually play a pivotal role in which side wins the case.

Among the eight phrases and terms of Acacia's patents on the Markman agenda, only five have so far been heard by the judge; one was heard in the previous Markman session, and four were covered on Friday.

The phrases debated by the defense and plaintiffs were terms relating to remote locations, storing items, library means, identification and coding, and the assignment of unique identification codes for the retrieval of data. All of the above terms were vigorously debated by the plaintiffs and the defense team, represented by Boston-based Fish & Richardson.

In addition to the eight claims on the Markman agenda, Ware said there might be more claims worth examining related to Acacia's 992 patent. The judge also gave no indication of when he would rule on the matters.

Ware set aside additional dates for further hearings in the case. The judge had previously set dates for May 18-20.

While it is typically unusual for the court to set dates so far in advance, Ware affirmed additional dates of June 23-24, and July 7-8.

In addition to the terms and phrases that are currently at issue with Acacia's No. 992 patent, the judge also asked the parties to select 10 terms and phrases from the No. 702 patent, the second patent so far asserted by Acacia against the adult industry.

Out of the patents that Acacia lays claim to regarding the streaming of audio and video over the Internet, only two of the company's five patents in the U.S. have so far been used in the litigation process against the adult industry.

Acacia also made the court aware that it would be filing its motion regarding class action status within the next week. Acacia filed a class-action lawsuit against a group of adult entertainment companies with intent to establish a defendant class in which unlimited numbers of adult companies could be collectively sued for patent infringement.

Spike Goldberg, one of the defendants in the New Destiny defense group referred to Friday's hearing as "a lot of tit for tat."

"At the end of the day," Goldberg told XBiz. "There is nothing I can say or [Robert] Berman can say that will change things. Once the judge makes his decision, we won't have to live with Acacia's interpretations of the claims anymore."

"We think the court proceedings continue to go very well," Robert Berman, senior vice president of business development for Acacia, told XBiz. "We are confident that the judge will hold that the patents are valid, enforceable, and worthy of licensing, as we and our licensees have believed all along."

Also present in court was a representative for International Web Innovations (Max Cash), a separate litigant, and On-Command Corp. a company that refused to license with Acacia and was subsequently sued for patent infringement in November 2003.