by Geoff Daily
March 9, 2005
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Despite the DMT patents’ widespread applicability, their relative anonymity outside of specific industries leaves many companies scrambling for more information and the correct course of action when approached by Acacia. To begin with, says patent attorney Marc Kaufman, “everybody should consult counsel and evaluate based upon the facts. In some cases, the answer might be to take a nuisance license; in others it might be better to wait and see” how the current litigation plays out.
As a result of the partially favorable claim construction stemming from the Markman Order as well as the potential for summary judgment, “the threshold at which I’d recommend taking a license has moved up,” he says. That said, Kaufman recommends that the option of simply paying the license fee “should always be on the table, as opposed to immediately taking the reactionary stance that ‘We don’t like this, so we will not cooperate and not take a license.’”
Companies who do choose to not sign up for a license or who simply ignore Acacia’s licensing requests face two potential penalties. “We generally start out with introductory rates and then raise them over time,” says Berman. “Rates are locked in through the life of the patent so we can’t raise them.” The second penalty that Acacia can impose is charging for past infringement, although up until this point they’ve waived their right to do this for new licensees, but that leniency may not continue forever.
But there are companies and organizations out there that are actively fighting Acacia’s DMT patent claims. The National Association of College and University Attorneys, in conjunction with EDUCAUSE, a nonprofit association whose mission is to advance higher education by promoting the intelligent use of information technology, has set up a joint events group to coordinate research that’s looking into validity of the DMT patents. This group is being organized by John Hopkins University deputy general counsel Wesley Blakeslee. He’s put together a document entitled “The Acacia Patent Claims and Options for Educational Institutes.” In it he lists a variety of possible ways to react to Acacia’s licensing requests. You can download the full text of Blakeslee’s brief here.
While Acacia’s DMT patent claims cover multiple industries, many trade organizations have not taken action to spearhead initiatives like EDUCAUSE’s. The NAB claims that none of their members have asked about Acacia, and if none of their members ask about something, they don’t touch it, despite the fact that many of their members would be affected if Acacia’s successful in its licensing campaign. The Internet Streaming Media Alliance is bound by strict ISMA anti-trust guidelines, restricting them delving into this topic.
