Streaming Media East 2004: Acacia Still a Hot-Button Issue

While not officially a part of Streaming Media East’s Business track, few topics hold greater potential implications for streaming business then Acacia Research’s patent claims, the subject of Wednesday’s final session. Moderated by Streaming Media Inc. executive vice president Dan Rayburn, the last panel of Streaming Media East 2004 featured patent attorney Mark Kaufman of Nixon Peabody and Robert Berman, executive VP of business development and general counsel for Acacia Research Corporation. You can listen to the entire session here.

As most readers know, Acacia claims ownership of patents on the technology and process behind most forms of streaming and digital media delivery (see "Patently Absurd? Streaming Users Face Acacia Patent Fight"), and the company has been attempting—with some success—to collect licensing fees from industry vendors, content providers, Fortune 1000 corporations, and universities that use streaming and digital media technologies to deliver content.

Despite challenges to Acacia’s claims, Berman said the company "has not seen anything to date that we believe would invalidate these patents," which Acacia came to control after they purchased Greenwich Information Technologies in 2001. Berman clarified that the patents apply only to the transmission of stored digital content, not live Webcasts, and asserted that the only three questions that streaming industry members need to ask themselves are "Does the patent cover what I do, is the patent valid, and are there reasonable licensing options available? We do everything we can to offer reasonable licensing options."

Berman claimed that Acacia provides any company it contacts with the information necessary to answer these three "crucial questions." The information sent out by Acacia includes "copies of the patents, copies of the file history, and all of the prior art and literature we have found to date," he said. "We also provide them with engineering diagrams." According to Rayburn, none of the companies who have contacted StreamingMedia.com—even as recently as the last week in May—have received any of the supporting documentation Berman spoke of.

Notably, Acacia has stayed away from pursuing streaming heavyweights like Microsoft, Apple, and Real. "They only provide some of the components covered by our patent," Berman said, despite the fact that all three not only create codecs, server software, and players, but also stream content on their own Web sites. "If that is Berman’s and Acacia’s stance, then how can iTunes and RealNetworks RealOne SuperPass not be infringing but CinemaNow can?," Rayburn says. "Many in the industry feel that if Acacia’s patent claims are so strong, they would go after the big three—something Acacia has shied away from doing." While the question was asked multiple times, Berman never offered a direct answer as to the role the big three play.