The Prior Art

Patent Litigation Weekly (April 6-10)

This week: The empire strikes back--Cisco Systems and Citibank file counter-suits against the patent holders making claims on videoconferencing and check-imaging, respectively; a defunct company with a less than stellar track record in the patent lawsuit business keeps filing; and a familiar player with a new name in E.D. Texas.

• Cisco Systems, Inc. v. Teleconference Systems, Llc Et Al. 09-cv-01550, N.D. California.

Teleconference Systems is a shell company set up by Acacia Research Corp., the Orange County-based patent-holding company that has, by one estimation, filed more patent suits than any other. Teleconference Systems was set up to enforce the 6,980,526 patent, which is related to videoconferencing; the patent is owned by Margalla Communications, a consulting company in Woodside, California, which presumably will share in any licensing booty Acacia wins.

On March 27, Teleconference filed its first patent lawsuit in Delaware, alleging that several companies in disparate industries have infringed the '526 patent. Teleconference is represented by Anthony Simon of The Simon Law Firm in St. Louis (formerly Simon Passante).

Encyclopaedia Britannica revives notorious multimedia patent, attacks GPS manufacturers

In 1993, a San Diego company called Compton's New Media got a big prize from the federal government in the form of U.S. Patent No. 5,241,671, only to have it quickly snatched back. The patent covered using multimedia on a CD-ROM, and it raised a storm of controversy. 

Every big newspaper in California ran stories about Compton's multimedia search patent, which quickly became a poster child for a patent system run amok. The PTO Commissioner took the unheard-of step of initiating a re-examination on his own. (This was before re-exams were cool.)

The controversy ultimately faded, with the patents exiled to the PTO's basement. And yet: the '671 patent, so long out of the public eye, had to be killed again last month in a Texas federal court, after Encyclopaedia Britannica used it to demand money from a quite different, and quite successful, industry: GPS manufacturers. How did this happen? File this story under: patents die hard.