NEWPORT BEACH, CA – Acacia Research Corporation announced today that its Acacia Media Technologies subsidiary had reached an agreement with attorneys representing “the university community” on licensing terms for the use of Acacia’s DMT® technology. University attorneys, however, commented that individual universities are under no obligation to accept the agreement, and suggested that those who felt Acacia’s patent claims were questionable probably would not sign on the dotted line.According to a statement released by Acacia, the license offer includes an annual fixed fee royalty payment that is “based on the number of full-time equivalent (FTE) students, and exempts non-profit colleges and universities with less than 1,000 students.” For example, colleges with 1,000 to 5,000 students would pay $1,500 a year, and colleges with 15,000 to 20,000 students would pay $5,000 per year. Colleges with less than 1000 students would pay nothing. Those amounts are down from Acacia’s initial request of 2 percent of all revenue collected for courses that used streaming media; universities routinely balked at that demand, claiming the amount was unreasonable.
“We have had some success licensing colleges and universities, but frankly we haven’t been as successful in that area as we would have liked,” Robert A. Berman, general counsel and COO of Acacia, said in an interview on Wednesday.
The company said that the revised terms will “only be available to non-profit U.S. colleges and universities that enter into the license agreement on or before December 1, 2005,” employing a “deadline” negotiating technique that is familiar to anyone in the adult industry who has been contacted by Acacia.
An attorney for the universities explained what negotiations had accomplished.
“After receiving input from several of my colleagues in the non-profit college and university community, I have worked with Acacia over the past several months to draft a license agreement suitable for the non-profit educational community,” said Wesley Blakeslee, Associate General Counsel of The Johns Hopkins University. “The revised license addresses many of the problems that schools had with the terms of the earlier Acacia proposals regarding licensing of its DMT patents. Although it is up to each school to make its own decision on whether it needs or desires a license, I believe the new license form provides a reasonable option for those schools that wish to obtain a license.”
Blakeslee, however, voiced healthy skepticism about the validity of Acacia’s patent claims.
“There are a lot of people who believe, frankly, that what they do does not infringe on the Acacia patents,” he said. “And if they believe that, they are probably not going to take the license.”
“I made it very clear that I was not making any opinion whatsoever on whether or not someone should sign,” he added. “This has nothing to do with whether Hopkins will or will not enter a license agreement, or whether anybody else should.”
Other university attorneys were also skeptical.
“I don’t know that I, in good faith, could take this to the university and say that we have to sign this,” said Turan Odabasi, a lawyer for the University of Nebraska at Lincoln. He added that he was “less than impressed” with Acacia’s legal position on its streaming media patent.
Asked whether Acacia had a strong patent claim, attorney Georgia K. Harper at the University of Texas said that was “the $64-million question,” and suggested those universities not adverse to any risk might consider a wait-and-see approach before signing.
Despite the continuing questions from universities, Acacia’s CEO, Paul Ryan, spun the development positively, saying the company was pleased to have reached the agreement, and that they “look forward to eligible schools signing on by the deadline.”
According to Acacia’s press release, the agreement brings the total number of Acacia’s DMT® license agreements to 304.
