Orange County Business Journal

Acacia Settles Patent Dispute with Overstock.com

Chris Casacchia Tuesday, September 13, 2011

Newport Beach-based Acacia Research Corp., which licenses patents for companies, reached a settlement and licensing agreement with Salt Lake City-based Internet retailer Overstock.com, the company announced Tuesday.

The agreement resolves litigation that was pending in the United States District Court for the Eastern District of Texas.

Financial details of the settlement were undisclosed.

The licensing deal with Overstock.com is the latest in a string of high-profile agreements hammered out by Acacia, which has become a leader in patent licensing, an emerging asset class gaining prominence in the technology industry.

When Acacia finds a company infringing on a patent, it tries to strike a licensing deal or sues. It splits sales, licensing fees and court settlements with the patent holders.

Acacia has a patent infringement lawsuit in Texas pending against a host of smartphone makers, including Cupertino-based Apple Inc. and HTC Corp. of Taiwan. It also recently settled lawsuits against Schaumburg, Ill.-based Motorola Corp. and Research In Motion Ltd., the Canada-based maker of Blackberry phones.

Acacia used to get most of its revenue from lawsuits.

The company’s growing revenue—and profits of about $34 million last year—have allowed it to go after more cases. The recent recognition of patents as an asset class has made settlements without litigation more likely.

Acacia on Tuesday also announced that it received a $4.5 million final judgment and a $3 million damages award stemming from a June 17th trial verdict from its patent lawsuit against Universal Lighting Technologies of Nashville, Tenn.

In the final judgment the District Court for the Northern District of Texas found that the inventor of the patent acted diligently in contacting Acacia to seek “an effective means to challenge a host of large, wealthy corporations, having already put such corporations on notice regarding his infringement contentions.”

Acacia’s client list includes Seoul, Korea-based Samsung Electronics Co., Microsoft Corp. of Redmond, Wash., and Redwood Shores-based business software maker Oracle Corp.

It also has struck licensing agreements with—or settled patent infringement claims against—a roster of Orange County-based companies, including flat TV designer and seller Vizio Inc. and Sage Software Inc., both in Irvine, and Fountain Valley-based D-Link Systems Inc., among others.

In some instances, Acacia works with companies it has sued or settled with on behalf of other clients.

Acacia shares were up nearly 4.5% to a market value of $1.9 billion at the close of New York trading Tuesday.