Adam Carolla Settles With Podcasting Patent Troll: Even With A Strong Case And $500k In The Bank, It's Too Expensive To Fight

from the too-bad dept

A few weeks ago, we noted that Personal Audio, the patent troll that ridiculously pretended to own a patent on "podcasting" had put out a press release saying that it had tried to settle with Adam Carolla, the podcasting giant that the Personal Audio had sued a while ago. But Carolla had refused to settle. If you haven't been following the case, Personal Audio claims that patent 8,112,504 covers podcasting and went after a few of the "big names" with lawsuits, while sending demand/threat letters to many others. Carolla fought back hard, getting a bunch of other top podcasters to speak up as well, and point people to a crowdfunding campaign for a podcasting legal defense fund.

We were at least somewhat happy that Carolla was still fighting, noting that by continuing the case and pushing the counterclaims, hopefully he could invalidate the patent in court. However, a few weeks have gone by and Carolla has settled the case. Given that Personal Audio had already said it offered to dismiss the case for no money, it's unlikely that Carolla paid anything here, and you can never really fault someone for settling a lawsuit, which is going to be costly and time consuming when there's an easy out. Still, as the folks at EFF note, this is a lost opportunity to both kill off that patent and to get attorneys' fees out of Personal Audio:

By settling now, Carolla gives up the chance to make Personal Audio pay his fees. If a defendant wins on the merits it can get fees in extraordinary cases. Winning fees would be a huge deterrent to future litigation from Personal Audio. Although the Supreme Court recently made it somewhat easier for victorious defendants to get fees, it is still a challenge. Moreover, the judge has a lot of discretion and this case was in the Eastern District of Texas, a forum generally considered quite friendly to trolls. Carolla’s team likely made the calculation that fees would be a long shot.

Even more important, Carolla also loses the opportunity to invalidate the patent. If the case had gone to trial, he would have argued that the patent was invalid because the so-called invention was described or made obvious by other people’s work before Personal Audio filed its patent. Carolla would have been able to use more prior art at trial than EFF (challenges at the Patent Office are limited to printed publications). As Charles Duan at Public Knowledge recently explained, if Carolla had won on the invalidity issue, he would have defeated Personal Audio for all podcasters. A troll can’t sue with patent claims that have been invalidated by a court.

Also, somewhat unfortunately, Carolla has agreed to a gag order, promising not to talk about any of this until the end of September. While that's not too far off, the EFF notes that between now and then, Personal Audio is using that patent against a number of TV companies in a case set to go to trial in September.

Furthermore, the EFF notes that this situation shows just how ridiculous the patent troll situation is. When you have a very strong case, and $500,000 given to you via crowdfunding specifically to kill this patent troll... and most experts agreed it still wasn't nearly enough, which is why settling is the right move:

The most disappointing aspect of today’s settlement is how unsurprising it is. Almost every defendant, no matter how strong their case, ends up settling with the patent troll. Litigating patent cases is extraordinarily expensive. Carolla raised almost half a million dollars and that still would not have been enough to fund a defense through trial.

Trolls know this and use the cost of defense to extort settlements. In the rare case where someone shows a willingness to fights to the end, the troll will often save its patent at the last moment with a walk-away deal. This is likely what happened in Carolla’s case.

Once again, it's time to fix the patent system to stop bogus trolling like this.

Filed Under: adam carolla, patent troll, patents, settled
Companies: personal audio

Podcasting Patent Troll Realizes Podcasters Don't Make Any Money; Desperately Tries To Escape Adam Carolla Lawsuit

from the good-luck-with-that dept

Remember Personal Audio? That's the ridiculous company claiming to hold a patent (US Patent 8,112,504) which it believes covers podcasting. The company has been involved in a variety of dirty tricks, including trying to intimidate donors to an EFF campaign to invalidate the patent. Also, unlike most patent trolls, the folks behind Personal Audio have actually been willing to talk to the press and make themselves look incredibly foolish in the process.

The company's original patent lawsuits against podcasters were directed at Adam Carolla, HowStuffWorks and Togi Entertainment. The company chose poorly. Carolla isn't exactly one to back down from a bully, and kicked off a big crowdfunding campaign to "save podcasting," roping in a bunch of other podcasters to alert their audiences as well. The campaign has raised almost half a million dollars.

It appears that Personal Audio is trying to call uncle and get out of the whole thing, claiming that now that discovery has been done, it's learned how little podcasters actually make. So it's dropped the lawsuits against Togi and HowStuffWorks and wants to do the same for Carolla, but he won't let them:

Personal Audio, the pioneers in personalized media solutions, this month offered to dismiss Adam Carolla (and his podcasting company, Lotzi Digital, Inc.) from its highly publicized patent infringement lawsuit. In May and June of this year, Personal Audio dismissed Togi Net and How Stuff Works, the other podcasting defendants, from the same lawsuit. The offer made by Personal Audio, however, to dismiss Adam Carolla has now been rejected by the comedian. Furthermore, his agents have indicated that he will continue to raise money through FundAnything.com, a site where he has already solicited $450,000.

When Personal Audio first began its litigation, it was under the impression that Carolla, the self-proclaimed largest podcaster in the world, as well as certain other podcasters, were making significant money from infringing Personal Audio’s patents. After the parties completed discovery, however, it became clear this was not the case. As a result, Personal Audio began to offer dismissals from the case to the podcasting companies involved, rather than to litigate over the smaller amounts of money at issue

Carolla has responded to this by noting that he's continuing to pursue his counterclaims against the company in an effort to stop the company from ever suing other podcasters under such a bogus patent. And this is a good thing. As Public Knowledge is pointing out, continuing this fight is the only way to make sure that the company can't continue to abuse this patent.

Filed Under: adam carolla, patent troll, patents, podcasts
Companies: personal audio

Podcasting Patent Troll Files Bogus Subpoena To Intimidate Donors To EFF's 'Save Podcasting' Campaign

from the extreme-obnoxiousness dept

A year ago, we wrote about the ridiculous situation of a company called Personal Audio, which claimed to have a patent that covered podcasting and had started going after a bunch of the top podcasters, including Adam Carolla and How Stuff Works. The patent in question, 8,112,504, was for an attempt to deliver news on audio cassettes. The patent itself is exceptionally broad and ridiculous. It never should have been granted. Even if it was legit, the idea that it has anything to do with podcasting is simply ridiculous. Last summer, NPR's Planet Money had a good episode all about this patent, in which the lawyer and the patent holder made some ridiculous claims, pretending that this patent was "the roadmap" that taught people how to podcast.

The good folks at EFF started a "save podcasting campaign" and raised some money, which they used to file a challenge against the patent at the Patent Office. That process is still ongoing, but it appears that Personal Audio and its lawyer have decided to go to war with the EFF and its donors, trying to intimidate them. In one of its lawsuits over the patent (completely unrelated to the challenge at the USPTO), Personal Audio sent a subpoena to EFF demanding a whole bunch of stuff, including identifying information on everyone who donated to the campaign. Here's the full list of what they're actually asking for:

1. Any communications between the EFF and Defendants specifically Concerning the '504 patent, including but not limited to the construction of any claim terms and any alleged prior art relevant to any claim of the patent.
2. Any communications between the EFF and any actual or potential witness specifically Concerning the '504 patent or prior art to the '504 patent.
3. Any communications between the EFF and any third parties specifically Concerning the '504 patent, including but not limited to any communications with the Cyberlaw Clinic at the Harvard University Berkman Center for Internet and Society, Julie Samuels, Mark Cuban, RPX, Article One Partners, Mark Lemley, Durie Tangri Page Lemley Roberts & Kent LLP, the Open Innovation Network, StackExchange, Google, Inc and/or their representatives, agents or counsel.
4. Any non-privileged communications regarding the prior art cited in any proceedings in the Patent and Trademark Office Concerning the '504 patent.
5. All fundraising activities in connection with the proceedings in the Patent and Trademark Office specifically Concerning the '504 patent, including but not limited to the Identification of the names of all Persons who donated or contributed and Identification of the amounts contributed by each Person, as well as the Identification of any promised contributions which have not been received yet as well as the Persons who promised such contributions and the amount thereof.
6. All steps taken in order for the EFF to be "fully prepared" to take on Personal Audio with respect to the '504 patent.
7. Identification of any Information Concerning any prior art (whether or not included in any Patent and Trademark Office proceeding) that would tend to show either: (1) the art did not disclose any element of the claims of the '504 patent or (2) the art was not demonstrably available prior to any filing date of the '504 patent.
8. Any nonprivileged analysis or Communications Concerning the following: (1) the claims of the '504 patent; (2) any prior art to the '504 patent; and (3) the meaning or construction of any of the terms in the claims of the '504 patent.

EFF is fighting the subpoena, arguing a variety of points about how this goes way beyond any reasonable effort. It's not just seeking information totally irrelevant to the case, but it's trying to get EFF to disclose private information about individuals, violating their First Amendment rights of association. As the EFF notes in its blog post about this:

We believe that Personal Audio’s subpoena to EFF is improper for a number of reasons that are laid out in detail in our motion. Above all, we are outraged that Personal Audio is seeking to invade the privacy and associational rights of hundreds of our donors. EFF takes the privacy of its members and supporters extremely seriously—and so does the Constitution. As we explain in our motion, the First Amendment protects our donors’ right to privacy, and Personal Audio’s supposed need for the information does not trump those rights.

Personal Audio’s tactic is also improper for several other reasons. For example, it is appears to be primarily intended to avoid the well-defined limits of the PTO discovery process. The petition we filed follows a new, streamlined and therefore relatively inexpensive process. Rather than respond to that petition following the rules of that process, Personal Audio is trying to use entirely separate litigation as an excuse to raise the stakes on EFF – something Congress never intended. If Personal Audio succeeds, we fear it will send a message that this new process can be made invasive, cumbersome and expensive after all, which will in turn discourage others from using it to challenge low quality patents. That would be a shame for all of us.

Beyond that, this seems like a clear attempt by Personal Audio to intimidate both EFF and its donors -- though if they were even remotely aware of the EFF and its backers, they should have known how badly that plan would backfire. Hopefully the court will rightfully quash the subpoena and, perhaps, make it clear to Personal Audio's lawyer, Jeremy Pitcock, that this is totally improper.

Filed Under: adam carolla, donors, patents, podcasting, subpoena
Companies: eff, personal audio

Patent Troll Says It Owns Podcasting; Sues Adam Carolla, HowStuffWorks

from the this-dept.-line-is-patented dept

We've written a few times about a patent trolling operation called Personal Audio. Like so many patent trolling companies, who's actually behind it is something of a mystery, but it does have an empty office in East Texas that no one ever goes to. It sued Apple and others claiming that it held patents on the concept of "playlists" and actually scored some victories. Amazingly, it sued Apple multiple times over the same patent, arguing that small changes to its products were new violations.

Well, the company is back with a "new" patent, 8,112,504, called a "System for disseminating media content representing episodes in a serialized sequence" and appears to be claiming that podcasting itself violates the patent -- and has sued three podcasters, including Adam Carolla's "ACE Broadcasting," HowStuffWorks and Togi Entertainment. Personal Audio focuses on claim 31 of the patent, which you can read here:

31. Apparatus for disseminating a series of episodes represented by media files via the Internet as said episodes become available, said apparatus comprising:

one or more data storage servers,

one or more communication interfaces connected to the Internet for receiving requests received from remotely located client devices, and for responding to each given one of said requests by downloading a data file identified by a URL specified by said given one of said requests to the requesting client device,

one or more processors coupled to said one or more data storage servers and to said one or more communications interfaces for:

storing one or more media files representing each episode as said one or more media files become available, each of said one or more media files being stored at a storage location specified by a unique episode URL;

from time to time, as new episodes represented in said series of episodes become available, storing an updated version of a compilation file in one of said one or more data storage servers at a storage location identified by a predetermined URL, said updated version of said compilation file containing attribute data describing currently available episodes in said series of episodes, said attribute data for each given one of said currently available episodes including displayable text describing said given one of said currently available episodes and one or more episode URLs specifying the storage locations of one or more corresponding media files representing said given one of said episodes; and

employing one of said one or more communication interfaces to:

(a) receive a request from a requesting client device for the updated version of said compilation file located at said predetermined URL;

(b) download said updated version of said compilation file to said requesting client device; and

(c) thereafter receive and respond to a request from said requesting client device for one or more media files identified by one or more corresponding episode URLs included in the attribute data contained in said updated version of said compilation files.

Now, let's be clear. This patent was applied for on March 4, 2009 and granted on February 7, 2012. Isn't it great that the "new" USPTO is now rushing through patent approvals, so examiners like Carl Colin could claim that this patent was both "new" and "non-obvious" to those skilled in the art, when podcasting itself has been around since at least 2004. Hell, why not look it up on, oh, HowStuffWorks -- one of the companies being sued for "violating" this patent that wasn't applied for until 2009? Incredibly, Adam Carolla's podcast started on February 23, 2009... or exactly two weeks before this patent was applied for. Update: As pointed out in the comments, this is actually a "child" patent of an earlier application, so they can argue a priority date from back in 1996. In other words, this is really a submarine patent (which were supposed to have been outlawed).

Of course, with so many podcasters out there, Personal Audio is not just focused on the three companies it's sued. The EFF notes that the company has sent out licensing demands to a bunch of other podcasters, as well. The good news is that the EFF is now trying to help those podcasters fight back.

What might make this even more interesting would be if people like Adam Carolla, who have huge audiences that take what they say really seriously, were able to get those audiences suddenly interested in just how totally screwed up our patent system is. Want the problems of the patent system to go mainstream? Just start having Adam Carolla talk about how messed up it is a few times on his podcast. Carolla has said that his podcast is the most downloaded podcast ever -- and if his listeners understood just how screwed up things are with the system, perhaps we could actually make a move towards really fixing an incredibly broken patent system. Carolla has apparently talked about it a little bit, and called for a "grassroots legal defense fund," but that's not going to change the actual system. If he could speak out against the problems of the overall system, rather than just that one patent, it might help permeate the public consciousness that it's the system itself that's broken.

Filed Under: adam carolla, patent troll, patents, podcasting
Companies: ace broadcasting, howstuffworks, personal audio, togi entertainment