It's Over: The Podcast Patent Troll's Patent is Officially And Completely Dead

from the podcast-away,-folks dept

Going back many years now we've written about the company Personal Audio, which built itself up as a patent troll for digital audio. Back in 2011, it won a patent lawsuit against Apple over patents on playlists. In 2013, as podcasting was starting to take off, Personal Audio decided that one of its other patents actually covered podcasting as well and sued some top podcasters while threatening many others. EFF stepped in to use the valuable inter partes review process to seek to invalidate the patent, which worked. Though, in the process the company sought to intimidate EFF donors.

While all of this was happening, the company also realized that podcasters don't make any money, and figured out how to dump its lawsuits against individual podcasters... while still going after large companies like CBS.

After the Patent Office's appeals board (PTAB) invalidated the patent, Personal Audio went to court to overturn the ruling. Last year, an appeals court rejected that attempt, noting that the PTAB was correct in invalidating the patent. Personal Audio still kept fighting, and asked the Supreme Court to hear it's appeal.

Thankfully, on Monday, the Supreme Court denied that request, meaning that Personal Audio's podcasting patent is finally, truly and completely, dead.

Still, the fact that this process took about five years and a ton of time in court should demonstrate just what a drag bogus patents can be on the economy and innovation. It also shows just how valuable a bogus patent can be for the trolls that hold them. Even after Personal Audio realized that all the podcasters it was trying to shakedown had little money to hand out, it still fought to the bitter end in trying to keep the patent alive, knowing that it could successfully get larger media companies to pay up. So this is a victory, but also a demonstration of just how broken the patent system is. Personal Audio did nothing to help podcasts become a thing. It did nothing to help podcasts move forward or become popular. Its only contribution to the podcast world was to wreak havoc on a bunch of podcasters, scaring many of them and costing them a ton of money in legal fees. That's all a dead weight loss to the economy, that could have gone into making more and better content.

Filed Under: inter partes review, ipr, patents, podcasting, ptab, scotus, supreme court
Companies: eff, personal audio

Appeals Court Agrees: Awful Patent Used To Shake Down Podcasters Is Invalid

from the good-news dept

Hey, a bit of good news! For years now we've covered the saga of Personal Audio, the "company" that claimed it held a patent (US Patent 8,112,504) that covered podcasting itself. The actual patent is about delivering news on audio cassettes, but give lawyers enough old patents and they'll twist them to be about anything. The company sent threat letters to a bunch of popular podcasts, and actually sued a few. EFF filed to invalidate the patent back in 2013 and finally succeeded in 2015. But... Personal Audio appealed.

But the company won't be getting what it wants, as the Court of Appeals for the Federal Circuit (CAFC) has gotten this one right: it's sided with EFF and said that the patent is invalid.

EFF had filed what's known as an Inter Partes Review (IPR) process, pointing out some prior art and arguing "obviousness" as well, and the Patent Office review board had agreed. Personal Audio tried to argue that the Patent Trial and Appeal Board (PTAB) misconstrued some of its claims, but the court notes that they're the freaking patent office, and they can construe claims however they want. Well, that's not quite how it was put, but:

The PTAB is authorized to construe the claims in accordance with their broadest reasonable interpretation...

It then goes through and affirms all of how PTAB construed the various claims, saying they are perfectly reasonable constructions and then concludes, simply:

We have considered all of Personal Audio’s arguments, and affirm the PTAB’s conclusion that the challenged claims are anticipated by the Patrick/CBC reference, and alternatively that the claims are invalid as obvious in view of the Compton/CNN reference.

And thus, the patent is still invalid. Personal Audio can appeal to the Supreme Court (which seems unlikely to take such a straightforward case), but EFF says it's ready if it does go that far:

“Although we’re happy that this patent is still invalid, Personal Audio could seek review at the Supreme Court,” said Vera Ranieri, Staff Attorney at EFF. “We’ll be there if they do.”

Filed Under: cafc, patents, podcasting
Companies: personal audio

EFF Helps Bust Bogus Patent That Was Being Used To Shake Down Podcasters

from the nice-work dept

Remember Personal Audio? That's the company that claimed it had a patent (8,112,504) from years ago that covered all podcasting and then sued a bunch of top podcasters over it. The company got itself lots of attention, including from EFF, who filed with the UPSTO to invalidate the patent. In response, Personal Audio tried to intimidate EFF's donors. Eventually, Personal Audio realized that podcasters don't actually make that much money and settled a bunch of its lawsuits -- even with Adam Carolla (which actually does make a bunch of money) who had insisted he wasn't going to settle.

Most of those settlements were for no money, but the company did win its lawsuit against CBS (in Eastern Texas, of course). However, the EFF's initial effort to invalidate the patent at the USPTO (which is a separate process from the lawsuits) has now resulted in the Patent Office invalidating the key claims in the patent. You can read the USPTO's decision, in which it notes that the key parts of the claim were clearly obvious to practitioners skilled in the art at the time of the patent and that the prior art invalidates the patent as well.

We are persuaded by a preponderance of the evidence that Petitioner’s rationale for obviousness is supported by rational underpinnings.

Kudos to the team at EFF, who have been doing some great work on patents lately (contrary to one of our grumpy commenters who insists that the EFF lawyers will never be seen as "serious professionals" by the US Patent Office, and will remain "marginal players at best"). Can't wait to see what patent projects they take on next...

Filed Under: invalid, obviousness, patents, podcasting, podcasts, prior art
Companies: eff, 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

EFF Files To Invalidate Bogus 'Podcasting' Patent That Is Being Used To Shakedown Famous Podcasters

from the hope-it-works dept

We've written a few times about the patent troll "Personal Audio" which claims to hold a patent (US Patent 8,112,504) that it says covers podcasting. With this patent it's been busy shaking down the creators of a bunch of popular podcasts. The company's owner and his lawyer recently asserted (somehow, without laughing) that their patent was "the roadmap" for podcasting, even though no one involved in the early days of podcasting was even remotely aware of the patent.

It's taken some time, but the EFF has been targeting this particular patent, and has now officially challenged the patent seeking to get it invalidated.

"Bad patents like this one slow down innovation—exactly the opposite of what the patent system was intended to do," said EFF Senior Staff Attorney Julie Samuels, the Mark Cuban Chair to Eliminate Stupid Patents. "We are thrilled to challenge this bad patent and make the world safer for creators and podcasters."

The process involving these kinds of things is very slow and convoluted, but hopefully this patent can be busted, and podcasters won't have to live in fear of a shakedown letter from Personal Audio.

Filed Under: patent, patent troll, podcasting
Companies: eff, personal audio

Planet Money Takes On The Podcasting Patent Troll

from the a-failure-in-business-now-shaking-down-podcasters dept

We already wrote about This American Life's sequel concerning patent trolls, but there's also something of a companion podcast on Planet Money highlighting the patent troll suing podcasters. We'd talked about this earlier in the year when it first made news, but Planet Money actually gets the troll and his lawyer to talk -- which is pretty rare in the patent trolling world. The patent (8,112,504) is a "new" patent -- granted in February of 2012 -- but the priority date goes all the way back to 1996.

The "inventor," Jim Logan, started a completely failed business around delivering audio news on cassettes. And now he claims to have invented podcasting and wants a cut. Once again, it's an example of everything that's wrong with the patent system. Logan didn't invent podcasting at all. He had nothing to do with podcasting. He tried to start a bad business, which failed miserably years ago, and now others have done some actual innovating, and he's trying to demand cash from a bunch of them. When Planet Money's reporter Zoe Chace points out to Logan and his lawyer that it sounds ridiculous because Logan clearly didn't invent podcasting, his lawyer, Richard Baker, pretends otherwise, and makes a laughably ridiculous statement:

"This is the roadmap. This is Jim's patent. This is the roadmap that would tell someone how to do podcasting, how to do MP3 players. A lot of the roadmap is right here in the columns of this patent."

But, of course, that's bullshit. No one read the patent and said "Aha! Now we know how to podcast." Because nothing in the patent is about podcasting. What actually happened was plenty of people started to realize that the decreasing cost of storage, the increase in bandwidth and the rise of MP3 players, combined with syndication protocols like RSS, meant that you could distribute long audio files easily. There's nothing in the patent that's useful at all. This is the big myth of patents: that they somehow disclose something useful. That's almost never the case, and is certainly not the case with this particular patent, especially since it was issued nearly a decade after podcasting came about.

Chace finally gets Baker to admit that "it doesn't make a difference" whether or not anyone involved in podcasting, such as the guy who wrote the podcasting functions of iTunes, was even aware of the patent.

Chace does make one mistake in describing how patents work, claiming that even though lots of people had thought of "playlists" (the key part of the patent) before, it doesn't matter because Logan was "the first to write it down." But that's not actually how patents work. While it's true (sort of) that after the very recent switch to a "first inventor to file" system, the first inventor to file gets the patent. But until just a few months ago, it was the first inventor who had the right to the patent. So her claim that Logan's patent is legit because he filed first is simply wrong. Furthermore, it's wrong (even today) to say that because he's the first to write it down, then the patent is his, because prior art and obviousness are two things that make a patent invalid, and the idea of a playlist way, way, way predates Logan's patent.

In the podcast, Logan and Baker continue to insist that there's nothing wrong with what they're doing, because it encourages people to invent. But that's clearly ridiculous (and it's a bit disappointing that Chace didn't call them on this), because that's not what happened here. Logan didn't invent podcasting. He invented something else that failed in the marketplace. That should be the end of it. Now he's trying to score money from people who did something entirely different and are more successful than him. That's about as antithetical to a free market system as you can imagine. We don't reward the losers who failed to build a compelling product by forcing those who succeeded to give them money. That's just bad for everyone. It encourages less innovation, and it (most importantly) overvalues ideas over execution, which is a huge problem. We shouldn't reward failed ideas. We reward successes, and we do that in the marketplace. But patents do the exact opposite.

Filed Under: patent trolls, patents, podcasting