(Coauthored by Todd Chen and Justin Ratley)
The term “Patent Troll” evokes a certain characteristic storybook image. James Logan of Personal Audio, LLC may not be that gnarled green monster hiding under a bridge, but to many Podcasters he is a similarly threatening beast. In January we posted about a suit filed by Personal Audio against three Podcasters [hotlink]. Since then, Personal Audio has filed suits against at least two others, NBC and CBS, for broadcasting various Podcasts. Even the most lucrative Podcasts do not have the litigation budget to singlehandedly defend a patent infringement suit. Nevertheless, Podcasters are collectively preparing to slay a troll.
Several Podcasters recently met with the Electronic Frontier Foundation (EFF) to develop a strategy to stave off Personal Audio, which will include combining their resources and soliciting donations from the listening public. Individually, the Podcasters would have little chance, as defending patent infringement suits is very costly. Even the American Invents Act Inter Partes Review process, a notably cheaper method of invalidating a patent, can still cost in excess of $20,000 in fees for a single claim.
The Inter Partes Review will allow Podcasters to present prior art in an attempt to invalidate Personal Audio’s ‘504 patent based on a lack of nonobviousness. Their goal up until the review is to locate as many examples of prior art relating to the allegedly infringed claim as possible. Personal Audio specifically asserts that Claim 31 is infringed by Podcasting, the claim is for an “[a]pparatus for disseminating a series of episodes represented by media files via the Internet as said episodes become available…” The broad phrasing has been Personal Audio’s chief advantage, but it may turn to a weakness as Podcasters look for similar preexisting technology. Based on the claim, any technology that produced episodic media files and delivered them over the internet could be telling of the lack of nonobviousness at filing.
Occasionally patents are issued even though prior art existed at the time because the U.S. Patent and Trade Office (USPTO) was unable to locate evidence of prior art. However, the Inter Partes review allows a party to challenge the validity of a patent after the fact, and EFF and the Podcasters are seeking to take advantage of this process. They have initiated a comprehensive campaign soliciting Podcast listeners for any podcast-like technology (prior art) in existence prior to 1996. Judging from the EFF website, it is working. A cursory view shows that listeners have found broad ranging technologies pre-dating the ‘504 patent that implement many of the ideas in the allegedly infringed claim.
Among the posts on the EFF website is a troll-slaying description of a device written about a year and a half before the ‘504 patent was filed. The literature on this portable audio device appears to not only discuss capabilities associated with modern iPods; but also the methods for categorizing, indexing, notifying, and downloading audio from the internet that could be pre-downloaded to the device for later listening. With only one chance in the Inter Partes Review, EFF and the Podcasters have not concluded their search. The EFF webpage is full of links to devices and methods that purport to rely on similar methods to the ‘504 patent. More importantly, these technologies existed prior to October 1996, when the ‘504 patent was originally filed.
The technology community is in overwhelming support of the Podcasters against Personal Audio. Stay tuned for updates and developments on the Personal Audio litigation.