Anti-troll strikes back

Written by Dr. Sinai Yarus

On April 10, 2014 the Patent Trial and Appeal Board (PTAB) of the USPTO decided the Electronic Frontier Foundation v Personal Audio LLC inter partes review case.

Personal Audio LLC is an offshoot of Personal Audio, Inc. which developed an audio player that could download, store and manipulate audio files. The Personal Audio patents issued starting in 1998. Personal Audio, LLC asserts the patents. The International Trade Commisssion has ruled (in an unrelated case) that significant licensing efforts in the US constitute a “domestic industry” worthy of protection.

The Electronic Frontier Foundation (EFF) is a nonprofit organization which describes itself as “defending civil liberties in the digital world”. EFF says that it engages in impact litigation, policy analysis, grassroots activism, and technology development. EFF favors open source software.

Both Personal Audio and EFF are virtually immune from counter-suits because neither one of them sells a product. Personal Audio is a classic non practicing entity (NPE; pejoratively referred to as a “troll”). EFF represents a new type of NPE which is interested in curbing the licensing activity of others (as opposed to engaging in its own licensing activity). In the title of this post I’ve referred to EFF as an “Anti-troll” to indicate their relationship to classic NPEs. This terminology is consistent with the way that EFF describes itself.

The dispute between EFF and Personal Audio is longstanding and well publicized. The dispute has often been referred to as the “podcasting case” and co-exists with numerous lawsuits filed by Personal Audio based uponUS 8112504 to Logan et. al (assigned to Personal Audio):

(i) Personal Audio, LLC v. CBS Corp., No. 2:13-cv-270 (E.D. Tex. Apr. 11, 2013);

(ii) Personal Audio, LLC v. NBC UniversalMedia, LLC, No. 2:13-cv-271 (E.D. Tex. Apr. 11, 2013);

(iii) Personal Audio, LLC v. Ace Broadcasting Network, LLC, No. 2:13-cv-14 (E.D. Tex. Jan. 7, 2013);

(iv) Personal Audio, LLC v. Howstuffworks.com, No. 2:13-cv-15 (E.D. Tex. Apr. 10, 2013);

(v) Personal Audio, LLC v. Togi Entertainment, Inc., No. 2:13-cv-13 (E.D. Tex. Jan. 7, 2013);

(vi) Fox Networks Group, Inc. v. Personal Audio, LLC, No. 1:13-cv-11794 (D. Mass. July 26, 2013); and

(vii) Personal Audio, LLC v. Fox Broadcasting Co., No. 2:13-cv-577 (E.D. Tex. Aug. 6, 2013).

The purpose of this post is to provide a short summary of how EFF successfully used inter partes review to successfully invalidate claims 31 to 35 of the Logan patent.

The Logan patent:

US 8112504 entitled “System for disseminating media content representing episodes in a serialized sequence” was filed March 4, 2009 and granted February 7, 2012.

US 8112504 is a Division of U.S. patent application Ser. No. 09/782,546 filed on Feb. 13, 2001.

Application Ser. No. 09/782,546 is a Division of U.S. patent application Ser. No. 08/724,813 filed on Oct. 2, 1996.

The earliest priority date is therefore October 2, 1996.

The focus of the inter partes review was Independent claim 31 which is directed towards (terms at issue inbold):

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 anupdated 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 availableepisodes 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 saidepisodes; 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 filelocated 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.

US 8112504 also contains claims directed towards A media player for acquiring and reproducing media program files which represent episodes in a series of episodes as said episodes become available (claims 1-12) and Apparatus for acquiring and reproducing media files representing episodes in a series of episodes as said episodes become available (claims 13-22) and An audio program player for acquiring and reproducing audio recording files which represent episodes in a group of episodes (claims 23-30). None of these claims were at issue in the inter partes review.

Issues under review:

The PTAB considered two issues

(1) Are 31–35 of the ’504 patent anticipated under 35 U.S.C § 102(a) by Andrew S. Patrick, et al, CBC Radio on the Internet: An Experiment in Convergence, 21 CANADIAN J. OF COMM’N 1, 125-140 (1996)?; and

(2) Are claims 31–35 obvious under 35 U.S.C. § 103(a) over Charles L. Compton, Internet CNN NEWSROOM: The Design of a Digital Video News Magazine, Massachusetts Institute of Technology (Aug. 10,1995)?

There was no consideration of § 101 issues which are excluded from inter partes review.

Outcome:

The PTAB held that claims 31 to 35 of US 8112504 were both anticipated by Patrick et al. (1996) and obvious in view of Compton/CNN (1995). Discussion focused on the highlighted terms in claim 31 which were all deemed to be present in, or obvious in view of, the cited references. Personal Audio can appeal to the Federal Circuit.

Impact:

It seems likely that the numerous infringement suits in which US 8112504 is asserted will be quickly resolved. Although claims 1 to 30 in the patent remain in force, these claims are all directed towards client side devices. Since the alleged infringers are content providers, assertion of these claims would have to rely on an “induced infringement” rationale. In addition, since the server side claims were deemed obvious and/or anticipated, claims directed towards client side hardware using similar language to perform complementary functions could easily turn out to be anticipated and/or obvious.

We can only hope this PTAB decision will help establish that the existing patent system is not “broken” and that well intentioned legislation to “reform” the patent system may be superfluous.

Personal Audio has engaged in extensive licensing activity and filed infringement suits to protect that activity. It is not yet clear how the current decision will impact licensing activity of the remainder of the Personal Audio portfolio.

EFF’s success in this case may give rise to IP vigilantism in which not for profit organizations are formed to pursue an agenda which hampers licensing activity in a specific technology sector. Like the original trolls, the anti-trolls will be able to operate with impunity because they are virtually immune from counter-suits. EFF has demonstrated that relatively inexpensive procedures within the USPTO can be an effective substitute for litigation.

One of the complaints leveled against traditional NPEs is that it can be hard to identify the real party in Interest. Ironically, determining who is behind an Anti-troll may prove to be just as difficult.

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