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EFF's Podcasting Patent Win Highlights a Disturbing Trend

DEEPLINKS BLOG
April 17, 2015

EFF's Podcasting Patent Win Highlights a Disturbing Trend

It's time to take a closer look at EFF's recent victory against bogus patents and highlight what we and others concerned about our patent system are up against. The United States Patent and Trademark Office (USPTO), acting on our request for review, last week invalidated claims from a patent Personal Audio LLC was using to assert that it invented podcasting.  At stake was the right of bloggers, podcasters, and broadcasters to air content, including popular shows like "This American Life"  and "Stuff You Should Know," online and operate their websites free of costly "settle or we’ll sue" threats from Personal Audio. The USPTO's decision works to stop the self-described "holding company" from using these patent claims to go after more companies, after previously targeting comedian and podcaster Adam Corolla, CBS, and others with patent lawsuits.

Personal Audio claimed that it invented the process of updating a website regularly with new, related content creating a series or episodes—basically podcasting—in 1996. EFF proved to the USPTO that claiming ownership over this process was preposterous—putting a series of shows online for everyone to enjoy had been around since at least 1993. Early examples include Internet pioneer Carl Malamud’s "Geek of the Week," although the USPTO relied on publications discussing the work of the Canadian Broadcasting Corporation (CBC) and CNN’s online news program.

Personal Audio’s patent is part of a disturbing trend involving claims of invention and ownership over obvious processes lacking the kind of innovation for which the patent system was created to nurture and protect. We’re seeing entities claiming they invented all types of technologies that are nothing more than a formerly paper-based task making the natural progression to the digital world.  These ''inventions'' include things like the screen that asks users ''are you sure'' before paying bills online. That patent’s claims, asserted by Joao Bock Transactions Systems, are written in vague terms describing a ''processing device'' that ''processes information regarding a banking transaction'' and ''generates a signal containing information for authorizing or disallowing the transaction.''

The Personal Audio patent we challenged described an ''apparatus for disseminating a series of episodes represented by media files via the Internet as said episodes become available.'' The company’s lawyer sought to convince the USPTO that CNN’s online news show wasn’t an example of  invalidating ''prior art''—patent lingo for the same or pretty much the same invention—because the CNN broadcasts were about different things,  such as saving whales one day and bad weather in California on the next. This, Personal Audio argued, meant that CNN didn’t show a system with episodes. Sound like a stretch? Here’s how USPTO Administrative Patent Judge Trenton Ward reacted to that reasoning at the December oral arguments hearing in our case: ''So are you saying an episode indicates a series that must be watched in a specific order?'' he asked Personal Audio attorney Michael Femal. ''You can watch them out of order if you would like to, Your Honor, but there is a given order to episodes,'' Femal said. Even a show like Twilight Zone isn’t episodic because each program tells a different story, Femal continued, to which Ward responded, ''Twilight Zone, no episodes in Twilight Zone?''

The judge may have felt he was entering the Twilight Zone as Femal then went on to argue that the earliest podcasters didn’t explain they were using servers to put their content online, and since the patent distinguishes that podcasting involves servers, that meant it invented podcasting first. CNN described its system as an internet newsroom ''accessed via the World Wide Web,'' Ward told Femal. ''It is your argument that a person of skill in the art reading that would not understand that that would require a server..?'' Ward asked. (A ''person of skill'' is patent lingo for someone familiar with the technology at issue. The concept is used to determine whether the technology is truly an invention or obvious to a skilled person.)  Femal said people would realize that a processor was involved but would have no idea ''what is behind the curtain.''

In their April 10 decision, Judge Ward and his two fellow patent judges rejected Personal Audio’s arguments that episodes must be in a given order and have the same theme and also ruled that claiming computers are used to post to the web ''would be trivial to'' a person familiar with how the Internet works. The fact that time and money is spent arguing these obvious points is part of what’s wrong with our patent system. Our fight to shield podcasting from Personal Audio’s bogus patent sword was supported by more than a thousand people who donated to our Save Podcasting campaign. The company tried to get a federal judge to force us to disclose the donors—but we successfully persuaded the judge to reject that request, and ultimately won our petition before the USPTO to invalidate the patent. The case highlights once again how badly reform is needed to fix our patent system so that true innovation is encouraged, rewarded, and protected and costly fights over whether the Internet relies on computers are a thing of the past.

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