p>Another partial victory for EFF's Patent Busting Project: the U.S. Patent and Trademark Office has announced that it will reissue a narrowed version of a patent on Internet music files after we asked the PTO to take a second look. So far nine of the original Top Ten Patents named in our campaign have been busted, invalidated, narrowed, or had a reexamination granted by the PTO.

The Seer System patent threatened to stifle new innovations in online music distribution, claiming a system and method for joining different musical data types together in a file, distributing them over the Internet, and then playing that file. EFF and Day Casebeer Madrid & Batchelder (the attorneys are now at Howrey) filed a request for reexamination in October of 2008, noting that descriptions of this technology were published a number of times before Seer Systems made its claim including one in a book written by Seer's own founder and the named inventor of the patent, Stanley Jungleib. The PTO granted our request in January of 2009 and initially rejected all of the claims. You may recall that Seer and Mr. Jungleib were extremely upset about this and threatened EFF with a defamation lawsuit.

The PTO has now announced that it intends to reissue the patent, but the reissued patent claims are all narrower than the original claims. That is very good news, although you should make your own determination as to whether you believe the narrowed claims are actually “novel” and “non-obvious” – we still have our doubts. At a minimum, though, the scope of the patent has been pared back, which is a positive development. Furthermore, the arguments and declarations Seer submitted to the PTO in arguing for its narrowed patent will hopefully create more clarity over what the claims allegedly cover, as well as new ways to “design around” the patent (i.e., make design decisions that will avoid infringement).

The amended and new claims all now require one or more of the following:

1. “a work link specifying a location storing work link data” that is “downloadable in real time” (see, e.g., claims 1, 15, 26, 27, 28, 36, 42, 44, 45, 49, 51), or

2. “certifying the musical work file” (see, e.g., claims 8, 22).

Some claims now include variations of both the “downloadable in real time” and “certifying” limitations (see, e.g., claims 16, 35, 43, 50).

In addition to the amendments, Seer also made numerous arguments to the PTO regarding the alleged novelty of the claims, and submitted three different declarations. The inventor’s declaration gives you a real flavor for the history of Seer.

Some of Seer’s arguments seem pretty weak. For example, in distinguishing the General MIDI (1995) reference (the book written by the inventor himself), Seer argued that “[a] LAN ‘local’ network is not the global Internet nor would it facilitate the type of commercial music distribution system described in the ‘274 Patent, which in any number of claims specifically calls out the Internet. . . . By contrast, the term ‘Internet’ does not appear anywhere in General MIDI.” Really Seer? In 1995, the inventor who wrote General MIDI didn’t know about the Internet? Guess he wasn’t a Netscape user. And merely adding “on the Internet” to a process just shouldn’t be a basis for novelty sufficient for the granting of a new patent.

Seer’s arguments that “certification” of music somehow distinguishes the “invention” as novel are also quite interesting. Seer essentially claims that no one was aware of the need to “certify” that a download was authorized until Napster came out, stating: “The main medium for music distribution at the time of the ‘274 Patent was audio compact discs (CDs). CDs and CD players do not authorize performance rights; any CD can be played in any CD player by anyone. The Napster file-sharing service, which brought the issue of performance rights to the forefront, was launched in 1999, which was several years after General MIDI much less the filing of the application that matured into the ‘274 Patent.” Well Seer, Wikipedia says Macromedia was copy-protecting VCR movies back in 1985 in its entry on copy protection. We are guessing that the argument is that movie “performances” are very very different from music “performances” for these purposes? Ahem.

Seer has sent out a press release with its spin on this, but ultimately a court will need to sort this out in any lawsuit over the reissued Seer patent, or the PTO if another re-exam is initiated. Because patent law can be complicated and counter-intuitive, if you are trying to decide what course of action to take in light of the reissued patent, you may want to hire a patent attorney to discuss specifics with you.

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