Details on the “Podcast Patent” of Personal Audio

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Originally published May 4, 2013 by Greg Gronholm, Patent Attorney. Updated often.

This is initially in response to Daniel J Lewis’s latest podcast about the new Personal Audio “Podcasting Patent”, one of many “podcasts about podcasting” that I follow.

First, Where I Am Coming From

I love podcasting, both on sending and receiving end. I have done podcasts myself and have contributed as musician recording audio for podcasters. My wife and I also own a music hall in North Atlanta, where several video podcasts have been recorded.

However, my day job is as a Registered U.S. Patent Attorney with 27 years of experience, including in computer patent litigation. I am a partner with Alston and Bird, a national firm with offices all over the US, including Atlanta, DC, New York, Silicon Valley, Los Angeles, and  Ventura County, California.

But enough about me. Lets look at this podcast patent thing.

I. Summary of the Personal Audio Podcasting Patent

Personal-Audio1The 8,112,504 patent (‘504 Patent) held by Personal Audio is here in PDF. The ‘504 Patent technically was “filed” on October 2 1996, as it is able to claim “priority” back to the original patent application which resulted earlier patents also enclosed below. So right or wrong, the latest 8112504 patent, under the US patent laws, was in effect filed on October 2 1996. This date will have an effect on how easy it will be to invalidate the patent.

The contents of the Personal Audio press release is at the bottom of this email.

What this patent is NOT

This is NOT the Volomedia patent, just for the record. I haven’t heard much on that lately.

This is also NOT about the recent patent(s) Personal Audio has had success with in the past, winning $8 million from Apple in a 2011 case and entering licensing agreements with Sirius, Motorola, Samsung, Archos, Coby, RIM, and Amazon  after suing the companies for patents related to downloadable playlists.

Here is the suit:

The ‘504 Patent - here in PDF

If you look at this patent you will see a lot of text and pictures. All that is important, but what really matters is the “claims” at the end. I have included the four broadest “claims” of the ‘504 Patent below, with a guide on how to play patent attorney yourself. If the patent does turn out to cover conventional podcasting as we know it, it could still be invalid.  If any of the claims also cover a product or process that existed before October 2 1995 (a year before the effective filing date of the patent, just trust me why) then this could be used to invalidate the patent. Patent litigators do this all the time, and this is usually a factor in every patent lawsuit; so just because a patent has issued doesn’t mean it cannot be challenged. It does have a presumption of validity, but we will get to that later.

I would not be surprised if the podcasting community delves into state of the podcasting  as it existed before October 2 1995; to the extent the 8112504 patent covers that technology, it will be invalid.

II. Details

The 8,112,504 patent

Here in PDF is a copy of the 8,112,504 patent, that issued February 7, 2012.

The Google link is   http://www.google.com/patents/US8112504

Here is the full patent:

Here is the complaint from the suit.

I find a few things interesting. First, the patent technically was “filed” on October 2 1996, as it is able to claim “priority” back to the original patent application which resulted in the following two patents:

7509178 – Here in PDF

6199076 – Here in PDF

If you read these other two, you will see they include much of the same text. The claims (numbered paragraphs at the end) are different, which means that their coverage is different, but there is not really a question that they came up with the ideas described in the text.  I haven’t looked at the coverage of these patents, but chances are the coverage is narrower or different, but they finally got what they were looking for with the ‘504 Patent. This “ratchet” effect is quite common and we patent attorneys do it all the time.

So right or wrong, the latest 8112504 patent, under the US patent laws, was in effect filed on October 2 1996. The effect of this will be noted later with respect to potential validity.

However, the coverage of a patent is NOT simply everything that is mentioned in its contents; the claims (numbered paragraphs at the end of the patent) define the specific coverage. If a product of process includes ALL the contents of a claim, then the claim is infringed and the patent is infringed. If only ONE part is left out, the patent is not infringed.

Patent Coverage is Defined by the Numbered “Claims” at the End

So the first thing to do is to look at the claims. The 8112504 patent has 35 claims, but the broadest are the four independent claims. Just go with me, don’t bother looking at the other “dependent” claims right now.

The four independent claims are further down this page . You will see that they tend to be a bit lawyerly, but you could probably slog through them. This is what I do for a living, so it can be done.

If you want to play patent attorney, read the four claims independent of each other, with the following in mind:

1)     Only one claim has to be infringed for the patent to be infringed

2)     To infringe a claim, n accused player (e.g. a podcast player such as a iPhone or computer) would have to have or perform all the parts of the claim.

The four claims are what we call “apparatus” claims, but don’t get too hung up on that right now. Just read the claims, each and every one of them separately, and see if there is anything in each of them that is NOT done somewhere in the podcast chain from creation to user play,

The Patent Could be Invalidate if the Podcast Community Works Together

Even if the patent is found to cover a current podcast product or process, the patent could still be invalidated. Here is where podcasters could work together. If any of the claims also cover a product or process that existed before October 2 1995 (a year before the effective filing date of the patent) then this could be used to invalidate the patent. Patent litigators do this ALL THE TIME; so just because a patent has issued doesn’t mean it cannot be challenged.

So interested podcasters might put out a call to the podcasting community (especially the “old timers”) for info on the state of the podcasting technology as it existed before October 2 1995; if the 8112504 patent covers that, it will be invalid.

III. Conclusion

If you have any questions, you are welcome to contact me.

Thanks

Greg

Gregory T. Gronholm, Esq.
Registered U.S. Patent Attorney
Gronholm Patent Services, LLC
653 Elm Street
Roswell GA 30075
Cell 404 210 4152
Fax 770 454 0040
www.gronholmpatent.com
greg@gronholmpatent.com

—————- Appendix A – The Claims ——–

The Four Independent Claims

1. A media player for acquiring and reproducing media program files which represent episodes in a series of episodes as said episodes become available, said media player comprising:

  • a digital memory,
  • a communications port coupled to the Internet for transmitting data requests for data identified by specified URLs, for receiving downloaded data identified by said URLs in response to said requests, and for storing said downloaded data in said digital memory,
  • a processor coupled to said digital memory and to said communications port for performing a sequence of timed update operations, each of said update operations comprising:
  • downloading via the Internet the current version of a compilation file identified by a predetermined URL and storing said current version of said compilation file in said digital memory, said current version of said compilation file containing attribute data describing one or more episodes of a series of episodes, said attribute data for each given one of said episodes including one or more episode URLs identifying one or more corresponding media files representing said given one of said episodes,
  • processing the content of said current version of said compilation file to identify attribute data describing one or more newly available episodes in said series of episodes which were not described by attribute data found in a prior version of said compilation file previously identified by said predetermined URL and previously downloaded by an earlier one of said sequence of timed update operations, and
  • downloading one or more new media files identified by one or more URLs in the attribute data describing said one or more newly available episodes and storing said one or more new media files in said digital memory, and
  • an output unit for reproducing one or more of the media files representing episodes in said series at the request of the operator of said media player.

 

13. Apparatus for acquiring and reproducing media files representing episodes in a series of episodes as said episodes become available, said apparatus comprising:

  • a digital memory,
  • a communications port coupled to the Internet for transmitting data requests for data identified by specified URLs, for receiving downloaded data identified by said URLs in response to said requests, and for storing said downloaded data in said digital memory, and
  • a processor coupled to said digital memory and to said communications port for executing one or more utility programs for:
  • performing, from time to time, one of a sequence of update operations, each of said update operations comprising:
  • downloading via the Internet the current version of a compilation file identified by a predetermined known URL, and
  • storing attribute data contained in said current version of said compilation file in said digital memory, said attribute data describing one or more episodes in a series of episodes, said attribute data for each given one of said episodes including one or more episode URLs identifying one or more corresponding media files representing said given one of said episodes,
  • accepting a selection of a particular episode described by attribute data stored in said digital memory by the operator of said apparatus,
  • downloading and storing the particular media file identified by an episode URL included in the attribute data for said particular episode if said particular media file is not already stored in said digital memory, and
  • reproducing said particular media file in a form perceptible to said operator.

 

23. An audio program player for acquiring and reproducing audio recording files which represent episodes in a group of episodes, said audio player comprising:

a digital memory,

a display screen,

one or more manual controls for accepting control commands from the user of said audio program player,

an audio output unit coupled to said processor and to a speaker or headset for reproducing selected audio files in audible form for said user,

a communications port coupled to the Internet for downloading data files each of which is identified by a URL, and

a processor coupled to said digital memory and to said communications port for:

A. from time to time, performing an update operation in a series of update operations, each of said update operations comprising:

(1) downloading via the Internet the current version of a compilation file identified by a predetermined known URL, and

(2) storing said current version of said compilation file in said digital memory, said current version of said compilation file containing attribute data describing one or more episodes in a series of episodes, said attribute data for each given one of said episodes including:

(a) displayable text describing said given one of said episodes, and

(b) an episode URL which identifies an audio recording file representing said given one of said episodes,

B. displaying a menu listing on said display screen, said menu listing comprising displayable text describing each episode in a collection of episodes,

C. selecting a particular episode described on said menu listing in response to a selection command accepted from said user,

D. if the particular audio recording file representing said particular episode is not already stored in said digital memory, downloading said particular audio recording file identified by the episode URL in the attribute data for said particular episode contained in said current version of said compilation file, and storing said particular audio recording file in said digital memory, and

E. employing said audio output unit to reproduce said particular audio recording file.

 

31. 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 an updated 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 available episodes 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 said episodes; 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 file located 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.

—————- Appendix B – the Personal Audio Press Release ——–

BEAUMONT, Texas (PRWEB) January 11, 2013

Personal Audio, LLC, has filed suit today against three companies in the US District Court for the Eastern District of Texas, Marshall Division, for alleged infringement of its U.S. 8,112,504 patent, “The Podcasting Patent.” The suits name ACE Broadcasting Network (case number 13-cv-00014), HowStuffWorks.com (case number 13-cv-00015) and TogiEntertainment, Inc. (case number 13-cv-00013) as unauthorized users of Personal Audio’s podcasting technology. ACE Broadcasting hosts the Adam Carolla Show, CarCast, and other podcasts. The Adam Carolla Show claims the record for the most downloaded podcast. HowStuffWorks.com is the Discovery Channel’s podcasting arm, hosting a number of popular podcasts, including the Stuff You Should Know and Brain Stuff podcasts. TogiEntertainment, Inc. operates the TogiNet internet radio station, which hosts the AuthorTalk, iUniverse, and many more podcasts.

“We invented the technology that enables podcasting back in 1996 as part of an effort to develop a portable and personal audio system that would offer users a customized listening experience using content and data downloaded over the Internet,” said Charles Call, a co-inventor on the ‘504 patent and a member of Personal Audio, LLC. “Today, this patented technology is used by several media companies offering podcasting.”

In addition to The Podcasting Patent, Personal Audio is the owner of four other fundamental media patents, as well as several pending applications, that describe technology that can be used to offer a personalized media experience using audio downloaded over the Internet.

In July 2011, Personal Audio won a jury verdict against Apple, Inc., in Texas for infringing The Playlist Patent, U.S. Patent No. 6,199,076, resulting in an $8 million judgment plus $4 million in interest (Eastern District of Texas, Lufkin Division, case number 09-cv-00111). Other defendants in the suit, Archos and Coby, settled before trial. Samsung, Amazon, Motorola, RIM, Sirius and others have now licensed the Personal Audio technology.

Personal Audio is represented by the Pitcock Law Group in this litigation.

About Personal Audio

Personal Audio, Inc., a predecessor to Personal Audio, LLC, was founded in 1996 with a mission of offering personalized audio to listeners using portable players downloading content and playlists from the Internet. The self-funded company worked to develop such an audio player that could download, store and manipulate audio files and related data. That system, described in patent applications filed in October, 1996, pioneered techniques now commonly used today in MP3 players, smartphones, tablets and other products that store and play audio and video files and work with downloaded playlists and podcasts.

The founder of the company was James Logan, an entrepreneur who previously had been a pioneer in the touch screen industry. He founded MicroTouch Systems, which became a public company and leader in the industry, and later Gotuit Media, a pioneer in the video metadata field.

In 2009, Personal Audio, LLC was founded by Logan and Call to market the innovations described in the patents. Robin, Kaplan, Miller & Ciresi L.L.P. was subsequently engaged to assert the patents against Apple, Inc. and other defendants (Eastern District of Texas, Lufkin Division, case number 09-cv-00111). The complaint resulted in a jury trial in July 2011 and Apple was found to have infringed U.S. Patent 6,199,076. Today the Personal Audio patents are licensed by a number of major consumer electronic firms.

For more information, contact:

Richard Baker, Vice President of Licensing
Personal Audio, LLC
(409) 768-0009
rbaker(at)personalaudio(dot)net

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