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Podcasts are patented – or so say the patent trolls

Can podcasting be patented? If you are an instigator of what’s being referred to as the SHIELD Act – introduced into US Congress last month – the answer would seem to be no. If you represent a US company…

“It seems patent trolls are here to stay, but that might not be the case for much longer.” K.G.Hawes

Can podcasting be patented? If you are an instigator of what’s being referred to as the SHIELD Act – introduced into US Congress last month – the answer would seem to be no. If you represent a US company called Personal Audio, the answer would seem to be yes. So who is right, and more likely to win out?

That question piques my interest both personally and professionally. Later this year I hope to start podcasting. I’ve bought a microphone, registered at the Apple Store, and am now limbering up the vocal chords before taking the plunge.

It sounds so simple, and it’s cheap – or so I thought.

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Personal Audio, based in Texas and founded in 1996, claims it “invented” podcasting, has a patent to prove it, and has made millions through litigation and license fees through what’s known as “patent trolling”. Unlike the slang term for someone who posts deliberately inflammatory comments online, patent trolls are people or companies that enforce their patents for financial gain.

Even though such behaviour is less of an issue in Australia due to our strong Patents Act, Australians with successful podcasts in the US could be sued too.

So if I’m one, I might expect a call from Personal Audio LLC.

Who is Personal Audio?

Despite reportedly not having sold a single product since 1998, Personal Audio is a nice little earner by being an aggressive patent troll.

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Which is to say, it sues major podcasters who refuse to pay it a license fee, with some success.

In 2011, a federal jury in Texas awarded Personal Audio US$8 million in its lawsuit against Apple.

This encouraged the company to go after others, with comedy podcast The Adam Carolla Show and HowStuffWorks' Stuff You Should Know podcast among its targets.

Samsung, Motorola, RIM, Archos, Coby, Sirius, LG and HTC have paid up license fees to avoid litigation.

Patent basics

In the US, utility, design, and plant patents are granted by the Patent and Trademark Office (USPTO).

Utility patents are most common, and can be issued, according to the USPTO website, to:

anyone who invents or discovers any new and useful process, machine, article of manufacture, or composition of matter, or any new and useful improvement thereof.

According to its patent, Personal Audio claims to have designed a “system for disseminating media content representing episodes in a serialised sequence” - a concept within which podcasting falls.

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And under US patent laws, anyone considered infringing a standing patent - in this case, podcasters - can be sued in Federal court by the patentee.

Patent trolls now account for the majority of all US patent lawsuits, and it’s been estimated that they netted US$29 billion in 2011 alone.

How did Personal Audio secure its patent?

As well as being lucrative, patent trolling is easy to do. A quick look at Personal Audio’s patent shows just how simple it is to claim valuable intellectual property.

BiblioArchives / LibraryArchives

Podcasting has been around for some time, and while Personal Audio’s patent was issued in 2012, the company claims it filed papers in 1996 that covered the same technology.

In addition, the overworked patent offices, particularly in the US, often grant patents for ideas that are neither new nor revolutionary.

Trolls seize on patents that are vague and describe function, rather than going to the trouble and cost of actually inventing something - and such actions are on the rise.

A 2012 study found that lawsuits filed by troll-like entities grew from 22% in 2007 to 40% in 2011. The study’s authors wrote:

From all appearances, lawsuits filed are only the tip of the iceberg, and a major operating company may face hundreds of invitations to license for every lawsuit.

And trolls don’t only make financial threats. Notorious copyright troll Prenda Law - an Illinois-based law firm – files lawsuits against those who allegedly download copyrighted “adult” films.

If the accused don’t settle - perhaps for a few thousand dollars - they risk being sued for a larger sum, with the spectre of their interest in porn being aired in public.

Are patent trolls unstoppable?

It may seem patent trolls are here to stay, but that might not be the case for much longer.

The mission of the Electronic Frontier Foundation (EFF) - an non-profit digital-rights group based in the US – is to protect “freedoms in the networked world”, and it sees so-called “patent trolls” as a significant threat.

According to the EFF website, trolls use “patents as legal weapons, instead of actually creating any new products or coming up with new ideas”, and it specifies that Personal Audio is patent trolling.

A SHIELD against trolls.

But without a change in the law, patent trolls will continue to prosper.

But there is hope. As mentioned at the start of this article, the Saving High-tech Innovators from Egregious Legal Disputes (SHIELD) Act was introduced into the US Congress last month by Reps Peter DeFazio and Jason Cheffetz.

The Act is designed to deter would-be patent trolls by forcing them to pay legal costs for lost cases.

While some people have their misgivings, the Act has been billed as the first step towards eliminating patent trolls.

After all, once my podcast starts making me millions, I don’t want to be sharing it with anyone.

Join the conversation

11 Comments sorted by

  1. Michael Shand

    Software Tester

    LOL, rediculousness, can I patent the process of recording video and uploading to youtube?

    Interesting article, thanks for posting

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  2. Jon Wardle

    Chancellor's Research Fellow, Faculty of Health at University of Technology, Sydney

    Big companies do this to. Apple being a case in point. Making them pay for lost cases is unlikely to stop these larger companies, especially considering much of the financial benefit comes from delaying competitors through the court process, rather than the awarded costs. SHIELD needs to only be a beginning.

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  3. Rex Gibbs

    Engineer/Director

    I own and run a firm that works in an area full of specious patents most of which describe processes or topological transformations of old technology. We have developed a fairly sophisticated form of waste water treatment. The real innovation is in mechatronic controls, data collection, monitoring and automation. Ionce spent a small fortune on registering & maintaining 2 patents. I then found that any attempt at enforcement can see a small firm 'deep pocketed' by lawyers and then when you win you find that, on reading the judgement that the judge came to the right result based on a total misunderstanding of the technical issues and therefore it reinforced the view that patent law is only useful for patent attorneys and lawyers.

    Now days we just do what we do. Keep the control code very secret and bury the hardware in as much sewage as possible so that if they want to see it that badly they need to sewer dive

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    1. Harry Blutstein

      Adjunct professor at RMIT University

      In reply to Rex Gibbs

      I think your experience shows that the patent system no longer serves its original purpose. It neither protects genuine inventors nor the public interest. It has become the playground of slick lawyers, big companies that want to reap monopoly rents from consumers and let's not forget bottom feeders, such as patent trolls.

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  4. Meg Thornton

    Dilletante

    <i>According to its patent, Personal Audio claims to have designed a “system for disseminating media content representing episodes in a serialised sequence” – a concept within which podcasting falls.</i>

    Given the rather loose and unspecific description, they're also describing serialised radio broadcasts, serialised television stories, and serialised written fiction, all of which pre-dated podcasting either by decades or by centuries. I wonder whether it would be possible to actually get a look…

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    1. Paul Dalgarno

      Editor at The Conversation

      In reply to Meg Thornton

      Meg, Harry – the link is in the piece now (it was misdirecting previously). If you click on it (third par: "has a patent") you'll see the PDF of the patent document. Cheers.

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  5. Matthew Rimmer

    ARC Future Fellow and Associate Professor in Intellectual Property at Australian National University

    This is a thoughtful, well-composed essay on the debate over patent law reform in respect of non-practising patent assertion entities. I wonder, Do you think Australia needs a SHIELD Act to deal with patent trolls?

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  6. Matthew Griffiths

    Partner at Accordia IP

    Possibly a little bit one sided.

    Historically, small companies, inventors, and even foreign corporations have had their rights trampled by large domestic competitors in markets all over the world. If you can't afford to contest the matter in court ($5 million and a few years), you lose. The Shield Act in the US will enshrine this - generally protecting Goliath from David.

    Patent trolls (or Non Practising Entities - NPE's) perform an intermediary role in the patent market, bringing liquidity…

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    1. Robert McDougall

      Small Business Owner

      In reply to Matthew Griffiths

      so does this mean that patent law has gone the way of copyright law? as in no longer serves the function for what it was originally designed with the features pushed far beyond the original concept with the commensurate reduction in benefit to society through innovation?

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