Podcasters have something to really rejoice over today. The Electronic Frontier Foundation (EFF) got a big win in its case against Personal Audio LLC, the so-called “patent troll” that began suing podcasters in 2013 for licensing fees, claiming those podcasters were using technology it had patented. So while debates may go on forever about just who really invented podcasting, we know now for sure it definitely wasn’t Personal Audio.
From the EFF website:
The U.S. Patent and Trademark Office (USPTO) invalidated key claims in the so-called “podcasting patent” today after a petition for review from the Electronic Frontier Foundation (EFF)—a decision that significantly curtails the ability of a patent troll to threaten podcasters big and small.
In petitions filed with Patent Office, EFF showed that Personal Audio did not invent anything new before it filed its patent application, and, in fact, other people were podcasting for years previously. Earlier examples of podcasting include Internet pioneer Carl Malamud’s “Geek of the Week” online radio show and online broadcasts by CNN and the Canadian Broadcasting Corporation (CBC).
Even before this ruling, Personal Audio’s attempts at suing under patent infringement claims hadn’t been going so well. Most notably, the company settled out of court with Adam Carolla, claiming that Carolla’s company wasn’t profitable enough to make the lawsuit worthwhile. Today’s ruling should put an end to any future podcasting-related lawsuits coming from Personal Audio.
The EFF has archived the entire Patent Office decision, if you’d like to read it.
After a 45-day gag order required him to not speak about the settlement of the infamous podcast-patent troll lawsuit, Adam Carolla was finally able to discuss the matter on his show. Carolla, along with his usual cohosts and special guest legal counsel Mike August went over some details of the case. Here are some highlights:
- The so-called patent troll company, Personal Audio, sued Adam Carolla in a court district in East Texas known to be friendly to these types of lawsuits. Personal Audio also sued Apple under this patent in the same district and won to the tune of eight million dollars.
- Carolla’s team was spending about $100,000 per month in legal expenses during the lawsuit.
- Personal Audio stated its patent covers episodic content delivered via the Internet. The company sued NBC, CBS and Adam Carolla looking for royalty payments.
- The lawsuit was originally filed against Carolla in January 2013. It was scheduled to go to trial in September 2014. In July 2014, Personal Audio approached Carolla about dropping the suit because he had been successful in raising legal defense funds thru crowdsourcing as well as creating a lot of negative PR for Personal Audio by tying the name of the company to the term “patent troll.”
- Personal Audio initially filed their lawsuit against “Ace Broadcasting,” which isn’t a name officially used by Carolla. When they first tried to serve legal papers at Carolla’s studio they were turned away by Carolla’s staff for that very reason.
- At first, Carolla wasn’t concerned about the lawsuit as he believed he hadn’t done anything wrong. But Mike August was quick to explain that in patent suits, the burden of proof is shifted from the plaintiff to the defendant, causing the defendant to have to prove they didn’t violate the patent.
- In the papers served to Carolla, Personal Audio sent a 50-page, single-space document that was a copy of the patent with no further explanation of how the patent had been violated.
- The patent was originally granted in 1996 based on an idea to syndicate magazine articles online. In 2009, the holder of the patent applied for a sub-patent that would cover newer technologies such as podcasting. The sub-patent was approved in 2012, opening the door to these types of lawsuits.
- In the original lawsuit, Personal Audio demanded a payment of 3.5 million dollars. Mike August estimated that it’d cost 1.5 million to defend the case, and that’s why Carolla decided to fight the suit and turn to crowdsourcing for legal funds.
- According to Mike August, Carolla didn’t simply “settle” the lawsuit. Personal Audio dismissed the case because the company felt Carolla’s PR campaign was tainting the jury pool in East Texas which would make it harder for Personal Audio to win other lawsuits.
- Carolla’s team wanted Personal Audio to dismiss the lawsuit with prejudice but they wouldn’t agree to that so the case was dismissed without prejudice, meaning that they can technically sue Carolla again for the same thing.
- Carolla had raised about $475,000 for his legal defense fund. Had he not accepted the dismissal, the lawsuit could’ve cost him more than a million dollars beyond what had already been raised.
- Carolla spent about $675,000 defending the case, so even with the crowdsourced funds, he’s still at a deficit over the case.
- CBS was sued on the same day as Carolla and the jury found CBS had infringed the patent and was ordered to pay 1.3 million dollars.
- As part of the terms of dismissing the case, Personal Audio had to publicly state that they wouldn’t file similar lawsuits against other podcasters that had publicly supported Carolla. Marc Maron, Chris Hardwick, Earwolf, Jay Mohr and Joe Rogan were specifically mentioned.
- Mike August believes that if Personal Audio had to do it all over again, they wouldn’t file another suit against Carolla as they’ve realized that there just isn’t enough money in podcasting to make these types of lawsuits worthwhile.
- Personal Audio had approximately ten different lawyers from three different firms working on the case. Carolla was using a single legal firm in Texas of three to five lawyers.
- Mike August states that the podcast patent only applied to Carolla’s website. Since the Carolla podcast is distributed thru multiple channels, this actually lowered the amount of damages Personal Audio could claim in the lawsuit.
Carolla wrapped up the discussion by saying, “I think we’ve struck a nice blow for podcasters. I think the water shall be safe, whether it’s this company, Personal Audio, or other companies that come after that. Which is really that… This is not the ATM that you guys think it is… Go sue somebody else.”
You can download or stream the entire episode thru the link at the top of this article (the lawsuit discussion starts at about 14:53). Keep in mind that The Adam Carolla Show does carry an explicit tag for colorful language.
According to the Electronic Frontier Foundation’s Deep Links blog, Adam Carolla has settled with Personal Audio over the podcasting patent case they brought last year.
“Big news from Texas: Adam Carolla has settled with the podcasting patent troll Personal Audio. Although the settlement is confidential, we can guess the terms. This is because Personal Audio sent out a press release last month saying it was willing to walk away from its suit with Carolla. So we can assume that Carolla did not pay Personal Audio a penny. We can also assume that, in exchange, Carolla has given up the opportunity to challenge the patent and the chance to get his attorney’s fees.”
I’m sure we’ll be hearing more about this soon.
The Electronic Frontier Foundation (EFF) has won a small (but significant) victory in its challenge to the so-called “podcast patent” claims of technology company Personal Audio. The Patent Trial and Appeal Board (PTAB) has found that the EFF has provided sufficient prior art evidence in its case against the podcast patent.
In October of 2013, the EFF filed a petition of inter partes review (IPR) with the PTAB. The EFF explains:
“The IPR process provides an expedited means for the patent office to take a second look at a patent it has already issued. This kind of challenge proceeds in two steps. First, we file our petition. Then, before the IPR actually goes forward, the PTAB must decide whether our petition establishes a ‘reasonable likelihood’ that we would prevail. If we did not satisfy that standard, our petition would simply be rejected.”
“In our petition, we argued that Personal Audio did not invent podcasting and that parts of its patent should be declared invalid. We presented evidence relating to Internet Pioneer Carl Malamud’s ‘Geek of the Week’ online radio show and online broadcasts by CNN and the Canadian Broadcasting Corporation (CBC). Back in February, Personal Audio filed a response arguing that we were unlikely to prevail and urging the PTAB to reject our petition. The PTAB has now found otherwise, ruling that EFF has established a reasonable likelihood of success.”
Continue reading EFF Challenge Of Podcast Patent Approved By Patent Office →