Patent Office Invalidates Key Claims in “Patent Troll” Case

EFF LogoPodcasters 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.

Adam Carolla to Patent Troll: Podcasting Is “Not The ATM You Think It Is”

Adam Carolla Show LogoAfter 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.

Podcasting Will Never Die

Podcasting will never die. That’s a bold statement to open with, but in it’s true to say the soul of podcasting is a hardier beast than many give it credit for. There’s been an awful lot of talk lately about the patent trolls threatening the future of podcasting, but before that all the podcast chatter centered around the three words “podcasting is back”. The die-hard podcast fans, myself included, will tell you it never left, but it’s fair to say that podcasting is bigger now than ever before.

So why are we threatened by patent litigation? If it came to pass that syndication of audio through a single URL, i.e. an RSS feed, was a violation of a patent and infringements should either be ceased or be prepared to pay the price, would this spell the death of podcasting? Take a moment to imagine all the podcasters out there right now. Imagine the passion it takes to record a regular podcast for little-to-no gain and more often than not, at a personal loss. Imagine the industries that are seeing a whole new market for their microphones, headphones, software and apps. Imagine the audience that has seen a whole new content stream from their favourite creators mouths to their ears spring up with rich, regular content. Now turn all of that off.

Just take a moment to think of those passionate podcasters, who tomorrow are unable to distribute their podcast to their fans. Imagine those microphone manufacturers who saw that potential industry disappear overnight. Think of the world where lovers of on-demand audio, are suddenly left without their beloved voices and their preferred medium. Now the real test, imagine a world when one of those people, cut off from podcasting as we know it, doesn’t find a way around it.

The problem of the patents is a uniquely American phenomenon. Although I will admit that I would be inconvenienced a little by the worst case scenario, the patent would not affect podcasters operating outside of the US. Theoretically, based on past events, anyone podcasting from inside the US, using a non-US host could still fall afoul of the troll, but the most obvious workaround for the rest of the world is to switch to a hosting provider based internationally (which would be a boom for whoever is first at bat).

There’s way more to it than that though. Although I love to sing the praises of Australian podcasts, I won’t pretend that the biggest producers and consumers do not reside somewhere between the Pacific and the North Atlantic. So, what do all the American podcasters do? Well, find a way around it. I’m not going to pretend to understand on what basis the podcast patent is supposed to restrict usage, but let’s look back a decade or so and you tell me what podcasting was then. Go back a couple more and tell me your experience of the internet. Look how much it’s changed in such a short time. Do you think podcasting will be unchanged ten years in the future? Try 20 years, will you even recognise podcasting to be anything like the delivery method we use today?

Not to say that we shouldn’t fight the patent troll, obviously many people and their business would be hurt by an unwelcome decision, preventing that is a worthy cause. It should be considered, however, that should we end up with victory, how long will we continue to use the disputed medium?

A conversation I had with some Australian podcasters recently was discussing the dilemma of breaking your podcast’s release schedule. In theory, with the syndication format, this won’t be an issue, as your listeners don’t need to tune in at a certain time, they’ll automatically receive your content when it’s published, but in practice that’s not how it works. Any podcasting coach will tell you to be regular and be consistent, you will create a habit in your listeners and you will grow your audience. So then, the syndication is not the factor that we desire. It’s the ease of access for our audience.

Take, for example, YouTube. Which bears little resemblance to podcasting in it’s delivery method, but it’s far-and-away more popular. Why? Because your average podcast listener could care less about RSS feeds and the details of the patent that is being fought for so strongly, they just want to hear your voice. As long as you are producing quality content then you will be heard. That is why podcasting will never die. You can take away our RSS feeds, but you can never take our content. Podcasting will find a way. As long as there’s a microphone and someone who wants to listen to your opinions, there will always be podcasting.

Joshua Liston, a serious name in Australian podcasting has recently launched his sixth concurrent podcast, Social Audio Think Tank, exploring why content is king and the tech stuff should come second. Full disclosure, I’m a co-host, but he’s the driving force behind it, so check out his other podcasts as well.

By Jackson Rogers of OzPodcasts.