Podcasting Patent Troll Files Bogus Subpoena To Intimidate Donors To EFF's 'Save Podcasting' Campaign

from the extreme-obnoxiousness dept

A year ago, we wrote about the ridiculous situation of a company called Personal Audio, which claimed to have a patent that covered podcasting and had started going after a bunch of the top podcasters, including Adam Carolla and How Stuff Works. The patent in question, 8,112,504, was for an attempt to deliver news on audio cassettes. The patent itself is exceptionally broad and ridiculous. It never should have been granted. Even if it was legit, the idea that it has anything to do with podcasting is simply ridiculous. Last summer, NPR’s Planet Money had a good episode all about this patent, in which the lawyer and the patent holder made some ridiculous claims, pretending that this patent was “the roadmap” that taught people how to podcast.

The good folks at EFF started a “save podcasting campaign” and raised some money, which they used to file a challenge against the patent at the Patent Office. That process is still ongoing, but it appears that Personal Audio and its lawyer have decided to go to war with the EFF and its donors, trying to intimidate them. In one of its lawsuits over the patent (completely unrelated to the challenge at the USPTO), Personal Audio sent a subpoena to EFF demanding a whole bunch of stuff, including identifying information on everyone who donated to the campaign. Here’s the full list of what they’re actually asking for:

  1. Any communications between the EFF and Defendants specifically Concerning the ‘504 patent, including but not limited to the construction of any claim terms and any alleged prior art relevant to any claim of the patent.
  2. Any communications between the EFF and any actual or potential witness specifically Concerning the ‘504 patent or prior art to the ‘504 patent.
  3. Any communications between the EFF and any third parties specifically Concerning the ‘504 patent, including but not limited to any communications with the Cyberlaw Clinic at the Harvard University Berkman Center for Internet and Society, Julie Samuels, Mark Cuban, RPX, Article One Partners, Mark Lemley, Durie Tangri Page Lemley Roberts & Kent LLP, the Open Innovation Network, StackExchange, Google, Inc and/or their representatives, agents or counsel.
  4. Any non-privileged communications regarding the prior art cited in any proceedings in the Patent and Trademark Office Concerning the ‘504 patent.
  5. All fundraising activities in connection with the proceedings in the Patent and Trademark Office specifically Concerning the ‘504 patent, including but not limited to the Identification of the names of all Persons who donated or contributed and Identification of the amounts contributed by each Person, as well as the Identification of any promised contributions which have not been received yet as well as the Persons who promised such contributions and the amount thereof.
  6. All steps taken in order for the EFF to be “fully prepared” to take on Personal Audio with respect to the ‘504 patent.
  7. Identification of any Information Concerning any prior art (whether or not included in any Patent and Trademark Office proceeding) that would tend to show either: (1) the art did not disclose any element of the claims of the ‘504 patent or (2) the art was not demonstrably available prior to any filing date of the ‘504 patent.
  8. Any nonprivileged analysis or Communications Concerning the following: (1) the claims of the ‘504 patent; (2) any prior art to the ‘504 patent; and (3) the meaning or construction of any of the terms in the claims of the ‘504 patent.

EFF is fighting the subpoena, arguing a variety of points about how this goes way beyond any reasonable effort. It’s not just seeking information totally irrelevant to the case, but it’s trying to get EFF to disclose private information about individuals, violating their First Amendment rights of association. As the EFF notes in its blog post about this:

We believe that Personal Audio’s subpoena to EFF is improper for a number of reasons that are laid out in detail in our motion. Above all, we are outraged that Personal Audio is seeking to invade the privacy and associational rights of hundreds of our donors. EFF takes the privacy of its members and supporters extremely seriously—and so does the Constitution. As we explain in our motion, the First Amendment protects our donors’ right to privacy, and Personal Audio’s supposed need for the information does not trump those rights.

Personal Audio’s tactic is also improper for several other reasons. For example, it is appears to be primarily intended to avoid the well-defined limits of the PTO discovery process. The petition we filed follows a new, streamlined and therefore relatively inexpensive process. Rather than respond to that petition following the rules of that process, Personal Audio is trying to use entirely separate litigation as an excuse to raise the stakes on EFF – something Congress never intended. If Personal Audio succeeds, we fear it will send a message that this new process can be made invasive, cumbersome and expensive after all, which will in turn discourage others from using it to challenge low quality patents. That would be a shame for all of us.

Beyond that, this seems like a clear attempt by Personal Audio to intimidate both EFF and its donors — though if they were even remotely aware of the EFF and its backers, they should have known how badly that plan would backfire. Hopefully the court will rightfully quash the subpoena and, perhaps, make it clear to Personal Audio’s lawyer, Jeremy Pitcock, that this is totally improper.

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Companies: eff, personal audio

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Comments on “Podcasting Patent Troll Files Bogus Subpoena To Intimidate Donors To EFF's 'Save Podcasting' Campaign”

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mcinsand (profile) says:

USPTO examiner responsibility

I have two thoughts:

1) What about accountability when it comes to the USPTO letting garbage like this patent application go through? They are supposed to be a primary defense against patents like this. For them to escape liability is simply wrong. The examiner did not just fail at his job, but he/she failed monumentally!

2) I need to contribute to the EFF.

Anonymous Coward says:

Re: USPTO examiner responsibility

“1) What about accountability when it comes to the USPTO letting garbage like this patent application go through? They are supposed to be a primary defense against patents like this. For them to escape liability is simply wrong. The examiner did not just fail at his job, but he/she failed monumentally!”

I’ve only briefly looked at some USPTO articles, but from what I understand is the USPTO is under funded. And that bout 90% of rejected patents are appealed (by lawyers, hmm, I see a pattern, think I’ll patent it) and the USPTO simply caves in. That would seem to be reason why so many ridiculous patents are granted.

Have their been TT articles on this in the past?

Anonymous Coward says:

Re: USPTO examiner responsibility

Here is one of the big problems with the USPTO, when an examiner rejects a bad patent, the seeker simply modifies it slightly and resubmits it over and over again until it goes through leading to an already overworked USPTO having to revisit the claims piling the workload higher and higher. To deal with this the examiners at the USPTO started just passing them through so they would be done with it and could move on to something else in the pile and start working to reduce the backlog figuring that if something bad got through the courts would just invalidate it later. However when companies who figured out that stuff that shouldn’t be let through was getting through anyway, they started piling the requests on for over-broad patents of their own that they could hopefully use in either self defense or aggressive tactics of the their own. Then the trolls came along and joined the game. Taking us to where we are today.

Sunhawk (profile) says:

Re: Re: USPTO examiner responsibility

Perhaps something that could help counter that is that rejection notes (ie, an examiner noting in brief why the patent was rejected) be attached to the rejected patent, which is then attached to the submitting company.

When an examiner gets a patent application, they check the history of the submitter to see if it’s only trivial changes to a rejected one, and can use the notes to rapidly find the prior art or other documents that caused the initial rejection.

The next step would be some kind of penalty for a large number of rejected patents or re-submitting a patent with irrelevant changes…

Anonymous Coward says:

Re: Re: Re: USPTO examiner responsibility

It all started with big companies going after each other and building patent portfolios the either attack other companies or defend themselves from being attacked. That is what kicked the whole thing off and the court system didn’t seem to become over-burdened with cases because the big guys often times were at a stalemate. The only one that got overburdened is the USPTO. The trolls didn’t show up until later when the USPTO dropped their standards and some lawyers figured out if you can get some broad patents you can go after the big companies that make popular products to protect and their patents don’t do them any good because you don’t have a product to protect. They can’t claim you infringed on them if you don’t make anything at all.

Anonymous Coward says:

Re: Re: Re: USPTO examiner responsibility

There are a few problems with those sorts of approaches…

If the patents are rejected just because the changes are minor, the companies will simply reword the whole thing keeping the same concept largely intact so that you have to delve pretty substantially into the new application to figure out that it’s basically the same thing all over again.

As far as flagging and penalizing a submitter of applications for bad patents goes, companies with huge budgets and teams of lawyers will simply set up shell companies to submit their patents applications for them that will in turn “sell” them to the parent company once they are approved. If one of the shells gets flagged and punished, they simply fold it and create a new one.

What would kill off the trolls would be a legal requirement that you have to show evidence of either a product that you had produced that was covered or that you were in the process of and making a reasonable effort to produce a product that was covered by the patent to enforce it.

terry_allen (profile) says:

Re: USPTO examiner responsibility

Absolutely agree on the second point, but…

I think that this patent is almost certainly going to get invalidated after reexamination. The key phrase from an earlier article still rings true for me: “discloses nothing useful”. Without some actual novelty, grounded in reality, the patent is just a science fiction story. “In the future, newspapers as we know them won’t exist…”

But, in defence of the examiner, examiners are not allowed unlimited time to research these issues. The typical time allowed (and I mean ‘allowed’, as in, “you’d better maintain your rate of production or you’re fired” kind of allowed) to fully prosecute a case is about 3 days (don’t think every part of the federal government fits the stereotype). Whereas the attorneys’ time to fight the decision of the examiner is limited only by the depth of the clients’ pockets. I notice the patent didn’t get allowed until 2012, sixteen years after the first filing. So I don’t think the Patent Office was simply roused briefly from its torpor and handed a patent to a delighted inventor. Obviously someone in the Patent Office smelled a rat almost immediately. But with enough attorneys, and enough appeals, and enough arguments, it is — well, I won’t say ‘easy’, I’ll just settle for ‘not impossible’ — to get a patent when you don’t deserve one. At every step of the process, the examiner has an easy out: give in to the attorney. The alternative is, well, you see it here: sixteen years of work, much of it done by the examiner without compensation.

Even circuit court judges are not immune to this tactic (and you all know who you are out there…), and they don’t even have the excuse of time pressure. And I don’t think you can sue a judge, either.

Anonymous Coward says:

Re: Re: USPTO examiner responsibility

Patent examiners, like anyone else, do operate under time constraints. For those unfamiliar with patent prosecution, attorneys preparing and prosecuting applications likewise work with time constraints that are not all that different from patent examiners. How nice it would be as one in private practice to have the luxury of working on every application for 10 hours per day for several days. That is, however, only rarely the case.

Much like examiners, private practitioners in many instances tend to focus on specific technical areas, which many times means that they and their USPTO counterparts are able to address the merits of an application without undue delay. It is also useful to understand that in many of what are viewed as the more esoteric arts patent examiners have been exposed to the technology for many years prior to the existence of the technology becoming well-known to the public at large.

Sarah Black (profile) says:

Re: Re: May vastly over-reach, but it's not "Bogus", that's just Mike's Mistake.

OOTB? Really?! You are cray cray wack!

Mike was summing-up “Consumer Watchdog.” The full excerpt is, “The press release from Consumer Watchdog fits along its typical approach to these things: take something totally out of context, put some hysterical and inaccurate phrasing around it, dump an attention-grabbing headline on it and send it off to the press”

SOURCE: http://www.techdirt.com/articles/20130814/14262524177/press-suckered-anti-google-groups-bogus-claim-that-gmail-users-cant-expect-privacy.shtml

Anonymous Coward says:

Re: Re: Re:

Comment almost certainly off the cuff and in reference to what was at the time the then envisioned “preferred embodiment” of what had been invented. Patent law does not require an applicant to list every conceivable embodiment of an invention, but only the then preferred embodiment at the time the application was filed.

I have not looked at the relevant file wrappers, but experience means I cannot dismiss the possibility that claims were added to the original application when and as other embodiments of the invention became known to the applicants. So that I am not labeled once again a maximalist, troll, etc., it is entirely possible that the applicants noted new products entering the market, noted that the detailed description in the original application was broad enough to support claims embracing such new products as alternate embodiments, and that additional claims were added to the original claim set. This may seem to some unfair, but an applicant is entitled to claim any and all embodiments of his/her invention that can reasonably be inferred from the contents of the original specification. Now, whether or not this is “just and fair” does not mean that the applicants here did something wrong, but that an aspect of the policy underlying Title 35 perhaps should be reconsidered and amended if warranted.

Oh yes, this is not a submarine patent. That term applies to the law as it pertained to former continuation practice. A patent term commenced when a patent issued, a patent application could be kept alive (and in confidence by law) for an extraordinarily long period of time, and that it could many later years been brought to the surface by allowing one of a continuing series of continuation applications to finally pass to issue and be published. This practice has been ameliorated by publication of applications and patent terms being measured for a fixed term of years starting on the date an application is filed. You can still file a string of continuation applications if you wish and have money to burn, but as to them any patent that may issue is still locked in to the term that began when the original application was filed.

Anonymous Coward says:

Trying to intimidate the EFF?

If that’s what they are trying to do, how naive they must be. Seriously, did they not do ANY research whatsoever into who the hell they are dealing with? This is an organization that publicly has stood up and continues to stand up to attempts at intimidation by the government on a regular basis. Do you honestly think the EFF is going to be in anyway intimidated by the paltry efforts of some silly little patent troll? The EFF eats guys like these for lunch.

JustMe (profile) says:

Thanks for reminding me

To donate to the EFF this year.

Oh look at that, 1447 supporters now, and the EFF is almost 3x their fundraising goal – way to go Personal Audio! Please feel free to fly around the country and take our depositions about why we support those who stand up and fight patent trolls; I’ll give you an earful.

Also, it is possible that the lawyers for Personal Audio are serial manatee molesters.

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