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:
- 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.
- Any communications between the EFF and any actual or potential witness specifically
Concerning the '504 patent or prior art to the '504 patent.
- 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.
- Any non-privileged communications regarding the prior art cited in any proceedings in
the Patent and Trademark Office Concerning the '504 patent.
- 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.
- All steps taken in order for the EFF to be "fully prepared" to take on Personal Audio with
respect to the '504 patent.
- 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.
- 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.