The idea of recording audio and video shows and then posting them online seems rather common-sense, and thousands of people were doing it around the world long before anyone ever coined the term “podcast.” Yet that didn’t stop one company from demanding payment from broadcasters, claiming it holds the patent on the very concept of podcasting. Hopefully this particular piece of trolling has come to an end, with a federal appeals court affirming a previous decision that this patent was trying to protect an invention that already existed.
In 2012, a company called Personal Audio received a patent for a “System for disseminating media content representing episodes in a serialized sequence,” effectively claiming that it had invented the very idea of podcasting 16 years earlier in 1996.
Personal Audio soon set about filing legal claims against podcasters of varying sizes, including big names like comedian Adam Carolla, CBS, and CNN, demanding payment for allegedly infringing on this “podcasting patent.” CBS actually lost its legal challenge to the patent claim, and Carolla settled out of court with Personal Audio.
In an attempt to stop this trolling, the Electronic Frontier Foundation petitioned the U.S. Patent & Trademark Office in 2013, pointing out that even if you believe Personal Audio’s assertion that it came up with the podcasting patent in 1996, the company was already years late to the podcast party.
In its petition [PDF], the EFF pointed to three high-profile examples of pre-1996 podcasting: “Geek of the Week,” a recorded talk show from tech expert and author Carl Malamud, which began in 1993 and managed to garner more than 100,000 total listeners despite the slow and sparse internet connections at the time; the Canadian Broadcast Corporation’s year-long trial of internet radio broadcasts, which began in Dec. 1993; and CNN’s online news episodes that predate Personal Audio’s supposed invention of podcasting.
Core to the Personal Audio patent claim was not just the notion of recording something and putting it online for people to download, but also the use of a “compilation file” to identify new episodes in a series as those episodes became available. But the EFF claimed that there is nothing novel about this idea, and that “Geek of the Week” and the other early podcasts did exactly what the compilation file part of the Personal Audio patent claims to invent — just years earlier.
The Patent folks heard arguments from EFF and Personal Audio in Dec. 2014, and then ruled four months later that the disputed claims in the Personal Audio patent are actual unpatentable because the pre-1996 online audio recordings had already created the process being patented. What’s more, these programs had been repeatedly detailed in literature that the supposed inventors would reasonably have been aware of at the time.
Since Personal Audio’s entire business model is built on obtaining licensing payments for patents, it appealed the Patent Office’s decision to the Court of Appeals for the Federal Circuit, hoping to get a reversal.
But today, a three-judge panel unanimously affirmed, point-by-point, the Patent Office’s determination that Personal Audio’s claims can’t be patented [PDF].
“We’re pleased that the Federal Circuit agreed that the podcasting patent is invalid,” said Daniel Nazer, Staff Attorney at EFF and the Mark Cuban Chair to Eliminate Stupid Patents. “We appreciate all the support the podcasting community gave in fighting this bad patent.”
EFF cautions that this celebration could be short-lived, as Personal Audio can still ask the Supreme Court to hear the case.