Technically Legal

VoloMedia just announced that they’ve patented podcasting (thanks to ArsTechnica for the link).

No, really.

U.S. Patent Number 7,568,213 issued on July 28, 2009 for a “Method for providing episodic media content.”

Before we delve into the specifics on this patent, let’s take a step back and talk about patents in general.

Patents consist of specifications, drawings, and claims. The claims control the scope of what the patent actually protects. Claims fall into two types: independent and dependent. Independent claims, as the name suggests, stand alone, whereas dependent claims depend on independent claims. Dependent claims generally embellish on independent claims, adding specific details.

This patent has nine claims, organized into one independent claim and eight dependent claims. Claim 1, the independent claim, claims:

A method for providing episodic media, the method comprising: providing a user with access to a channel dedicated to episodic media, wherein the episodic media provided over the channel is pre-defined into one or more episodes by a remote publisher of the episodic media; receiving a subscription request to the channel dedicated to the episodic media from the user; automatically downloading updated episodic media associated with the channel dedicated to the episodic media to a computing device associated with the user in accordance with the subscription request upon availability of the updated episodic media, the automatic download occurring without further user interaction; and providing the user with: an indication of a maximum available channel depth, the channel depth indicating a size of episodic media yet to be downloaded from the channel and size of episodic media already downloaded from the channel, the channel depth being specified in playtime or storage resources, and the ability to modify the channel depth by deleting selected episodic media content, thereby overriding the previously configured channel depth.

VoloMedia notes that their patent actually protects more than just podcasts – it protects all episodic media, of which RSS-based podcasts are just the most common subset. But, because “episodic media” doesn’t quite roll off the tongue the same way podcast does, let’s analyze the independent claim in this patent using the word podcast instead.

Upon first inspection, we notice that this claim is for a method– the words “A method for” right at the start of the claim alert us to this fact. Method claims protect a way of doing something.

Method claims generally list several steps that someone needs to follow in order to perform the method. To fall under the protection of the method claim, each step in the method has to occur.

The Method Claim

Breaking down this patent’s method claim, we see:

• A method for providing podcasts, the method comprising:
  1. providing a user with access to a channel dedicated to podcasts,
     1. wherein the podcasts provided over the channel is pre-defined into one or more episodes by a remote publisher of the podcasts;
  2. receiving a subscription request to the channel dedicated to the podcasts from the user;
  3. automatically downloading updated podcasts associated with the channel dedicated to the podcasts to a computing device associated with the user in accordance with the subscription request upon availability of the updated podcasts,
     1. the automatic download occurring without further user interaction;
  4. and providing the user with: an indication of a maximum available channel depth,
     1. the channel depth indicating a size of podcasts yet to be downloaded from the channel and size of podcasts already downloaded from the channel, the channel depth being specified in playtime or storage resources, and the ability to modify the channel depth by deleting selected podcasts content, thereby overriding the previously configured channel depth.

So, in simpler terms, this claim protects a method for showing a list of podcast episodes, letting a user subscribe to the podcast, downloading new podcasts, and showing a user which episodes haven’t downloaded yet.

That sounds a lot like iTunes’s podcast functionality, doesn’t it?

Does this mean that VoloMedia has lawyers racing to the courthouse to sue Apple and collect millions in royalties? Not necessarily.

Licensing

Once a patent issues, a patent holder can choose to write nice letters to potential infringers, letting them know about the patent and inviting them to obtain a license (all for a reasonable license fee, of course). That’s generally the prettier route, as litigation involves far greater expense, both in terms of time and money.

ArsTechnica reports that VoloMedia apparently hasn’t yet moved towards licensing, and includes a quote from a company representative that says, “Our focus is to generate revenues through our products and technologies. VoloMedia is not entertaining or pursuing any licensing conversations.”

Declaratory Judgment

But say a potential infringer doesn’t look kindly on VoloMedia’s patent, and decides that they’d prefer to act first rather than wait for a lawsuit. They can file for a declaratory judgment in court, basically saying to the court, “We’d like to the court to rule that our product does not infringe this patent or that the patent is invalid.”

Non-Infringement

The potential infringer can argue non-infringement by disputing how to read the claims. This process generally happens in what’s called a Markman hearing, where, before trial actually starts, the court attempts to define any contested terms in the claim. Because patent litigation largely centers around claims, this hearing can make or break a case.

Invalidity

The potential infringer will typically also argue invalidity, saying “It doesn’t matter whether or not we infringe the patent, because the patent itself is invalid.” Courts generally find patents invalid on two grounds: lack of novelty and obviousness. Both grounds imply that the USPTO erred in issuing the patent.

Lack of Novelty

A potential infringer generally proves lack of novelty by finding prior art that precedes a patent’s priority date. In other words, the potential infringer finds evidence that someone out there publicly practiced or described the method in this patent before VoloMedia’s priority date – in this case, that priority date appears to stretch back to 2003.

Obviousness

To prove obviousness, a potential infringer argues that while the patent combines existing techniques in a new way, the combination itself is or should be obvious to a person having ordinary skill in the art (a PHOSITA). In other words, the patent covers something that’s such an obvious advance over what’s already out there that there shouldn’t be a patent at all.

Request for Reexamination

Apart from filing for a declaratory judgment, any third-party can also submit a request for reexamination. To do this, the third party needs a piece of prior art that precedes a patent’s priority date that appears to raise significant issues of patentability. The reexamination does not take place in court but instead happens in the USPTO. A reexamination can result in all the claims being thrown out, or patent narrowing what it claims.

Conclusion

The VoloMedia patent presents an interesting situation because podcasting has exploded online, fueled largely by the growth of Apple’s iPod. It’s likely that Apple or a third-party will file a request for reexamination with the USPTO, and the patent will either have its claims significantly narrowed or cancelled entirely, unless VoloMedia can successfully argue that it in fact was the first to invent the fine art of episodic media delivery. We’ll keep you posted as this story develops.

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