In late January, several prominent podcasters, including some pubcasters, began receiving letters from Richard Baker Jr., v.p. of licensing for a small Beaumont, Texas–based company called Personal Audio.
“Personal Audio is the owner of a fundamental patent involving the distribution of podcasts,” the letter reads. The company, which develops patents but does not use them, first applied for a patent for technology “related to automatically identifying and retrieving media files representing episodes in a series as those episodes became available” in October 1996. The patent was issued in February 2012.
Baker wrote that the company was “currently engaged in litigation” over its patent. He offhandedly mentioned a previous litigation victory over Apple, and concluded by inviting the recipient to enter into a licensing agreement with Personal Audio.
“We are looking forward to friendly negotiations between our organizations,” he wrote.
Yet little is friendly about the patent-infringement lawsuits Personal Audio filed Jan. 7 against three prominent podcasting production companies: ACE Broadcasting, the network of comedian Adam Carolla and home to The Adam Carolla Show, one of the most popular podcasts on iTunes; HowStuffWorks, a wholly owned subsidiary of Discovery Communications that produces a roster of shows about science and practical knowledge; and Togi Entertainment, which runs a broad network of special-interest talk programs.
Jesse Thorn, whose Bullseye podcast recently entered a distribution agreement with NPR, and Marc Maron, whose popular WTF podcast is distributed by Public Radio Exchange in an edited format, have both received licensing requests from Personal Audio.
When reached by Current, Baker said no one from public media should have received the letters signed by him.
“It was our intention not to send a letter at this point in time to public media organizations,” Baker said, adding that Personal Audio is “not interested in public media at this point.” Baker extended an invitation for anyone in public media who received a communication from Personal Audio to get in touch with him.
Producers of other popular public radio podcasts, such as PRI’s This American Life and PRX’s 99% Invisible, have not received letters from Personal Audio. Representatives from NPR and WNYC, which both produce and distribute podcasts, also told Current that they haven’t heard from the company, though an NPR spokesperson said a program the network distributes had received a letter.
“They’re trying to make a quick buck, essentially,” said Julie Samuels, a staff attorney for the Electronic Frontier Foundation. “The Personal Audio case is just the latest in a really troubling trend of patent trolls targeting downstream users and consumers.”
So-called “patent trolling,” as the practice is known in the software industry, happens when individuals or shell companies file broad, vague requests for software patents or ideas through the U.S. Patent and Trademark Office. Rather than produce products with the patents, the patent holders then devote most or all of their company resources to filing lawsuits against companies whose products fit the description of their patents.
The three listed inventors of the Personal Audio system are serial entrepreneur Jim Logan, hardware and software engineer Dan Goessling, and patent attorney and software developer Charles Call. Logan has founded many other companies, including MicroTouch Systems, Inc., which he sold to technology company 3M in 2000. He was fined in 2003 for insider trading by the U.S. Securities and Exchange Commission as a result of the sale, but settled the suit for $582,000 without admitting to or denying any of the allegations.
In July 2011 Personal Audio won $8 million from Apple in a federal jury trial in East Texas over an infringement case regarding a patent for downloadable playlists. The play-list and podcasting patents represent different claims in the same patent family, Baker said.
Less than a month after its victory over Apple, Personal Audio sued the company again for additional damages; that second lawsuit was denied by a U.S. District judge.
Risks for pubmedia’s podcasters
Thorn, Maron and Carolla, along with other podcasters who had been contacted by Personal Audio, met privately Feb. 12 to discuss their responses to the lawsuit after using social media to announce that they’d been targeted. They haven’t announced a course of action. EFF is not representing the podcasters but is helping to organize them and gather information about Personal Audio’s claims, Samuels said.
Samuels spends a fair amount of her time at EFF fighting patent cases — she’s the foundation’s designated Mark Cuban Chair to Eliminate Stupid Patents. She said the business model of a company such as Personal Audio relies on its targets choosing to settle quickly rather than invest the time and legal expenses required to fight the charge in court.
If a case does go to court, though, it helps the litigator to file the motion in East Texas, where District Courts are some of the friendliest in the nation to patent holders. This is true even when the plaintiff has only a loose tie to the region, as is the case with Personal Audio, which lists a mailbox in a PostNet business center in Beaumont as its company address.
An employee at the Beaumont PostNet told Current that Personal Audio began renting its mailbox in January 2013, the same month the company initiated its legal action against podcasters. Personal Audio’s inventors and employees live and work elsewhere, including Florida, Massachusetts and New Hampshire.
Typically, patent-infringement defendants can argue either that their work does not violate the patent or that the patent is invalid, Samuels said. She noted that the cost of litigation can be excessive for both plaintiff and defendant.
“In most instances, the patent troll doesn’t actually want to litigate the case,” Samuels said. “It actually might not make financial sense for the patent troll to litigate the case.”
Baker, a former director of patent sales at Hewlett-Packard, said Logan is an inventor looking for compensation for his invention. He noted Logan had spent “millions” of his own money on failed software related to the podcasting patent.
“He was very, very early. Remember, in 1996 the Internet was just starting to explode,” Baker said. “My guess is that he was too far ahead of what the market was ready for, and that often happens with inventors.”
Baker declined to comment on how Personal Audio decided on its three litigation targets, and would not say how many licensing requests he had sent or to whom.