Del. — The federal judge presiding over DigiMedia’s patent
infringement lawsuit against a number of radio groups is still
considering when and if the case should resume now that the question
of patentability of the technology appears to have been settled by
the United States Patent and Trademark Office.
broadcasters think two rounds of patent reexamination have left the
plaintiff’s case diminished; a letter from their attorney to the
judge states, “The reexaminations of the two patents greatly
reduced the issues in the case and provide a path for streamlined,
the patents have not been dismissed in full, and DigiMedia is pushing
for the trial to move forward. Observers agree that the company is
likely hoping for a quick resolution, since both patents expire in
patents — numbers 5,809,246 and 5,629,867 — target digital media
storage and automation systems that radio broadcasters commonly use.
The suit was filed by Mission Abstract Data in 2011. Court records
indicate that MAD is doing business as DigiMedia.
District Court Judge Leonard Stark stayed the federal lawsuit in late
2011 following an ex parte reexamination request by Broadcast
Electronics, which is not a defendant in the lawsuit.
one round of reexamination, the USPTO ordered a second in 2012,
because “prior art” not previously available had been presented.
DigiMedia then agreed to cancel some claims; and the USPTO issued two
reexamination certificates this year. Other claims within the patents
were narrowed. Nonetheless, the patents survived; and the judge could
at any time resume the infringement litigation, observers said.
representing DigiMedia have sent letters to the judge asking him the
lift the stay.
radio defendants — CBS Radio, Greater Media, Beasley Broadcasting,
Cumulus, Entercom and Cox Radio — asked the judge to schedule talks
between the sides to discuss the viability of the suit continuing,
according to correspondence from the defendants’ attorney.
is whether broadcasters are more or less inclined to seek a
settlement, given the outcome of the reexaminations. There is no
indication the sides were meeting to discuss a settlement, according
to court records; but the case remains in mediation before U.S.
Magistrate Judge Christopher Burke, according to court documents.
This leaves the door open for negotiations, observers said.
Stark ordered mediation fairly early in the case; but it is
non-binding unless the parties agree otherwise, according to legal
observer Scott Daniels, an intellectual property attorney with
Westerman, Hattori, Daniels & Adrian LLP.
adds: “There is often a sense of ‘going through the motions.’”
a result of the patent reexaminations, DigiMedia will be limited on
any past or future recovery for patent 5,809,246, except for any new
equipment purchased from July 2012 until the patent expires in
January 2014, according to documents filed by the defendants’
is somewhat surprising that Judge Stark has not restarted the case,”
said Daniels. “On the other hand, the fact that these patents
expire in the spring robs the case of its urgency.”
said it is unlikely a trial would conclude before the patents’
expiration, so that there is “no possibility of an injunction
against future infringement,” leaving money damages as the only
possible remedy for the plaintiff.
only money damages are possible, judges feel that a case can wait,”
letter from DigiMedia attorney Sean O’Kelly to Judge Stark pushing
for the stay in the federal case to be lifted lacked a sense of
urgency, Daniels said. “The tone of the patentee lacks a certain
oomph, suggesting that it might not believe that its prospects of a
recovery at this point justify further litigation.”
from Radio World to O’Kelly seeking comment on the case were not
Ragland, a patent attorney with Womble Carlyle Sandridge & Rice
who is not involved with the case, said, “With patent expiration
fast approaching, it remains to be seen whether [DigiMedia] will
expend significant time and money to litigate the case all the way
through a trial.”
the defendants will be able to better defend themselves considering
the USPTO’s move to cancel and narrow some of the claims in the
think the outcome of the reexaminations greatly diminishes the value
of [DigiMedia’s] legal claims against the broadcasters,” Ragland
said. “If the case is not settled, I would expect the district
court eventually to issue an order setting out the schedule for the
case to proceed.”
Phillips Jr., the attorney of record for the defendants, wrote the
judge in July and described the patents as “very narrow”
with avoidable features of hard drive music systems. In this case,
“avoidable” likely means that the claim contains a limitation
that people in the business can easily dispense with, thereby
avoiding infringement of the patent, Daniels surmised.
by Radio World to reach Phillips for comment were unsuccessful.
World asked Thomas Ewing, a patent attorney and IP consultant for
Avancept LLC, his opinion of where the DigiMedia patent infringement
case goes now.
law allows for damages to be collected six years back from the
finding of infringement. However, if the patents expire next spring,
then it should be really tough for the patent owners to argue for an
injunction. Trials, especially patent trials, move at a snail’s
pace. Among other things, the judge is hoping that the parties
There are new developments in a second round of patent infringement lawsuits filed earlier this year by DigiMedia Holdings Group against four additional broadcasters, all with FM stations in Texas. They are Access.1 Communications, Tomlinson-Leis Communications LP, Hunt County Radio LLC and NM Licensing LLC, according to court documents.
As in the first lawsuit described in the accompanying story, the plaintiff claims to hold patents involving hard-disk radio automation systems used by radio stations.
Court records indicate that in August, those cases were transferred from the U.S. Bankruptcy Court Eastern District of Texas to the District of Delaware in Wilmington and assigned to Judge Leonard Stark, the same judge presiding over the DigiMedia suit against CBS Radio, Greater Media, Beasley Broadcasting, Cumulus, Entercom and Cox Radio.
Court records indicate all parties connected to the Texas suits agreed to the change in venue for the “convenience of the parties and witnesses involved.”
John Phillips Jr., a patent attorney with Phillips, Goldman & Spence, P.A., is listed as lead defense attorney for the Texas broadcasters in addition to acting as counsel for all of the broadcasters in the original case.
suppose that the defendants could ask for another reexamination after
the patents expire — though once a patent has expired, then the
claims can’t be amended in any way during reexamination, which
makes them extremely vulnerable to invalidation.”
there has been some movement in Washington on regulations targeting
so-called patent trolls, companies considered by critics to be
abusers of patent litigation. An expansive article earlier this year
in the New York Times specifically mentions the DigiMedia patents and
the legal maneuverings of its predecessor Mission Abstract Data.
Times article focused on a company called Intellectual Ventures,
which was co-founded by Nathan Myhrvold, former chief technology
officer at Microsoft. Intellectual Ventures buys and sells patents
and licenses them. The company commonly threatens or files lawsuits,
according to the article, through a network of hundreds of holding
Abstract Data is identified in the article as being affiliated with
Intellectual Ventures. MAD filed the original patent infringement
lawsuit against the broadcasters, but the patents were later assigned
Zeitlin, director of corporate communications for Intellectual
Ventures, told Radio World previously that Mission Abstract Data had
been owned by Intellectual Ventures but was sold prior to the tech
patent infringement lawsuit being filed.
members of Congress have introduced legislation to combat patent
trolls. FTC Chairwoman Edith Ramirez has urged an investigation and
crackdown on patent abuses. In May, Sen. John Cornyn, R-Texas,
introduced the Patent Abuse Reduction Act, a measure that aims to
deter patent litigation abusers. More recently, Rep. Bob Goodlatte,
R-Va., introduced the similar Innovation Act of 2013.
Executive Vice President of Communications Dennis Wharton, while
silent in regards to specifics surrounding the DigiMedia lawsuit,
said: “For too long, U.S. economic growth has been stifled by
‘patent trolls’ who game the legal system with frivolous patent
litigation. America’s hometown broadcasters look forward to working
with Chairman Goodlatte and other House and Senate leaders to pass
legislation that will deter patent abuses that are a drain on