WILMINGTON, Del. — Broadcasters’ hopes that a patent dispute would go away
quickly — after last year’s favorable finding from a U.S. Patent and Trademark
examiner — may have faded a bit now that the decision has been challenged.
examiner Jason Proctor is considering amendments to patent claims submitted by
Mission Abstract Data, the company that sued several broadcast owners in
federal court in March 2011 over the hard-disk automation systems they use.
©U.S. Patent and Trademark Office
federal judge issued a stay in the related patent infringement litigation until
the patent claims are decided, as RW has reported. At least one patent attorney
feels the USPTO has fast-tracked its reexamination in light of that federal
patent infringement case.
Meanwhile, several Washington-based communications attorneys confirmed
to Radio World that the company had sent another batch of collection letters to
radio broadcasters in December asking them to sign licensing agreements.
patents held by Mission Abstract Data describe a system and method for a
programmable digital audio system for radio stations where the music is stored
in a digital database from which it is recalled during radio station operation.
October the examiner in large part dismissed the claims pertaining to radio
broadcasters, specifically the “radio transmission of music retrieved from an
online digital database stored in a hard drive.” The examiner overturned 15 of
29 challenged claims within the first patent and five of 10 claims in the
automation supplier Broadcast Electronics, which is not a defendant in the
patent infringement lawsuit, had requested the “ex-parte” patent reexamination.
Ex-parte reexaminations are initiated by the public, according to the USPTO’s
Since 1981, claims in such reexaminations were changed in 64 percent of the
cases, according to the Patent Office.
December, Mission Abstract Data responded to the findings of the reexamination.
A company representative met with the examiner in person; MAD then amended some
of the rejected claims for reconsideration while cancelling others that had
been rejected, according to MAD documents filed last month with the USPTO.
Specifically, Claims 14 and 21 of Patent 5,809,246 were canceled because
their subject matter was included in other amended claims, according to Mission
Abstract Data. Its response addresses Claims 1 and 4 and changed them to
“further specify that the computer system is connected to a local-area network
and that the remote music source is accessed over a wide-area network.”
1 and 4 describe a music transmission system involving a computer memory
storing a database comprising a plurality of music. The amendments appear to
involve networking and how the music is retrieved, according to a patent
attorney familiar with the latest developments.
patent holder’s representative at the meeting is identified as Lawrence
Aaronson, an attorney with Atlanta-based intellectual property law firm McKeon,
Meunier, Carlin & Curfman. He provided background and briefly described the
methods for operating the music transmission system claimed in the patents,
according to MAD documents filed with the Patent Office.
amendments are meant “to show the claims are different from the way in which
the examining attorney viewed them to be too similar to the prior art,” said
Kevin Goldberg, communications attorney at law firm Fletcher Heald. He is not
associated with the case.
report to the USPTO, obtained by RW, included a summary of the meeting between
Aaronson and the patent examiner, including the examiner’s initial reactions to
Aaronson argued that a 1992 Arrakis Digilink operators manual and 1993
Dalet advertisement that appeared in Radio World, which had been presented as
“prior art” evidence, fail to suggest a “RAID disk array storage” as indicated
in the amended Claim 4.
“Nowhere does the Digilink Ops Manual teach or suggest connecting the
nodes or the Digilink network to a wide-area network,” according to Aaronson,
quoted in the USPTO document. “As such, the reference fails to teach or suggest
accessing remote music source over a wide-area network.”
summary document submitted to the USPTO also indicated, “The Reexamination
Panel tentatively agreed that such an amendment [Claim Number 4] would
distinguish over the applied prior art and indicated they would consider the
Goldberg said, “I think it is significant that one statement made in the
interview summary makes it seem as though the examiner agreed that an
amendment” of Claim Numbers 1 and 4 “might result in a different outcome.”
Just one bite?
Ragland, a patent attorney with Womble Carlyle Sandridge & Rice who is not
involved in the suit, said these amendments are critical to Mission Abstract
Data’s attempts to reverse the examiner’s decisions.
is a normal part of the process. The patent holder is responding to the
arguments of the examiner trying to change his mind. Then [the examiner] must
decide whether the patent holder’s amendments support the request to overcome
the initial rejection and the prior art,” Ragland said.
patent rights-holder is allowed a second response in an ex-parte reexamination
should the examiner again reject some of the claims, he said; but the patent
owner typically has a more difficult time overcoming the limitations.
usually only get one bite of the reexamination apple. You can respond again,
but with fewer amendments. The patentee also can try to negotiate changes with
the [PTO] examiner,” he said.
Ragland acknowledged the swiftness at which the Mission Abstract Data
patent review is progressing. “My supposition is that someone in the patent
office has determined that this case deserves to go to the front of the line
and needs to be decided because of the litigation.”
patent owner ultimately may appeal the examiner’s rejections to the Patent and
Trademark Board of Appeals, according to Ragland.
Meanwhile, Mission Abstract Data, which also does business as DigiMedia,
continued to send letters to radio broadcasters claiming the radio station owes
them licensing fees for use of the patent.
National Association of Broadcasters is urging members who receive the letters
to consider several options including seeking legal advice and contacting their
automation system supplier for guidance, according to its December electronic
publication “The NAB Pulse.”
also suggests that broadcasters ask their insurance carriers whether those
companies provide coverage for such a case.
Repeated attempts by Radio World to reach Mission Abstract Data
representatives have been unsuccessful. The broadcasters involved in the
ongoing litigation have also declined comment.
Several radio groups were plunged into the unknown when Mission Abstract
Data filed the lawsuit in U.S. District Court for the District of Delaware in
March 2011, alleging patent infringement by broadcast groups, including CBS
Radio, Beasley Broadcasting, Cox Radio, Greater Media and Cumulus.
There has been
intrigue over those
who are associated with the plaintiff. RW previously confirmed that at one time
patent holding company Intellectual Ventures owned MAD. Former Microsoft Chief
Technology Officer Nathan Myhrvold founded IV in 2000.
Intellectual Ventures owned Mission Abstract Data when MAD acquired the
two patents in question in 2007 from Haltek America Inc., according to an
assignment history from the U.S. Patent and Trademark Office. Others listed in
the assignment history as holders of the patents through the years include IM
Networks (formerly Sonicbox Inc.), Concert Technology Corp. and Hahek America,
though the latter appears to have been a typo for Haltek, subsequently
corrected in the patent records.
inventor named on the patents, Robert Goldman, apparently was an executive with
Haltek at one time.
sites such as TechCrunch.com have disparaged Intellectual Ventures, the IP
licensing company, as a “patent troll” that they say exists mainly to extract
patent-licensing fees from other companies and whole industries. Intellectual
Ventures told Radio World in 2011 that it no longer owns the patents.
States District Judge Leonard P. Stark granted a stay in the hard-disk
automation patent suit in November, effectively placing on hold the legal case
as Mission Abstract Data and the defendants work through the reexamination