The decision last week by the U.S. Patent and Trademark Office to grant a second “ex parte” reexamination request for one of two patents at the center of a radio automation patent infringement suit targeting a half-dozen large broadcast groups will likely cause further delay in the case.
The “patentee” and plaintiff is DigiMedia, which purchased the two patents from an associated company earlier this year. The patents describe a system and method for a programmable digital audio system for radio stations where the music is stored in a digital database
The USPTO is ordering all claims from patent 5,629,867 be reexamined again in light of substantial new questions of patentability raised in the Reexamination Request.
“A substantial new question of patentability affecting claims 1–10 of U.S. Patent Number 5,629,867 issue to Goldman is raised by the request for ex parte reexamination. The requested claims will be reexamined,” concluded a USPTO reexamination specialist in the most recent USPTO order.
The patent was originally issued to inventor Robert Goldman in 1997.
The ex parte reexamination request, filed by Broadcast Electronics, was granted on August 21, and allows the patentee 60 days to file a response. BE is an automation systems manufacturer but not a defendant in the lawsuit.
The patent infringement suit, which has been closely followed by broadcasters, was filed by Mission Abstract Data LLC in March 2011. The federal case has been on hold since the presiding federal judge issued a stay late last year.
Fletcher, Heald & Hildreth communications attorney Harry Cole wrote in his firm’s CommLawBlog that another reexamination will likely take until early 2013 to conclude.
“While the mere raising of questions doesn’t rise to the level of final conclusions, we suspect that it can’t be a good sign for anybody hoping to rely on the patent subject to such questions. We’ll just have to wait and see how the further reexamination proceeding comes out,” Cole observed.
USPTO examiner Jason Proctor last year rejected many of the key claims in the patents held by DigiMedia but upheld others during the first reexamination. However, DigiMedia appealed and challenged some of those findings.
RW reported earlier this summer that the plaintiff asked the presiding judge to lift the stay in the patent infringement suit and accused the defendants of employing a delay strategy. The defendants include CBS Radio, Cumulus, Greater Media, Beasley Broadcasting, Entercom and Cox.
A number of radio broadcasters have reported receiving letters this summer from DigiMedia requesting they sign a licensing agreement in order to use the technology.