by the U.S. Patent and Trademark Office is expected to delay further a prominent
lawsuit involving radio automation technology.
USPTO, citing “prior art” not previously available, granted second reexamination
requests of the patents that lie at the center of an infringement suit that targets
a half-dozen large broadcast groups. The development is encouraging for the defendants
and other radio broadcasters, according to a patent attorney familiar with the review
patentee and plaintiff is DigiMedia Holding Group LLC and its associated company
Mission Abstract Data, which has been aggressive in pushing some radio broadcasters
to sign licensing agreements. The patents pertain to the selection and retrieval
of music from an online digital database stored in a hard drive for transmission
by a radio station, according to the USPTO.
office is ordering all or some of the claims from patents 5,629,867and 5,809,246 to be reexamined
again in light of what it calls “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 issued to [Robert]
Goldman is raised by the request for ex parte reexamination. The requested claims
will be reexamined,” wrote a USPTO reexamination specialist in the most recent order.
The USPTO issued a similarly worded statement about the majority of claims in the
|This image is from a United States Patent & Trademark Office
document describing the disputed patent for selecting and retrieving of music
from a digital database.
who have reviewed the USPTO findings said that new or additional prior art has been
discovered that bolsters claims of broadcasters and equipment sellers that the technology
had existed in the marketplace prior to patents being issued.
patents originally were issued to Goldman, an inventor, in 1997. They have changed
hands several times before becoming property of Mission Abstract Data, which has
been described by some observers as a “patent troll.”
ex parte reexamination requests, filed by Broadcast Electronics, were granted in
August and allow the patentee 60 days to file a response. The deadlines for DigiMedia
to respond are Oct. 21 and 23. It will be allowed to provide more information to
the examiner about why each patent is different from the prior art.
Electronics is an automation systems supplier to broadcast groups; it is not a defendant
in the lawsuit.
The patent infringement suit,
which has been followed closely by broadcasters, was filed by Mission Abstract Data
LLC in March 2011. That federal case — in United States District Court for the District
of Delaware — has been on hold since the presiding federal judge issued a stay late
earlier this summer that the plaintiff had asked the judge to lift the stay and
accused the defendants of employing a delay strategy. The defendants include CBS
Radio, Cumulus, Greater Media, Beasley Broadcasting, Entercom and Cox.
told Radio World it is unlikely the judge would lift the stay, given that the second
reexamination requests were granted.
Fletcher, Heald & Hildreth
communications attorney Harry Cole, a contributor to Radio World, wrote in his firm’s
CommLawBlog that another reexamination likely will take until early 2013.
“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 wrote.
the first reexamination, USPTO examiner Jason Proctor last year rejected many of
the key claims in the patents held by DigiMedia but upheld others.But the company then amended some of the rejected
claims; once reviewed by the examiner, these were later determined to be
The Patent Office is likely to
assign a different patent examiner for the second reexamination to avoid any appearance
of bias, according to Bill Ragland, a patent attorney with Womble Carlyle Sandridge
“It’s mostly to have a second set of eyes looking
at the material. This can be very complicated material, with lots of subtleties,”
Expect to see a see a similar schedule as the first
reexamination, Ragland said.
“There will be some back and forth between the USPTO
and the Mission Abstract Data people. Then the USPTO will decide whether or not
any changes to the patents need to be made, whether any claims will be confirmed
or whether any claims totally rejected,” Ragland said. “And MAD can still appeal
if they do not agree with the findings.”
Ragland, who is familiar with the federal lawsuit
but not involved with it, said the latest developments are “not all that common”
but would not call the developments “highly unusual.”
“Obviously, the new art is quite compelling for the USPTO
to go to the extent of granting another reexamination,” Ragland said. “The MAD lawsuit
depends totally on the validity of those two patents.”
Prior art submitted by Digilink and Dalet played
a role in the first reexamination of patents. The new reexamination certificates
cite new prior art from Katz, RCS and ENCO along with some existing patents held
by several parties not previously viewed by the examiner.
Meanwhile, 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.
unclear how many broadcasters have signed licensing agreements; DigiMedia has never
released figures. Townsquare Media LLC, originally named as a defendant in the patent
infringement case, was dropped from the suit in July 2011. That development fueled
industry speculation that the two sides reached a settlement and likely entered
into a licensing agreement; both declined to comment on the speculation.
Communications attorney Cole said he continues
to caution broadcasters to check with competent patent counsel to determine the
validity of the patents at this point, especially considering the need for a second
MAD letter is based on the assumption that MAD has patents covering this particular
technology. Therefore, the stations are infringing and should be paying MAD money
to use that technology. The MAD claim falls apart if there are questions regarding
the validity,” Cole said. He, like Ragland, is not involved in the lawsuit.
reminds broadcasters that the first reexamination narrowed some of MAD’s patent
claims but that “the USPTO ultimately did uphold them.”
Meanwhile, the patents expire
in 2014, Cole said, though that doesn’t mean the plaintiffs are out of luck after
“If they are ultimately to win at the USPTO and
that the patents are valid, (MAD) could still say that broadcasters owe for historic
infringement up until the 2014 date,” Cole said.
As in the past, messages to DigiMedia
and MAD seeking comment were not answered.