IP Attorney, Ernest Grumbles, shares his thoughts on the Volomedia patent.

It’s been nearly a month since a company called VoloMedia was granted a patent titled “Method for Providing Episodic Media,” but the criticism, and the confusion, continues.  If the patent had simply issued – quietly – there would have been little concern.  But the company announced publicly that they had just been awarded the “US patent for podcasting.”  In essence – all of you thousands of companies that use podcasting to deliver content and all of you millions that use podcasting to get content – beware.  This was a broad gauntlet thrown down – notwithstanding subsequent company attempts to downplay the statement and its intentions regarding the patent (Trust us.  We will wisely use our nuclear weapons for the security of humanity.).

What to do with such pronouncements – when Company X announces it has obtained a patent on a broadly-used technology?  The answer depends on 3 things: (a) who the patentee is; (b) who you are and (c) the valid scope of the patent in question.  The first two are easier (and a lot cheaper) to discern.  The last is an expensive and uncertain process more akin to biblical exegesis than scientific analysis.  For purposes of argument, let’s assume VoloMedia has a valid patent that covers basic subscription audio models.

Who and What is VoloMedia?

VoloMedia’s main business is providing tools that can be embedded in podcasts and other downloadable media to help gather information on those who are listening and watching.  The aim is to provide more demographic information for advertisers.  Several large media companies including Fox News, The Washington Post and MSNBC currently use VoloMedia’s technologies.

From discernible records, VoloMedia did not acquire this patent from a third party.  Rather, VoloMedia has obtained this patent apparently through its own technical development history – which has resulted in commercial offerings.  Based on a quick review of public litigation databases, it does not appear that VoloMedia has sued anyone for patent infringement before.  That’s not to suggest they would not assert a patent if infringed.  But it does suggest that VoloMedia is not in the “litigation business” (they’re likely not looking for a fight).  Its monetization models lie in its services and systems offered to companies such as the customers noted above.

But let’s say VoloMedia decided to assert the patent?  What then?  The likely answer depends on who you are.

Who are You?

Customer of VoloMedia

Say you are an existing customer under contract with VoloMedia?  If VoloMedia is selling you services and facilitating your use of podcasting technology, they could (hardly) sue for infringement.  That does not mean they would legally barred from filing a Complaint (anyone can file anything – does not mean it has any merit).  But typically you can’t sue someone for something you are aiding them to do.  Does that make sense?  In addition, if VoloMedia is monetizing its relationship with you, why mess that up by filing suit?  Frankly, not the best way to maintain customer goodwill.

Potential Customer of VoloMedia

Now say you are a company making significant use of podcasting to deliver media content.  You are Fox or MSNBC.  VoloMedia has tried to sell you services before or maybe you are just a theoretical customer.  I would wager again that VoloMedia’s best sales strategy would not be to threaten you with infringement suits.  They want customers – not defendants.   But – assuming the patent is valid and actually is “the patent” on podcasting (I have doubts on both), perhaps that will give VoloMedia a bit more bargaining power when negotiating contracts.  Perhaps a bit more gravitas in discussions.  Certainly the press over the patent issuance will make a few companies take notice.  

Competitor of VoloMedia

What if you a company that hosts podcasting, offers podcasting analytics or other services?  These kinds of companies will want to take a look at the VoloMedia patent just to get some idea of what the Patent Office is letting through in the podcasting space.  And they might want to evaluate the claims of the VoloMedia patent against prior podcasting systems (to measure the validity of the claims) and against their own systems.  In this circumstance, you should neither panic nor disregard.  Rather, see what’s out there, measure risk, work with counsel and make reasoned choices.  This is just good IP policy.  Again, VoloMedia does not appear to be in the litigation business, has indicated it is not looking to sue anyone on this and just wants recognition as a pioneer in the space.  See this statement provided to the ADM and this interview with Ars Technica But take the statement for what it’s worth.  Companies making damaging inroads to VoloMedia customer relationships will be on any future litigation short lists that are developed.

Individual Podcaster

I’m in this category (see www.bpgradio.com) and I do not believe VoloMedia will sue me.  VoloMedia has said it will not be suing individual podcasters – see these responses to the ADM questions by Murgesh Navar of VoloMedia.  Further, this is no monetization model that would justify suing the hundreds of thousands of US podcasters.  And it would engender such a degree of ill will toward VoloMedia that the company would shortly regret the idea (think RIAA suits).

Podcast Listener

Forget about it.  As long as there are computers and the internet, there will be downloadable audio media.  VoloMedia can’t stop that and could develop no business justification to undertake legal action against podcast listeners. Keep listening and enjoying.

A few random thoughts on the patent itself.

Let’s not forget the patent.  The patent has 8 claims, only one of which is independent (a standalone invention) – claim 1.  Here is the text of claim 1:

A method for providing episodic media, the method comprising:

providing a user with access to a channel dedicated to episodic media, wherein the episodic media provided over the channel is pre-defined into one or more episodes by a remote publisher of the episodic media;

receiving a subscription request to the channel dedicated to the episodic media from the user;

automatically downloading updated episodic media associated with the channel dedicated to the episodic media to a computing device associated with the user in accordance with the subscription request upon availability of the updated episodic media, the automatic download occurring without further user interaction;

and providing the user with: an indication of a maximum available channel depth, the channel depth indicating a size of episodic media yet to be downloaded from the channel and size of episodic media already downloaded from the channel, the channel depth being specified in playtime or storage resources, and the ability to modify the channel depth by deleting selected episodic media content, thereby overriding the previously configured channel depth.

I agree with previous commentators that this does, at first glance, appear to be broadly directed to basic podcast channel subscription, with automatic downloading of new episodes and ability to manage the number and size of episodes downloaded.  Whether the claim is entitled to such a breadth of scope requires careful analysis of the exact phrases above in light of the full patent disclosure and the process by which the patent was prosecuted and evaluated in the Patent Office (beyond the scope of this article).

In addition, whether the claim above is valid is a completely different question.  The Patent Office can only grant patents for truly novel inventions and ones that are not obvious variations of what’s already been invented.  As one example, if the full scope of the above claim was in public use or on sale in the United States more than a year prior to November 19, 2003 (the earliest date VoloMedia to which could claim priority), then the claim would not be valid.  But these are academic questions.  Take VoloMedia at its word, and this patent will stay in a box for a long time.

Ultimately, VoloMedia’s patent probably won’t change the average podcaster’s ability to create and share their programs. And if you are a VoloMedia customer or potential customer, don’t lose any sleep.  However, we’ll have to wait and see if VoloMedia takes an equally hands-off approach to toward the major podcast distributors, like Apple, or its competitors.

About the author: Ernest Grumbles is a trial attorney and has handled numerous intellectual property disputes in federal courts around the United States, including patent litigation, for Merchant & Gould. IP/innovation counseling and portfolio development are important parts of Ernest’s practice. He is a strategic IP counselor to several startup and early-stage enterprises, assisting them in recognizing IP assets and developing a pragmatic approach to protect and enforce those assets. Current technology focuses include interactive web applications, location- and mobile-based services, green-tech food/drug coatings and IC/wafer inspection. Ernest is currently working on an initiative to promote innovation in Minnesota.