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EFF Files Request for Reexam of Clear Channel Patent
Thursday, February 16 2006 @ 10:06 AM EST

I thought you might like to see the reexamination request [PDF] EFF has just filed to try to overturn Clear Channel's patent for a system and method of creating digital recordings of live performances, which EFF says Clear Channel is using to try to force artists to use their system exclusively instead of their own or those of startup companies. Clear Channel, EFF says, is asserting a monopoly on all-in-one technologies that produce post-concert live recordings on digital media, "threatening to sue anyone who produces post-show live recordings at any of its 100+ venues in the U.S., twisting artists' arms to give up a significant chunk of their concert merchandise sales, one of the few revenue streams not already taxed by most recording labels, inhibiting investment and innovation in the post-event content distribution market by companies such as Kufala and Hyburn."

The basis for EFF's request is twofold: that the patent "is causing significant public harm by restraining innovation and free expression and, importantly, is invalid as anticipated and/or rendered obvious under 35 U.S.C. §§ 102 et seq. and 103(a) by various printed prior-art publications." The harm argument isn't a basis for a reexam, but they ask the court to consider the harm being done when reviewing the patent. You can find all the prior art listed on EFF's site, as well as in the filing.

This filing is part of EFF's Patent Busting initiative. Some law students helped them prepare this reexamination request, by the way, as you can see in footnote 2, and it's educational as an example of finding and using prior art to invalidate a patent, or so far, to try to, so it's worth reading to see how it's done.

Today is the USPTO meeting regarding the Prior Art Database initiative, which has as its aim preventing stupid patents from issuing in the first place, so it seemed timely to show you an example of what you have to go through to try to undo the damage when patents are granted and then you show up with prior art. We have representatives at the meeting, so I'll share their reports with you as soon as they arrive.


EFF Files Request for Reexam of Clear Channel Patent | 130 comments | Create New Account
Comments belong to whoever posts them. Please notify us of inappropriate comments.
Off Thread
Authored by: jerven on Thursday, February 16 2006 @ 10:28 AM EST
You know the drill

[ Reply to This | # ]

The cost in man hours of committing to even a software patent prior art effort is huge!
Authored by: Anonymous on Thursday, February 16 2006 @ 10:57 AM EST
The cost in man hours of committing to even start a software patent prior art
effort is huge! As an ongoing effort, it is easy to dream, but when it comes
time to mow a lawn that is as big as the whole mid-west, the dream soon becomes

Hopefully, this effort, this meeting, will show that the effort involved is
futile, giving the scope of the problem. Just one company is submitting over
2000 software patent applications per year (Microsoft)! How many open source
hours will WHO have to commit to even looking at their submissions?

Given how broadly a software patent is worded, when compared to how specific
the degree of execution that the copyrighted code describes, where millions of
lines of code is boiled down into pages of metaphor and simile (without even
getting close to describing the exactness of the code's function), how can one
even begin to see in broadly worded sofware patent applications, the "prior
art" forest, thru the "prior art" trees?

Hopefully the folly of the idea of software and business method patents (can
overlap in many areas), can be shown to be what it is as an experiment that has
gone wrong.

Even Dr. Frankinstien even understood at some point that what is created is
interesting, but, in the end what happened to him? Are we to suffer the same

[ Reply to This | # ]

Clear Channel:: Baystar Link
Authored by: stats_for_all on Thursday, February 16 2006 @ 11:19 AM EST
R. Steven Hicks and Tom Hicks were 2 of 3 "non-managing" partners in Baystar. Andrew Farkas was the third principal. Tom Hicks was vice chairman of Clear Channel. and R. Steven's AMFM chain was incorporated into Clear Channel for 23.5 Billion in August 2000.
Basic biographies here

R. Steven Hicks resigned from the SLS (a little loudspeaker company) board in May, 2005. He had only served about 5 months, and forfeited stock options. Baystar's Steve Lamar became SLS president at the same time. The Baystar group was fissioning about this time (made public in July, 2005).

[ Reply to This | # ]

EFF Files Request for Reexam of Clear Channel Patent
Authored by: Anonymous on Thursday, February 16 2006 @ 11:35 AM EST
Didn't Mark Cuban (current owner of the Dallas Mavericks) make his fortune with Which was in the business of making digital recorderings and
streaming of live performances and events?

[ Reply to This | # ]

How is this patentable?
Authored by: cmc on Thursday, February 16 2006 @ 12:05 PM EST
I know the patent system has gotten bad in the U.S., but this is ridiculous. I
just read the patent, and it's absurd. How is this patentable?

The patent is nothing more than simple recording studio activies:
1. Capture signal into file.
2. Parse file into separate tracks and edit.
3. Record onto recording media.

There is nothing novel or innovative about this. The *ONLY* thing different
that I see is that the signal capture is saved to a single file which is then
parsed into multiple tracks. However, since each track is actually recorded
separately (since each microphone, instrument, etc. has it's own recording
input), that signal capture consists of multiple tracks, which will obviously be
saved to the "primary file" as individual tracks. It's not like they
are taking a single audio signal (like the output of a cassette or compact disc)
and parsing that output into multiple tracks.

So they capture the signals (whether they are audio or video), then they edit
the signals, then they record it onto recording media.

Let's think about a typical recording studio:

1. Each track is recorded separately. Since the recording is of a person
singing or playing an instrument, it is technically a "live

2. Every modern recording studio records onto digital media, whether that
media is a computer hard drive or DAT (digital audio tape) media.

3. The recording studio will then edit and mix the captured signals.

4. The recording studio will then record the multiple tracks as a single

Except for the initial merge-to-single-file then parse-tracks-from-file, I don't
see any difference at all. Can someone please tell me how this patent differs
from a recording studio?


[ Reply to This | # ]

Interesting move
Authored by: Anonymous on Thursday, February 16 2006 @ 01:20 PM EST
During the napster affaire, the court decided that homemade live recodings of
live music could be shared legally because the record companies don't own the
live performances of the music their artists create.(unless they themselves made
the recording)
it seems clear channel with their patent, took away that loophole.

[ Reply to This | # ]

  • Not really - Authored by: cmc on Thursday, February 16 2006 @ 02:03 PM EST
This is patentable?????!!!!
Authored by: darkonc on Thursday, February 16 2006 @ 01:49 PM EST
My reading of claims 6-9 of the patent is:
You should plan to print as least as many copies as were pre-ordered

6. The method of claim 1 further comprising the steps of:
determining a number of copies of said recording pre-purchased at said point-of-sale of tickets for said live performance event; and
calculating the desirable number of copies of said recording to be manufactured.

7. The method of claim 6 wherein the step of calculating a desirable number of copies of said recording to be manufactured includes calculating said desirable number of copies based on a function of the determined number of copies of said recording pre-purchased at said point-of-sale of tickets for said live performance event.

8. The method of claim 7 wherein said desirable number of copies is at least as large as a number of copies of said recording pre-purchased at said point-of-sale of tickets for said live performance event.

9. The method of claim 1 wherein the step of providing an opportunity for purchasers to pre-purchase copies includes providing the purchasers with an option to pre-purchase one or more copies at the ticket box office that sells tickets for said live performance event before said live performance event occurs.

Am I missing something, or is creating at least as many copies of your product as you have paid pre-orders for an obvious business practice?
In my mind, this step is so obvious that not doing so would leave you open to lawsuits for negligent breach of contract.

Powerful, committed communication. Touching the jewel within each person and bringing it to life..

[ Reply to This | # ]

Corrections here please n/t
Authored by: marbux on Thursday, February 16 2006 @ 02:32 PM EST

Retired lawyer

[ Reply to This | # ]

Live recordings have been made for YEARS
Authored by: darkonc on Thursday, February 16 2006 @ 03:28 PM EST
Some time ago (mid-late 80s) my mother took me to a dinner where a journalist gave a (somewhat humerous) speech on the future of computers. She had also ordered a copy of the speech which, as I remember it, was delivered on casette by the time we left the hall.

This system would have embodied most of the features of the patented system -- except that the recording and duping was done all in analog.

By the late '90s, digital recording had become pretty much the standard -- in fact, digital mastering was becomming so common that creating an all-analog recording suite was fast becomming something that needs conscious effort to accomplish -- thus, describing the the nature of the recording suite as anything approaching novel or innovative would be entirely disengenious.

Once you have a digital recording, however, multiple editing suites are almost trivial. The digital realm is well known for it's ability to make multiple perfect copies on a whim (cf: DMCA). This then leaves the standard business practices of taking pre-orders and producing at least as much product as was pre-ordered.

Powerful, committed communication. Touching the jewel within each person and bringing it to life..

[ Reply to This | # ]

Report from the February 16, 2006 USPTO Open Source Meeting
Authored by: ElvishArtisan on Thursday, February 16 2006 @ 07:19 PM EST
I arrived at the USPTO Open Source Meeting right on the dot of 10 AM. I'd estimate that the room was about 90% full, with one- or two-dozen empty seats out of a seating capacity of around 250. About half of those attending looked to be “suits”, whereas the other half were dressed more casually.

The meeting was opened by Mr. Jack Harvey, Director of the USPTO's Technology Center 2100. One of Mr. Harvey's very first statements after welcoming the attendees was a reminder that the topic of the meeting did not include the issue of software patents per se, but rather on ways in which the USPTO and the FOSS community could work together to improve the quality of software patents issued. This point was reiterated several times by other participants from the USPTO. It's clear that the folks at the Patent Office have gotten the message that the FOSS community is unhappy about software patents! Mr. Harvey's role through the rest of the meeting was primarily that of 'majordomo', introducing the various panel speakers. I got the sense as the meeting went on that Mr. Harvey has been one of the prime advocates within the USPTO for initiating the discussions with the FOSS community.

Next up was Mr. John Doll, the Commissioner of Patents. He spoke only briefly, his two major points being that patent quality was the “number one focus” of the Office and asking the help of the FOSS community to help with this goal.

Next came Mr. Manny Schecter of International Business Machines (IBM). Mr. Schecter started by taking an informal survey of the meeting participants, asking for a show of hands from those who were there “because they are involved with or representing open source” and then from those who were there “in a traditional IP role” I'd say that perhaps 15% of the attendees claimed some affiliation with Open Source, while slightly more (20% ?) claimed a “general IP” role.

Mr. Schecter then reviewed IBM's goals in being involved with the proposed FOSS/USPTO initiatives, those goals being:

  • Ensure patent quality
  • Be as inclusive as possible
  • Help drive patent reform

    Mr. Schecter (and many subsequent speakers) referenced an earlier meeting between USPTO and FOSS representatives that took place on December 9, 2005. Apparently, not many people on the FOSS side were aware of this event (although it was open to the public). The purpose of this meeting was to gage the interest of the FOSS community in some sort of cooperative effort with the PTO, and to have a discussion about what could be done. Today's meeting was a “follow-up” to that one, and was called to set a framework for further action.

    Next came Mr. Jay Lucas, the Acting Deputy Commissioner of Patent Quality for the USPTO. Mr. Lucas basically put forward a 'vision statement', saying that the overall goal of the two groups (USPTO and FOSS community) were broadly similar, being the sharing and dissemination of ideas, and that it was logical that the two groups should help each other.

    Next came Mr. Tariq Hafiz, a patent examiner who gave a fascinating and illuminating account of the day-to-day life of an examiner. The basic steps involved in processing a patent application are:

  • Review and understand the application
  • Define and execute a search for prior art
  • Compose and send an “office action”
  • Await a response
  • Repeat the above as necessary

    An “office action” can be either an approval of a patent, or an objection to the applicant that a patent cannot be granted for some reason (“overbroad”, “too vague”, etc). If an objection is issued, the applicant then gets a chance to remedy whatever it is that made the examiner object. The process then repeats, until either a patent is granted or the application is finally denied or abandoned.

    Mr. Hafiz focused particularly on the “define and execute a search” portion of the process, which itself can be broken down into the following steps:

  • Build a search strategy
  • Execute the search
  • Review and understand the results
  • Select the best prior art

    The most important of these steps is often the first, “build a search strategy”. Mr. Hafiz classified the sources of data used for this search into three categories: “structured”, “semi-structured” and “unstructured”. “Structured” sources refer to databases maintained by the USPTO itself (the EAST/DIALOG system), those maintained by foreign patent organizations (primarily the EU and Japan) and, most surprisingly for me, a database maintained by IBM listing their prior art. Searches of the Internet fell into the “unstructured” category, meaning that the data was hard to get hold of without having to deal with a large amount of “noise” in the process.

    One aspect of the life of a patent examiner that came into sharp relief through all of this was the extreme premium placed on time. The USPTO has a huge backlog of pending applications and limited resources, so the amount of time an examiner spends on each application is carefully tracked, and measures (described by one participant as possibly “punitive”) taken against those examiners who don't live up to the norm. What all this means is that any new database of prior art must be organized in such a way that examiners can easily access and navigate it – they just don't have time to conduct searches involving unstructured, “noisy” sources.

    Next up was Mr. Kees Cook, Senior Network Administrator for OSDL. Most of Mr. Cook's presentation was a review of the December 6th meeting's conclusions. These were:

  • Categorization and searching are the primary problems
  • We need to define what qualifies as “prior art”?
  • We need to develop some sort of “social tagging” system (as with e.g.
  • There are three category “layers” in software patents: system, component and algorithmic
  • We need to better understand the USPTO's requirements
  • Why not use existing prior art?
  • Why can't representatives from the USPTO directly participate on public mailing lists?
  • We need to develop a central “tagging” tool.
  • More input is needed from other, “traditional” software suppliers (e.g. Oracle, Microsoft).

    Mr. Cook also mentioned that it is important to get a commitment from the USPTO that, were a FOSS-based search system developed, it would actually be used by the examiners.

    Next up was Mr. Ross Turk from SourceForge. Mr. Turk mentioned that this initiative came at a good time for SF, as they are in the middle of overhauling many of their back-end systems so as to provide a better user interface as well as improved sorting and filtering capabilities, all of which would be aids in supporting a prior art database. An attendee asked if non SourceForge-hosted projects could be included in this initiative too. Mr. Cook's take on that was that some sort of “federated” system would eventually emerge that would embrace all FOSS sites and repositories wishing to participate.

    The meeting then turned to the suggestion for a “Community Patent Review” system, whereby patent applications could essentially be “peer reviewed” by the public before being granted. The first speaker on this topic was Mr. Marc Ehrlich, an attorney with the Patent Portfolio Management/Intellectual Property Licensing department at IBM. Mr Ehrlich had a number of slides showing how such an online system might actually look in practice. His proposed system consisted of three basic parts:

  • Access – Make it easier to access applications. Add a subscription-based alert system to notify potential reviewers when a new application in their area of expertise becomes available.
  • Review – The basic platform for public review. Components include education, indexing, links, discussion, and some sort of reputation scoring system so that examiners would have some idea of the track record of folks doing the public review (similar to E-Bay's scoring system).
  • Feedback – Find a simpler way to submit data to examiners.

    Mr. Ehrlich determined that the system must also support easy ways to identify the responder (the one submitting the data to the examiner), make structured comments (in addition to just indicating any prior art found) and a way to determine if the examiner in a given case actually used the data that was provided. He then identified some of the potential challenges facing the implementation of this kind of system, the main ones being:

  • Flooding – the danger of the USPTO being overwhelmed by submissions from the public
  • Gaming – bad actors using the system to intentionally obstruct otherwise valid applications
  • Willful infringement dangers – overcoming the reluctance many developers feel about looking at any patent data whatever for fear of becoming liable to later charges of “wilful infringment” against a patent (more on this topic later)

    At this point, one of this meeting attendees, an actual patent examiner, made the admission that he sometimes did use Slashdot in trying to locate prior art, but that it was difficult and time-consuming due to “all the anti-patent noise”.

    Next up was Professor Beth Noveck of the New York Law School, the organizer of the Peer to Patent Project, an effort to design and deploy a pilot system to test the idea of community patent review. The PPP is actually part of a larger effort known as the Democracy Design Workshop. The basic idea of the Design Workshop is that current government structures utilize “bureaucratic expertise based on outdated technological assumptions”, meaning that they cannot effectively capitalize on the benefits that modern communications technologies offer. Professor Noveck brought up what was perhaps one of the most important reminders of the entire meeting, that being that the constitutional goal of the patent system was ultimately to spread information, not restrict it's dissemination, and that any system must put those priorities first.

    Professor Noveck broke down the basic problem elements involved in designing a community patent review system as follows:

  • Identify those with expertise to do the reviews
  • Managing the information provided (e.g. don't flood the examiners!)
  • Providing incentive for people to do reviews
  • Adapting the information provided to the requirements of the examination process

    Professor Noveck is also in the course of organizing a series of meetings geared toward designing and implementing a pilot community patent review system towards the end of 2006, a goal which she described as “ambitious, but doable”. Further information can be found at the Peer to Patent web site.

    The final panelist to speak was Mr. Rob Clark, Deputy Director of the Office of Patent Legal Administration for the USPTO. Mr. Clark's job is to actually draft the rules which govern the day-to-day operation of the USPTO, based on the relevant Federal statutes and governmental procedures. He described in some detail a method in place today by which members of the public can submit prior art for consideration in a patent application. This so-called “Rule 99” procedure has several limitations: material submitted can only include actual prior art –i.e. no “commentary” is allowed; and only “published” data is permitted (“published” in this context means any material that was “reasonably available” to the public –e.g. material from a public web site would be acceptable). Additionally, the submission must be within two months of the original publication of the patent application, and a fee of $180 US is required with the submission. Many of these limits are due to statutory requirements, specifically 35USC 122(c).

    Mr. Clark mentioned that some of the drawbacks of this process are:

  • Some patent apps opt-out of the “publishing” requirement, so the public would have no way of knowing that these are upcoming.
  • Fear of would-be reviewers to look at patent data, lest they become liable to later damages for “willful infringement”.

    There was mention that some of the patent reform legislation currently being debated in Congress would address both of these issues.

    Next, the floor was thrown open to any who might have suggestions for future initiatives. At this point Mr. Bruce Perens, one of the founders of the Open Source Initiative got up and delivered a short prepared speech detailing what he felt were four critical areas in patent law needing attention with regard to FOSS. Mr. Perens was quite eloquent, so I will try to quote him where possible here:

    PERJURY A party who files a patent application swears to the truth of the claims made within it, similarly to how a person testifying in court swears to tell “the truth, the whole truth and nothing but the truth”. Mr. Perens claimed that after speaking to “many people” at the USPTO, he was able to locate only one person who knew of an actual case where an applicant was prosecuted for perjury after having been discovered making willfully false statements in a patent application, and that this case took place in – 1974. As a result of this lack of enforcement, bad actors have “no sense of peril” when making knowingly false claims in an application, knowing that the worst possible outcome is a simple denial of the application. There are those who are “eavesdropping on open source” and filing spurious patent applications accordingly, thus seeking effectively to kill the original FOSS projects. Thus, “perjury creates intellectual poverty”, and Mr. Perens insisted that the “peril should be real” to those committing perjury, demanding that perjurers undergo “active prosecution”.

    TRIVIALITY Mr. Perens suggested the formation of 'patent juries' to test an idea for its obviousness prior to its publication, the idea being to present the basic problem to a jury of people competent in the area in question. If this jury comes up with the “invention” described in the application, it is then ipso facto held to be obvious and hence not patentable.

    PENALTY FOR LOOKING The danger of incurring damages for “willful infringement” by mere examination of the patent database has led many lawyers to counsel engineers to simply “not look”, thus defeating the primary purpose of having a patent system in the first place. Mr. Perens cited this as an urgent need to “create bright lines for engineers”, defining the circumstances under which they could safely examine the patent databases without potentially getting into the cross-hairs of a lawsuit.

    LITIGATION Mr. Perens stated the average cost of defending a patent lawsuit as being between three and five million dollars US, thus meaning that many FOSS projects can be and have been shut down by the mere filing of a lawsuit by a large commercial firm. Some way to allow an individual to fight these actions is urgently required.

    Finally, Mr Perens reminded everyone that, the limitations to the agenda for today's meeting notwithstanding, Patent Quality is only a “little piece” of the overall problem. The real problem is the entire idea of software being patentable in the first place, and work needs to be done with Congress to get this particular provision of the patent law changed.

    Finally, Ms. Diane Peters from the OSDL closed the meeting with the observation that this was “just the beginning”, and that abolition of software patents should remain the overriding goal for the FOSS community.

    Overall, a very educational day. My overall impression was that the folks at the USPTO genuinely want to work to improve patent quality and help FOSS, but are very fearful of doing anything that would increase their already huge workload. I think Mr. Peren's final admonition was a good one – working to improve patent quality is a worthwhile tactical goal, but the strategic plan still needs to be to get software taken out of the patent mix altogether.

    [ Reply to This | # ]

  • OUCH!!
    Authored by: ElvishArtisan on Thursday, February 16 2006 @ 10:21 PM EST
    That's gotta hurt... :)


    [ Reply to This | # ]

    A Simple Way to Avoid the Patent?
    Authored by: darkonc on Friday, February 17 2006 @ 10:14 AM EST
    It looks like one of the parts of the patent is that you record partial tracks to the disks as the concert is ongoing.

    it seems that, then, one of the easiest ways to avoid (this part of) the patent, is to make sure that you don't write any tracks onto the disk until you have the entire master recording... (i.e. use the DAO (Disk At Once) rather than TAO (Track At Once) mode to write the CDs).

    With CD writers running at 48-54x you can have your first disks out about 2 minutes after you fix the master.
    With 4 CD writers (i.e. one computer) per cashier, you can deliver 1 disk about every 30 seconds -- which is about how long it would take to process a payment. To ensure that you can keep up with multiple CD purchases, I guess that you'd probably want a few extra units..

    Powerful, committed communication. Touching the jewel within each person and bringing it to life..

    [ Reply to This | # ]

    A request for opensource prior art patent update.
    Authored by: Anonymous on Friday, February 17 2006 @ 12:47 PM EST
    quote from end of article: " Today is the USPTO meeting regarding the Prior Art Database initiative, which has as its aim preventing stupid patents from issuing in the first place, so it seemed timely to show you an example of what you have to go through to try to undo the damage when patents are granted and then you show up with prior art. We have representatives at the meeting, so I'll share their reports with you as soon as they arrive"

    Did we get any reports back, I was wanting to see this. I have to work and am not in the area so I am unable to attend. Will the uspto post a briefing on this? I heard that a few people that read Groklaw were going to report back. I know it is just one day after but still I was curious how this went.

    Maybe I should send them (uspto) email next time saying that an online meeting might be in order.

    Also does anyone know what the "proposed rule changes for claims and continuations" that is to be reviewed on February 28 in Berkeley California. See for info I saw this today. (I'll look this up after work if no one else has)

    Also there is a Live On-Line for Independent Investors meeting on Feb 22,2005. It is my understanding that questions can be asked. Also on the home page today.

    a florida resident.

    [ Reply to This | # ]

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