EFF wins request for reexamination of ringtone patent

Synthesized controversy

The US Patent and Trademark Office has granted a request by the Electronic Frontier Foundation to reexamine a controversial patent that covers the distribution of certain types of music files over the internet.

The patent, issued in 1997 to Seer Systems, restricts audio streaming, cell phone ringtones and other electronic distribution of music when they involve the MIDI, or musical instrument digital interface, standard. Microsoft, Yamaha and Beatnik have all taken licenses after being sued for patent infringement, according to Seer principal Stanley Jungleib.

According to EFF attorney Michael Kwun, Jungleib's patent application failed to submit at least five significant descriptions of the technology that were published prior to the request. They included a book authored by Jungleib. Patent examiners use such prior art to decide whether an invention meets standards for novelty and non-obviousness.

"We found a variety of prior art that we thought pretty clearly disclosed" the invention, Kwun said. "It's significant, I think, that Mr. Jungleib's own book was a primary source."

Jungleib says he's heard such arguments before and they failed. In the early 2000s, he sued Microsoft and Yamaha, and the suits settled with both companies taking a license. More recently, Seer sued Beatnik and that company also ended up licensing the technology.

"Microsoft raised the same 'book' issue in that lawsuit," Jungleib wrote in an email to The Register. "After 22+ months of litigation, we settled confidentially. That would seem to suggest that the EFF's 'book' contention, not my company's patent, is 'bogus.'"

The request that the patent be reviewed is the sixth time the EFF has made such an appeal. The Patent and Trademark office has granted each of them. One of the patents has already been invalidated. The remaining five are still under review.

The patent appeals are part of the EFF's Patent Busting Project, which seeks to challenge patents it believes chill innovation by restricting the use of technologies that are already part of the public domain.

Jungleib strongly contests the EFF's contentions that the technology at the heart of the patent 5,886,274 was already broadly in use. He says it involves a method for compressing synthesized sounds into a tiny package and reproducing them in real time on electronic devices, an approach few were taking in the early 1990s, when he invented it.

"Nobody's going to take it away from us," he said. "I stood up to Microsoft. I can take the EFF pretty easily." ®