Jan 14 2009
Friskit On-Demand Media Patents Invalidated
Earlier this week, in a decision that could have implications for the many media and technology companies providing streaming and on-line subscription services, the Federal Circuit upheld a district court’s grant of summary judgment in favor of RealNetworks in a patent infringement suit brought by Friskit, Inc. The decision relied on the U.S. Supreme Court’s 2007 decision in KSR Int’l v. Teleflex, a case that substantially altered the framework to assess the patentability of inventions. (HHR filed amicus briefs on behalf of a number of large technology companies in KSR at the certiorari stage and at the merits stage. For a more detailed discussion of the KSR decision, here is an eAlert we prepared shortly after that decision was made.)
In this case, Friskit’s patents covered technology related to creating a playlist from an on-demand server and causing the songs on the playlist to be played back in sequence. Friskit claimed that Real’s multimedia player and subscription services infringed these patents. Real moved for summary judgment, asserting that Friskit’s patents were invalid because they were obvious. Real’s initial motion was denied, but following the Supreme Court’s intervening decision in KSR, Real renewed its motion and the district court granted it.
On appeal, the Federal Circuit affirmed the trial court’s decision that Friskit’s design would have been obvious to one skilled in the art. The court found that there were only insignificant differences between the prior art and Friskit’s design, given the advanced state of knowledge in the art at the time the patent applications were filed. As the court said, “All of the essential components of the claimed invention . . . pre-dated the patents-in-suit.”
While acknowledging that it did not invent streaming media, playlists or media players, Friskit claimed that its patents “deliver the glue to put existing technologies in a single application.” The Federal Circuit rejected this argument based on the Supreme Court’s holding in KSR that the predictable use of prior art elements according to their established functions is likely to be within the grasp of one of ordinary skill in the art. Since the prior art disclosed methods of “programmatic control”, and the benefits of network control of local processes were well known at the time of the invention, it was a “trivial” step to Friskit’s design.
The Federal Circuit also found that any evidence of secondary considerations too weak to rebut a finding of obviousness. The Federal Circuit discounted arguments of commercial success because Friskit did not show that the products’ success was attributable to a non-obvious subject matter. Additionally, copying by the accused infringer had little persuasive value in the absence of evidence of failed development efforts by the infringer. Finally, Friskit did not present any evidence that its design involved any “technical challenge to one of ordinary skill in the art once market forces had created a demand for integrated, streaming media services.”
KSR has led to wide-scale reexamination of the validity of issued patents, both in litigation and transactional contexts. The framework established by KSR raises the bar for those trying to enforce patents that do not substantially advance the technologies encompassed in the patents.
for Playlist
