Electronic Frontier Foundation has had (another) “win” in its online patent busting project.  This time, having the USPTO agree to re-examine a patent relating to the streaming of digital music, including over the Internet (US patent 5,886,274).

From most of the press coverage, you’d think that a patent over digital music distribution, even if filed in 1997, counts as yet another example of the patent system gone mad.  And you’d probably strike another black mark against so called “software patents”.  However, this particular patent is a bit more specific and a further examination reveals the heart of the issue being one of more controversy than merely identifying some relatively easily found prior art.  

The patent actually relates to the creation of music files, which combine encoded music instructions and instrument sounds, and playing those files from a storage location (which might be remote).

It’s true that the MIDI format (encoded music instructions) predates the patent and that updateable sound banks (instrument sounds, such as those appearing on classic samplers like the Akai S-1000 from the late 1980s) also predate the patent.  But the issue here, which the patent holder says has been settled in his favour by the likes of “Microsoft, Yamaha, and good portion of the cell phone industry”, relates to the combination of those elements into a single, streamable, file.  (Of course, settlement is a business decision, rarely a comment on the merits of the case alone, so don’t read too much into any settlement)

In the US, the most recent guidance on obviousness in combination patents comes from the KSR v Teleflex.  That case related to the addition of an adjustable vehicle control pedal to an electronic throttle control.  Both elements were previously known and subject of many previously granted patents.  On appeal, the Court confirmed the obvious (no pun intended!) – granting patent protection to advances that would occur in the ordinary course without real innovation isn’t really the object of the patent system.  The Court went on to explain that it was common sense that familiar items might have uses beyond their primary purpose, and a person of ordinary skill will often be able to fit prior art together like pieces of a jigsaw – and such combinations would fall into the “obvious” bucket.  Design requirements and market needs will often push an ordinarily skilled person to try different combinations of known methods.  If that process leads to success, it’s unlikely to be an invention but rather a dose of ordinary skill with a splash of common sense.

(For those who are interested, the position regarding obviousness in Australia is similar.  Invalidity will occur where the combination of known components was so obvious that it would at once occur to anyone acquainted with the subject, and desirous of accomplishing the end.  However Australia went further in 2001 and (by legislation) gave the ordinarily skilled person knowledge of the combination of relevant prior art (where reasonable), thus making obvious most combinations of matters of prior art within the relevant field.)

The end result has been that it is difficult to pass the obviousness test for combination patents.  In the current case, a desire to play music over the Internet in a bandwidth efficient way and to ensure that it sounded the same at the other end, may well have led a person of ordinary skill to combine the sound bank together with a MIDI file and stream it to the client.

It will be interesting to follow the results of the re-examination.

Photo credit: dusk photography