MindGeek, Playboy Score Victory In Transmission Patent Case

WASHINGTON, D.C.—Adult entertainment companies MindGeek SARL and Playboy Enterprises scored a victory in federal court today when the U.S. Court of Appeals for the Federal Circuit upheld a decision of the Patent Trial and Appeal Board (PTAB) invalidating part of a patent held by Skyy, Inc. which dealt with the transmission of audio and video files to mobile devices like cellphones and tablets. The reason? One of the terms used in Skyy's patent for its own method of sending high quality files to mobile devices implied that Skyy had created proprietary technology, which the courts have ruled to be "obvious" at the time the patent was issued and which therefore should not have been patentable.

"One of the key issues on appeal was whether the phrase 'wireless device means' in the patent was a so-called means-plus-function term," wrote Matthew Bultman on the Law360 website. "This was important because if it were, the term would have to be interpreted to cover the corresponding structure or materials that perform the function. If it were not, the term would be given its 'broadest reasonable' interpretation."

After the issuance of the patent in 2009, Skyy four years later sued several online audio/video providers including MindGeek and Playboy for infringement. Both companies later filed motions to dismiss the suits with the PTAB, claiming that even in 2009, Skyy's claims to have improved the content delivery system, including technology that was already obvious to technicians working in the field.

For its part, Skyy argued that "wireless device means" required multiple processors to send and/or receive a high-quality through compressed file, and therefore, the "means" of the challenged term inherently included the hardware needed to accomplish the transmission, and that that too should be protected by the issued patent. MindGeek and Playboy disputed that argument, noting that the clause in which the term appeared contained no description of the "function" needed to accomplish the transmission goal.

"Although the term uses the word ‘means’ and so triggers a presumption, the full term recites structure, not functionality; the claims do not recite a function or functions for the wireless device means to perform, and ‘wireless device’ is ‘used in common parlance ... to designate structure,’" the Federal Circuit stated in its decision. "Skyy’s arguments to the contrary are, in effect, an attempt to improperly import limitations from the written description into the claims."

Moreover, in its original decision, the PTAB had found that Skyy's claim that its technology was valid because "there wasn’t sufficient motivation to combine the cited references in order to arrive at the claimed invention" was unsupported, given the rapid advancement of such technology in all sectors of content transmission.

Attempts to reach the attorneys for MindGeek and Playboy who were involved in the victory were unsuccessful at press time.