SM J. Andrew McKinney, Jr. 2016 JAM, LLC ALMA INTERNATIONAL Symposium & Expo 2016 Patent Survey, Loudspeakers, Transducers, Standards and High Resolution Audio This paper and program will touch on: Recently issued patents and published patent applications focusing on new approaches to making High Resolution Audio (HRA) available to listeners, Spotting HRA Patent, Trade Secret, and Copyright issues, and Tips on Managing HRA/Loudspeaker Patents, Trade Secrets, & Copyrights What, specifically, is High Resolution Audio? HRA and the related term Hi-Res music are typically used to describe high resolution digital audio formats. The RIAA (including Sony Music Entertainment, Universal Music Group and Warner Music Group) now wants to protect a logo which includes Hi-Res music, so youll have to be careful about how you use the phrase Hi-Res Music in your marketing. According to the RIAA, the logo will identify certain goods, specifically, high resolution recordings that are available from digital music retailers in the US, Canada, and Europe for commercial downloads or streaming. High Resolution Music is thus officially defined as "lossless audio capable of reproducing the full spectrum of sound from recordings which have been mastered from better than CD quality (48 kHz/20-bit or higher) music sources that represent what the artists, producers and engineers originally intended. Hi Res Audio Loudspeaker Standards: A Bridge To Build Or A Bridge Too Far (for ALMA)? At present, there is no manufacturer who markets their products with the term adequate resolution. If the term resolution is used to describe a loudspeaker product (any product), it is characterized as Hi-Res, or some variant. What would be an appropriate standard for a High Resolution single channel passive or active loudspeaker system? For that matter, what would be an appropriate standard for a High Resolution loudspeaker driver (e.g., tweeter), or a motor structure, diaphragm, or suspension, etc? Similarly, who provides industry standard High Resolution test signals and testing procedures? Standards Opportunity for ALMA Intl! ALMA International is ideally well suited to codify standards defining High Resolution for Loudspeakers, and so probably should become a Standard Setting Organization (SSO), but there are traps for the unwary. If ALMA International does codify HRA loudspeaker standards, then the participating authors on the Standards Committee must be sensitive to patent issues (aka, Standard Essential Patent(s) (SEPs) and requirements for FRAND). Wait, FRAND? FRAND generally defined as a requirement that SSO members (e.g., ALMA members who obtain SEPs on testing to meet ALMAs HRA standards) MUST license SEPs on Fair, Reasonable, and Non-Discriminatory terms to other members of the SSO and, very often, non-members who use the standard. From a policy perspective, a FRAND requirement is likely to help hasten widespread use of the standard and permits each SEP owner to benefit from use of their patent without gaining an unfair bargaining advantage. FRAND! Once an ALMA HRA standard is adopted, the owner of an included SEP would have a superior bargaining position that can be used to extract outsized revenues from others based solely on the value of the standard (rather than the underlying Patent). For this reason, ALMA (as HRA SSO) should avoid establishing any standard around an SEP if the SEP owner refuses to license it in advance because that Patents value is a function of the ALMA standards level of adoption. ALMA HRA standards committee participants should also agree in advance to either (a) license any IP they own which may be implicated under pre-set terms, or (b) agree to avoid perfecting rights in anything which might become essential to the ALMA HRA standard or related test procedures. Patents and new(ish) strategies The AIA, Business Method Patents, Derived Patents. Patent Infringement Liability concerns and Secret Prior Use art NDAs, Patent Licensing, New AIA Issues and Strategies PATENT LAW, Generally What it protects: Patent Law protects new, unobvious and useful inventions and discoveries such as machines, manufacturing processes, chemical/material compositions, and, more recently, computer software and methods for doing business, as well as ornamental designs for manufactured articles. It is important to note that the granting of a patent does not grant a right to make, use or sell ones own patented invention, since one may obtain patent protection on an invention which infringes anothers patent. Old School Driver Motor patent What makes a Loudspeaker suitable for Hi Res Audio? Is it a new driver configuration? Is it a new configuration for multi-driver systems when used in a particular room? Is it a new way of integrating signal processing, amplifiers and transducers into a product intended for use by a discerning listener engaged in a particular listening activity? New Driver Configurations MEMS (MicroElectrical-Mechanical System) transducers have been used for sensors including microphones since the early 1990s. Since microphones are electro- mechanical transducers, what are the possibilities for arrays of silicon wafers which operate as loudspeakers? Micromechanical Digital Loudspeaker, Claim 1 1. A digital loudspeaker comprising: a substrate; a first stator fixed with respect to the substrate; a second stator fixed with respect to the substrate and spaced at a distance from the first stator; and a membrane between the first stator and the second stator and displaceable between a first position in which the membrane mechanically contacts the first stator and a second position in which the membrane mechanically contacts the second stator, wherein the first stator and the second stator are arranged to electrostatically move the membrane between a rest position spaced apart from the first position and the second position and the first position and the second position, and wherein at least one of the first stator and the second stator comprises at least one elevation protruding from a surface thereof facing the membrane, wherein the membrane mechanically contacts the first stator and the second stator substantially at the elevation, or wherein the membrane comprises at least one elevation protruding from a membrane surface in a direction of at least one of the first stator and the second stator. High Resolution Audio System Patents HRA is generally defined in terms of digital audio coding, processing and decoding. As a result, HRA systems (e.g. the PonoPlayer) are usually described as High Resolution because they employ (a) high quality digital and analog signal processing AND (b) present songs "as they first sound during studio recording sessions", using "high-resolution" 24-bit 192 kHz audio instead of "the compressed audio inferiority that MP3s offer. The HRA digital format also provides greater word length and sampling frequency than the Red Book standard for CD (16-bit 44.1kHz). So, is HRA really about Software and DSP? Is there an App for that? US Patent 8,923,996 Neil Young (et al) and PONO PONO patent, Claim 1 1. A high-resolution music system, comprising: a high-resolution audio or video file in its original format, an executable application that is compatible with the high-resolution audio or video file, and a handheld device that has stored on it both the high-resolution audio or video file and the executable application, wherein the device comprises at least one speaker, at least one control system, at least one headphone or earbud port or a combination thereof; wherein the application is configured to: a) permit a user to subscribe to live events available from an artist, wherein the subscription includes-- a live feed only option that provides transmission but not download for storage on the handheld device of high-resolution audio or video files, and a live feed plus download option that provides transmission and download for storage on the handheld device high-resolution audio or video files, and b) permit the user to subscribe to a live feed with download and edit, which provides transmission and download for storage on the handheld device high-resolution audio or video files, and wherein the user can review the audio or video files when they come into the handheld device, edit out certain portions, and forward the edited portions to other users to view or listen to on the other users' portable devices. If Hi-Res audio loudspeaker systems MUST meet tougher specifications, what should be required? For multi-driver systems, will a minimum acceptable resolution from nonlinearities (e.g., from mismatched Group Delay, in multi-driver loudspeakers) be specified, if so, how? What will be the acceptable Group Delay inequality in a two-way (woofer, tweeter) system and how will that be measured? How will temporal resolution and accuracy of delay equalization be measured? Active Loudspeaker Resolution Issues Modern loudspeaker systems often include a plurality of drivers with matched amplifiers and both active and crossover circuits Digital Signal Processing (DSP) is often used to voice these loudspeaker systems, and the designer has many options for fine tuning the sound generated by each driver, and the system as a whole. Many loudspeaker products use psychoacoustic principals and research on Listener responses to create desirable sound reproduction. How does High Resolution fit into this Loudspeaker development process? GROUP DELAY CORRECTION IN ACOUSTIC TRANSDUCER SYSTEMS Claim 1: 1. A method for equalising the overall group delay in the response of an acoustic transducer system having a crossover between a lower-frequency range and a higher-frequency range, the method comprising the steps of: applying correction to a signal in the lower-frequency range, including the crossover region, to substantially equalise the group delay for the lower- frequency range; and, applying a signal delay to a signal in the higher-frequency range to bring it into closer alignment with the equalised lower-frequency range signal. The America Invents Act (AIA) The AIA of 2013 includes enormous changes in US Patent Law. The AIAs changes served to Harmonize American Patent Law with the Patent Law of other countries. One Significant Change: First to File replaces our former system and emphasizes filing patent applications early and often, if at all. AIA & New Patent Strategies The First to File standard emphasizes speed and punishes the tardy with increased risks relating to an ever growing body of applicable Prior Art. Trade Secrets and Copyright become more important, and must be considered early in the Invention evaluation process. Many Inventions now include some form of method practiced using computer software (e.g., for DSP algorithms used in signal processing, etc.) Invention Disclosure Format A new, more complete Invention Disclosure Form should gather information needed to evaluate all protectable aspects of a New Development, Process or Invention. The Disclosure should be evaluated early to identify: Proprietary Confidential Information to be protected as Trade Secret, Inventions which may be protected with a Patent Application Filing, and Works (e.g., HRA signal processing algorithms, automatic audio test software or embedded DSP code) which may be protected with Copyright. The AIA, What changed? USPTO plays much greater system-wide role; 3rd party input in an application may arise pre and post issuance (think about Offense & Defense); Owner (Assignee) can file without inventor; Faster examination possible; First to File means this becomes a Race to the Patent Office (and/or publication); Costs (USPTO Fees) change (some increase); and We now have Secret Prior Art (as a defense) and must anticipate Derived Patent issues. The AIA is now fully in effect, so what? US or PCT applications claiming priority to applications filed before March 16, 2013 are handled under the old first-to-invent system. U.S. applications filed on or after March 16, 2013 and claiming priority to any application filed before March 16, 2013 (i.e. a continuation, divisional, U.S. national stage, or a non-provisional claiming benefit of a provisional application or a foreign application) will still be subject to the first-to-invent system, so long as no claimed invention requires support of subject matter added to the application on or after March 16, Hopefully, the application having priority is very complete and detailed, so it complies with U.S. requirements for enabling disclosure. Any new matter disclosure added to an application claiming an earlier priority and filed on or after March 16, 2013, will convert the application and any of its progeny applications to a first-to-file application, if the added disclosure is required to support any claim in the application (because such a claim would then have an effective filing date after 3/16/13), and thus be subject to ADDITIONAL PRIOR ART. The AIA is now fully in effect, so what? Now (and since March 16, 2013), remember that SPEED COUNTS, meaning youll have to collect very complete invention disclosures EARLY, evaluate the inventions and then file complete patent applications as quickly as possible. The AIA now allows a Prior Use defense (35 USC 273) in a patent infringement action, and the defendant can introduce evidence of internal (previously secret) prior use of a claimed method or structure. Secret Prior Art should be accumulated in key technology areas. The AIA is now in effect, so what? A strategy using a series of follow-on provisional applications will allow you to preserve rights and react to new developments as they arise, this means: (a) Consider filing provisional applications on all invention disclosures and ensure that invention disclosures are as complete as possible, i.e., include adequate written description with drawings or photos to make sure you have an enabling disclosure. Use our latest Invention Disclosure Form to help ensure completeness, AND (b) Consider filing serial follow-on provisional applications to build scope and strength, each being as complete as possible including adequate written description and enabling disclosure. Each follow-on Provisional becomes (a) part of your catalog of Secret Prior Use art AND (b) an option for a defense in a Derived Patent action filed by another (35 USC 291(a)). The AIA is now fully in effect, so what? Now is the time to Develop (or update) your Trade Secret policies and procedures, and publish them company-wide. (More on Trade Secrets below) The first Question when deciding whether to Rely on Patent protection or Trade Secret Protection: Is this new development/Invention Self-Disclosing? If new development is non-self-disclosing and properly protectable as a trade secret, it may be preferable to keep that development secret and not file a patent application. However The AIA is now in effect, so what? Filing a US provisional application may prove to be an ideal way for smaller companies to warehouse new developments or invention disclosures in the USPTO for defensive (Prior Use) proof, and they remain secret, because un-converted provisional applications are not published by the USPTO. Unless a provisional application is converted (i.e., a later filed non- provisional application claiming priority is filed), the provisional application is secreted in the USPTOs electronic (PAIR) records indefinitely, and that may be the best way to preserve your (or your clients) secret prior art for later use as 35 USC 273 Prior Use evidence. Invention Disclosures and Procedures What to Do when someone comes up with something New The most Important thing is to do Something, as opposed to doing nothing, when unique or important developments arise. As time passes, rights may be lost, even if secrecy is maintained. Invention Disclosure Forms provide a useful framework to gather the needed information, but should not become an obstacle. A napkin or envelope can be used to create an enabling disclosure if need be, and your patent attorney will prompt (okay, Nag) you for the rest of the information. Invention Disclosures and Procedures when your Inventors/Developers come up with something New Information gathering Procedures including, for example, use of On-line (or Paper) Lab Notebooks can provide important evidence on the date of invention, and in certain cases that evidence can be critical. Development teams can use time stamped e- mail records to prove a date of invention. Consistent use of procedures makes for compelling evidence. Documentation counts. Invention Disclosures and Trade Secrets As noted above, we recommend that you evaluate every significant new development or invention for Patent or Trade Secret protection, start with a completed Invention Disclosure form. The legal definition of Trade Secret varies by State, so any policy/procedure must be effective in any state where employees, developers or inventors may be found. Most states use a version of the Uniform Trade Secrets Act (UTSA). TRADE SECRETS Trade Secret Law protects previously designated proprietary or confidential information that: (1) has independent economic value because (2) it is not publicly known and (3) is the subject of reasonable, ongoing efforts to safeguard secrecy. - Within an Organization Written Trade Secret Policies should be implemented and maintained. - Among Organizations who share - NDAs can be used to specify procedures for handling Trade Secrets and establish pre-approval procedures for Public Disclosure. TRADE SECRETS Trade Secret Policy and Procedures should include: (a) a system for obtaining prior written agreement from anyone who may develop or gain access to Company Trade Secrets (e.g., Employee/Contractor Agreements and NDAs) (b) a system for identifying and designating newly developed Company Trade Secrets (e.g., the New Development/Invention Disclosure form) (c) a system for controlling access to Company Trade Secrets. NDA Checklist (Post AIA) Archival rights on termination; backups, duty to destroy on termination (include derivatives of materials). What if there is a Dispute? It may be more important to show any later patent was not a "derived patent. Typical carve outs (prior knowledge, public material, receipt from another without a duty to keep secret, and independent development). Define more specifically "independent development" (to limit effect of uncertainty in scope of "derived patent"). Include Joint Development or Research Agreement clause? a.Will parties engage jointly in experimental, developmental or research work ? b.If so, Define field of claimed joint research (not too narrowly or broadly). NDA Checklist (continued) If not a JDA or JRA, specify scope/purpose; may include a specific statement that purpose does not include something (e.g., discovery, invention, testing or research in the field of loudspeakers or HRA). Derived patent clause (clarify meaning of use solely for purpose) Possible NDA clause: The Parties agree that absent a prior written amendment to this Agreement, neither Recipient shall make use of any of Disclosing Partys Confidential Information in connection with preparing or filing a US or foreign patent application, including any application that would constitute a "derived patent" as that term is (as of March 16, 2013) understood within the meaning of 35 USC 291(a), and each Recipient covenants not to file any patent application based on Confidential Information of the Disclosing Party including but not limited to a patent that constitutes a derived patent as described above. AND THEN Consider periodic USPTO online searching for issued patents and published applications (both assignee and inventor, if recipient individual is known). This is a good reason to require identification of each person who has or accesses confidential information in the NDA. NOW IS THE TIME TO RE-EXAMINE YOUR EXISTING NDAs Post AIA Novelty Trap, example 1 Post AIA Novelty, example 2 COPYRIGHT (because HRA involves signals and software) What it protects: Copyright law protects against copying of creative, original expression set down in a tangible medium, (for example, the image now projected). Protection is available for: Mode of expression of an idea, not the idea itself- thus protection is limited Example Audio Signal Processing computer program code but not the operational concept Text (instruction booklets, promotional materials, software code, etc.) Artwork (photographs, technical/CAD drawings, 3-D models, etc.) Sound Recordings MP3 Motion Picture files, Videos Computer Software, DSP files, content, etc. Start Here: Your New Developments & Copyright Two things: 1st - If a new Hi-Res signal processing method, process, method or product configuration is embodied in computer software or HTML web page programming or content, the Developers should be encouraged to preserve Copyright by applying the following copyright notice to all existing or published copies of the work: [YEAR][Company Name], All Rights Reserved This copyright notice should be placed in the following locations: (a) HTML or Source Code: top, bottom and regularly throughout, (b) Title Screen, (c) Labels on tangible goods (e.g., CDs) and (d) Documentation, Users Manuals or Other Printed Materials. 2nd - If infringement by others is a risk, consider Registration Before or very soon after Publication (to preserve Statutory Damages). Thank you for your interest For further information, please contact : J. Andrew (Andy) McKinney, Jr. Telephone: