Burst Gains Ground for its Patent Validity in Court Battle with Apple

A California judge last week released her rulings in the Markman phase of Apple's lawsuit Burst.com, and in almost every instance ruled in favor of Burst, strengthening both the validity of Burst’s claims, and the likelihood that it will prevail in its countersuit against Apple. While the judge did note that several of Apple’s claims could be brought forth at a later stage of litigation, it is unlikely Apple will pursue the matter further, unless Burst’s licensing or settlement terms are just too onerous.

A few years ago, Burst.com made news by staring down Microsoft after the smaller company sued the large software company for infringing its patents. During the suit, Burst claimed that the "burst mode" technologies in Windows Media 9 were the result of Burst’s visits to Microsoft for licensing negotiations.

Around the same time, Burst had negotiated with Apple regarding the use of the technology in Apple’s QuickTime players. Essentially, Burst claims that its technology let it deliver content faster than real time, using the extra bandwidth that may be available due to a consumer’s larger data pipe or the sporadic way in which codecs encode and then deliver content—most streaming codecs don’t try to push more content down the data pipe than is needed at any given moment, which causes hiccups, stutters, pauses, glitches (or whatever one wants to call the delays)—when the codec needs to use the full data pipe for a particularly complex scene.

At some point in the process of negotiating with Apple for a license, talks broke down and Apple filed a suit to invalidate Burst’s four patents on which the "burst mode" technology is based. Burst countersued and, as the two companies are based in the Silicon Valley area, the cases went to the United States District Court in Northern California

Apple’s suit involved invalidation on the grounds of obviousness, which meant that Apple would need to prove that either prior art existed (e.g., someone had done this type of work before the patent was filed) or that the patents themselves were based on false pretenses. In this case, Apple took both approaches.

The Markman phase of a court case is often—at best—an effort that only an entomologist could love. In this particular case, Apple and Burst agreed that the dispute centered around fourteen claim terms—words or phrases whose meaning could potentially invalidate the patent. According to the brief published by judge Marilyn Hall Patel, "although the parties disagree as to the number of terms to be construed, this dispute boils down to sixteen specific terms which are used in various contexts throughout the patents."

Those terms are a mini encylopedia of the streaming media industry, containing such words as transmission, editing, and audio/video source information. The ruling explains that, in a patent dispute case like this, there are four key ways to judge terms: the specification of the patent ("the single best guide to the meaning of a disputed term" according to the ruling); dictionaries; other case law; and treatises. Additionally, and key to the disputed terms, the court "must conduct this inquiry not from the perspective of a lay observer, but rather ‘from the standpoint of a person of ordinary skill in the relevant art’." The ruling goes so far as to note that the specifications can create new meanings for the words, essentially allowing the patent writer/inventor to be his or her own lexicographer.