ALMA INTERNATIONAL®
Symposium & Expo 2016
Patent Survey, Loudspeakers, Transducers, Standards and
High Resolution Audio
SM
J. Andrew McKinney, Jr.
© 2016 JAM, LLC
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 you’ll 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 Int’l!
 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 ALMA’s 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 Patent’s value is a function of the ALMA
standard’s 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 one’s own patented
invention, since one may obtain patent protection on an
invention which infringes another’s 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 electromechanical 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
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 lowerfrequency 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 AIA’s 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, 2013.
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 you’ll 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 nonprovisional application claiming priority is filed), the provisional
application is secreted in the USPTO’s electronic (“PAIR”) records
indefinitely, and that may be the best way to preserve your (or
your client’s) “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 email 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 Party’s 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:
WWW.COPYRIGHT.GOV
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, User’s 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: 410-518-6040
 E-Mail: andrew@jandrewmckinney.com