Judge Allows Broadcasters to Examine Aereo's Patents

The plaintiffs suing for copyright infringement want to find out why Aereo's patent applications state there is no simple way to access TV programming on digital devices.
Chet Kanojia

Over objections made by Aereo's lawyers, a New York magistrate judge is allowing TV broadcasters to spend an hour deposing Aereo CEO Chet Kanojia and CTO Joseph Lipowski over statements made in patent applications.

The Monday ruling comes as the parties continue the discovery process on the path to a trial expected next year. The broadcasters allege that Aereo is infringing their public performance rights by distributing TV programming to subscribers' digital devices. Aereo was successful in beating back a requested preliminary injunction, but the broadcasters believe they will be able to demonstrate copyright infringement if the case goes before a jury.

The broadcasters are looking to poke holes in Aereo's credibility and also to demonstrate the irreparable harm that a digital TV streamer represents to them.

In opposing a preliminary injunction, Aereo offered up experts who stated that its internet retransmission capability was not substantially different from what consumers could accomplish with off-the-shelf components. In Judge Alison Nathan's opinion denying a preliminary injunction, she wrote that the harm of Aereo's system for broadcasters wasn't imminent "given that other products are already available that can provide broadcast content to mobile devices contemporaneous with its initial broadcast."

But the broadcasters suggest -- and magistrate judge Henry Pitman agrees -- there might be a disconnect with statements made in Aereo's patent application.

The judge writes, "In their patent application, however, in an apparent effort to establish novelty, the inventors state that broadcast 'content is generally only available for display on a traditional television. There is generally no simple way for a user to have this content available to their other video-capable devices.' Although the two positions are not irreconcilable, there is a certain tension between them sufficient to warrant examination."

The judge shrugs off an objection over relevancy, saying the subject matter of the applications "appears to be closely related to the system Aereo is using" and could touch upon credibility and irreparable harm.

Judge Pitman also dismisses arguments made by Aereo's lawyers that there will be a risk of prejudice in disclosing the company's patent strategy and that it could harm the viability of those patents. He says it is "odd" that Aereo is claiming that to require inventors to answer questions about patents would potentially be used against Aereo later in interpreting the scope of claims during a patent litigation. A protective order and the fact that truth is "immutable" would be enough cover for Aereo.

Finally, Aereo tried and lost an argument that inventors can't be questioned about patent applications because they are the product of privileged  consultation with legal counsel. The judge says, however, that underlying facts communicated to counsel aren't protected, and that patent applicants are required by law to declare under penalty of perjury that he has made or authorized a patent application.

"Thus," the judge concludes, "a patent application is the inventor's own statement, not a privileged communication to counsel."

In another development on Monday, Fox and some other broadcasters also brought a new lawsuit against Aereo in Utah federal court.

E-mail: Eriq.Gardner@THR.com

Twitter: @eriqgardner