Putting the YogaGlo Patent Controversy in Context. ~ Josh Lovison

Via Josh Lovisonon Oct 1, 2013

Yoga Patent

So I’ve recently seen a lot of upset yogis and comments discussing the YogaGlo patent application and the cease and desist letter sent out.

But a lot of people don’t really understand the patent system, and some of the legal and business nuances in what’s going on. So having myself gone through two patent applications, having a startup business, and having worked as a new media analyst for over seven years (including on media startups), I thought I’d add a bit of much needed context.

Patents in general.

First off, patents suck. I think the YogaGlo creators would be with me on this statement, as would most startup founders. Our current patent system is weighted far more heavily in the interests of larger businesses than inventors, and is getting exponentially out of control.

If you are upset about the YogaGlo patent application, the most important thing you can do is call up your representatives and highlight the ridiculousness of patents for software or design where the cost to file is greater than the cost to invent.

Because here’s the hard truth: while patents suck, they are a necessary evil in the current startup world. Patents are important in terms of how investors value a company, and in being used defensively against patent trolls or competitors that try to extort a settlement payment by threat of expensive lawsuits.

YogaGlo’s patent application.

So taking a look at YogaGlo’s patent application, one thing is blatantly clear: the claims are extremely broad.

In order to be patentable, there are a number of requirements, but the two key ones are:

It has to be new (i.e. no “prior art”).

It had to be non-obvious (i.e. someone in the field wouldn’t have thought it up the exact same way).

The claims as they currently stand fail on both counts. Almost any yoga class I’ve seen filmed would exist as prior art and invalidate the base claims (#1 & #8). And the only part that is potentially non-obvious is the bit about widening the mat “gap” as it gets closer to the camera.

But here’s the key thing to keep in mind: They’re supposed to be extremely broad at this stage.

One of the popular ways a patent attorney will put together a patent application is to start as broad as possible, expect an initial rejection, and then try to narrow the scope until it’s acceptable to the USPTO. The value of the patent diminishes dramatically the more narrow it is, so this approach allows for a broad but strong patent (as it’s been reworked based on examination and not preemptively).

YogaGlo’s patent application hasn’t even been reviewed yet by the USPTO, so it has yet to be rejected and further narrowed. So calm down—there’s about 0% chance that the patent as currently written ends up being approved.

And if you look at the “description of the invention” section, there’s actually a lot of non-obvious detail that they’ll likely pull from in narrowing those claims substantially (such as studio construction, etc).

YogaGlo’s Cease & Desist Letter.

So the initial provisional patent was submitted in 2010. Why is everyone getting upset now? Because YogaGlo just sent out a cease & desist letter to a competitor. At first glance, this is an aggressive action trying to shut down their competition. But let’s look a bit closer.

So a cease & desist letter before a patent is approved is 100 percent unenforceable. So doing this only makes sense in two instances.

1. Sending a C&D after a patent application is published sets an intial “on notice” date, that, after the patent IS approved, the patent holder can seek back damages for. (Essentially, YogaGlo could try to get more money in a lawsuit if their patent is approved and people kept streaming infringing classes).

However—it is really important to realize that this is only enforceable if the patent is approved as it exists when the C&D is sent out. If the claims are changed at all, the ability to get back damages is negated, as the final approved patent is different. And as we saw above, there’s a 0% chance the patent will be approved as is, so this would be a terrible strategy on the part of YogaGlo, and probably not the reason the C&D was sent out.

2. By showing potential infringement (such as by pursuing a case by starting a C&D), a patent application can be given a priority hearing (for added cost). Since no one at the USPTO has even given the YogaGlo patent application a first glance, trying to demonstrate that there are people doing the same thing as in the patent will allow YogaGlo to speed up the process.

So what’s probably really going on?

It’s all about YogaGlo’s valuation. They are likely either courting a buyout, or perhaps more likely, looking to raise a substantial VC funding round.

If they have an approved patent, they’ll be able to get a lot more money for less equity. If YogaGlo has a larger pot to spend from in expanding, that means more yoga for everybody. And unlike a trademark, where there is a legal obligation to enforce, they don’t need to sue anybody at all once they have the patent (and likely shouldn’t—even a narrowed patent runs a major risk of surviving through a lawsuit, where there is substantial incentive to invalidate).

This also explains why there hasn’t been a more transparent response by YogaGlo in the wake of this PR quagmire they can’t exactly disclose they are in talks for acquisition or funding without risking the deal entirely, and upsetting— their partner even if they manage to salvage.

So what should you do?

Wait and see how things play out. If YogaGlo goes around suing everyone that has ever put a yoga video online, by all means boycott like crazy. But the actions so far don’t indicate anything but a normative action by any startup company, and I very much doubt they will ever end up in an actual lawsuit or real attempts to shut down competition by relying on dubious intellectual property.

And keep in mind—if you have an iPhone, iPad, or other Apple product, and are deciding to boycott YogaGlo for trying to patent, there’s a great deal of hypocrisy at hand. Apple patented a “rectangle with round corners,” tried to argue that a touchscreen tap was a “zero length swipe,” and is one of the most lawsuit-happy patent holders out there today.

YogaGlo is a new media & tech startup. While yes, it is about yoga, we shouldn’t be trying to handicap yoga-related companies as compared to non-yoga related companies. The rules of running a business don’t magically change once it’s about yoga, and YogaGlo is no exception. They still have to pay taxes, have to deal with non-yoga tech patent trolls, raise funding to grow, create partnerships, etc.

They’ve created a great product so far, have the largest distribution of a yoga streaming resource that I know of, and have done so all while keeping costs down and providing free classes here in Los Angeles with some of the best teachers I’ve taken with.

Let’s see how things play out before grabbing our pitchforks and building our pyres. (And really, I’d hope that as a community of yogis we’d be less prone to those actions anyways).

Like elephant yoga on Facebook.

Assistant Ed: Judith Andersson/Ed: Bryonie Wise

About Josh Lovison

Josh Lovison is currently the founder and president of SnugNote, a service that let’s people know their loved ones are safe. Previously, Josh was the lead digital strategist for the IPG Emerging Media Lab’s mobile and gaming practices, where he worked with several hundred brands and their agencies within the Interpublic Group network of companies. He’s advised corporations within every business vertical, both domestic and international, on the implications of an ever-changing digital world. Clients Josh has worked with include: Microsoft, SONY, GM, Kia, Johnson & Johnson, General Mills, Unilever, and Best Western.

In addition to his client work, Josh has met with and advised major vendors, including Facebook, EA, LinkedIn, AOL, Google, and Microsoft, where he was one of the sixteen steering committee members of the Microsoft Game Advertising Advisory Council. He also frequently writes for and is quoted in various trade publications including AdAge, MediaPost, iMedia, and the New York Post.

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13 Responses to “Putting the YogaGlo Patent Controversy in Context. ~ Josh Lovison”

  1. Michael Denvir says:

    Thank you, Josh.

    Just a few points in response. 1) Apple is sued and being sued by huge corporations who also hold patents, so it is not really the same thing as cease and desist letters sent to small non-profits and mom and pop shops. 2) Apple actually invented *a lot* of things and they got patents for them, some of the patents were broad and didn't hold up in litigation, but some were valid. Yogaglo's does not appear to have a chance. 3) Much of Apple's broadest IP is in design patents and trade dress, different than the utility patent sought by YG. Different law applies to that IP — those design and dress features must be non-utilitarian, ornamental. YG, on the other hand is trying to patent a method. 4) You're right, the patent app is extremely broad and obvious, and Yogaglo is likely trying to get some sort of valuation or to cash in on a plan it has had at least since August 2010, but that doesn't make it ok to send threatening letters to other yogis who are just trying to practice and spread their practice. 5) I get your point about YG eventually narrowing its claim, but any utility patent on how people are permitted to stream yoga over the internet would be great violence to yoga. I can't think of any narrow, functional patent in YG's claims that would not prevent others from something basic. Remember, design and trade dress are different areas of IP. 6) Finally, from what I understand of patent law, Yogaglo is unlikely to be granted any patent because they filed for a provisional patent well over a year after they first showed it to the public.

    I'm a yoga student and lawyer who really enjoys Yogaglo on my Roku, so I feel very twisted up about this. Yoga companies should. I think, represent something better than the coarsest, most avaricious aspects of the marketplace. Yogaglo has really disappointed on that score. But more than that, I think they are just really wrong on the law here, on many levels.

    In any case, thanks very much for your clear analysis of the patent claim. I disagree that yogis shouldn't freak out about this, but I'm glad we are having the conversation.

    • Gayle says:

      Thank you Michael for a very intelligent answer with a different perspective. I am learning a lot from these conversations.

      I am upset about YogaGlo because I really like them. But at the same time in the spirit of yoga their patent seems out of line.

      Both you and Josh have given me food for thought.

  2. Josh Lovison says:

    Michael,

    Good and well written points. A few counter-arguments, matched to your numbers.

    (1) Yes, Apple is suing other companies that hold patents. A couple of points here though.

    (1a) Yogaglo hasn't yet actually sued anyone.

    (1b) You make it seem like Apple is huge but everyone in yoga is small — according to some Yoga Journal research the US yoga market is currently a $2.9 billion market and growing. Even if many in yoga today are small businesses, with that kind of market capitalization behind it, it won't stay that way.

    (1c) Further, Yogaglo is hardly the only one out there with a patent application for things related to yoga — so again, given current pacing of things, there will be a lot of patents related to yoga for everyone to sue each other over soon, and as such, a company pursuing a defensive patent is sound business sense. See some of the patents for yourself: https://www.google.com/?tbm=pts#q=yoga&safe=o

    (2) If you look at the "description of the invention" in the Yogaglo patent (and what would have been initially submitted in the provisional application – as that is submitted sans claims), it's actually quite specific and shows a good deal of "invention" or at least, "thoughtful production choices" relating to the filming of yoga classes for streaming. So I'm not sure the extent to which their work can be discounted as not novel in the least.

    For example, in 3 minutes I found the following granted patent for a video setup for videoing activity sports: https://www.google.com/patents/US8451333

    If Yogaglo were to include some of the specifics of their description into their claims, they could potentially reach a specificity near the aforementioned granted patent, that was determined by the USPTO to be both non-obvious and novel.

    (3) The swipe patent was a utility patent. While rectangle with rounded corners was indeed design, Apple (and every single other company ever submitting a patent) submitted rather broad claims on utility patents too (many of which were granted despite questionable non-obviousness — but again, I loathe the patent system).

    (4) If you're trying to expand and be a "real" company, and an important part of that expansion is trying to increase your valuation, but if the USPTO is backlogged and taking forever, the bad karma of an aggressive C&D might just be a necessary evil in fulfilling your presumed dharma of bringing yoga to the masses. (Small tangent) — most of the popular, modern, western yoga classes are extremely focused on asana, nearly exclusively. This contradicts most of the classical views of what yoga represents and how it should be taught, but I have a hard time seeing over 7% of the US population (current yoga reach) spending a few years at an ashram. The expansion of yoga has always come with compromise. If it's going to grow to the next stage, it's going to have to deal with western business strategy and IP legality.

    (5) Again — the description section has some good stuff. For example, I see no reason why Yogaglo shouldn't be able to patent say, filming a yoga class with a remote camera setup directly connected to an editing bay where the teacher is in front of an at least a 18 ft' high white wall and facing the class who have their backs to the camera. That's pretty darn specific, they were the first ones I've seen doing it that way, and it would be accurately protecting the novel and non-obvious aesthetic and setup. But I'd agree they need to add in considerable specifics from the description, as mentioned in the original article.

    (6) Yep, this is quite likely. I suspect their salvaging chance on this point is if they can narrow down to include some aspect of the production that would have not been known by a skilled practitioner of the art in viewing the videos. But I have a hard time seeing this patent granted. For me the red flag from a patentability standpoint — besides the broad claims — was the lack of citation of past granted patents from 3rd parties being improved upon, which would have indicated a search was conducted and that there was a history of similar but substantially different patents having been approved by the USPTO.

    Finally, I have to disagree that Yogaglo is "representing the coarsest, most avaricious aspects of the marketplace." Until they file a suit against a competitor, I see all these proceedings as simple startup maneuvering. If they were to actually take the Apple route and try to compete not by improving the product, but by trying to flex their IP catalog, they'd lose me as a customer (as Apple did two years ago). But I really don't see that as what's going on here.

    And I value your comment and the further conversation — as one of my favorite yoga philosophy teachers (Douglas Brooks) says, "It's not about finding the answer so much as it's about improving the question." And your comment helped me refine my questions!

    • Gayle says:

      Awesome Michael. I am enjoying this conversation. And no one is throwing stones. It is done with respect and a lot of thought.

      Thank you

  3. Michelle ibbetson says:

    Hi Josh

    I think you will find reasoned debate requires dialogue and transparency of which there has been none. And yes you are right regarding capttal raising as detailed on Gregory Frenchs Linkedin profile – yogaglo are in bed with Epic Records whose parent company are Sony Entertainment. Who as we know are keen on keeping closed systems and are partial to litigation. Transparency is important so people can make informed choices…yes and ask the right questions.

    • Josh Lovison says:

      Hi Michelle,

      A couple of things.

      (1) Epic Records is owned by Sony Music Entertainment, which is a sub-division of Sony Entertainment. And Sony treats most of its various entities as extremely separate — so unless Yogaglo is partnering on some sort of music-related level, that's an unlikely partnership. The connection seems to be in reference to French's http://www.yogi-tunes.com/ — not Yogaglo.

      (2) If Yogaglo were to be acquired by Sony Entertainment (the parent company), that would be AMAZING for yogis everywhere. Are you kidding me? This would guarantee YogaGlo's content on pretty much every device possible with excellent visibility and positioning. Global distribution of extremely high quality classes is a very good thing. You'd see classes available on cable boxes, built into brand new 'smart' TVs, mobile phones, 3rd party distribution networks. Imagine how Netflix currently seems to be everywhere and available on every device. You're saying it'd be a bad thing for streaming yoga classes to be as prevalent?

      (3) Yes, transparency is great — when it's possible. But if you're working on formulating an acquisition deal with a partner or fundraising round with a VC, I can guarantee that you've signed NDAs relating to that acquisition or funding. So Yogaglo literally cannot legally be open and transparent about what's going on if that's what's happening. The best they can do is what they've done — pleaded with the community to trust them. And given that until now they've never done anything to indicate less than a completely honorable and fair approach to their business, I don't have a problem doing so. If they actually sue anyone, that trust ceases to exist, but what they've done so far, from the perspective of someone well-versed in startup businesses, is more indicative of the phrase "bark without bite".

      How many people has Yogaglo introduced top notch instructors to so far? Was that a good thing? How many more people could Yogaglo introduce those classes and instructors to if they partner with a media conglomerate, or get investing from a major VC? Do you really want them avoiding the necessary steps to do so, and leave the space for a Viacom/Crunch Gym partnership instead? Mass-market yoga streaming is going to happen — I'd rather see it happen with quality teachers and a startup from the community than entirely from outside corporations.

      • michelle ibbetson says:

        Hi josh
        I believe you are misinformed – Gregory French is a Founding partner and head of strategy and structure online media for YogaGlo (from 2009 – present, detailed on his Linkedin profile and elsewhere.
        http://www.bestwork.biz/gregory-french
        The GM & CFO of Epic Records states of Gregory …"his communication of YogaGlo's strategic intent, business and revenue models, expectations of the relationship and how we would achieve success was clear and comprehensive. He was willing to understand my concerns and needs and able to design a contract that was fair and representative of the working relationship we agreed."
        I am confused as to how you are bringing clarity to the context of the patent issue. As cease and desist patent pending carries as much weight and threat. And therefore i would not see an alliance in any form with the likes of Sony/Epic as a positive alliance.

  4. Michael Denvir says:

    Josh, I don't see how you can think that sending a cease and desist letter to a competitor is not aggressive legal action It is a threat to sue. So this may be typical "startup maneuvering" on one end, but on the other, it is a prohibition on streaming a typical yoga class setup. The only thing "specific" about your patent in #5 is the white wall "at least 18' high" requirement (which is not very specific), but that is not really the functional element, is it? Even if it were functional, should YG have a monopoly on white walls? The rest is the position of the class and the camera. However specifically that is described, it still comes down taping and streaming a very typical yoga class setup from the back or center of the room. I haven't seen the HI vids in question, but I doubt they looked *exactly* like YG's vids. Even YG's vids don't all look the same. So it is likely not so specific, at least as I view that word. If it did indeed come down to specifics, such a wood floor or white wall, those would be aesthetic things and wouldn't really fall under a utility patent, which is tied to the functional elements.

    I appreciate that you come from a different perspective than me, as an entrepreneur and startup expert. In your experience, it is completely understandable that YG would take these actions because (we assume) it is trying to raise money. But I think you are minimizing the impact of YG's actions (that we know about). They are claiming the exclusive right to broadcast yoga in this manner and are threatening to sue those others. That is a big deal. One more note, I need to get up and practice and get out the door :) You seem to argue an exclusive patent is the price yoga must pay to grow. I think the case is entirely the opposite. Patents like this would restrict the growth and spread of yoga — in the purer sense of the word, yes, but even on the level of simple asana practice.

    Thanks for your thoughtful comments on mine. Have a great day.

  5. Michael Denvir says:

    Please excuse my typos, and thank you for not pointing them out :) There is no edit button and the comments often take a long time to post.

    Thank you for your comments too. While a bit distressing, this whole larger YG kerfuffle has been valuable to me as well because it prompted me to think more deeply about what "yoga" means to me. I have a better idea of what direction to take my personal practice from this point out. All the best.

  6. Josh Lovison says:

    Michael,

    I hope you had a good practice, and have had a good day so far.

    To clarify, I'm not saying that patents are the price yoga must pay to grow. I'm saying that patents are an unavoidable result of that growth.

    Where is the outrage toward Lululemon for their patent applications, such as this one for a dual-layer yoga mat:
    https://www.google.com/patents/WO2013097033A1

    In fact, the very first US patent I could find relating to yoga was filed as far back at 1977:
    http://www.google.com/patents/US4307880

    Patents in any multi-billion dollar industry are an inevitability. Yogaglo is the first company working on securing a patent in the yoga streaming space purely on virtue of having been the first mover in that space. I can guarantee that in 3-5 years time, you'll be seeing Viacom, Disney, or Comcast submitting applications relating to yoga (and more generally exercise) video streaming.

    If companies created by yoga practitioners eschew the tactics and strategies employed by larger businesses, they'll find the market seized away from them by larger conglomerates that see the growing space as an area to expand into. We can't have our cake and eat it too. We have the option of seeing the fledgling startups from within our community become corporations unto themselves, or seeing 3rd party corporations step in and override them.

    And as for the C&D, I'm still convinced it's a bark without bite. It's completely insane, unenforceable, and without any merit if taken at face value. There has to be another explanation that can't be disclosed just yet because of ongoing negotiations. If Yogaglo actually files a suit against a competitor, then and only then will they recieve my ire.

  7. Tracy M says:

    First thank you Josh for your insights into this. It definitely seems there is more than meets the eye.

    Weighing in on the comments and also original note, I think what Michael is driving at is that it doesnt feel completely right for Yogaglo to be leveraging their pending patent in an effort to increase their own valuation when you know most of their targets are small teachers and studios who lack the knowledge and finances to push back or even question the legal notices they are receiving. I think people are sad to see yoga going in this direction — sure, the big corporations can always swallow the small guys, but should they?

    Also, I dont think anyone's upset with other yoga patents because they are typically novel concepts. Like a new 55-layer yoga block that also becomes a blanket and pillow. You invented something, you patent it. Own it, it's yours. Plus, it's just a prop. In it's current state, the Yogaglo patent applies to the actual dissemination of the teachings themselves. That's entirely different than patenting a prop. Plus, it's is so extremely broad that it applies to everyone. Sure, the patent might be altered, changed, amended, etc, but what if it gets through as-is (or even only slightly amended)? It would change everything.

  8. jessieinspace says:

    thanks for clarifying this all for me josh!

  9. David says:

    Well said. Though personally, I hold the yoga professionals that I choose to connect with to a much higher standard in the yoga / business balance. This YogaGlo patent thing just shows where their priorities are.

    If any company, like YogaGlo, is more about the 'more' of it (more money, subscribers, content) than anything else. I believe the Yoga will suffer ultimately.

    BTW, Have you seen this? A YogaGlo business plan chart, pretty cool. http://noyogaglo.wix.com/nogoyogaglo

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