Personal Audio, LLC v. Electronic Frontier Foundation, 2016-1123, 2017 U.S. App. LEXIS 14485 (Fed. Cir. Aug. 7, 2017) (Before Newman, Clevenger, and O’Malley, J.) (Opinion for the court, Newman, J.).
In an IPR brought by Electronic Frontier Foundation (EFF), Personal Audio appealed a Board determination that invalidated its patent for storing and distributing episodic media files. Personal Audio challenged the Board’s claim construction, but the Court affirmed the Board.
Before reaching the merits, the Court addressed whether EFF had standing to participate in the appeal in view of Consumer Watchdog v. Wisconsin Alumni Research Foundation. In that case, a non-profit organization representing the public interest did not have standing to appeal a PTAB decision, because it did not meet the Article III case-and-controversy requirement. Here, EFF’s non-profit status did not preclude it from participating, because EFF is not the appellant and did not invoke the authority of a federal court. In other words, standing is determined from the perspective of the party bringing the appeal. While EFF would not have had standing to appeal to a federal court under Consumer Watchdog, Personal Audio suffered a distinct and palpable injury (cancellation of its claims) giving it standing to appeal. In these circumstances, EFF can remain in the case and participate in the appeal.
Personal Audio argued that the Board erred in construing the terms “episode” and “updated version of a compilation file.”
Personal Audio construed “episode” to mean “a program represented by one or more media files, that is part of a series.” The Board construed “episode” more broadly to mean “a program segment, represented by one or more media files, which is part of a series of related segments, e.g., a radio show or newscast.” On appeal, Personal Audio argued that the Board’s construction ignores a temporal limitation that the episodes in the series must issue over time—a requirement Personal Audio alleges is supported by the claims. The Court agreed with the Board because its construction accords with the specification, which states that “[a] given program segment may represent an episode in a series.” Additionally, the Board correctly determined that the claims did not require a “temporal limitation” because limitations in the claims such as “become available” or “currently available” did not define timing of episode creation but instead refer to episode availability.
Regarding the term “updated version of a compilation file,” the Court also rejected Personal Audio’s narrow construction that required amending a pre-existing compilation file. The Court noted that while one embodiment in the specification described updating a compilation file from a pre-existing compilation file, the specification did not require such a limitation. Moreover, the claims instead were directed to the content of the compilation file and not how the compilation file was created.
Standing to appeal a Board determination depends on the appellant. A appellee who was an IPR petitioner may remain a party to an appeal brought by a party with standing (e.g. a patentee), although the appellee is a non-profit organized in the interest of the public, and would not have a “case or controversy” for standing to bring an appeal of its own.