Federal Circuit upholds PTAB invalidation of podcasting patent despite district court infringement finding

Active Judges of the Federal Circuit, 2016. Public domain.

On Monday, August 7th, a judicial panel of the U.S. Court of Appeals for the Federal Circuit entered a decision in Personal Audio, LLC v. Electronic Frontier Foundation which is being widely hailed by the anti-patent crowd. The three judges on the panel issued a majority opinion, authored by Circuit Judge Pauline Newman, upheld a final written decision issued by the Patent Trial and Appeal Board (PTAB) which invalidated a series of claims from a patent covering a podcast technology.

Personal Audio appealed the case to the Federal Circuit after the PTAB invalidated claims of U.S. Patent No. 8112504, entitled System for Disseminating Media Content Representing Episodes in a Serialized Sequence. Issued in February 2012, it claimed a media player for acquiring and reproducing media program files which represent episodes in a series of episodes as those episodes become available. The media player includes a digital memory, a communications port coupled to the Internet for transmitting data requests and an output unit for reproducing the media files. The resulting invention addressed a need among Internet radio sources for a more practical system of delivering content to interested users on request than searching for the radio source via web browser, a difficulty which is exacerbated further while an interested user is driving.

According to information collected from legal data analytics service Lex Machina, the ‘504 patent has been asserted in a total of seven district court cases, all of which were filed in 2013. Most of the cases target large media entities like CBS Corporation (NYSE:CBS), NBCUniversal and Fox Broadcasting Corporation. A jury trial in the case against CBS led to a verdict that CBS infringed upon four claims of the ‘504 patent and that CBS did not prove invalidity of any of those claims. By a preponderance of evidence, the jury decided that $1.3 million was a fair and reasonable royalty to compensate Personal Audio for CBS’ infringement.

A look at the first amended complaint filed by Personal Audio in the case on June 10th, 2013, gives a closer look at the types of technologies which a jury determined as infringing on the ‘504 patent. Personal Audio had alleged that several shows podcasted by CBS, including 60 Minutes, Tech Talk and Face the Nation, use servers, data storage and other Internet hardware which directly infringe claims of the ‘504 patent. Personal Audio also alleged that CBS’ distribution of episodic video media for shows such as CSI: Crime Scene Investigation either literally infringed the ‘504 patent or constituted infringement under the doctrine of equivalents.

However, it only took one petition for inter partes review (IPR) proceedings at the PTAB to overturn the validity of a patent which one more than $1 million in district court after a jury found that it was infringed and that there was no invalidity. The IPR petition, filed in October 2013 courtesy of the patent nihilists over at the Electronic Frontier Foundation (EFF), notes a press release issued by Personal Audio in January 2013 which claimed that the firm had invented the technology covered by the ‘504 patent back in 1996. “Personal Audio, however, did not invent podcasting in 1996,” the EFF’s IPR petition reads. “What Personal Audio calls ‘podcasting’ — distributing episodes of media content on the Internet — had been known for at least three years at that point.” The EFF cited to an article published by The New York Times in March 1993 which discussed an Internet talk radio program developed by computer networking engineer and economist Carl Malamud. EFF cited evidence showing that Geek of the Week, the episodic Internet broadcast developed by Malamud, reached 100,000 listeners within its first year of existence. Personal Audio also alleged that CBC and CNN both provided Internet radio programs prior to 1996. Further, Personal Audio went into the prosecution history for the ‘504 patent, noting that the main reason for allowance given by the patent examiner was that the prior art didn’t suggest updating or downloading of “compilation files” which contained attribute data describing episodes and episode URLs identifying corresponding media files representing episodes. “Notably, the patent examiner’s reasons for allowance do not suggest that there was anything inventive about the computers or networks used to distribute the compilation file and the episodes,” the EFF’s IPR petition reads.

The PTAB’s panel of administrative patent judges (APJs) decided to institute the IPR trial in April 2014. The final written decision entered by the APJs in April 2015 found that petitioner EFF had proved by a preponderance of evidence that claims 31 through 35 of the ‘504 patent were invalid under 35 U.S.C. § 102 as anticipated by prior art and 35 U.S.C. § 103 as obvious subject matter.

In its appeal of the PTAB final written decision, Personal Audio argued to the Federal Circuit that the APJ panel misconstrued several claim terms and misapplied references, “erring in law and fact.” Personal Audio contended that the PTAB’s construction of “episode” improperly excluded a temporal limitation that episodes in the series release over time; the PTAB instead construed the term as “program segments” with the limitation referring to new episodes “becom[ing] avaialble.” Other claim constructions challenged by Personal Audio included “updated version of a compilation file” and “back-end configuration.” The Federal Circuit upheld the PTAB’s construction of those terms as well as its findings of obviousness and anticipation which rendered the challenged claims invalid.

The wider world of tech news is thumping its own chest over the recent Federal Circuit’s decision to invalidate a supposedly “bogus” patent which was asserted by what some people feel is a “patent troll.” But knowledgeable observers of the U.S. patent system will recognize that the case is a bit of a nightmare scenario. If Personal Audio is a “patent troll” for asserting the ‘504 patent in seven cases, where is the outcry over “patent trolls” like Rep. Darrell Issa (R-CA), an inventor of patents which have been asserted a few dozen times in U.S. district court. In the one trial which reached a jury verdict, Personal Audio was awarded $1.3 million, an amount which is more than four times the $300,000 amount which constitutes “nuisance litigation” in the eyes of the Federal Trade Commission, as was reflected in last year’s study on patent assertion entity (PAE) activities. In 13 cases where damages were awarded, Issa’s patent earned a total of $128,000 in damages, well below the “nuisance litigation” threshold. And yet Issa sits as the chairman of the House IP Subcommittee, engaging Congress in one-sided hearing after one-sided hearing, whereas Personal Audio is being forced to relinquish a supposedly Constitutionally-protected property right which was valid in an Article III federal court but invalidated by an Article I tribunal, which would seem to be unconstitutional.

If you listen closely, you may just hear the refrain of: “Where have all the patents gone? The PTAB nixed them, every one. When will they ever learn? When will they ever learn?”

For more on this case please see: Federal Circuit says non-profit EFF has standing in IPR appeal.


Warning & Disclaimer: The pages, articles and comments on IPWatchdog.com do not constitute legal advice, nor do they create any attorney-client relationship. The articles published express the personal opinion and views of the author as of the time of publication and should not be attributed to the author’s employer, clients or the sponsors of IPWatchdog.com. Read more.

Join the Discussion

8 comments so far.

  • [Avatar for Anon]
    August 15, 2017 04:49 pm

    Hence, the constant complaints about IPRs on this and other blogs.

    Mr. Morgan, by leaving out the plethora of other issues (such as Constitutional infirmity) related to IPRs, you misrepresent the situation.

    Albeit, not at all surprising given your other tendencies, such remains reprehensible.

    Perhaps you would care to do more than snipe from the sidelines and engage in a materially meaningful way in the various legal discussions. At least in that way, you may actually be doing more than merely cheerleading what many see as a tool of Efficient Infringement.

  • [Avatar for Paul F. Morgan]
    Paul F. Morgan
    August 15, 2017 12:31 pm

    Adam, re “Is it generally true that the PTAB is more likely than a district court to invalidate challenged claims”
    Yes, it is statistically indisputable that D.C. juries [of the relatively few patent suits that ever even get to that issue before settlements] are significantly less likely to find patent claims unpatentable over patent or publication prior art than IPRs, or former inter parte reexaminations, or even long standing ex parte reexaminations. For several reasons. Hence, the constant complaints about IPRs on this and other blogs.

  • [Avatar for Adam Cline]
    Adam Cline
    August 15, 2017 11:35 am

    Does CBS have any legal basis for recovering the $1.3 million royalty judgment? On a theory of “unjust enrichment” maybe?

    Is it generally true that the PTAB is more likely than a district court to invalidate challenged claims?

  • [Avatar for Paul F. Morgan]
    Paul F. Morgan
    August 15, 2017 09:16 am

    Why did all these lawsuit defendants waste all that money on attorney billing fees and other big litigation expenses and not promptly file IPRs themselves? What kind of unbiased practical and statistical advice were they getting? Even patent attorneys that hate IPRs must know by now that if they represent a client being sued they have an ethical obligation to that client to promptly advise an IPR against a patent owner alleging broad claim scope for infringement if good prior art can be found, as EFF finally demonstrated for them here.

  • [Avatar for Next]
    August 15, 2017 07:43 am

    So does Personal Audio have to give the money back?

  • [Avatar for Ternary]
    August 14, 2017 08:05 pm

    Steve, you say “PTAB instead construed the term (‘episode’) as “program segments”” However, the CAFC/PTAB are correct in that the specification teaches that “ A given program segment may represent an episode in a series which is selected as a group by the subscriber…”

    This should remind us that patent claim and application drafting are issues that should not be dealt with lightly. In the context of what the PTAB is supposed to do, I cannot find that they are wrong or malicious in this.

    It is bizarre that this happens after an infringer has been convicted. It exposes how screwy the system has become. But in this the PTAB and CAFC are not particularly anti-patent.

  • [Avatar for Tesia Thomas]
    Tesia Thomas
    August 14, 2017 05:06 pm


    Yeah. Sadly, the best way to avoid PTAB is to not get a patent in the first place.
    At least for software.
    For 100% mechanical tech, patents are the only way.

  • [Avatar for SoftwareForTheWin]
    August 14, 2017 02:37 pm

    Forget trying to prevent copycats with patents and all their endless costs and in the end no protection. Save your money and use it towards something else.