© 2017 Head, Johnson, Kachigian & Wilkinson, PC

  • Cassandra L. Wilkinson

Podcast Patent Partially Pitched


The podcasting bridge has one less troll thanks to a patent challenge from the Electronic Frontier Foundation (EFF). In April, the U.S. Patent and Trademark Office partially invalidated U.S. Patent No. 8,112,504 owned by Personal Audio, LLC, of Texas. Over the years, Personal Audio enforced this patent and was able to challenge and threaten podcasters in court, sometimes successfully. But the USPTO reached back in time and basically rescinded their previous approval. This Groundhog Day approach to correcting bad patent decisions is possible through an Inter Partes Review. The Inter Partes Review has become a very successful tool in challenging patents where there is a substantial question of whether a patent should have been granted. The Inter Partes Review brings a patent up for reexamination. If a party can show patents, printed publications, or usage of the invention that is prior to the granting of the patent then the USPTO’s Patent Trial and Appeal Board will review the patent. In the case of Personal Audio’s patent, the Board agreed with the EFF that a portion of Personal Audio’s patent should not have been granted. Think of it as reversing a bad decision after a Friday night bender.

The portion of the patent affected, claims 31-35, concerned the updating of video or audio content on a website, or in patent speak, “disseminating a series of episodes represented by media files via the Internet as said episodes become available.” Simply put, it’s like updating a table of contents, an index, or a website. Claims 31-35 of the patent were granted in 2009, long after podcasting already had a foothold on the internet. The original patent that the claims were attached to goes back to 1996. The EFF successfully argued that claims 31-35 warranted a temporal intervention due to three primary factors. The first was that the patent was obvious, the second that it was anticipated, and third that the claimed method had already been invented. The EFF cited material from CNN, the Canadian Broadcasting Corporation, and others as evidence showing that the invention (the digital update) was in use before Personal Audio’s original patent was granted. The EFF also used the CNN website from 1994 to argue the obviousness of automatically updating a website. Looking through their time window the Patent Trial and Appeal Board said, “we agree with Petitioner that it would have been obvious to update the Table of contents by ‘amendment’ as opposed to creating a new file on a daily basis.” Creating new files each day may have employed thousands more HTML coders but the Appeal Board was probably right to err on the side of efficiency. These corrections to various patents are essential to prevent lawsuits and threats that could hinder competition and innovation. While holding the Patents, Personal Audio filed lawsuits and issued license fee threats to podcasters big and small alike. The Electronic Frontier Foundation’s successful call for Inter Partes Review to revoke claims 31-35 of the patent should put a halt to some of Personal Audio’s behavior. The Inter Partes Review is the Delorean the USPTO Trial and Appeal Board uses to go back in time to make things right.

#Patents #NewCaseLaw