By Cheryl Beise, J.D.
The Patent Trial and Appeal Board did not err in finding that the challenged claims of an audio playback patent owned by patent assertion entity Personal Audio LLC were invalid as anticipated and/or obvious in view of prior art references, the U.S. Court of Appeals for the Federal Circuit has held. Because Personal Audio had Article III standing to appeal the PTAB’s adverse decision, non-profit consumer advocacy organization Electronic Frontier Foundation (EFF), which had requested inter partes review of Personal Audio’s podcasting patent, was not precluded from appearing in the case (Personal Audio, LLC v. Electronic Frontier Foundation, August 7, 2017, Newman, P.).Personal Audio’s U.S. Patent No. 8,112,504 ("the ’504 patent"), issued February 7, 2012, is entitled "System for disseminating media content representing episodes in a serialized sequence." The ’504 patent is directed to a system and apparatus for storing and distributing a series of "episodes" of media files to Internet client subscribers. Personal Audio describes the patent as directed to Internet podcast technology.
In October 2013, EFF filed a revised petition seeking review of independent claim 31 and dependent claims 32–35 of the ’504 patent. The PTAB granted the petition, and ultimately concluded that all of the challenged claims were unpatentable as anticipated under 35 U.S.C. §102 and/or obvious under 35 U.S.C. §103.
PTAB held that the challenged claims were (1) anticipated by Andrew S. Patrick et al., CBC Radio on the Internet: An Experiment in Convergence, 21 Can. J. of Commc’n 125 (1996) ("Patrick/CBC"); and (2) obvious over Charles L. Compton’s thesis entitled Internet CNN NEWSROOM: The Design of a Digital Video News Magazine (May 12, 1995) (B.S. and M.E. Thesis, Massachusetts Institute of Technology) ("Compton/CNN"). Patrick/CBC describes an experimental trial conducted in 1996 to determine if there was demand for regular radio programming distributed as digital audio files over the Internet. Compton/CNN describes a searchable digital video library based on the CNN NEWSROOM program. Personal Audio appealed.
Standing. The Federal Circuit asked the parties to brief the question of whether EFF, a non-profit consumer advocacy organization, had standing to participate in the appeal. 35 U.S.C. §141(c) provides the right of appeal to the Federal Circuit for "[a] party to an inter partes review or a post-grant review who is dissatisfied with the final written decision of the Patent Trial and Appeal Board." In Consumer Watchdog v. Wisconsin Alumni Research Foundation, 753 F.3d 1258 (Fed. Cir. 2014), the Federal Circuit held that a PTAB petitioner must meet the Article III case-or-controversy requirement does not have standing to invoke judicial power, and thus does not have standing to appeal from a PTAB decision on inter partes reexamination. In this case Personal Audio clearly had judicial standing to appeal the adverse PTAB decision and EFF was not constitutionally excluded from appearing in court to defend the PTAB decision in its favor, the court explained.
Personal Audio’s challenges focused on the Board’s interpretation of three claim limitations: "episode"; "updated version of a compilation file"; and "back-end configuration."
"Episode." The Board construed "episode" as "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 a newscast." Personal Audio argued that the Board improperly excluded the temporal limitation that episodes in the series issue over time, as the claims require. However, as EFF pointed out, the specification describes an "episode" as a "program segment" and that the specification uses news stories as examples of "program segments." The court agreed that "program segment" refers to a subpart of individually selectable content.
Substantial evidence also supported the PTAB’s finding that both Compton/CNN and Patrick/CBC disclose "episodes." Figure 1 of CNN/Compton illustrates news stories or "episodes," and the science news stories described in Patrick/CNN were correctly described as "episodes," the court noted.
"Updated version of a compilation file." Regarding "an updated version of a compilation file" limitation in each of the challenged claims, the PTAB construed "compilation file" as "a file that contains episode information" and found that "updated version" did not require construction. The Board found that Compton/CNN’s disclosure of automatically generating and storing a new version of the "contents.html" file with the day’s news stories is an "updated version of a compilation file." The PTAB also found that Patrick/CBC’s disclosure of making episodes of Quirks & Quarks available each week, along with accompanying text, satisfied the claim limitation.
Personal Audio argued that an updated version of a compilation file must be updated by dynamically distributing previously available and newly available episodes together. The court disagreed, finding that the claims "are directed to the content of the compilation file, not how the compilation file is created." According to the court, the specification does not require the updated version of the compilation file to be created from a previously existing compilation file, and the phrase "currently available" neither requires or implies a temporal limitation.
"Back-end configuration." The ’504 patent claims require "one or more processors" coupled to "one or more data storage servers" and "one or more communications interfaces." The parties referred to these components as the "back-end configuration." The only depiction of this "back-end configuration" in the ’504 patent describes the claimed hardware components as part of a single "host computer" with a single processor. The Board found that the "communications interface" in the ’504 patent is part of the host server computer.
Personal Audio contended that the PTAB erred in holding that CNN/Compton taught the "back-end configuration" limitation because the disclosure of a web server, without stating how the server was configured, did not disclose two processors. The court disagreed. Compton/CNN discloses the "NMIS Internet server" and the "encoding station," which is hardware performing a conversion function. Because the encoding station in Compton/CNN is physically separate from the NMIS Internet server, it reasonably must contain a separate processor, the court said.
The Board’s decision that claims 31-35 of the ’504 patent were unpatentable was affirmed.
The case is No. 2016-1123.
Attorneys: Jeremy Seth Pitcock (The Pitcock Law Group) for Personal Audio, LLC. Nicholas A. Brown (Greenberg Traurig LLP) for Electronic Frontier Foundation.
Companies: Personal Audio, LLC; Electronic Frontier Foundation
MainStory: TopStory Patent TechnologyInternet FedCirNews
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