Personal Audio, LLC v. Electronic Frontier Foundation
867 F.3d 1246
Fed. Cir.2017Background
- Personal Audio, LLC appealed the PTAB’s IPR decision holding claims 31–35 of U.S. Patent No. 8,112,504 unpatentable as anticipated and/or obvious; the IPR was instituted on petition by the Electronic Frontier Foundation (EFF).
- The ’504 Patent claims an apparatus for disseminating episodic media files (podcast-like) including storage servers, communication interfaces, processors, a compilation file at a predetermined URL listing currently available episodes, and downloading of media files identified by episode URLs.
- EFF argued anticipation by Patrick et al., CBC Radio on the Internet (1996) (Patrick/CBC) and obviousness by Compton, Internet CNN NEWSROOM (1995) (Compton/CNN); PTAB instituted on those grounds and found the claims unpatentable.
- Core disputed claim terms included “episode,” “updated version of a compilation file,” and the claimed “back-end configuration” (processors, storage servers, communications interfaces).
- The PTAB construed “episode” as a program segment that is part of a series, construed “compilation file” as a file containing episode information, and found the prior art disclosed the claimed elements; the Federal Circuit affirmed.
Issues
| Issue | Plaintiff's Argument (Personal Audio) | Defendant's Argument (EFF / PTAB) | Held |
|---|---|---|---|
| Standing of EFF to defend PTAB decision | EFF lacks Article III standing (as a non‑profit public‑interest petitioner) to participate in appeal | Appellant Personal Audio invokes federal review; EFF may appear to defend PTAB judgment | Personal Audio has Article III standing to appeal; EFF may defend the PTAB decision in court |
| Construction of “episode” | Must mean a complete program issued over time (series entries issuing at different times) | Specification supports “program segment” (subparts selectable within a program) | Affirmed PTAB: “episode” = program segment that is part of a series |
| “Updated version of a compilation file” | Must be created by dynamically amending a prior compilation and list multiple time‑distributed episodes | Claim requires only that the file contain attribute data describing currently available episodes; creation method not limited | Affirmed PTAB: updated compilation need only contain episode information; prior art meets limitation |
| Back‑end configuration (processors, servers, interfaces) | Prior art must disclose separate processors; web server disclosure insufficient | Compton/CNN discloses separate encoding station and server (separate processors); person of skill would understand processors included | Affirmed PTAB: substantial evidence supports finding of processors coupled to servers and interfaces |
Key Cases Cited
- Consumer Watchdog v. Wisconsin Alumni Research Found., 753 F.3d 1258 (Fed. Cir.) (Article III standing required to appeal PTAB decisions)
- ASARCO Inc. v. Kadish, 490 U.S. 605 (U.S. 1989) (standing to appeal measured for the party seeking federal court review)
- Cuozzo Speed Techs., LLC v. Lee, 136 S. Ct. 2131 (U.S.) (PTAB may construe claims under the broadest reasonable interpretation standard)
- Microsoft Corp. v. Proxyconn, Inc., 789 F.3d 1292 (Fed. Cir.) (claim construction principles; reliance on specification and prosecution history)
- Virginia v. Hicks, 539 U.S. 113 (U.S.) (requirements for Article III standing)