Docket No. 2016-1123 (IPR2014-00070)
NEWMAN, CLEVENGER, O’MALLEY
August 7, 2017
Brief summary: PTAB decision that Personal Audio’s ‘504 claims were anticipated and/or obvious affirmed. EFF found to have standing to defend PTAB decision since Personal Audio was appellant and the PTAB decision provided Personal Audio the required Article III standing.
Summary: Personal Audio appealed PTAB finding after IPR that claims 31-35 of US 8,112,504 relating to systems for distributing podcasts are invalid as anticipated and/or obvious. IPR was instituted based on EFF’s petition that the claims were anticipated by the “Patrick/CBC” reference and/or obvious in view of the “Compton/CNN” reference. The Patrick/CBC reference is summarized as teaching a “science magazine show [that] was recorded each week, broken down into its component parts, and made available on [a] server.” Compton/CNN is a thesis found to “describe searchable digital video library based on the CNN NEWSROOM program, wherein each fifteen-minute video program is brokend down into individual new stories or segments, then coverted into digital files…and made available at a URL containing the date of the broadcast.” The PTAB found that “episode” means “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” and “compilation file” as “a file that contains episode information.” The FC panel first considered whether EFF had “standing to participate in this appeal” in view of Consumer Watchdog (FC 2014 (to appeal, PTAB petitioner must meet Article III case-or-controversy requirement to have standing); Sierra Club, D.C. Cir. 2002). It determined “EFF[had] standing…to defend the judgment of the PTAB, for EFF is not the appellant” (“Here, the party invoking judicial review is Personal Audio” which “has experienced an alteration of ‘tangible legal rights…that is sufficiently ‘distinct and palatable’ to confer standing under Article III.” Virginia v. Hicks, US 2003). The FC also explained that, as to claim construction, “[t]he PTAB is authorized to construe the claims in accordance with their broadest reasonable interpretation” (BRI), which “cannot be divorced from the specification and the prosecution history, as perceived by persons in the field of the invention” (Microsoft, FC 2015). It found the PTAB’s construction of “episode” to be “in accord with the specification, and…correct” and its determination that “Compton/CNN and Patrick/CBC disclose ‘episodes’ [to be] supported by substantial evidence.” The FC panel also found “[t]he claims are directed to the content of the compilation file, not how the compilation file is created” and disagreed with Personal Audio that the file must be “updated by dynamically distributing previously available and newly available episodes together”. And it “discern[ed] no error in the PTAB’s determination” that Compton/CNN and Patrick/CBC disclose “an updated version of a compilation file.” Personal Audio also argued “that the PTAB erred in holding that CNN/Compton disclosed the ‘504 Patent’s ‘back-end configuration’ of processors and servers” since it did not “show two processors” (“disclosure of a web server, without stating how the server is configured, does not teach this limitation”). But the FC panel disagreed, finding substantial evidence supporting the PTAB’s findings. Thus, the PTAB decision was affirmed.