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April 10 — Several claims of a patent that has been asserted in controversial lawsuits against a series of prominent podcasters were invalid for obviousness and anticipation, the Patent Trial and Appeal Board ruled April 10.
The ruling came during inter partes review proceedings initiated by the public interest group the Electronic Frontier Foundation, following the filing of patent infringement claims against podcasts such as “The Adam Carolla Show,” whose host vowed to fight. The EFF petition also prompted a series of popular comedians and podcasters to express their support.
The board found that the patent was obvious in light of “Internet CNN Newsroom,” a 1995 thesis by a Massachusetts Institute of Technology master's degree student, and anticipated by a 1996 article about a trial run of an Internet radio program conducted by the Canadian Broadcasting Corp.
Beginning in 2013, Personal Audio LLC of Beaumont, Texas, filed a series of actions in federal district courts across the country, asserting that podcasters were infringing its patent rights (U.S. Patent No. 8,112,504, issued March 4, 2009).
The defendants included CBS Corp., NBCUniversal Media LLC, the Ace Broadcasting Network LLC, Howstuffworks.com, Togi Entertainment Inc. and the Fox Networks Group Inc.
In October 2013, the EFF petitioned the Patent and Trademark Office in an inter partes review proceeding pursuant to 35 U.S.C. § 311 to rule claims 31-35 of the '504 patent invalid.
The board first disposed of several claim construction issues, concerning the claim terms “episode,” “compilation file” and “media file.”
The parties disputed the meaning of the term “episode,” which the board determined meant “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 said that the construction of “compilation file” was not material to its argument, but the board determined that the broadest reasonable definition was “a file that contains episode information.”
With respect to “media file,” which was not defined in the specification, Personal Audio didn't propose a meaning and the board determined that it should be read to indicate “a file with content that can be reproduced as video, audio, and/or text.”
These terms were used in the patent as in representative claim 31:
31. Apparatus for disseminating a series of episodes represented by media files via the Internet as said episodes become available …
… from time to time, as new episodes represented in said series of episodes become available, storing an updated version of a compilation file in one of said one or more data storage servers at a storage location identified by a predetermined URL … .
The board then turned to the EFF's assertion that the '504 patent was obvious in light of the MIT master's thesis, which described “the design of a digital video newsroom based on the video program CNN NEWSROOM.”
This analysis rested in part on the prior construction of the term “episode,” which rejected Personal Audio's argument that the term as used in the patent should mean “a program, represented by one or more media files, that is part of a series.”
Under the board's construction, the CNN reference disclosed the “episodes,” the board determined.
Turning to the “compilation file” limitation, the board rejected Personal Audio's argument that the CNN reference didn't disclose this limitation because it required the file in question—a table of contents of the day's news stories—to be replaced each day, or overwritten, rather than “updated,” as required by the patent.
Even if it had accepted Personal Audio's distinguishing between updating and overwriting, the board said 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.”
The board rejected several other arguments by Personal Audio in its attempt to distinguish its patent from the CNN reference, and concluded that claims 31-35 would have been obvious in light of the prior art.
The board also found that the CBC reference had anticipated these claims, with reference to the same claim terms that played a role in the analysis of the CNN reference.
The board's ruling was authored by Administrative Patent Judge Gregg I. Anderson and joined by Sheridan K. Snedden and Trenton A. Ward.
The EFF was represented by Greenberg Traurig LLP, New York. Personal Audio was represented by Much Shelist P.C., Chicago.
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Full text at http://pub.bna.com/ptcj/IPR2014-00070PTAB20140410.pdf.
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