PublishedAugust 10, 2017

It’s The End Of The Podcast Patent And We Know It

In eagerly awaited news, the Federal Circuit affirmed the Patent Trial and Appeals Board (PTAB) determination that Personal Audio’s U.S. Pat. No. 8,112,504 is invalid based on an inter partes review petition from the Electronic Frontier Foundation (EFF).

That’s right.  The podcast patent is dead.  And I feel fine.


Setting aside the merits of the patent itself, there was one larger issue at stake here.  Personal Audio challenged EFF’s right to even defend its position in front of the Federal Circuit.  The Federal Circuit already decided that third-party challengers like EFF can’t appeal a loss in front of the PTAB, because they lack Article III standing to bring the case, back in 2014 in a case called Consumer Watchdog v. WARF.[1. This case might have wound up an exception to that rule if the PTAB had affirmed the patent, as EFF does create and host podcasts.  That might have been enough to create standing.

It’s also an interesting case because, if the IPR petition again the Wisconsin Alumni Research Foundation (WARF) patents had been filed today, it probably would have been dismissed.  University-related entities like WARF now receive sovereign immunity against challenges to their patents in front of PTAB.]

However, the standing requirement is a requirement placed on the entity that first brings the case in front of an Article III court—which, in this case, was the patent owner.  The party defending an appeal never needs to show standing, because they weren’t the ones who chose to bring the case.

This means that public interest IPR challengers can continue to defend decisions made on their behalf—a good result for everyone except for the patent trolls whose patents are challenged.

Throw Those Trolls Away

Personal Audio is one of those trolls.  They’ve gone after a number of technology and media companies, ranging from Apple to Amazon to Fox Broadcasting.

Then, in 2013, they went after Adam Carolla’s podcasting company for podcasting.

Understandably, going after a popular media figure provoked a bit of an upset.  EFF decided to take action and filed an inter partes review petition.  They won in front of the PTAB, and now the Federal Circuit affirmed the invalidity of the patent on appeal.  Podcasting is an old idea, and now there’s a judicial decision confirming that simple fact.

Of course, it took a lot of energy (and money) to get to this point—and, if anti-IPR entities get their way, it wouldn’t have been possible at all.

Second Guessing

A while back, I wrote a summary of the STRONGER Patents Act.  (The short summary: it is not a good bill.)  One of the examples I used was the EFF challenge to the Personal Audio patent.  

In a world where STRONGER Patents had passed before EFF’s challenge was filed, none of this would have happened.  EFF would have been barred from filing a petition in the first place.  Even if they could have, EFF’s crowdfunded campaign would have had to list every person who donated as a “real party in interest” to the review.  There would have been earlier appeals of the decision to institute, and Personal Audio could have taken their patent out of IPR in order to amend the claims in trivial ways to avoid the prior art.  

STRONGER Patents stacks the deck against IPR ever invalidating a patent, and the end result would likely have been that no one would have tried.  Personal Audio would have continued to sue podcasters and to obtain settlements because litigation would have been more expensive than settling.  Even though the idea of podcasting, as the Federal Circuit just held, was well-known.  Even though Personal Audio didn’t actually invent anything.

That’s the world we’d have if STRONGER Patents passed.

Josh Landau

Patent Counsel, CCIA

Joshua Landau is the Patent Counsel at the Computer & Communications Industry Association (CCIA), where he represents and advises the association regarding patent issues.  Mr. Landau joined CCIA from WilmerHale in 2017, where he represented clients in patent litigation, counseling, and prosecution, including trials in both district courts and before the PTAB.

Prior to his time at WilmerHale, Mr. Landau was a Legal Fellow on Senator Al Franken’s Judiciary staff, focusing on privacy and technology issues.  Mr. Landau received his J.D. from Georgetown University Law Center and his B.S.E.E. from the University of Michigan.  Before law school, he spent several years as an automotive engineer, during which time he co-invented technology leading to U.S. Patent No. 6,934,140.

Follow @PatentJosh on Twitter.

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