U.S. Court of Appeals for the Federal Circuit in Washington D.C.
U.S. Court of Appeals for the Federal Circuit in Washington D.C. (Michael A. Scarcella/ ALM Media)

A federal appeals court has confirmed that the idea of a podcast cannot be patented.

A unanimous panel of the U.S. Court of Appeals for the Federal Circuit on Monday affirmed a decision that invalidated Personal Audio’s patent on a “System for Disseminating Media Content Representing Episodes in a Serialized Sequence.” The decision rendered by the U.S. Patent Trial and Appeal Board is Personal Audio v. Electronic Frontier Foundation.

Personal Audio is a nonpracticing entity that applied for the 8,112,504 patent in 2009, claiming priority to a 1996 parent. The company sued CBS Corp., Fox Broadcasting Co., NBCUniversal Media and others in U.S. District Court for the Eastern District of Texas in 2013, according to RPX Corp. data. Personal Audio alleged that CBS’s “60 Minutes” and “Face the Nation” podcasts, for example, infringed its patent.

The company has used two other podcasting patents to negotiate numerous licenses with makers of MP3 players such as Motorola and SanDisk.

Greenberg Traurig partner Nicholas Brown represented EFF in the appeal. Jeremy Pitcock of The Pitcock Law Group argued for Personal Audio.

Though it wasn’t sued itself, the Electronic Frontier Foundation challenged the ‘504 patent via inter partes review in October 2013. The Patent Trial and Appeal Board (PTAB) found, and the Federal Circuit affirmed, that the patent was anticipated by a 1996 Canadian Broadcasting Corporation Science program that was broadcast via the internet, and that it was obvious in light of 1995 internet programming by CNN.

On an issue of first impression, the court ruled that third parties such as EFF who win challenges at the PTAB have standing to defend their judgments on appeal. The court has previously ruled that a third party who loses at the PTAB does not have standing to bring its own appeal. But Judge Pauline Newman concluded Monday that Personal Audio’s loss of its patent claims conferred standing on both parties.

“With Article III satisfied as to the appellant, EFF is not constitutionally excluded from appearing in court to defend the PTAB decision in its favor,” Newman wrote. Judges Kathleen O’Malley and Raymond Clevenger concurred.

The Federal Circuit had raised the standing issue on its own motion, then held the case under submission for just over a year. Had the court ruled the other way, it could have called into question third-party challenges ranging from industry-supported groups such as Unified Patents to hedge funds seeking to disrupt patent holders’ market value.

Daniel Nazer, senior staff attorney at EFF, said it’s a good outcome for organizations that podcast (which includes, on occasion, EFF). But the most interesting portion was the panel’s treatment of standing, he said. The decision establishes that public interest organizations such as EFF and Consumer Watchdog can defend PTAB judgments on appeal “because we’re not the party that’s invoking the jurisdiction of the court.” He noted that RPX Corp. and the PTO itself are litigating similar standing issues at the Federal Circuit.

 

A federal appeals court has confirmed that the idea of a podcast cannot be patented.

A unanimous panel of the U.S. Court of Appeals for the Federal Circuit on Monday affirmed a decision that invalidated Personal Audio’s patent on a “System for Disseminating Media Content Representing Episodes in a Serialized Sequence.” The decision rendered by the U.S. Patent Trial and Appeal Board is Personal Audio v. Electronic Frontier Foundation.

Personal Audio is a nonpracticing entity that applied for the 8,112,504 patent in 2009, claiming priority to a 1996 parent. The company sued CBS Corp., Fox Broadcasting Co. , NBCUniversal Media and others in U.S. District Court for the Eastern District of Texas in 2013, according to RPX Corp. data. Personal Audio alleged that CBS’s “60 Minutes” and “Face the Nation” podcasts, for example, infringed its patent.

The company has used two other podcasting patents to negotiate numerous licenses with makers of MP3 players such as Motorola and SanDisk.

Greenberg Traurig partner Nicholas Brown represented EFF in the appeal. Jeremy Pitcock of The Pitcock Law Group argued for Personal Audio.

Though it wasn’t sued itself, the Electronic Frontier Foundation challenged the ‘504 patent via inter partes review in October 2013. The Patent Trial and Appeal Board (PTAB) found, and the Federal Circuit affirmed, that the patent was anticipated by a 1996 Canadian Broadcasting Corporation Science program that was broadcast via the internet, and that it was obvious in light of 1995 internet programming by CNN.

On an issue of first impression, the court ruled that third parties such as EFF who win challenges at the PTAB have standing to defend their judgments on appeal. The court has previously ruled that a third party who loses at the PTAB does not have standing to bring its own appeal. But Judge Pauline Newman concluded Monday that Personal Audio’s loss of its patent claims conferred standing on both parties.

“With Article III satisfied as to the appellant, EFF is not constitutionally excluded from appearing in court to defend the PTAB decision in its favor,” Newman wrote. Judges Kathleen O’Malley and Raymond Clevenger concurred.

The Federal Circuit had raised the standing issue on its own motion, then held the case under submission for just over a year. Had the court ruled the other way, it could have called into question third-party challenges ranging from industry-supported groups such as Unified Patents to hedge funds seeking to disrupt patent holders’ market value.

Daniel Nazer, senior staff attorney at EFF, said it’s a good outcome for organizations that podcast (which includes, on occasion, EFF). But the most interesting portion was the panel’s treatment of standing, he said. The decision establishes that public interest organizations such as EFF and Consumer Watchdog can defend PTAB judgments on appeal “because we’re not the party that’s invoking the jurisdiction of the court.” He noted that RPX Corp. and the PTO itself are litigating similar standing issues at the Federal Circuit.