U.S. PTO invalidates key claims of Texas company’s podcasting patent

By Jessica M. Karmasek | Apr 24, 2015

WASHINGTON (Legal Newsline) - The U.S. Patent and Trademark Office this month revoked key elements of a controversial podcasting patent.

A three-judge panel of the PTO’s Patent Trial and Appeal Board issued its decision April 10.


At issue were certain claims of Personal Audio LLC’s U.S. Patent No. 8,112,504.


Personal Audio, based in Beaumont, Texas, was issued the so-called “podcasting patent” in February 2012. Formally entitled “Systems for Disseminating Media Content Representing Episodes in a Serialized Sequence,” it covers the company’s innovations in the distribution of serialized online media.


In particular, the ‘504 patent is directed to an audio program and message distribution system in which a host system transmits information regarding episodes to client subscriber locations.


The technique is commonly used in the distribution of podcasts and serialized television shows.


In October 2013, the Electronic Frontier Foundation, an international nonprofit that advocates for digital rights, filed a petition requesting an inter partes review of claims 31-35 of the ‘504 patent.


The PTO granted the petition in April 2014, and a hearing was held in December.


EFF, in its filings with the PTO, showed that Personal Audio did not invent anything new before it filed its patent application and, in fact, other people were podcasting for years previously.


Some of these earlier examples of podcasting include Internet pioneer Carl Malamud’s “Geek of the Week” online radio show and online broadcasts by CNN and the Canadian Broadcasting Corporation.


The PTO said in its 29-page decision that EFF “has shown by a preponderance of the evidence that claims 31-35 of U.S. Patent No. 8,112,504 B2 are unpatentable.”


The foundation, which called the ruling a “big victory” for the podcasting community, said the decision significantly curtails the ability of Personal Audio to threaten podcasters big and small.


“We’re glad the Patent Office recognized what we all knew: ‘podcasting’ had been around for many years and this company does not own it,” EFF Staff Attorney Daniel Nazer said.


Fellow staff attorney Vera Ranieri agreed, but said there is still work to be done.


“Personal Audio continues to seek patents related to podcasting,” she said. “We will continue to fight for podcasters, and we hope the Patent Office does not give them any more weapons to shake down small podcasters.”


Personal Audio doesn’t do podcasting itself, but instead uses its patent to claim infringement and collect payouts from actual creators.


The podcasting patent became big news in 2013, when Personal Audio began demanding licensing fees from podcasters including comedian Adam Carolla and three major television networks.


For example, Personal Audio sued CBS for making more than 40 podcasts available for download, including the “CBS Evening News,” “60 Minutes,” “Face the Nation” and “Tech Talk.”


The television network, in its defense, tried pointing to prior art -- information made available to the public in any form before a given date that might be relevant to a patent’s claims of originality -- and the patent’s obviousness, but neither argument held up in court.


In September, a Texas federal jury found CBS infringed on four different patent claims and awarded Personal Audio $1.3 million.


The Texas company also won $12 million from Apple in July 2011 for its “playlist patent.”


EFF partnered with attorneys working pro bono and the Cyberlaw Clinic at Harvard University’s Berkman Center for Internet and Society to craft the petition for review with the PTO.


From Legal Newsline: Reach Jessica Karmasek by email at patents@legalnewsline.com.

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