https://archive.org/details/LegalGeekEp69
A long-time hot topic of conversation in this podcasting world has been the attempted enforcement of a patent owned by Personal Audio LLC against various famous podcasters like Adam Carolla and news networks. This also coincides with one of the hottest topics in U.S. patent law, patent enforcement entities and whether overbroad patents in electronic fields can be cut back.
The specific claims in U.S. Patent 8,112,504 focus on the distribution of old and new episodes together in a compilation file, and while this certainly covers podcasting, it is also very broad. The question is whether it was too broad a patent grant compared to prior art compilations known in similar fields.
This week, Personal Audio and the Electronic Frontier Foundation began presenting arguments to the Federal Circuit Court of Appeals in this controversy, and the recent history has left this case in a cutting edge place. The EFF has raised money to challenge Personal Audio's patent in new post-grant review proceedings under the America Invents Act at the U.S. Patent Office's Appeal Board, and this process led to a decision by the Board last April that the patent was invalid over some prior art. This Federal Circuit case is the appeal of that decision to invalidate Personal Audio's patent.
However, in the interim few months, some of the first litigations filed by Personal Audio came to settlement or final decisions. Adam Corolla settled the claim with Personal Audio in August, and then in September, a jury in Texas federal court found the patent to be valid and infringed by CBS, imposing a $1.3 million verdict on the network.
So Personal Audio is winning big in litigations while losing the validity battle at the U.S. Patent Office. Normally there would be potential estoppel effects applied to the loser of one of these proceedings, or a stay in the litigation when a post-grant review is filed, but in this case the parties are different because the EFF is unrelated to defendants like Corolla and CBS and is fighting this fight for different reasons than the litigation defendants.
Those inconsistent results have caused Personal Audio to present some interesting arguments this week, such as arguments that the Texas jury's factual findings must be binding on the Federal Circuit because the Seventh Amendment prevents re-examination of the facts at the appeal level in such circumstances. Yet that case is not what is appealed here, but instead, the administrative Patent Office Appeal Board ruling of invalidity (which would be binding moving forward on Personal Audio, for what it's worth). That circumstance makes this an interesting hole in legal estoppel practice in this relatively new patent challenge context.
The Bottom Line is, beyond just the podcasting industry, Personal Audio may be the so-called patent troll that ends up deciding the important rules moving forward for how competing decisions work at the Patent Office Appeal Board as compared to federal courts. The Patent Office decision last year dealt the alleged troll a seemingly mortal blow, but Personal Audio is not going down without an important legal fight for the landscape of patent law in the future. It will be fascinating to see how these novel arguments play out at the Federal Circuit, if not also the Supreme Court.
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Thanks for reading. Please provide feedback and legal-themed questions as segment suggestions to me on Twitter @BuckeyeFitzy
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