If you’ve been following the antics of Non-Practicing Entity Personal Audio, LLC, you might be wondering if its case against CBS has finally wrapped up. More on that to follow.
For those not familiar with Personal Audio, it was in the news quite a lot in 2014 because it seemed to be suing anyone who was someone in podcasting (mostly over U.S. Patent 8,112,504), including CBS, CNN and the companies behind The Adam Corolla Show (you can find our posts about the Adam Corolla Show here and here). In short, Personal Audio claims to own the patent rights on a method of distributing episodic content, which just so happens to ensnare (or so Personal Audio claims) the activities of many of the most popular podcasters. Oh, just so you know, Personal Audio itself doesn’t sell a product or service. It uses its patent to “convince” other companies to enter into a license agreement with it.
A while back we took note that Personal Audio’s case against CBS still has some motions pending (prior post is here) and hasn’t yet been terminated. A few days ago, the parties completed briefing on Personal Audio’s “Motion to Amend Protective Order.” More specifically, Personal Audio wants the Court to change the existing protective order to remove a provision known as a “prosecution bar.”
A couple of years ago, Dr. James Boyle at Finnegan wrote an informative article about prosecution bars (link is here), which are generally part of patent litigation protective orders. Parties to patent litigation usually want a protective order since they can expect that sensitive business and technical information will be disclosed during the litigation. Sometimes the disclosed sensitive information will be reviewed by counsel who represents its client in both the patent litigation and in prosecuting patents before the U.S. Patent and Trademark Office (USPTO). With this scenario, its not unusual that the other party to the litigation becomes concerned that its sensitive information might be inadvertently disclosed to or improperly used by the other party in its business activities. Thus, protective orders in patent litigation often include a patent prosecution bar, which prevents a party from improperly using confidential materials received in litigation discovery to shape its efforts to obtain additional patent coverage in subsequent patent prosecution.
According to CBS’ reply to the motion, this is the second time that Personal Audio has tried to amend the patent prosecution bar provision of the parties’ protective order. The Court denied Personal Audio’s first motion in January 2014. As in its first motion, Personal Audio wants the Court to allow its litigation counsel to participate in certain patent prosecution activities, notwithstanding the existing prosecution bar and that its counsel had access to CBS’ confidential information, including source code and technical info for some of CBS’ native mobile applications.
So, what might be behind Personal Audio’s quest? According to CBS, Personal Audio’s pending patent applications, for which it is seeking to have its litigation counsel assist, have claims that appear designed to cover native mobile applications.
Will the Court lift the prosecution bar? The Court should issue a decision on the prosecution bar soon and hopefully we’ll also get a ruling on CBS’ contention that the patent is invalid under Section 101 of the Patent Act.