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     Back in April,  the Patent Trial and Appeal Board (“PTAB”)  found for Electronic Frontier Foundation (“EFF”) on its challenge to Personal Audio LLC’s U.S. Patent 8,112,504. Specifically, the Board concluded that EFF had shown that Claims 31-35 of Personal Audio’s ‘504 patent are unpatentable in light of the prior art at issue.

The end.... is pending... Will Personal Audio's dream to license podcasters near and far end with the PTAB's decision on the '504 patent?

The end…. is pending… Personal Audio’s Request for Rehearing of the PTAB’s decision to invalidate claims 31-35 of the ‘504 patent is pending.

     If you’ve not heard of Personal Audio before, Personal Audio, LLC is a sort of “holding company.” It holds a group of related patents that allegedly cover some fairly broad aspects of podcasting technology. Although Personal Audio’s home webpage states that it “offer[s] personalized audio to listeners over the Internet,” Personal Audio doesn’t appear to offer any goods or services for sale to the public. What Personal Audio has been doing over the last few years, though, is filing lawsuits against a slew of successful podcasters.

    To be fair, if you’d like to hear Personal Audio’s side of the story, you can check out an interview with founder Jim Logan on Personal Audio’s website.

    It’s interesting, though, that Personal Audio hasn’t updated its webpage on the ‘504 patent, which was the focus of the Inter Partes Review proceedings at the Patent Office:

 Personal Audio’s 1996 precursor to podcasts and episodic content delivery is described and claimed in Personal Audio’s U.S. Patent 8,112,504 and an additional pending divisional application, both of which are entitled “System for disseminating media content representing episodes in a serialized sequence.”

     Anyway, we were left wondering about the status of Personal Audio’s  case against CBS, which is still pending in the Eastern District of Texas (our prior post about the case is here).  On April 29th, CBS and Personal Audio filed a joint motion to stay the case until after any appeal. The district court granted the motion on April 30th, 2015.

     At the time, we also wondered whether Personal Audio might be planning on filing a motion for rehearing with the Patent Trial and Appeal Board. That might explain why Personal Audio filed a copy of the district court’s trial transcript with the PTAB in early May and why the CBS district court case was still open.

     Sure enough, although it didn’t show up on the PTAB portal right away, we learned that Personal Audio has in fact filed a Request for Rehearing under Section 42 of the Patent Regulations (specifically, 37 CFR 42.71(d)).   Although Section 42.71 of the Patent Regulations was recently revised a bit (on May 19, 2015), in general, it provides that a party to PTAB proceedings may request rehearing if it believes that the Board’s decision “misapprehended or overlooked” certain matters.

     In short, Personal Audio’s Request claims that the Board’s decision for EFF violates its 7th Amendment Constitutional right to a jury trial. Personal Audio’s argument centers on the CBS case where the jury found that CBS had infringed claims 31-35 of the ‘504 patent. Personal Audio definitely didn’t mince words in its Request. It claims that “the Board’s decision [in the EFF inter partes review] exceeded [the Board’s] authority.” That’s a humongous purely legal issue.

   Since Personal Audio’s Request for Rehearing advances such an interesting argument, we’re going to save the nitty gritty of the Request for another post.  Just as a nit-picky aside, though, we noted that Personal Audio’s brief on its Request mis-states the date that it submitted a copy of the jury’s verdict to the Board. Personal Audio states that the date is “December 2015”, when that just isn’t possible. All nit-picking aside, Personal Audio’s argument is an interesting one that that we’ll be diving into soon. If you have any thoughts or opinions in the interim, we’d love to hear them.

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