The patent office has issued its first ruling in our challenge to Personal Audio’s so-called podcasting patent. The Patent Trial and Appeal Board (PTAB) found that we have established a “reasonable likelihood” that we will prevail, based on two key pieces of “prior art” evidence. This isn’t a final ruling, but it is an important step forward.
Last October, we filed a petition for inter partes review (IPR) at the PTAB. The IPR process provides an expedited means for the patent office to take a second look at a patent it has already issued. This kind of challenge proceeds in two steps. First, we file our petition. Then, before the IPR actually goes forward, the PTAB must decide whether our petition establishes a “reasonable likelihood” that we would prevail. If we did not satisfy that standard, our petition would simply be rejected.
In our petition, we argued that Personal Audio did not invent podcasting and that parts of its patent should be declared invalid. We presented evidence relating to Internet Pioneer Carl Malamud's "Geek of the Week" online radio show and online broadcasts by CNN and the Canadian Broadcasting Corporation (CBC). Back in February, Personal Audio filed a response arguing that we were unlikely to prevail and urging the PTAB to reject our petition. The PTAB has now found otherwise, ruling that EFF has established a reasonable likelihood of success.
While we are very pleased with PTAB’s overall conclusion, we were disappointed on one point: while the PTAB accepted that the CNN and CBC references were valid evidence to support our claims, it rejected our argument based on Carl Malamud's “Geek of the Week.” The reasons are somewhat technical, but ultimately the PTAB concluded: 1) that a webpage we cited (the NCSA Geek of the Week page) was not sufficiently accessible to count as a “printed publication” under the relevant statute; and 2) that an electronic journal we cited (the “Surfpunk Technical Journal”) was actually a private email exchange. We respectfully disagree with those conclusions and are considering our options for challenging them.
Again, this is not a final determination. Personal Audio will have another opportunity to present evidence and defend its patent before the PTAB makes a final decision. Nevertheless, we are very pleased that our challenge will proceed and look forward to presenting the strongest possible case that Personal Audio did not invent podcasting. The current schedule for the proceeding is available here. Of course, we will keep you updated at our blog and will publish any documents at our case page.
Auspiciously, the PTAB’s decision in this case came right on the tenth anniversary of the launch of our Patent Busting Project. In the last decade, we’ve challenged many patents and most have been either invalidated or narrowed. We’ve also worked to defend 3D printing from overbroad patents by filing pre-issuance submissions. We’ll continue to fight to protect innovators from illegitimate patents.