The Federal Circuit (CAFC) released an opinion on Monday that upheld the Patent Trial and Appeal Board’s (PTAB) decision finding a patent for “System for Disseminating Media Content Representing Episodes in a Serialized Sequence” (in other words, podcasts and some online videos) to be unpatentable.

The owner of the patent, Personal Audio, LLC, has sued many people over the past few years (notably Adam Carolla) for making and disseminating podcasts. They basically claim that they own the right to make podcasts, and others can only do so with their permission. Apparently, they also claimed to own the right to make and disseminate online video content!!

Shocking, I know.

Here’s a good recap.

Now, the PTAB decision is a few years old, so that’s not news, but the Federal Circuit’s opinion is fresh, so I figured it a good time to explain a little bit about it.

The patent was found unpatentable under two sections of the AIA (patent statute). First, under section 102, which requires that for an invention to issue as a patent the invention can not have been previously disclsosed in a single reference (patent, patent application, publication, etc.). If it had been, then no patent. Second, the PTAB found it alternatively unpatentable under 103, which requires that for an invention to issue it must not be an obvious invention. This mostly happens if different features of the claimed invention can be found in multiple references (or are generally obvious to those skilled in the art), and the combination of those references would lead to the invention.

Knowing very little about this proceeding, I figured the claims would have been found invalid under section 101, which requires an invention to contain patentable subject matter. However, the challenging party, the EFF, didn’t raise that issue (and the PTAB proceeding was initiated in 2013, before 101 became the weapon that it is now).

A little about 101. Over the last few years, 101 has been used to strike down a lot of software/computer related patents and inventions. This stems back to a few opinions, but mostly to Alice from SCOTUS in 2014.

Essentially, what was decided in Alice and what has been implemented is that a software/computer invention cannot issue as patent if it involves abstract ideas or simple, known methods that have been implemented in the software/computer realm. For instance, if the concept of emails were brand new today it likely wouldn’t be patentable because it’s simply taking a known concept, sending communication to someone, and implementing it through software and networks. 

So back to the podcasts. I figured the patent would be found invalid under 101 because the idea of disseminating serialized media is not and was not new at the time the patent was filed. All that was new was doing so through software and networks.

But, again, at the time of the PTAB proceeding Alice had not been decided, and so the PTAB and CAFC weren’t asked to review that question. The EFF only raised the issue of 102 and 103, pointing to prior art that disclosed the claims of the podcast patent. The PTAB and CAFC held that the prior art discloses the claims of the podcast patent and therefore the invention was and is unpatentable.

I’m curious as to what would have been the outcome if 101 were the section used for the challenge.

Either way, the claims of Personal Audio’s patent that had been used to threaten suit and gouge podcasts and online video creators is invalid, and so you are free to create.

Silicon Valley season 5 episode 7 “The Patent Troll.”