The Electronic Frontier Foundation (EFF) has won a small (but significant) victory in its challenge to the so-called “podcast patent” claims of technology company Personal Audio. The Patent Trial and Appeal Board (PTAB) has found that the EFF has provided sufficient prior art evidence in its case against the podcast patent.

In October of 2013, the EFF filed a petition of inter partes review (IPR) with the PTAB. The EFF explains:

“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.”

The EFF noted that the PTAB rejected its claim that Carl Malamud’s “Geek Of The Week” counts as prior art. But the PTAB did accept the EFF’s prior art examples of CNN and CBC. The EFF explains this decision:

“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.”

Overall, the EFF is happy with the PTAB’s decision on this prior art evidence. However, the EFF is stressing that this is NOT a final decision. Personal Audio still has the ability to present its own evidence and to defend the patent before the PTAB makes a final decision. Ongoing information about the proceeding can be found on the EFF’s IPR Schedule page as well as the EFF’s page dedicated to the patent case.

Posted by Shawn Thorpe