October 20, 2021

Volume XI, Number 293

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October 19, 2021

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October 18, 2021

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Non-Profit Organization Appellee Described as Representing the Public Interest Not Excluded from Appearing in Court to Defend a PTAB Decision

PERSONAL AUDIO v. ELECTRONIC FRONTIER FOUNDATION: August 7, 2017.  Before Newman, Clevenger, and O’Malley

Takeaway:

  • A non-profit organization appellee described as representing the public interest is not excluded from appearing in court to defend a PTAB decision in view of the Consumer Watchdog decision with the appellant satisfying the Article III standing requirement.

Procedural Posture:

Personal Audio appealed the decision of the PTAB in inter partes review (IPR) finding claims directed to  a system and apparatus for storing and distributing episodic media files unpatentable under 35 U.S.C. §§ 102 and 103.  CAFC affirmed.

Synopsis:

  • Standing: The CAFC held that the appelleedescribed as a non-profit organization advocating in the public interest of consumers of digital technology, was not excluded from appearing in court to defend the PTAB decision with Article III satisfied as to the appellant.  Standing to appeal is measured for the party “seek[ing] entry to the federal courts for the first time in the lawsuit.” Consumer Watchdog raises no question as to whether the appellee had standing.

  • Claim Construction: The CAFC concluded that the PTAB correctly construed the terms “episode” and “updated version of a compilation file” based on the patent specification.  The temporal claim limitations did not restrict the application to episodes produced at different times, but referred to the conditions under which an updated version of a compilation file was produced.  The claim language and the specification did not require the updated version of the compilation file to be created from a previously existing compilation file.

  • Anticipation/Obviousness: The CAFC affirmed the PTAB’s judgment of unpatentability for anticipation and/or obviousness.  Substantial evidence supported the PTAB’s findings that both references disclosed “episodes.” The PTAB correctly found that both the first reference’s disclosure of automatically generating and storing a new version of the “contents.html” file with the day’s news stories and the second reference’s disclosure of making episodes of a science magazine show available each week along with accompanying text satisfied the claim limitation “updated version of a compilation file.”  Further, substantial evidence supported the PTAB’s findings that one of the references disclosed “two processors” and taught the claimed “back-end configuration” of the processors and servers.

Copyright © 2021, Hunton Andrews Kurth LLP. All Rights Reserved.National Law Review, Volume VII, Number 298
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About this Author

Gregory L. Porter, Intellectual Property Attorney, Andrews Kurth, Law Firm
Partner

Greg Porter has extensive experience representing and advising companies in all aspects of patent and trade secret law, including acting as lead counsel in successful jury trials and preliminary injunction hearings, as well as advising on patent procurement and designing around competitor's patents. Greg also has counseled Fortune 500 clients on the creation and management of their patent portfolios.

Over the years, Greg has successfully litigated cases in a diverse range of technologies from oil field tools to polymers and computer networking. Greg has drafted and...

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Zaed Billah, Andrews Kurth Law Firm, Patent Litigation Attorney
Associate

Zaed has a decade of experience with patent litigation in U.S. District Courts and the U.S. International Trade Commission. He also has substantial experience with inter partes review proceedings in the U.S. Patent and Trademark Office and with appeals before the U.S. Court of Appeals for the Federal Circuit.

Zaed’s litigation responsibilities include taking and defending fact and expert depositions, writing motions and briefs, examining witnesses at trial, and preparing witnesses for deposition and trial. His recent litigations...

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Qi Zhao patent law attorney Andrews Kurth Law Firm
Associate

Qi has over eight years of experience in assisting clients on patent matters. She has handled more than 100 opinion matters in the areas of pharmaceuticals, chemicals and medical devices. She prepares infringement, validity and freedom-to-operate opinions relating to filings of Abbreviated New Drug Applications and 505(b)(2) New Drug Applications by a generic drug manufacturer. She also prepares and prosecutes patent applications in various technical areas, including small molecule pharmaceuticals, biologics, antibodies, vaccines, diagnostic assays, personalized medicine, food products,...

202.662.2392
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