EFF Files for Inter Partes Review of Podcasting Patent

, Corporate Counsel

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Employing one of the new provisions of the America Invents Act, the Electronic Frontier Foundation on Wednesday challenged the so-called “podcasting patent” that one company has asserted against podcasters in order to obtain licensing fees.

The EFF filed a petition for inter partes review with the U.S. Patent and Trademark Office to challenge a patent held by Personal Audio LLC. In January, Personal Audio began suing individual podcasters, including comedian Adam Carolla, and three major television networks, claiming they were infringing its patent. The company has also sent demand letters to other podcasters requesting they pay a licensing fee, EFF said.

Personal Audio’s business model is based on leveraging its patents and does not do any podcasting itself—making it a non-practicing entity, also known disparagingly as a “patent troll.”

"As we show in our petition, Personal Audio is not the true inventor of this technology and should not be demanding a payout from today's podcasters," EFF staff attorney Daniel Nazer said in a statement. "If you look into the history of podcasting, you won't see anything about Personal Audio."

Nazer told CorpCounsel.com that inter partes review is a great way to challenge a patent because it is cheaper and faster than conventional litigation. But the expense is still prohibitive for most podcasters who work out of a garage or attic, he said, noting that it costs $23,000 to file a petition for review. “It shows how stacked the system is against small players,” he said.

Attorneys from Greenberg Traurig, led by IP partner Nicholas Brown in San Francisco, worked pro bono on the petition with attorneys from EFF, as did lawyers from the Cyberlaw Clinic at Harvard's Berkman Center for Internet and Society, Nazer said.

EFF also used crowdsourcing to find prior art or earlier examples of podcasting that could be used to invalidate the patent. In the petition, EFF cites three examples: Internet Pioneer Carl Malamud's "Geek of the Week" online radio show, and web broadcasts by CNN and the Canadian Broadcasting Corporation (CBC).

Demonstrating the public outrage over patent trolls and the popularity of podcasts, members of the public donated $76,160 to fund EFF’s “Save Podcasting” campaign—more than twice the amount EFF originally requested when it launched the fundraiser in May.

The donations will be used to pay the fees and costs associated with the petition, which are primarily PTO filing fees, EFF said. Any funds remaining after the fees are paid will go towards EFF's ongoing patent reform work.

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