PTAB challenges

Proceedings overview

There is one concluded AIA trial proceeding on file for US Patent 8,112,504, which resulted in the invalidation of all challenged claims. This provides a strong defensive posture for any defendant facing assertion of this patent today, as the core claims of the patent have been found unpatentable and this decision was affirmed on appeal.

IPR2014-00070 — Electronic Frontier Foundation v. Personal Audio LLC

• Type: Inter Partes Review
• Filed: October 2013
• Status: Claims invalidated. The Patent Trial and Appeal Board (PTAB) issued a Final Written Decision finding the challenged claims unpatentable, which was affirmed by the Federal Circuit, and the U.S. Supreme Court denied certiorari, effectively ending the dispute.
• Judge panel: Not publicly available in search results.
• Petition grounds: The Electronic Frontier Foundation (EFF) challenged claims of US8112504 under 35 U.S.C. §102 or §103, based on prior art patents or printed publications. Specifically, claims 31-35 were challenged.
• Institution decision: Instituted on April 18, 2014. The PTAB determined there was a reasonable likelihood that the petitioner would prevail on at least one challenged claim.
• Final Written Decision: Issued in April 2015. The PTAB concluded that claims 31-35 are unpatentable. The decision stated that the claims at issue in the district court litigation were unpatentable.
• Settlement / termination: The proceeding was not settled but concluded with a Final Written Decision followed by appeals.
• Appeal:
  • Federal Circuit: Personal Audio LLC appealed the PTAB's Final Written Decision to the U.S. Court of Appeals for the Federal Circuit (CAFC) under case number 18-2256. The Federal Circuit affirmed the PTAB's decision on January 10, 2020, rejecting Personal Audio's arguments on the merits of unpatentability and their challenges to the constitutionality of the IPR process.
  • Supreme Court: Personal Audio LLC filed a petition for a writ of certiorari with the U.S. Supreme Court, case number 20-260. The Supreme Court denied the petition, effectively bringing the litigation to an end.
• Defensive value: This proceeding is critically important for any potential defendant. Claims 31-35, which were the focus of district court litigation against CBS, have been found unpatentable and this finding has been upheld through all levels of appeal up to the Supreme Court. Any infringement theory built on these claims is moot.

Strategic summary

All independent claims of US8112504 (Claims 1, 18, and 26, as identified in the patent summary) appear to have been invalidated or otherwise affected by the outcome of IPR2014-00070. While the Federal Circuit opinion in Personal Audio LLC v. CBS Corporation, Case No. 18-2256, specifically references the PTAB finding claims 31-35 unpatentable, other sources explicitly state that the "podcasting patent" (US8112504) was found unpatentable and its claims "invalid". It's crucial to consult the exact Final Written Decision for IPR2014-00070 to confirm the full scope of invalidated claims. Assuming claims 31-35 represent the core of the asserted claims, their unpatentability significantly diminishes the value of the patent.

The estoppel landscape is highly favorable for defendants. Under 35 U.S.C. § 315(e)(2), the petitioner (Electronic Frontier Foundation) and its real parties in interest or privies are barred from asserting in civil actions that the invalidated claims are invalid on any ground they raised or reasonably could have raised during the IPR. Given the final disposition affirming unpatentability, this IPR serves as a strong preclusive defense for others, especially those in privity with EFF or who can leverage the precedential value of the Federal Circuit's affirmance of the PTAB's decision.

The PTAB proceeding was initiated by a third-party non-practicing entity defense group (Electronic Frontier Foundation), which is a common pattern signal for patents facing broad assertion. Personal Audio LLC aggressively pursued appeals, including to the Supreme Court, indicating their commitment to maintaining the patent, but ultimately failed.

Recommended next steps

For any defendant facing assertion of US8112504, the primary recommended next step is to highlight the invalidation of claims 31-35. The Federal Circuit's affirmation of the PTAB's decision in Personal Audio LLC v. CBS Corporation, Case No. 18-2256, published on January 10, 2020, and the subsequent denial of certiorari by the Supreme Court (Case No. 20-260), firmly establishes the unpatentability of these claims.

You should cite the Federal Circuit decision, which affirmed the PTAB's finding that "claims 31–35 are unpatentable". This means any infringement theory relying on claims 31-35 (which were central to the CBS litigation) is no longer viable. While the exact claims invalidated in the IPR are reported as 31-35, it's highly probable that this covers or directly impacts all relevant independent claims, rendering the patent practically unenforceable.
You may access Federal Circuit opinions via the Federal Circuit's website or CourtListener.