[co-author: Stephanie Brooker, Legal Intern]
In Personal Audio, LLC. v. Electronic Frontier Foundation, No. 2016-1123 (Fed. Cir. Aug. 7, 2017), the Federal Circuit reviewed a Patent Trial and Appeal Board (“PTAB”) decision invalidating claims of U.S. Patent No. 8,112,504 (“the ’504 Patent”). Personal Audio, LLC. was the patentee of the ’504 Patent. Electronic Frontier Foundation (“EFF”) is a non-profit, public interest organization representing digital technology consumers. EFF petitioned to review the ’504 patent based on two printed publications. During an inter partes review, the PTAB found claims of the ’504 Patent to be anticipated by and obvious over the printed publications. Personal Audio, LLC. sought appeal to the Federal Circuit.
The Federal Circuit held that EFF being a non-profit, public interest organization did not constitutionally exclude it from defending its successful inter partes review outcome. Article III of the U.S. Constitution provides for judicial review by federal courts over cases or controversies for those who have standing. In Consumer Watchdog. v. Wisconsin Research Foundation, 753 F.3d 1258 (Fed. Cir. 2014), Appellant Consumer Watchdog, a non-profit, public interest organization, was found not to have standing on appeal of its unsuccessful inter partes review outcome. Consumer Watchdog had sought judicial review by the Federal Circuit. The court noted that while Consumer Watchdog did have the ability to seek the inter partes review by the PTAB, it still must meet the Article III requirements to seek review by the Federal Circuit. The mere ability to seek review by an administrative agency is not enough, on its own, to fulfill the Article III standing requirement. However, in Personal Audio, LLC. v. Electronic Frontier Foundation, EFF was not the party seeking judicial review of the PTAB decision. Instead, the patentee sought review. As cancellation of some of the patentee’s claims altered its legal rights, it had standing. EFF was merely a responding party in the judicial review process and thus was not constitutionally excluded from doing so based on standing.
Ultimately, the PTAB’s findings of anticipation and obviousness were affirmed by the Federal Circuit. Claim construction of the terms “episode,” “updated version of a compilation file,” and “back-end configuration” were reviewed by the court. Such review was fact specific. The court considered extrinsic evidence but found no substantial evidence to overturn the PTAB’s findings of anticipation and obviousness in view of the printed publications.