Electronic Frontier Foundation v. Personal Audio LLC

1. Case Identification

• Case #: IPR2014-00070
• Patent #: 8,112,504
• Filed: October 16, 2013
• Petitioner(s): Electronic Frontier Foundation
• Patent Owner(s): Personal Audio, LLC
• Challenged Claims: 31-35

2. Patent Overview

• Title: SYSTEM FOR DISSEMINATING MEDIA CONTENT REPRESENTING EPISODES IN A SERIALIZED SEQUENCE
• Brief Description: The ’504 patent relates to a system for distributing a series of media episodes over the Internet. The system uses a central "compilation file" located at a predetermined URL, which is updated over time to include descriptive information and links for newly available episodes, enabling users to access a continuously updated series of content.

3. Grounds for Unpatentability

Ground 1: Anticipation over NCSA GotW page - Claims 31-35 are anticipated by the NCSA GotW page under 35 U.S.C. §102(b).

• Prior Art Relied Upon: NCSA GotW page (a web page for the "Geek of the Week" Internet radio show as it existed in April 1993).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner argued that the NCSA "Geek of the Week" (GotW) web page was a publicly available printed publication that disclosed every limitation of the challenged claims. The web page itself functioned as the claimed "compilation file," as it was updated weekly with new radio show episodes. The page contained displayable text describing each episode segment and hyperlinks (the "episode URLs") that pointed to corresponding compressed audio files (the "media files"). Petitioner contended that the web server hosting this page was the claimed "apparatus," which inherently possessed the claimed processor, communication interface, and data storage server necessary to make the web page accessible over the Internet. Dependent claims were met by the use of compressed audio and text file links for show overviews.

Ground 2: Anticipation over CBC Radio Article - Claims 31-35 are anticipated by the CBC Radio Article under 35 U.S.C. §102(a).

• Prior Art Relied Upon: Patrick, A. et al, CBC Radio on the Internet: An Experiment in Convergence, 21 Canadian J. of Comm’n 1 (Jan. 1, 1996) (“CBC Radio Article”).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner asserted the CBC Radio Article described a well-publicized trial beginning in December 1993 that made Canadian Broadcasting Corporation radio programs available on-demand over the Internet. The article disclosed a system that meets all limitations of claim 31. The apparatus was a "well known" web server that hosted a website (the claimed "compilation file") at a predetermined location. This website was regularly updated with new episodes of programs like "Quirks & Quarks" and daily newscasts. The site provided descriptive text and links (episode URLs) that allowed users to download the corresponding media files (compressed audio). The dependent claims were met by the article’s discussion of using compressed audio to manage bandwidth and providing supplemental text files.

Ground 3: Obviousness over Internet CNN Newsroom - Claims 31-35 are obvious over Internet CNN Newsroom under 35 U.S.C. §103.

• Prior Art Relied Upon: Compton, C., Internet CNN NEWSROOM: The Design of a Digital Video News Magazine (a master's thesis available at the MIT library on August 10, 1995) (“Internet CNN Newsroom”).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner argued Internet CNN Newsroom described an apparatus that delivered episodic video news segments via a web server. The system automatically generated a daily HTML "Table of Contents" file that included text summaries and links to MPEG-1 media files for each news story. Petitioner contended this system disclosed all elements of claim 31 except for storing an updated version of a compilation file at a single, predetermined URL. Instead, the reference generated a new compilation file each day at a new URL structured by date (e.g., .../DATE/contents.html).
  • Motivation to Combine: The motivation was to apply the disclosed system to other types of serialized content, an extension explicitly suggested by the reference itself (e.g., "sitcoms or soap operas"). For such content, which is not tied to a specific date like daily news, a POSITA would have found it logical and obvious to use a single, persistent URL for the compilation file and simply update it with new episodes rather than creating a new file at a new URL each time.
  • Expectation of Success: A POSITA would have had a high expectation of success in making this trivial modification, as it involved a simple design choice of file management (updating an existing file versus creating a new one) using well-understood web server technology to achieve a predictable result.
• Additional Grounds: Petitioner asserted additional challenges including anticipation under §102 over SurfPunk (a 1993 technical journal that republished the NCSA GotW page) and obviousness under §103 over the collective "Geek of the Week publications."

4. Key Claim Construction Positions

• "Compilation file": Petitioner argued this term should be construed simply as any ordinary file, such as an HTML web page, that contains information about multiple episodes and satisfies the other functional requirements of the claim. This construction was central to mapping prior art web pages directly onto this claim limitation.
• "Episode URL": Petitioner proposed that this term includes relative hyperlinks within an HTML document, not just fully qualified, absolute URLs. This was critical for arguing that the links on the NCSA GotW and other prior art web pages met the limitation of specifying storage locations for media files.

5. Key Technical Contentions (Beyond Claim Construction)

• Inherent Disclosure of Server Apparatus: A core technical contention underpinning multiple grounds was that a prior art printed publication describing a publicly accessible web page inherently discloses the existence of the apparatus required to serve it. Petitioner argued that a POSITA would have understood that any web page, such as the NCSA GotW page, necessarily required a web server (the "apparatus") comprising a processor, data storage, and a communication interface to receive requests and transmit the page's data over the Internet.

6. Relief Requested

• Petitioner requests institution of an inter partes review and cancellation of claims 31-35 of the ’504 patent as unpatentable.