January 10, 2020

IPR Decision Wipes Out Patent Owner’s Earlier Victory in District Court

In Personal Audio, LLC, v. CBS Corporation, [2018-2256] (January 10, 2020), the Federal Circuit affirmed the district court judgment of infringement of U.S. Patent No. 8,112,504 on a a system for organizing audio files by subject matter into “program segments.”

A jury found that three claims of the ‘850 patent were not invalid and were infringed. Subsequently, the PTAB issued a final written decision determining that those claims are unpatentable. The district court, with the parties’ consent, stayed entry of its judgment in this case until completion of the Federal Circuit review of the PTAB decision. The Federal Circuit affirmed the PTAB, and the parties agreed that CBS was entitled to entry of final judgment in its favor.

Personal Audio then appealed.

The Federal Circuit said that, to the extent that Personal Audio challenges the Board’s final written decision, the district court lacked jurisdiction to consider the challenges and the Federal Circuit had no jurisdiction to review them on appeal from the district court’s judgment. The Federal Circuit said that the exclusive avenue for review of the PTAB decisions was a direct appeal from the final written decision.

The Federal Circuit further added that, to the extent that Personal Audio challenges the district
court’s determination of the consequences of the affirmed final written decision, Personal Audio conceded that governing precedent required judgment for CBS, and thus the Federal Circuit affirmed.