Case: 20-1921 Document: 92 Page: 1 Filed: 02/18/2022
NOTE: This disposition is nonprecedential.
United States Court of Appeals
for the Federal Circuit
______________________
ZAXCOM, INC.,
Appellant
v.
LECTROSONICS, INC.,
Cross-Appellant
v.
ANDREW HIRSHFELD, PERFORMING THE
FUNCTIONS AND DUTIES OF THE UNDER
SECRETARY OF COMMERCE FOR
INTELLECTUAL PROPERTY AND DIRECTOR OF
THE UNITED STATES PATENT AND TRADEMARK
OFFICE
Intervenor
______________________
2020-1921, 2020-1922, 2020-1943, 2020-1944
______________________
Appeals from the United States Patent and Trademark
Office, Patent Trial and Appeal Board in Nos. IPR2018-
01129, IPR2018-01130.
______________________
Decided: February 18, 2022
______________________
Case: 20-1921 Document: 92 Page: 2 Filed: 02/18/2022
2 ZAXCOM, INC. v. LECTROSONICS, INC.
ROBERT GREENSPOON, Dunlap Bennett & Ludwig
PLLC, Chicago, IL, argued for appellant. Also represented
by GREGORY J. GONSALVES, Vienna, VA; RITA CHIPPERSON,
Chipperson Law Group, P.C., New York, NY.
CORY C. BELL, Finnegan, Henderson, Farabow, Garrett
& Dunner, LLP, Boston, MA, argued for cross-appellant.
Also represented by J. DEREK MCCORQUINDALE, Reston,
VA.
MOLLY R. SILFEN, Office of the Solicitor, United States
Patent and Trademark Office, Alexandria, VA, argued for
intervenor. Also represented by THOMAS W. KRAUSE,
ROBERT MCBRIDE, ROBERT J. MCMANUS, FARHEENA
YASMEEN RASHEED.
DAVID P. SWENSON, Patterson Thuente Pedersen, PA,
Minneapolis, MN, for amicus curiae US Inventor, Inc.
MATTHEW JAMES DOWD, Dowd Scheffel PLLC, Wash-
ington, DC, for amicus curiae Paul R. Michel.
______________________
Before LOURIE, SCHALL, and TARANTO, Circuit Judges.
TARANTO, Circuit Judge.
Lectrosonics, Inc. petitioned the Patent and Trade-
mark Office to institute two inter partes reviews, under
35
U.S.C. §§ 311–19, of claims of two patents owned by Zax-
com, Inc.—claims 7, 8, 11, 12, 14, and 15 of
U.S. Patent No.
7,929,902, and claims 1–4, 9, 10, 12, 15, 31, 36, 37, and 41–
45 of
U.S. Patent No. 8,385,814. After institution of the
requested reviews, Zaxcom filed, in each proceeding, a mo-
tion to replace the challenged original claims with corre-
sponding substitute claims if the Patent Trial and Appeal
Board held the challenged original claims unpatentable.
The Board issued two final written decisions holding all
challenged claims unpatentable, and it therefore addressed
Case: 20-1921 Document: 92 Page: 3 Filed: 02/18/2022
ZAXCOM, INC. v. LECTROSONICS, INC. 3
Zaxcom’s proposed substitute claims, which it allowed to be
added to the patents because Lectrosonics had not proved
them unpatentable. Lectrosonics, Inc. v. Zaxcom, Inc., No.
IPR2018-01129,
2020 WL 407145, at *31 (P.T.A.B. Jan. 24,
2020); Lectrosonics, Inc. v. Zaxcom, Inc., No. IPR2018-
01130,
2020 WL 407146, at *27–28 (P.T.A.B. Jan. 24,
2020). Zaxcom appeals the Board’s rejection of the original
claims, and Lectrosonics appeals the Board’s upholding of
the substitute claims. We affirm the determinations in
both IPRs.
I
The ’814 and ’902 patents share a specification, and the
audio recording technology described and claimed is simi-
lar to that in
U.S. Patent No. 9,336,307, discussed in the
opinion we issue today in Zaxcom, Inc. v. Lectrosonics, Inc.,
Nos. 20-1350, -1405 (“’307 Decision”). The specification
also discloses a “master timecode generator” that transmits
time code references to local audio devices, which synchro-
nize their local timecode generators with the master. ’902
patent, col. 16, lines 30–37. The ’902 patent had two chal-
lenged original independent claims: a system claim (claim
7) and a method claim (claim 12). See
id., col. 24, line 51,
through col. 25, line 10;
id., col. 25, line 66, through col. 26,
line 17. The ’814 patent had one challenged original inde-
pendent system claim (claim 1). See ’814 patent, col. 23,
lines 18–41.
Original independent claim 12 of the ’902 patent and
its dependent claims are relevantly similar to claim 12 of
the ’307 patent and its dependent claims. The broadest
reasonable interpretation of original claim 12 of the ’902
patent encompasses both multitrack creation and dropout
repair. We affirm the Board’s determination as to claim 12
of the ’902 patent and its dependents for the same reasons
that, in the ’307 Decision, we have affirmed the Board’s de-
terminations as to the original claims at issue there. We
Case: 20-1921 Document: 92 Page: 4 Filed: 02/18/2022
4 ZAXCOM, INC. v. LECTROSONICS, INC.
limit our discussion here to claim 7 of the ’902 patent and
claim 1 of the ’814 patent. 1
First, we agree with the Board that the broadest rea-
sonable construction of “wearable,” found in both independ-
ent claims, is “suitable and in a condition to be worn,”
consistent with its dictionary definition. Lectrosonics,
2020
WL 407145, at *4. Zaxcom argues for a narrower meaning,
requiring that the wearable item be “small, lightweight,
unobtrusive, easily hidden, not visible, and designed to be
worn on the body of a creator of audio (i.e., performer).”
Id.
We see no persuasive basis, including in the prosecution
history cited by Zaxcom, for disagreeing with the Board’s
conclusion that the broadest reasonable interpretation is
not limited by the set of restrictions proposed by Zaxcom,
but extends, even in the context of these patents, to the dic-
tionary-based construction adopted by the Board. And un-
der that construction, there is no dispute that Strub (
U.S.
Patent No. 6,825,875), discloses a “wearable” device as re-
quired by the patent claims at issue here. Strub, col. 4,
lines 29–31.
Second, we hold that the Board had before it substan-
tial evidence to support its finding that Strub and Woo
(
U.S. Patent No. 5,479,351) disclosed a “master timecode
generator,” a term for which there is no claim construction
dispute in this appeal. The Board’s finding is supported by
Woo’s disclosure of a master clock for synchronizing record-
ings “from a plurality of independent recording devices at
a shared performance,” Woo, col. 4, lines 62–66, col. 7, lines
49–50, and of jam synchronization to allow “a time code
generator to follow the time code off another source,”
id.,
1 The Board’s discussion of claim 7 of the ’902 patent
in IPR2018-01129 is representative of its discussion of the
similar claim 1 of the ’814 patent in IPR2018-01130, and
thus this opinion cites only the IPR2018-01129 Board deci-
sion.
Case: 20-1921 Document: 92 Page: 5 Filed: 02/18/2022
ZAXCOM, INC. v. LECTROSONICS, INC. 5
col. 3, lines 37–39, along with Strub’s disclosure of time-
stamping and synchronizing recordings, Strub, col. 79, line
54, through col. 80, line 7.
Finally, the Board had substantial evidence to support
its determination that Zaxcom’s evidence of industry praise
and long-felt need lacked a nexus to the claims. Lectroson-
ics,
2020 WL 407145, at *14. The two independent claims
at issue claim systems for time-stamping data from local
audio devices, while the evidence of industry praise was di-
rected primarily to the dropout repair capability of Zax-
com’s systems, as the Board made clear in the decision we
have affirmed in the ’307 Decision. Thus, the Board
properly held all original claims unpatentable.
II
Lectrosonics, in its cross-appeal, challenges the Board’s
determination that the substitute claims are not unpatent-
able. Lectrosonics’s arguments in its cross-appeal are ma-
terially the same as the cross-appeal arguments we have
rejected in the ’307 Decision. We see no need for a separate
discussion of the cross-appeal here. We conclude that the
Board properly held all substitute claims not unpatentable.
III
For the foregoing reasons, we affirm the final written
decisions of the Patent Trial and Appeal Board in IPR2018-
01129 and IPR2018-01130.
The parties shall bear their own costs.
AFFIRMED
