Case: 20-1350 Document: 71 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NOTE: This disposition is nonprecedential.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
______________________
2020-1350, 2020-1405
______________________
Appeals from the United States Patent and Trademark
Office, Patent Trial and Appeal Board in No. IPR2018-
00972.
______________________
Decided: February 18, 2022
______________________
Case: 20-1350 Document: 71 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 J. MCMANUS, FARHEENA YASMEEN RASHEED.
______________________
Before LOURIE, SCHALL, and TARANTO, Circuit Judges.
TARANTO, Circuit Judge.
Lectrosonics, Inc. petitioned the Patent and Trade-
mark Office to institute an inter partes review, under
35
U.S.C. §§ 311–19, of all claims of
U.S. Patent No.
9,336,307, which is owned by Zaxcom, Inc. After institu-
tion of the requested review, Zaxcom filed a motion to re-
place the original claims 1–14 with fourteen corresponding
claims—substitute claims 15–28—if the Patent Trial and
Appeal Board held the original claims unpatentable. The
Board issued a final written decision holding all original
claims unpatentable, and it therefore addressed Zaxcom’s
proposed substitute claims, which it allowed to be added to
the patent because Lectrosonics had not proved them un-
patentable. Lectrosonics, Inc. v. Zaxcom, Inc., No.
IPR2018-00972,
2019 WL 5849856, at *29 (P.T.A.B. Nov.
7, 2019). Zaxcom appeals the Board’s rejection of the orig-
inal claims, and Lectrosonics appeals the Board’s approval
of the substitute claims. We affirm both determinations.
Case: 20-1350 Document: 71 Page: 3 Filed: 02/18/2022
ZAXCOM, INC. v. LECTROSONICS, INC. 3
I
The ’307 patent describes and claims a system and
method for recording and processing audio received from
wireless devices. The specification describes at least the
following arrangement: Each of a plurality of wireless de-
vices, upon picking up audio, both self-records the audio
and sends it wirelessly to a remote recorder. ’307 patent,
col. 2, line 54, through col. 3, line 14. The recordings are
time-synchronized so that “multiple individually recorded
audio tracks” can be “combined into one or more multi-
track audio files.”
Id., col. 4, lines 3–14. One reason for the
local recording is that wireless transmission to the remote
recorder may be imperfect due to dropout or noise,
id., col.
4, lines 15–25, and the locally maintained data can be used
for repair—specifically, to replace corrupted data received
wirelessly at the remote recorder,
id., col. 12, lines 59–63.
The patent had two independent original claims: an ap-
paratus claim (claim 1) and a method claim (claim 12).
Both claims require wearable local audio devices that wire-
lessly transmit local audio to a remote recorder and also
locally record audio in the memory of the device. And both
claims required that local audio data be “combined” with
remotely recorded audio data. See
id., col. 23, lines 22–42
(claim 1);
id., col. 24, lines 15–32 (claim 12).
We agree with the Board’s construction of the claims to
encompass both embodiments described in the specifica-
tion, i.e., both the repair of dropouts and the creation of a
multitrack file. Lectrosonics,
2019 WL 5849856, at *4. Un-
der the claims’ broadest reasonable interpretation (BRI),
local and remote audio data may be “combined” either to
repair corrupted audio data received by the remote re-
corder or to create a multitrack audio file. In adopting that
construction under the BRI standard, the Board correctly
rejected Zaxcom’s argument for a requirement that the
claimed “local audio data” and “remote audio data” derive
from the same source (i.e., the same local audio event).
Id.
Case: 20-1350 Document: 71 Page: 4 Filed: 02/18/2022
4 ZAXCOM, INC. v. LECTROSONICS, INC.
Given the claim construction, the Board had substan-
tial evidence to support its findings underlying the conclu-
sion that claims 1–11 were unpatentable for obviousness
over Strub (
U.S. Patent No. 6,825,875) when combined
with either Nagai (U.S. Publication No. 2002/0159179 A1)
or Gleissner (U.S. Publication No. 2004/0028241 A1), as
well as its finding that claims 12–14 were anticipated by
Strub. The Strub patent discloses a “small, lightweight,
wearable recording unit,” Strub, col. 4, lines 29–31, that
records and transmits audio data that can be used by other
units,
id., col. 12, lines 4–39, and “blend[s]” audio record-
ings from different devices,
id., col. 86, lines 1–9. The
Board had substantial evidence for its determination that
Strub alone anticipated claims 12–14. Lectrosonics,
2019
WL 5849856, at *11. And it also had substantial evidence
that a relevant artisan would have been motivated to com-
bine Strub with either Nagai or Gleissner, both of which
undisputedly disclose the “audio input port” of claims 1–11.
Id. at *7–10.
Zaxcom argues, as to claims 1–11, that no obviousness
conclusion should be drawn because its evidence of indus-
try praise and long-felt need should have outweighed the
above-recited determinations based on the prior art. But
given the adopted claim construction, the Board deter-
mined that Zaxcom’s evidence of such objective indicia
lacked the nexus to the claimed invention required to alter
a conclusion of obviousness that would be justified based
on the prior-art analysis.
Id. at *10–11. Zaxcom specifi-
cally focused on a Technical Achievement Academy Award,
J.A. 4272, an Engineering Emmy Award, J.A. 4304, and
declarations from sound mixers, J.A. 4273–78; J.A. 4281–
84, praising Zaxcom’s wireless recording systems. The
Board reasonably found that the praise was primarily di-
rected to the systems’ critical feature of dropout repair,
while the claims of the ’307 patent, under the BRI construc-
tion properly adopted, are broadly directed to wirelessly
transmitting audio data and combining local and remote
Case: 20-1350 Document: 71 Page: 5 Filed: 02/18/2022
ZAXCOM, INC. v. LECTROSONICS, INC. 5
audio data from a plurality of devices—a technique already
known in the prior art. The evidence, in short, says noth-
ing to suggest non-obviousness of one of the two types of
systems and methods within the claims’ coverage. We
therefore agree with the Board that, based on that finding,
the objective indicia evidence is insufficient to overcome
the prior-art evidence of obviousness. See Intercontinental
Great Brands LLC v. Kellogg North America Co.,
869 F.3d
1336, 1343–44, 1347 (Fed. Cir. 2017) (overall obviousness
determination is a legal one based on weighing of prior-art
and objective-indicia facts). Thus, the Board properly held
claims 1–11 unpatentable for obviousness.
II
On Lectrosonics’s cross appeal, we affirm the Board’s
determination that the substitute claims are not unpatent-
able. The substitute claims narrow the “combined” claim
limitation to a limitation that requires “replacing” the re-
motely recorded data with local audio data from a device’s
memory. Lectrosonics,
2019 WL 5849856, at *16–17. Alt-
hough the claim language does not expressly limit the “re-
placing” to situations where there is a transmission error,
Lectrosonics accepts that the substitute claims are directed
to dropout repair.
We see no reversible error in the Board’s determina-
tions that substitute claims 15–28 are not unpatentable for
obviousness over Strub and Wood (Int’l Publication No. WO
2004/091219 A1), alone or in combination with Nagai or
Gleissner. As to the prior-art analysis, we mention only
one point—concerning the combination with Wood needed
for all claims. Although Wood discloses a method of repair-
ing dropouts in a TV broadcast signal, Wood, p. 1, lines 28–
30, the Board had substantial evidence to support its find-
ing that there was only a weak motivation to combine
Wood’s (non-wearable) TV system with the wearable audio
device in Strub, particularly because Strub did not contem-
plate repairing defects caused by transmission errors.
Case: 20-1350 Document: 71 Page: 6 Filed: 02/18/2022
6 ZAXCOM, INC. v. LECTROSONICS, INC.
Lectrosonics,
2019 WL 5849856, at *23 (citing Strub, col.
48, lines 18–30, col. 85, lines 28–41).
Having found the asserted prior-art basis for an obvi-
ousness conclusion relatively weak in light of the narrowed
scope of the claims, the Board determined that the objec-
tive indicia evidence was strong in light of that narrowed
scope—strong enough to support an overall conclusion of
nonobviousness.
Id. at *23–29. We affirm the Board’s find-
ings and ultimate conclusion. In particular, the Board de-
termined that Zaxcom’s evidence of industry praise and
long-felt need was entitled to a presumption of nexus, not-
ing that these indicia were commensurate in scope with the
claims as now narrowed,
id. at *25, a determination that
comports with the legal standards for a presumption, see,
e.g., Fox Factory, Inc. v. SRAM, LLC,
944 F.3d 1366, 1373
(Fed. Cir. 2019); Polaris Indus., Inc. v. Arctic Cat, Inc.,
882
F.3d 1056, 1072 (Fed. Cir. 2018). The Board also reasona-
bly found that the evidence positively showed a nexus, Lec-
trosonics,
2019 WL 5849856, at *25, as the substitute
claims are undisputedly directed to dropout repair in sys-
tems with wearable recording devices, and this feature was
discussed in at least the Emmy Award, J.A. 4304, and sub-
stantial portions of the declarations, see, e.g., J.A. 4276–77
¶ 6, J.A. 4283–84 ¶ 6. We see no basis for reversing the
Board’s findings or the conclusion that these findings out-
weigh the weak prior-art case and therefore warrant rejec-
tion of the obviousness challenge to the substitute claims.
III
For the foregoing reasons, we affirm the final written
decision of the Patent Trial and Appeal Board.
The parties shall bear their own costs.
AFFIRMED
