Trials@uspto.gov
`571-272-7822
`
`
`
`
`
`
`
`Paper 41
`Date: November 7, 2019
`
`
`
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`LECTROSONICS, INC.,
`Petitioner,
`
`v.
`
`ZAXCOM, INC.,
`Patent Owner.
`____________
`
`IPR2018-00972
`Patent 9,336,307 B2
`____________
`
`
`Before SCOTT R. BOALICK, Chief Administrative Patent Judge,
`KALYAN K. DESHPANDE, and LYNNE E. PETTIGREW, Administrative
`Patent Judges.
`
`DESHPANDE, Administrative Patent Judge.
`
`
`
`
`JUDGMENT
`Final Written Decision
`Determining All Challenged Claims Unpatentable
`Granting Patent Owner’s Motion to Amend
`35 U.S.C. § 318(a)
`
`
`
`
`
`
`
`
`
`
`
`571-272-7822
`
`
`
`
`
`
`
`Paper 41
`Date: November 7, 2019
`
`
`
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`LECTROSONICS, INC.,
`Petitioner,
`
`v.
`
`ZAXCOM, INC.,
`Patent Owner.
`____________
`
`IPR2018-00972
`Patent 9,336,307 B2
`____________
`
`
`Before SCOTT R. BOALICK, Chief Administrative Patent Judge,
`KALYAN K. DESHPANDE, and LYNNE E. PETTIGREW, Administrative
`Patent Judges.
`
`DESHPANDE, Administrative Patent Judge.
`
`
`
`
`JUDGMENT
`Final Written Decision
`Determining All Challenged Claims Unpatentable
`Granting Patent Owner’s Motion to Amend
`35 U.S.C. § 318(a)
`
`
`
`
`
`
`
`
`
`
`
`
`IPR2018-00972
`Patent 9,336,307 B2
`
`I.
`
`INTRODUCTION
`
` Background
`Lectrosonics, Inc. (“Petitioner”) filed a Petition requesting an inter
`partes review of claims 1‒14 of U.S. Patent No. 9,336,307 B2 (Ex. 1001,
`“the ’307 patent”). Paper 2 (“Pet.”). Zaxcom, Inc. (“Patent Owner”) filed a
`Preliminary Response. Paper 10 (“Prelim. Resp.”).
`On September 13, 2018, we issued a Decision ordering that “an inter
`partes review of claims 1–14 of the ’307 patent is hereby instituted with
`respect to all grounds set forth in the Petition.” Paper 11 (“Dec.”). After
`institution, Patent Owner filed a Patent Owner’s Response (Paper 16, “PO
`Resp.”) and a Patent Owner’s Contingent Motion to Amend (Paper 17, “PO
`MTA”). In reply, Petitioner filed a Petitioner’s Reply to Patent Owner’s
`Response (Paper 26, “Pet. Reply”) and a Petitioner’s Opposition to Motion
`to Amend (Paper 27, “Pet. Opp. to MTA”). In response, Patent Owner filed
`a Patent Owner’s Sur-Reply (Paper 28, “PO Sur-Reply”) and a Patent
`Owner’s Reply in Support of Motion to Amend (Paper 29, “PO Reply to
`Opp. to MTA”). In reply, Petitioner filed a Petitioner’s Sur-Reply in
`Opposition to Patent Owner’s Motion to Amend (Paper 31, “Pet. Sur-Reply
`to Opp. to MTA”). Patent Owner and Petitioner presented oral arguments
`on August 5, 2019, and a transcript has been entered into the record.
`Paper 40 (“Tr.”).
`The Board has jurisdiction under 35 U.S.C. § 6. In this Final Written
`Decision, after reviewing all relevant evidence and assertions, we determine
`that Petitioner has met its burden of showing, by a preponderance of the
`evidence, that claims 1–14 of the ’307 patent are unpatentable. We further
`determine that Petitioner has not met its burden of showing, by a
`
`2
`
`
`
`IPR2018-00972
`Patent 9,336,307 B2
`preponderance of the evidence, that proposed substitute claims 15–28 are
`unpatentable.
`
` Related Proceedings
`The parties indicate that the ’307 patent is involved in Zaxcom, Inc. v.
`Lectrosonics, Inc., Civil Action No. 1:17-cv-03408 (E.D.N.Y.), and Zaxcom,
`Inc. v. Lectrosonics, Inc., Civil Action No. 2:17-cv-02840 (D.N.J.). Pet. 77;
`Paper 4, 2. The following proceedings before the Board also involve the
`same parties: IPR2018-01129 and IPR2018-01130.
`
`
` The ʼ307 Patent (Ex. 1001)
`The ’307 patent discloses a system and method “for recording and
`processing audio having one or more tracks received from one or more
`wireless devices operating in either an asynchronous or synchronous mode.”
`Ex. 1001, 1:35–38. Figure 1 is reproduced below.
`
`
`Figure 1 depicts recording system 100, which “wirelessly records
`audio events, such as performances, movie takes, etc. having one or more
`performers.” Ex. 1001, 4:1–3. Recording system 100 includes local audio
`
`3
`
`
`
`IPR2018-00972
`Patent 9,336,307 B2
`devices 102, remote control unit (“RCU”) 104, receiver 106, and recorder
`108. Id. at 4:26–29. Local audio devices 102 record live audio and store the
`audio in memory. Id. at 4:51–63. Local audio devices 102 may transmit
`both live and replayed audio to receiver 106 to be recorded by audio
`recorder 108. Id. at 4:39–42. “RCU 104 includes an RF transmitter capable
`of transmitting one or more of a time reference signal, digital commands,
`and audio to one or more other components of recording system 100.” Id. at
`4:29–32. The RCU may remotely control local audio devices 102, receiver
`106, and recorder 108 for “initiating audio playback of all local audio
`devices 102 starting at the same time reference, as well as recording thereof
`by receiver 106 and recorder 108.” Id. at 4:32–38 (bolding omitted).
` Illustrative Claims
`Petitioner challenges claims 1‒14 of the ’307 patent. Pet. 8–76.
`Claims 1 and 12 are the independent claims at issue. Claims 1 and 12 are
`illustrative of the challenged claims and are reproduced below:
`1.
`An apparatus or system for locally recording locally
`generated audio, said locally generated audio also being
`wirelessly transmitted to, and remotely recorded by, a remote
`recorder as remotely recorded audio data comprising:
`at least one local audio device wearable by a creator of
`said locally generated audio including:
`at least one local audio device receiver for
`receiving at least one of the group consisting of digital
`data, time data, and audio data;
`at least one audio input port for receiving said
`locally generated audio from an audio input device,
`said audio input device wearable by a creator of said
`locally generated audio;
`at least one memory; and
`at least one control unit electrically coupled to said
`local audio device receiver, said audio input device,
`
`4
`
`
`
`IPR2018-00972
`Patent 9,336,307 B2
`and said memory for creating local audio data and
`storing said local audio data in said memory;
`wherein said local audio data may be retrieved after said
`locally recording and combined with said remotely recorded
`audio data.
`Ex. 1001, 23:22‒42.
`12. A method of locally recording locally generated audio,
`said locally generated audio also being wirelessly transmitted
`to, and remotely recorded by, a remote recorder as remotely
`recorded audio data comprising the steps of:
`locally receiving said local audio generated by at least one
`performer during an audio event; and
`transmitting said local audio, directly or indirectly, to at least
`one of the group consisting of a recorder, a receiver,
`and combinations thereof;
`locally recording said local audio as local audio data in at
`least one memory of at least one local audio device
`wearable by a creator of said local audio;
`remotely recording said transmitted local audio via at least
`one of the group consisting of a recorder, a receiver,
`and combinations thereof as remotely recorded audio
`data;
`wherein said local audio data is retrieved during or
`subsequent to said audio event and is combined with
`said remotely recorded audio data.
`Id. at 24:15–32.
`
`5
`
`
`
`IPR2018-00972
`Patent 9,336,307 B2
`
`II. ANALYSIS
` Prior Art and Asserted Grounds
`Petitioner asserts that claims 1–14 of the ’307 patent are unpatentable
`
`based on the following grounds (see Pet. 8–76): 1
`
`Claims Challenged
`1–11
`1–11
`1–11
`1–11
`12–14
`12–14
`1–7, 10–14
`1–14
`
`35 U.S.C. §
`103
`103
`103
`103
`102
`103
`102
`103
`
`Reference(s) / Basis
`Strub,2 Nagai3
`Strub, Nagai, Wood4
`Strub, Gleissner5
`Strub, Gleissner, Wood
`Strub
`Strub, Wood
`Lee6
`Lee, Nagai
`
`
`
` Claim Construction
`The Petition was filed on April 25, 2018, prior to the effective date of
`the rule change that replaces the broadest reasonable interpretation (“BRI”)
`standard. See Changes to the Claim Construction Standard for Interpreting
`Claims in Trial Proceedings Before the Patent Trial and Appeal Board, 83
`Fed. Reg. 51,340 (Oct. 11, 2018) (final rule) (“This rule is effective on
`
`
`1 Petitioner supports its challenge with the Declaration of John Tinsman.
`Ex. 1011.
`2 U.S. Patent No. 6,825,875 B1, issued Nov. 30, 2004 (Ex. 1003, “Strub”).
`3 U.S. Patent Application Publication No. 2002/0159179 A1, pub. Oct. 31,
`2002 (Ex. 1004, “Nagai”).
`4 World Intellectual Property Organization Publication No. WO
`2004/091219 A1, pub. Oct. 21, 2004 (Ex. 1008, “Wood”).
`5 U.S. Patent Application Publication No. 2004/0028241 A1, pub. Feb. 12,
`2004 (Ex. 1005, “Gleissner”).
`6 U.S. Patent Application Publication No. 2006/0270465 Al, pub. Nov. 30,
`2006 (Ex. 1009, “Lee”).
`
`6
`
`
`
`IPR2018-00972
`Patent 9,336,307 B2
`November 13, 2018 and applies to all IPR, PGR and CBM petitions filed on
`or after the effective date.”). We, therefore, interpret claims of an unexpired
`patent using the broadest reasonable construction in light of the specification
`of the patent in which they appear. See 37 C.F.R. § 42.100(b) (2017);
`Cuozzo Speed Techs., LLC v. Lee, 136 S. Ct. 2131, 2142–46 (2016). Under
`the broadest reasonable construction standard, claim terms are generally
`given their ordinary and customary meaning, as would have been understood
`by one of ordinary skill in the art in the context of the entire disclosure. In
`re Translogic Tech., Inc., 504 F.3d 1249, 1257 (Fed. Cir. 2007).
`1. “local audio data . . . is combined with said remotely
`recorded audio data”
`Petitioner asserts that “[f]or the purposes of this Petition, no explicit
`construction is needed.” Pet. 8. In its Preliminary Response, Patent Owner
`proposed a construction of the limitation “local audio data . . . is combined
`with said remotely recorded audio data,” as recited by independent claim 12
`and similarly recited by independent claim 1, to require
`(i) local audio generated by a performer is stored in a wearable
`local audio device as local audio data, (ii) the same local audio
`is transmitted to a remote recorder or receiver, (iii) the same
`local audio is remotely recorded at the recorder or receiver as
`remotely recorded audio data, and (iv) that the local audio data
`is combined with the remotely recorded audio data (i.e., that a
`time segment of the local audio data replaces a corresponding
`time segment of the remotely recorded audio data).
`Prelim. Resp. 10. Patent Owner argued that this interpretation is consistent
`with both the claims and the ’307 patent specification. Id. at 10–12. In our
`Decision on Institution, we disagreed with Patent Owner that this limitation
`requires replacing the remotely recorded audio data with local audio data.
`Dec. 7–9.
`
`7
`
`
`
`IPR2018-00972
`Patent 9,336,307 B2
`
`Patent Owner now asserts a different construction of this limitation,
`requiring
`that (i) local audio generated by a performer is stored in a
`wearable local audio device as local audio data, (ii) the same
`local audio is transmitted to a remote recorder or receiver,
`(iii) the same local audio is remotely recorded at the recorder or
`receiver as remotely recorded audio data, and (iv) that the local
`audio data is combined with the remotely recorded audio data.
`PO Resp. 8 (citing Ex. 2086 ¶ 15) (emphasis added). Patent Owner asserts
`that this construction is consistent with both the claim language and the ’307
`patent specification. PO Resp. 8–10.
`
`Turning first to the claims, Patent Owner asserts that claim 12 requires
`the local audio data and the remotely recorded audio data to originate from
`the same audio. PO Resp. 8 (citing Ex. 1001, 24:19–20); see Tr. 25:11–24.
`Patent Owner asserts that “said local audio data” is combined with “said
`remotely recorded audio data” and both originate from the same source—the
`“local audio generated by at least one performer.” PO Resp. 8; PO Sur-
`Reply 3. Patent Owner further argues that the ’307 patent specification
`supports its construction. PO Resp. 9. Specifically, Patent Owner argues
`that Figure 6 discloses audio replaying and re-recording processing. Id.
`(citing Ex. 1001, Fig. 6).
`Petitioner argues that Patent Owner’s proposed construction
`contradicts the claims and fails to distinguish between “local audio” and
`“local audio data.” Pet. Reply 3–4. Petitioner asserts that there is a
`distinction between audio from a performer and audio data from memory.
`Pet. Reply 8. Petitioner asserts that local audio is generated by a creator in
`claim 1 or a performer in claim 12, and “there’s nothing in the record that
`distinguishes audio from one device as being different local audio from a
`
`8
`
`
`
`IPR2018-00972
`Patent 9,336,307 B2
`different device.” Tr. 48:21–23. Petitioner further argues Mr. DeFilippis,
`Patent Owner’s expert, explains the ’307 patent’s multitrack embodiment
`supports the “combined” limitation. Pet. Reply 19 (citing Ex. 2086 ¶ 18).
`Specifically, Mr. DeFilippis explains that the ’307 patent specification
`discloses that the “accuracy allows multiple individually recorded audio
`tracks to be combined into one or more multi-track audio files electronically
`post-recording.” Ex. 2086 ¶ 18 (citing Ex. 1001, 12:12–14).
`We agree with Petitioner that the “combined” limitation encompasses
`the multitrack embodiment of the ’307 patent. Both independent claims 1
`and 12 recite that the “local audio data” is “combined with said remotely
`recorded audio data.” In view of Mr. DeFilippis’s testimony that the
`“combined” limitation allows “multiple individually recorded audio tracks to
`be combined into one or more multi-track audio files” (Ex. 2086 ¶ 18), we
`determine that claims 1 and 12 do not require the claimed “local audio data”
`and “remotely recorded audio data” to be derived from the same source.
`Furthermore, every occurrence of the term “combined” in the ’307
`patent specification outside of the claims refers to the combination of audio
`into a multi-track file. See,e.g., Ex. 1001, 4:12–14 (“This accuracy allows
`multiple individually recorded audio tracks to be combined into one or more
`multi-track audio files electronically post-recording.”), 5:6–7 (“the multiple
`audio recordings are combined to create one single recording”), 16:40–44
`(“[T]he local audio device of each performer . . . may be combined to create
`one or more multitrack audio files that are stored with master timestamps
`generated by the receiver/recorder's internal master timecode generator.”),
`19:2–4 (“[A]ll of the individual audio files may be combined to provide one
`or more comprehensive audio files.”). Although we agree with Patent
`Owner that the ’307 patent specification describes an embodiment of a
`
`9
`
`
`
`IPR2018-00972
`Patent 9,336,307 B2
`dropout, i.e., a loss of audio data during a wireless transmission, is remedied
`through the replacement of data, we are not persuaded that the recited
`“combined” limitation is limited to that embodiment, but rather also
`encompasses the multi-track embodiment of the ’307 patent. Id. at 4:15–18.
`Thus, we determine that the limitation “said local audio data is retrieved
`during or subsequent to said audio event and is combined with said remotely
`recorded audio data” does not require that the local and remote audio data
`originate from the same source because the ’307 patent specification
`contemplates a broader definition—one that includes the combination of
`local audio data and remotely recorded audio data to create a multi-track
`audio file. See Ex. 1001, 4:12–14, 5:6–7, 16:40–44, 19:2–4; Ex. 2086 ¶ 18.
`Based on the foregoing, we construe the “combining” limitation as
`broad enough to encompass combining local audio data and remotely
`recorded audio data, without a requirement that the local audio data and
`remotely recorded audio data are the same. In other words, we construe the
`“combining” limitation to encompass the disclosed multitrack embodiment
`in the ’307 patent specification, where separate audio tracks are combined to
`form a multitrack audio file. See Ex. 1001, 4:12–14, 5:6–7, 16:40–44, 19:2–
`4.
`
`2. “wearable”
`Patent Owner and Petitioner propose different meanings for the term
`“wearable.” See PO Resp. 9–12; Pet. Reply 1–2; PO Sur-Reply 4–6. Claim
`1 recites “audio input device wearable by a creator of said locally generated
`audio” and claim 12 recites “one local audio device wearable by a creator of
`said local audio.”
`Patent Owner, relying on the Microsoft Encarta Dictionary, asserts
`that an “electronic device (e.g., a local audio device, an audio input device)
`
`10
`
`
`
`IPR2018-00972
`Patent 9,336,307 B2
`would have been considered to be ‘wearable’ if it were ‘suitable and in a
`condition to be worn.’” PO Resp. 10 (citing Ex. 2110, 1628). Patent
`Owner, accordingly, proposes that “wearable” means “small, lightweight,
`unobtrusive, easily hidden, not visible, and designed to be worn on the body
`of a creator of audio (i.e., performer).” PO Resp. 11 (citing Ex. 2086 ¶ 15).
`Patent Owner argues that Petitioner’s expert, Mr. Tinsman, agrees with this
`narrower construction. PO Resp. 10–11 (citing Ex. 2109, 41:7–42:5, 47:15–
`48:2).
`Patent Owner further asserts that the ’307 patent specification
`“repeatedly describes the local audio device and the audio input device as
`being suitably worn on the body of a creator of audio (i.e., a performer).”
`PO Resp. 11–12 (citing Ex. 1001, 1:57–58 (“Such wireless transmitters may
`take the form of body packs that are worn by each performer.”), 8:55–56
`(“Such audio devices may be manufactured in the form of body-packs, such
`as those typically worn by news announcers, performers, and the like.”),
`9:63–66 (“In one aspect of the present invention, local control unit 310
`receives recordable audio from local audio input device 312, which may be
`worn by the performer and connects to local audio device 102 at local audio
`input device port 314.”)).
`
`Petitioner argues that the ’307 patent specification does not support
`the narrow construction proposed by Patent Owner. Pet. Reply 1–2. Rather,
`Petitioner argues that the ’307 patent specification only indicates that a
`device may be worn. Pet. Reply 2 (citing Ex. 1001, 1:57–58, 8:55–56, 9:63–
`66). Petitioner asserts that Mr. Tinsman explains that “wearable” means
`“something that was straightforward to carry on your person,” or “designed
`to be worn on the body.” Pet. Reply 2 (citing Ex. 2109, 41:2–10).
`
`11
`
`
`
`IPR2018-00972
`Patent 9,336,307 B2
`
`We agree with Petitioner that the term “wearable” means “suitable
`and in a condition to be worn.” Pet. Reply 1–2 (quoting Ex. 2110, 1628).
`This definition is consistent with the plain meaning of “wearable,” and we
`find no credible evidence on the record that requires a narrower definition.
`Furthermore, we are not persuaded that Petitioner’s expert, Mr. Tinsman,
`provides a definition consistent with Patent Owner’s narrow definition.
`Rather than defining “wearable,” Mr. Tinsman explains that the term
`“bodypack” is “[s]omething relatively small and lightweight.” Pet. Reply 2
`(citing Ex. 2109, 41:18–22). Further, when describing “wearable” as
`“unobtrusive, easily hidden,” Mr. Tinsman clarifies this description as
`“[y]ou know, reasonable to carry around.” Ex. 2109, 47:20–22.
`We determine that no other express claim construction analysis of any
`claim term is necessary. See Nidec Motor Corp. v. Zhongshan Broad Ocean
`Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (holding that only terms in
`controversy must be construed and only to the extent necessary to resolve
`the controversy) (citing Vivid Techs., Inc. v. Am. Sci. & Eng’g, 200 F.3d
`795, 803 (Fed. Cir. 1999)).
` Obviousness and the Level of Ordinary Skill in the Art
`“Section 103(a) forbids issuance of a patent when ‘the differences
`between the subject matter sought to be patented and the prior art are such
`that the subject matter as a whole would have been obvious at the time the
`invention was made to a person having ordinary skill in the art to which said
`subject matter pertains.’” KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 406
`(2007). The question of obviousness is resolved on the basis of underlying
`factual determinations, including: (1) the scope and content of the prior art;
`(2) any differences between the claimed subject matter and the prior art;
`(3) the level of ordinary skill in the art; and (4) if in the record, objective
`
`12
`
`
`
`IPR2018-00972
`Patent 9,336,307 B2
`evidence of nonobviousness. Graham v. John Deere Co., 383 U.S. 1, 17–18
`(1966).
`Petitioner asserts that a person of ordinary skill in the art, at the time
`of the ’307 patent, would have “a Bachelor’s degree in electrical engineering
`or a related subject and two to five years working with audio and wireless
`communications systems.” Pet. 8 (citing Ex. 1011 ¶ 24). Patent Owner’s
`expert, Mr. DeFilippis, similarly opines that a person of ordinary skill in the
`art would have a “Bachelor’s degree in electrical engineering and two years
`of experience working with audio and wireless communications systems
`either in industry or in graduate school.” Ex. 2086 ¶ 13.
`We adopt Petitioner’s and Patent Owner’s proffered level of ordinary
`skill in the art as it is agreed upon and consistent with the prior art of record.
`See Graham v. John Deere Co., 383 U.S. 1, 17–18 (1966); Okajima v.
`Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (“[T]he level of skill in the
`art is a prism or lens through which a judge, jury, or the Board views the
`prior art and the claimed invention.”); Ryko Mfg. Co. v. Nu-Star, Inc., 950
`F.2d 714, 718 (Fed. Cir. 1991) (“The importance of resolving the level of
`ordinary skill in the art lies in the necessity of maintaining objectivity in the
`obviousness inquiry.”). Specifically, we adopt that a person of ordinary skill
`in the art, at the time of the ’307 patent, would have had a Bachelor’s degree
`in electrical engineering and two or more years of experience working with
`audio and wireless communications systems. Pet. 8 (citing Ex. 1011 ¶ 24);
`Ex. 2086 ¶ 13. To that end, we note that the prior art itself often reflects an
`appropriate skill level. See Okajima, 261 F.3d at 1355.
`
`13
`
`
`
`IPR2018-00972
`Patent 9,336,307 B2
` Obviousness of claims 1–11 of the ’307 patent over Strub in
`combination with Nagai or Gleissner
`Petitioner contends that claims 1‒11 of the ’307 patent are
`unpatentable under 35 U.S.C. § 103(a) as obvious over Strub in combination
`with Nagai or Gleissner. Pet. 16–44. For the reasons discussed below, we
`determine Petitioner has demonstrated by a preponderance of the evidence
`that claims 1‒11 of the ’307 patent are unpatentable under 35 U.S.C. § 103
`as obvious over Strub in combination with Nagai or Gleissner.
`1. Strub (Ex. 1003)
`Strub, titled “Hybrid Recording Unit Including Portable Video
`Recorder and Auxiliary Device,” is directed to “recording of the event by
`multiple participants (i.e., from multiple points of view), often
`simultaneously.” Ex. 1003, 1:25–31. Strub discloses a “hybrid recording
`unit” that is “constructed by adding to a portable video recorder (e.g.,
`camcorder, portable dockable videotape recorder (VTR)) one or more
`devices (an ‘auxiliary device’) that provide additional functionality to the
`portable video recorder.” Id. at 5:25–29. “The auxiliary device can
`advantageously provide, for example, one or more of the following
`capabilities: marking, position sensing, physiological monitoring and/or
`biometric identification.” Id. at 28–32. The hybrid recording unit is adapted
`to obtain a visual recording of the event as well as an audio recording of the
`event. Id. at 8:44–52. Multiple hybrid recording units may record a single
`event and one recording unit may transmit its recording to another recording
`unit. Id. at 37:18–40, 38:8–10.
`2. Nagai (Ex. 1004)
`Nagai is directed to a data recording and reproducing apparatus for
`recording and reproducing voice data. Ex. 1004 ¶¶ 3–5. Nagai’s apparatus
`
`14
`
`
`
`IPR2018-00972
`Patent 9,336,307 B2
`includes an audio input, a headphone jack for audio output, a memory card
`to store audio data, and a USB port for transferring audio data to another
`device. Ex. 1004 ¶¶ 106, 125, 126, 139, 140, 145, Figs. 1, 2A, 2B.
`3. Gleissner (Ex. 1005)
`Gleissner is directed to an audio data recorder that includes a
`microphone unit and a recording appliance (audio data recorder), connected
`to one another via a plug connection. Ex. 1005 ¶ 10. The plug connection
`between the microphone unit and recording appliance provides both an
`electrical connection and a rigid mechanical connection. Id. The recording
`appliance may further be connected to headphones to allow a user to
`simultaneously hear the input into the microphone. Id. ¶ 33.
`4. Analysis
`a. Petitioner’s Contentions
`Petitioner contends that claims 1‒11 of the ’307 patent are
`unpatentable under 35 U.S.C. § 103(a) as obvious over Strub in combination
`with Nagai or Gleissner. Pet. 16–44.
`Claim 1 recites a “[a]n apparatus or system for locally recording
`locally generated audio, said locally generated audio also being wirelessly
`transmitted to, and remotely recorded by, a remote recorder as remotely
`recorded audio data.” Petitioner asserts that Strub discloses a recording unit
`that acquires audio data from an attached microphone and both stores it in a
`local storage device and wirelessly transmits it to another recording unit.
`Pet. 16–17 (citing Ex. 1003, 12:13–21, 12:31–39, 25:35–49, 35:54–65,
`37:18–40, 38:1–4; Ex. 1011 ¶¶ 45–46). Petitioner also asserts that Strub
`discloses a recording unit that includes “audio data acquisition device 303,
`transmitter 309, receiver 310, position sensing device 311, and data storage
`device 305.” Id. at 17 (citing Ex. 1003, Fig. 3). Petitioner further asserts
`
`15
`
`
`
`IPR2018-00972
`Patent 9,336,307 B2
`that audio data acquisition device 303 acquires local audio, the recording
`unit stores the audio data in data storage device 305, and transmitter 309
`wirelessly transmits the locally generated audio to a remote recording unit.
`Id. at 17–18 (citing Ex. 1003, 6:1–8, 12:13–21, 12:31–39, 25:35–49, Fig. 1).
`Claim 1 also recites “at least one local audio device wearable by a
`creator of said locally generated audio.” Petitioner asserts that Strub
`discloses “a small, lightweight, wearable recording unit.” Id. at 19 (quoting
`Ex. 1003, 4:29–31; citing Ex. 1003, 4:29–31, 14:59–15:11, 16:66–17:24,
`38:65–39:11, 66:33–51, 67:54–68:10, 72:10–19, Figs. 1, 8A–8C, 9A, 9B;
`Ex. 1011 ¶ 46) (emphasis added).
`Claim 1 further recites “at least one local audio device receiver for
`receiving at least one of the group consisting of digital data, time data, and
`audio data.” Petitioner asserts that Strub discloses a local audio device that
`includes audio receiver 310 and position sensing device 311 that records
`audio data, GPS position data or biometric data, and time data. Id. (citing
`Ex. 1003, 12:39–52, 35:53–61, 37:55–62, 63:41–60; Ex. 1011 ¶ 47).
`Claim 1 additionally recites “at least one audio input port for
`receiving said locally generated audio from an audio input device, said audio
`input device wearable by a creator of said locally generated audio.”
`Petitioner argues that Strub discloses the recording unit can receive audio
`from a microphone such as a lavalier worn by the creator. Id. at 20–21
`(citing Ex. 1003, Fig. 3, 21:65–25:49, 68:63–69:67). The microphone or
`lavalier passes the audio data to the recording unit “using wired or wireless
`techniques.” Id. at 21 (citing Ex. 1003, 64:50–65:3). Petitioner asserts that
`a person with ordinary skill in the art would have understood Strub’s
`wireless or wired connections would include an “audio input port,” such as a
`standard microphone jack in the case of a wired connection. Id. Petitioner’s
`
`16
`
`
`
`IPR2018-00972
`Patent 9,336,307 B2
`expert, Mr. Tinsman, explains that Strub’s wired or wireless techniques
`connecting the microphone and recording unit would include an audio input
`port. Id. (citing Ex. 1011 ¶ 48).
`Alternatively, Petitioner asserts that Strub’s recording unit could be
`modified to include an input port disclosed by either Nagai or Gleissner. Id.
`(citing Ex. 1011 ¶ 49). Petitioner asserts that Nagai discloses a “mike jack”
`that “receives a voice signal from an external device such as an external
`mike.” Pet. 22–23 (quoting Ex. 1004 ¶ 109). Mr. Tinsman explains that
`Nagai’s “mike jack” would be understood by a POSITA to include, for
`example, a conventional tip-ring-sleeve (“TRS”) microphone connector. Id.
`(citing Ex. 1011 ¶ 52). Petitioner further asserts that Gleissner also discloses
`an audio input, arguing that Gleissner discloses an “XLR plug connector.”
`Id. (citing Ex. 1005 ¶¶ 13, 23, 24, 32; Ex. 1011 ¶ 53).
`Petitioner argues that it would have been obvious to combine the
`teachings of Nagai or Gleissner with Strub. Pet. 21. Petitioner argues that a
`person with ordinary skill in the art would have understood that Strub
`suggests the use of an audio input port, which “provide[s] the benefit of
`interchangeability by allowing the user to select the appropriate microphone
`for the recording scenario.” Id. at 21–22 (citing Ex. 1003, 25:8–49).
`Petitioner further asserts that the ’307 patent recognizes that such a benefit
`of using a port for a microphone was not new, and describes “input port 314
`as ‘any commercially available audio input device port’” using “any
`commercially available audio input device such as a microphone.” Id. at 22
`(citing Ex. 1001, 9:2–8). Accordingly, Petitioner concludes that a person
`with ordinary skill in the art would have known to combine the input ports
`described by Nagai or Gleissner with Strub to provide the benefit of
`customization and detachability. Id. (citing Ex. 1011 ¶ 51).
`
`17
`
`
`
`IPR2018-00972
`Patent 9,336,307 B2
`Claim 1 also recites “at least one memory.” Petitioner asserts that
`Strub discloses its recording unit includes data storage device 305, which
`may include a hard disk, removable data storage medium, or non-volatile
`data storage device. Pet. 24 (citing Ex. 1003, 27:36–51, 33:20–35:50, 76:6–
`34, 94:14–19; Ex. 1011 ¶ 54).
`Claim 1 additionally recites “at least one control unit electrically
`coupled to said local audio device receiver, said audio input device, and said
`memory for creating local audio data and storing said local audio data in said
`memory.” Petitioner argues that Strub discloses system controller 301 and
`data processing device 304 that are coupled to receiver 310 and position
`sensing device 311. Id. at 24–25 (citing Ex. 1003, 12:4–13, 13:36–14:13,
`Fig. 3; Ex. 1011 ¶¶ 55–57). Petitioner asserts that system controller 301
`controls the operation of the components of recording unit 300, “for creating
`local audio data and storing said local audio data in said memory.” Id. at 25
`(quoting Ex. 1003, 12:4–13, 13:36–14:13, 66:7–25, 70:1–5).
`Claim 1 further recites “wherein said local audio data may be
`retrieved after said locally recording and combined with said remotely
`recorded audio data.” Petitioner argues that Strub teaches “the recording
`units timestamping the recorded audio and synchronizing recordings from
`multiple recording units using those timestamps in post-processing.” Id. at
`26 (citing Ex. 1003, 13:50–67). Petitioner contends that the local audio data
`is retrieved and transmitted to other devices via transmitter 309 or wired
`connections. Id. at 27 (citing Ex. 1003, 12:4–39, 66:7–25, Fig. 3).
`We are persuaded by Petitioner’s arguments, as they are supported by
`the cited evidence. Notwithstanding Patent Owner’s arguments, which we
`address below, we determine that Petitioner has demonstrated by a
`preponderance of the evidence that claim 1 of the ’307 patent is unpatentable
`
`18
`
`
`
`IPR2018-00972
`Patent 9,336,307 B2
`under 35 U.S.C. § 103(a) as obvious over Strub combined with Nagai or
`Gleissner. Petitioner provides a similar analysis for claims 2–11, and we
`similarly determine that Petitioner has demonstrated by a preponderance of
`the evidence that claims 2–11 of the ’307 patent are unpatentable under 35
`U.S.C. § 103(a) as obvious over Strub combined with Nagai or Gleissner.
`See Pet. 16–44.
`
`b. Patent Owner’s Arguments
`Patent Owner argues that Petitioner fails to demonstrate by a
`preponderance of the evidence that claims 1–11 would have been obvious
`over Strub in combination with Nagai or Gleissner. PO. Resp. 30–37.
`Specifically, Patent Owner argues that (i) Petitioner fails to demonstrate that
`one of ordinary skill in the art would have been motivated to combine the
`teachings of the cited prior art references with a reasonable expectation of
`success; (ii) Petitioner fails to demonstrate that any of the different
`combinations teaches each and every element of the challenged claims; and
`(iii) the objective indicia of nonobviousness indicates that the claimed
`invention of the ’307 patent would not have been obvious to a person of
`ordinary skill in the art. Id. at 35.
`i. Differences between the prior art and claims
`Patent Owner argues that Strub fa
Accessing this document will incur an additional charge of $.
After purchase, you can access this document again without charge.
Accept $ Charge
Still Working On It
This document is taking longer than usual to download. This can happen if we need to contact the court directly to obtain the document and their servers are running slowly.
Give it another minute or two to complete, and then try the refresh button.
A few More Minutes ... Still Working
It can take up to 5 minutes for us to download a document if the court servers are running slowly.
Thank you for your continued patience.
This document could not be displayed.
We could not find this document within its docket. Please go back to the docket page and check the link. If that does not work, go back to the docket and refresh it to pull the newest information.
Your account does not support viewing this document.
You need a Paid Account to view this document. Click here to change your account type.
Your account does not support viewing this document.
Set your membership
status to view this document.
With a Docket Alarm membership, you'll
get a whole lot more, including:
- Up-to-date information for this case.
- Email alerts whenever there is an update.
- Full text search for other cases.
- Get email alerts whenever a new case matches your search.
One Moment Please
The filing “” is large (MB) and is being downloaded.
Please refresh this page in a few minutes to see if the filing has been downloaded. The filing will also be emailed to you when the download completes.
Your document is on its way!
If you do not receive the document in five minutes, contact support at support@docketalarm.com.
Sealed Document
We are unable to display this document, it may be under a court ordered seal.
If you have proper credentials to access the file, you may proceed directly to the court's system using your government issued username and password.
Access Government Site
