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`NOTE: This disposition is nonprecedential.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
`
`