“I have joined with U.S. Inventor and other stakeholders to ask the USPTO to focus on the tremendous harm that post-issuance reviews cause to the ‘economy and the integrity of the patent system’ when they are used as weapons against small inventor-owned businesses.”
On October 25, the AIPLA Annual Meeting will host a Patent Trial and Appeal Board (PTAB) Inter Partes Review (IPR) trial to determine the fate of a pair of patents issued by the U.S. Patent and Trademark Office (USPTO) to Zaxcom for a Digital Recording Wireless Microphone. Zaxcom is a U.S. manufacturer of high-end, specialized wireless microphones and recording equipment for the film and television industries. The company was founded in 1986 by Glenn Sanders, the named inventor on the challenged patents.
I met Glenn at the trial on his first patent last week, which was held at USPTO headquarters in Alexandria, Virginia. I monitor the PTAB docket in an attempt to help inventors and their novice attorneys navigate the “patent death squad”, or at least expose the more blatant examples of abuse. I help them if I am able, but at the very least I Uber down to the USPTO headquarters from my new home in Alexandria to lend moral support.
The Zaxcom case caught my attention for several reasons. First, this was not a patent troll asserting a stack of vague, overly broad patents, but was an inventor-owned company that was producing the invention. Second, Glenn was manufacturing his invention and creating jobs in the United States. Third, the technology has won Engineering Emmy Awards and has been honored by the Academy of Motion Picture Arts and Sciences with a Technical Achievement Award. Finally, Chief Administrative Patent Judge Scott Boalick was on the panel. How could the USPTO grant a patent, the claimed invention earn Emmy and Academy awards, and then the USPTO decide the patent was likely to be invalid? Especially when Director Iancu is traveling throughout the country and testifying in Congress that it is a new day at the USPTO and that he has restored balance at the PTAB?
The Zaxcom Patents
The three patents owned by Zaxcom are numbers 7,929,902 (IPR2018-01129); 8,385,814 (IPR2018-01130); and 9,336,307 (IPR2018-00972). They are for the invention of the recording wireless microphone which is a tiny audio transmitter with an internal micro SD card recorder. This device is hidden on actors and transmits audio to a larger mixer and recorder, where a sound person mixes all of the actors’ performances together to create a single audio track. The recorder that is built into the actor’s transmitter is used to create an identical time stamped copy of the audio. This allows any problems that occur during wireless transmission to be fixed after transmission by replacing a portion of the main audio recording track with the audio from the SD card. The crux of the patents is as follows: they teach the use of a novel system of recording audio within a body wearable unit that is easily concealed on an actor in the production of television and motion pictures. The system uses a time stamped reference to record audio from a microphone onto a solid-state medium within the body pack while transmitting an RF signal with identical audio content to a separate recorder. In the case of an RF transmission problem, the body worn recorded audio can be used to repair the remote recording, thus restoring the lost audio seamlessly.
Over the last 10 years this invention has been a very successful product for Zaxcom and was instrumental to the growth of the company and its entire wireless product line. At the time of the invention in 2005 this market was dominated by petitioner Lectrosonics, while Zaxcom had a very small market share.
The Motion Picture Academy and the Television Academy have both recognized Zaxcom for Glenn’s solution to the problem of lost audio that had hindered the production process for decades. Case law recognizes such “industry acclaim…may often be the most probative and cogent evidence in the record”. Stratoflex, Inc. v. Aeroquip Corp. (Fed. Cir. 1983). The nexus of the Emmy to the claimed invention is astounding—“Outstanding Achievement in Engineering Development – Digital Recording Wireless”. The essence of Glenn’s invention is an exact recording of a real time wireless audio transmission. Why would the Motion Picture Academy and the Television Academy hand out a prestigious award for a patented technology if it were obvious?
The Painful Disconnect Between Technologists and Judges
Having gone down the PTAB rabbit hole myself and having followed hundreds of other cases, I had a good idea what Glenn was in for. It is torture for technologists like Glenn and I to sit through these hearings. You want to pull your hair out as the lawyers for the USPTO and the petitioner demonstrate they don’t understand the technology and don’t really care what you invented, because it is just a word game to them. I had an Administrative Patent Judge (APJ) asking my attorney how he knows that the first drop of water in a balloon would not cause it to expand. I watched while Glenn had to endure an APJ ask why vocal sound waves are different than digital audio data.
Glenn’s attorney tried his best, but he struggled to effectively articulate how acoustics, echo, pickup, orientation, transducers, filters, and the transfer function preclude the prior art from being able to solve the problem. Counsel for the petitioner suggested that strapping a digital recorder to a bodypack transmitter would provide the claimed function. While the PTAB panel seemed receptive to this, there were sighs of exasperation from the audio technicians in the gallery. Splicing in audio from a different mic is not a good solution because it will not sound the same as the original and creates headaches for the audio/video editor.
As a matter of policy, why does the PTAB insist on accusing inventors like Glenn of claiming the rights to old technology? That is nonsensical. If we wanted to use the old technology, we wouldn’t waste our time developing new solutions and filing for patents. When Glenn and his attorney explained that they were using the same audio for recording and transmission, the dispute was resolved, and the petition should have been denied. The public and Lectrosonics would be free to use the inferior prior art of a back-up mic to replace drop-outs without worry of being sued by Zaxcom. But the panel insisted on dragging Glenn’s company through a series of costly trials to jeopardize his business.
U.S. Patent Rights Go to the Highest Bidder
I have joined with U.S. Inventor and other stakeholders to ask the USPTO to focus on the tremendous harm that post-issuance reviews cause to the “economy and the integrity of the patent system” when they are used as weapons against small inventor-owned businesses. For a small company like Zaxcom, the PTAB is a bet-the-company scale threat. AIPLA reports that the average cost for an IPR is $450,000 and the 90th percentile (the fees for a robust defense) is $850,000. Glenn did not share with me the precise financial condition of his enterprise, but it is very clear that these sorts of costs were way, way out of reach. I funded my PTAB trials with $100 million in product sales, but only a handful of inventors have access to that kind of capital. I am sure Glenn is scraping by on a much smaller budget, meaning no third party subpoenas, no district court discovery for evidence of copying and commercial success, no threatening the infringer with nuclear war litigation, and no funding for media and campaign donations. It is a shame that Congress and the Supreme Court have sold out patent rights to the highest bidders.
PTAB Petition Relies on Outdated and Irrelevant Prior Art
The prior art cited by the petitioner included a patent issued to Paul Allen’s now defunct Interval Research Corporation (IRC) for a backpack mounted audio/video recorder concept by inventor “Strub” combined with a television transmitter patent by inventor “Wood”.
Strub is a work of science fiction designed to lock up technology so that IRC could extort royalties from legitimate inventors. The petitioner used Strub’s imaginary invention that claims to do almost unlimited things including self-powering from stray radio waves and making decisions to record or not record audio by using artificial intelligence to determine “interesting content”. It does this without any explanation of how the technology would work or how it could be duplicated by others. To be relevant to the Zaxcom wireless microphone patents, all of this equipment would need to be produced with 2005 era technology and fit in a wearable device. In contrast, Glenn did what Paul Allen’s minions only dreamed of, plus captured a valuable recording of the transmitted audio, plus put it into a pocket-sized device, plus earned an Emmy for his accomplishment.
The Wood reference is designed to eliminate dropouts between a television transmitter and an infinite number of home receivers using the internet to relay missing packets to the home TV receivers. It is designed to be part of a television station and is not in the same field as Glenn’s invention. It is not body worn and its real time dropout recovery method has no relation to the Zaxcom methods or body wearable apparatus.
For Wood to operate it needs to utilize at minimum a video server that can play back multiple streams of stored content over both the internet and through a broadcast transmitter while taking thousands or millions of requests for replacement data over one or more hard-wired internet connections. The combination of Strub and Wood would require hundreds of pounds of batteries and rack mounted equipment to operate in a “wearable” configuration. It would also require the actors wearing the Strub recorder units to be tethered together with wires.
Since Strub is a work of science fiction, it has the advantage for Lectrosonics that it claims to easily fit into a backpack and is intended to be non-obtrusive. The problem with this is that it is impossible to build using 2005 technology based of the size of the required gear and its power requirements. Yet Lectrosonics can use this unsupported and unverifiable language in Strub to support their claims of “wearable” to the PTAB. Lectrosonics has also claimed that, as big as the electronics may be, placing them into a back-pack (no matter how large) makes the device wearable.
Lectrosonics is claiming that the Strub/Wood combination would not add any size or weight to the already large backpack. Just “added software” would be all that was needed. This is impossible as a 65-pound rack mount server required by Wood and the 900 watts of power needed to run it would render the system impossible to carry and conceal on an actor.
The Sky is Purple
Relating to objective evidence of non-obviousness (which I believe is the most important Graham Factor) Lectrosonics has claimed that Zaxcom’s Emmy award and Academy of Motion Picture Arts and Sciences award have nothing to do with recording wireless even though the awards themselves directly site “Digital Recording Wireless” as the direct reason that Zaxcom was honored with the awards. Lectrosonics, during oral arguments, never referred to the awards by name, since they include the word “recording”. Zaxcom’s expert testified that he was on the Emmy technical committee that awarded the Emmy to Zaxcom directly for “Digital Recording Wireless”. Yet Lectrosonics continued to argue to the PTAB that the Emmy was for something else. The irony was thick as PTAB trial staff fawned over the Emmy statuette while their technocratic superiors seriously entertained cancelling the patent for the exact invention for which the award was granted. The awards confirm the non-obvious nature of the invention as well as the satisfaction of a long felt need by the entertainment industry to eliminate the dropouts that have long plagued productions. Lectrosonics’ attorneys seem to be arguing that the sky is purple and are hoping the judges have never been outside in the daylight.
I hope that Glenn and his company Zaxcom beat the odds and survive. I hope my article shines the light on his contribution and tips the scales in his favor. It is a travesty that patent rights have come to this. The merits of the invention carry very little weight. Does he have deep enough pockets and sufficient influence with the government to prevail? That seems to be all that matters.
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