Another PTAB Casualty: Emmy Awarded Wireless Microphone Technology Could Be Invalidated

By Josh Malone
August 13, 2019

“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.”

PTAB patent cemetery - https://depositphotos.com/10145161/stock-photo-grave.htmlOn 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?

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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.

Image Source: Deposit Photos
Image ID: 10145161
Copyright: 3quarks 

The Author

Josh Malone

Josh Malone quit his corporate job in 2006 to take his shot at the American (Inventor’s) Dream. Eight years later, savings depleted and orthodontics and college unfunded, he took one last swing before trudging back to the corporate world. And hit the homerun with Bunch O Balloons. His solution to the 63 year old problem of filling and tying water balloons instantly became the number one selling spring/summer toy. It was just as quickly knocked off resulting in a patent litigation now totaling 6 patents, 5 patent suits, 5 PTAB petitions/trials, 4 preliminary injunctions, and 8 appeals at the Federal Circuit. He is currently a Fellow with US Inventor working to restore the patent system.

Warning & Disclaimer: The pages, articles and comments on IPWatchdog.com do not constitute legal advice, nor do they create any attorney-client relationship. The articles published express the personal opinion and views of the author and should not be attributed to the author’s employer, clients or the sponsors of IPWatchdog.com. Read more.

Discuss this

There are currently 18 Comments comments. Join the discussion.

  1. Pro Say August 13, 2019 8:47 pm

    All hail the new PTAB.

    Same as the old PTAB.

    Mr. PTO Director; thank you for all you and your colleagues have — and are — doing on behalf of our Country.

    But; when will ALL the PTAB judges get your message?

    When?

  2. jokers? August 14, 2019 8:51 am

    “This invention won an emmy award therefore its patent shouldn’t be invalidated.” “The prior art is science fiction (???) so you shouldn’t be able to use it to invalidate the patent.” Really? Come on now.

  3. Valuationguy August 14, 2019 9:24 am

    Very well written case study Josh. Thanks for sharing it with us. Hopefully it might also open the eyes of some Congresscritters to the damage being created by their 2011 AIA Frankenstein monster.

  4. Night Writer August 14, 2019 9:28 am

    Thanks Josh! Keep in mind too that the judges of the CAFC were stacked by Silicon Valley who were there in the White House everyday and with a doubt selected the judges for Obama to appoint. As a group, they are horrendous. Many are unqualified with no science background. Some have some patent background but were known to have mental instability before being appointed. Others had a patent background but were known to be very anti-patent to an irrational degree. I suspect that they each received a phone call asking them if they would agree to get the patents under control in exchange for an appointed to the CAFC. As a group, they must be the worst group of judges that the USA has ever had at an appellant level.

    Trump, if re-elected, should consider dissolving the CAFC and then re-starting it with qualified judges (i.e., ones with science degrees and significant real world experience in patents and innovation that includes lots of prosecution work.)

  5. Disenfranchised Patent Owner August 14, 2019 10:06 am

    Now that Universal Studios has [temporarily?] scuttled “The Hunt” we can watch the PTAB death squad conduct another public lynching of US patents owned by a small inventor. Oh Goodie! How entertaining!

  6. Ron Weasley August 14, 2019 10:11 am

    “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. “

    Maybe, don’t claim it. There’s a thought!

    Josh has never met a patent that wasn’t groundbreaking.

  7. Dave Barelou August 14, 2019 10:25 am

    What EXACTLY is a “Patent Troll”, JOSH??? Please don’t advocate for ME… smh

  8. Concerned August 14, 2019 10:34 am

    My invention also solved a 63 year old problem like Mr. Malone’s invention. Whether the invention receives an industry award as was the case here, or experts within the field with 25 and 35 years experience author university studies supporting the patent grant, it carries no weight by people in authority who never served one day in the technology field.

    Amazing, just amazing. Outside opinions in a legal setting carry more weight than life long experts. Perhaps these judges missed their calling and should start inventing solutions to the world’s problems since the corresponding experts must be inept.

    I can’t wait for my PTAB ruling as to how something is routine, conventional and well understood when nobody on Earth has ever performed the claims, individually and in combination, and great harm has occurred lacking said solution. Not only are my experts inept, they must be mean spirited if my solution was really so routine, yet never used.

  9. TFCFM August 14, 2019 11:18 am

    I cannot help but wonder: Are Oscar recipients required to prove that the subject matter for which they’ve been nominated would have been novel and non-obvious to a person of ordinary skill in the film industry?

    If not, will they be so required in the future?

  10. Benny August 14, 2019 11:54 am

    TFCFM @9,
    No. It ain’t what you do, it’s the way that you do it, to get an Oscar.

  11. jack August 14, 2019 2:54 pm

    Nothing new. I had twice opportunity to deal with Administrative judges in US. In both cases they ruled regardless of the law and logic. Completely shameless. I prevailed in one of the cases because I was able to appeal based on logic and each time decision of the adm. judge was overturned. Unbelievable Corruption. Comparing with my other experience as defendant in an army court in a country under communist regime years ago I think judges there were more professional, sympathetic and more interested in actual law. Money inserted in the law really stinks.

  12. Jianqing Wu August 14, 2019 4:59 pm

    Who can trust such a patent system? Who will among the 300 million people invent and patent?

  13. Stuart Fox August 14, 2019 5:48 pm

    Josh – thanks for an excellent article and summary of the situation and congratulations on your own success and efforts to help.

    On the other hand you asked ;

    “Why would the Motion Picture Academy and the Television Academy hand out a prestigious award for a patented technology if it were obvious?”

    Others have also indicated scepticism re this aspect.

    Another example – also in the electronics and entertainment industry – exists in the patent – never rescinded – granted to favourite actress Heddy Lamarr (Markey) and George Antheil > ‘Secret Communication System’ (in this instance – never produced, not even a prototype as far as can be ascertained) – she also received awards for her invention – one quite recently from the IP sector – but never mind – its a great story. Oh ….. and the USPTO have “lost” the file!

    With respect Josh, the bottom line is that while inventing success isn’t easy and innovators deserve to be rewarded and applauded for their achievements and contributions, patents and awards are based upon differing criteria > the latter hardly reinforce the former.

  14. Steve Oakley August 14, 2019 6:59 pm

    sorry but its a BS patent despite how bright you think it is. its obvious, we just needed technology to be able to make it practical. As for dual transmitter recorder, you split the mic signal, not use 2 mics. duh ! or should I get a patent for that ? we should dramatically curtail patents because big money is gaming the sytem. the first would be to limit them to 5 years rather than the 20 soemthing currently in play, plus make a little tweak to the design and get a new patent AKA big pharma.

  15. Curious August 14, 2019 7:52 pm

    Trump, if re-elected, should consider dissolving the CAFC and then re-starting it with qualified judges (i.e., ones with science degrees and significant real world experience in patents and innovation that includes lots of prosecution work.)
    Trump is about as likely to attend a meeting of the NAACP (and be hailed as a conquering hero) as he is to dissolve the CAFC. In case you haven’t noticed, but big-moneyed interests are the favorites of this administration — not the little guy. I see nothing about these issues that will pique his interest.

    Moreover, unless the Republicans gain control of the House, I see little legislation getting done anytime in the near future even if Trump gets elected.

  16. Josh Malone August 14, 2019 8:56 pm

    To the contrary Stuart (and TFCFM, Benny). OBJECTIVE evidence of non-obvious is considered to be very important in case law as a guard against hindsight bias. Everything is obvious in retrospect. Industry acclaim is the term used most frequently by SCOTUS and CAFC. Unfortunately, the PTAB and many current CAFC judges have disregarded this in favor of hindsight. An Emmy is important evidence. If we discount it we are left with squishy SUBJECTIVE feelings.

  17. Devon Cooke August 15, 2019 12:39 am

    It’s hard to take this article seriously when it spends the entire time referring to the technology as “wireless microphones”. This is, at best, an informal industry term for the devices, which are more properly called wireless systems (essentially, radios that send and receive audio signals). The technology contains no microphones (and Zaxcom does not sell microphones). Microphones are purchased separately, and are intended to plug in to the transmitter.

    In the context of a supposedly nuanced discussion about the technical details of the technology, it’s painfully obvious that the author hasn’t consulted anyone who uses this technology on a day-to-day basis. I find it very ironic that an article which spends so much time complaining about the technical illiteracy of judges can make such a basic mistake in terminology. In an informal context, maybe that could be overlooked, but in the context of a patent, where the entire discussion revolves around what the technology does and doesn’t do, that error is unforgivable (and suspiciously biased).

    Also, as sound recordist who has been working in the film industry since 2005, let me tell you what was and wasn’t an obvious innovation back then:

    Obvious: Integrating the capability to record into a wireless transmitter. 2005 was the iPod era. Miniature audio devices were newish, but hardly unheard of. Adding a record function was as simple as adding an off-the-shelf chip and some flash memory to the circuit board of the transmitter. Zaxcom may have been the first to ship this, but it wasn’t hard to see where things were going at the time. This was an obvious evolutionary design step.

    Non-obvious: Figuring out how to start and stop the recording remotely. Zaxcom’s solution for this is called Zaxnet, and it is a neat piece of integration between their digital recorders and their wireless systems. Press record on the main recorder, and all the transmitters also start recording. Neat trick, and definitely not the obvious solution, which would be to have a record button on the wireless receiver. Also causes a terrible case of vendor lock-in, but that’s another story.

    Obvious: Using timecode to sync the audio recording. This would have been considered a standard and essential feature in 2005, as timecode sync has been the norm in film recording for decades (the SMPTE timecode standard dates back to the 50’s or 60’s).

    Non-obvious: “Patching” the audio on the main recorder with audio from the bodypack transmitter as a means of fixing wireless dropouts in the main recording, without having to go back and do it manually in post-production. Again, this relies on significant integration between the main recorder and the wireless systems. Their system uses timecode to achieve this, but timecode is definitely not the innovative part. Zaxcom’s term for this is “re-recording”, but that’s not really an accurate term for what it does…

    It would have been nice if the author had actually spelled out what each patent actually protects. Three patents are mentioned, and their numbers indicate that they were issued separately some years apart, but the author talks about them all as if they are one invention.

    Maybe the patents only cover the non-obvious features that I mentioned, but that seems unlikely, as Lectrosonics (which is also a small, boutique manufacturer, not a goliath) does not sell anything that solves those problems (and could not, as they don’t make the recorders that make Zaxcom’s solution so seamless — wireless is their *only* business).

    My understanding is that Zaxcom has patented adding the recording feature to their transmitters, which, as I mentioned, was a fairly obvious (though useful!) feature at the time. A more *useful* article would have talked about the patents individually, and made a case for each patent’s obviousness independently; lumping them all together is guaranteed to cause confusion … but maybe that was the intent.

  18. TFCFM August 15, 2019 9:37 am

    @JM OBJECTIVE evidence of non-obvious is considered to be very important in case law as a guard against hindsight bias.

    Undoubtedly so, but WHAT is an Oscar “evidence” of?

    (A: That a subjective board of non-experts, possibly including an award recipient’s friends, decided to grant an award to the recipient — which “proves” very little about the objective criteria that are supposed to go into an assessment of obviousness.)

    (More serious A: An Oscar is surely ‘recognition in the art,’ but not necessarily tied to the claimed elements, absent evidence of such a tie.)

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