“Zaxcom said the case law supported its conclusion that ‘[i]t was legal error to find ‘no nexus’ simply because the Board thought the claims were ‘too broad’ (i.e., the praised features of a covered embodiment were ‘not required’).”
On May 26, Zaxcom filed an appeal brief with the United States Court of Appeals for the Federal Circuit (CAFC) requesting review of a Patent Trial and Appeal Board (PTAB) decision that invalidated claims directed to Zaxcom’s award winning wireless microphone technology. Zaxcom appealed the inter partes review (IPR) decision, filed by Lectrosonics, Inc., arguing that the PTAB misconstrued the patent claims and failed to properly consider evidence of industry praise.
The ‘307 Patent
U.S. Patent No. 9,336,307 (the ‘307 Patent), which is assigned to Zaxcom, is essentially directed to device that may be hidden on performers that transmits audio to a remote recorder and includes a built-in recorder that is used to create an identical time stamped copy of the audio. Thus, any problems that occur during wireless transmission to the remote recorder may be fixed after transmission by replacing a portion of the remote audio recording track with the time stamped copy of the audio.
Exemplary claim 1 recited, in part:
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 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… wherein said local audio data may be retrieved after said locally recording and combined with said remotely recorded audio data.
The ‘307 patent disclosed several embodiments including a “Dropout Embodiment” and a “Multi-track Embodiment”. In the Dropout Embodiment, the loss of audio data during a wireless transmission was remedied by replacing data with locally recorded audio data. In the Multitrack Embodiment, local audio data from a plurality of local audio devices was combined to create a single, local multi-track file or a single, remote multitrack file.
Zaxcom was awarded both an EMMY Award and a technical OSCAR for the digital recording wireless products that embody the claimed invention of the ’307 Patent.
In the appeal brief, Zaxcom argued that the PTAB erred in its claim construction by determining that the claims encompass both the Dropout Embodiment and the Multitrack Embodiment. Further, Zaxcom argued that the PTAB improperly construed the claims such that the local audio data and the remotely recorded audio data may be from different sources, rather than both originating from the same source.
Noting that the PTAB erred in construing “said local audio data … is combined with said remotely recorded data”, Zaxcom explained that “all specification references to the combination of local audio data being used with remotely recorded audio data [were] references to the repair of a remote multitrack file, i.e., a Dropout Embodiment.” With respect to the asserted “same source” construction, Zaxcom noted that the structure and grammar of the claim itself mandated this construction because “the two ‘combined’ things are ‘said local audio data’ and ‘said remotely recorded audio data’”, both of which can be traced “solely back to one instance of audio, i.e., locally generated audio, the locally generated audio created by ‘a creator of locally generated audio’”. Thus, Zaxcom concluded that the Board erred in construing “local audio data … is combined with said remotely recorded audio data” to encompass more than the Dropout Embodiment and in finding that the local audio data and the remotely recorded audio data are not necessarily from the same source.
Zaxcom added that, based on the proper claim construction, the prior art does not anticipate or render obvious the claimed Dropout Embodiment. Noting that even Lectrosonics admitted that the primary reference, Strub, only disclosed a multitrack embodiment, Zaxcom explained that none of the cited references disclosed “local audio data combined with remotely recorded audio data.” Further, Zaxcom noted that the substitute claims that were analyzed, and found patentable by the PTAB during the inter partes review, were similar to the properly construed claims as being directed to the Dropout Embodiment.
Significance of ‘Industry Praise’
Zaxcom argued that even if the CAFC agrees with the PTAB’s claim construction, it is entitled to reversal because “the Board erred in its treatment of objective indicia of nonobviousness, as they relate to industry praise for both the merits of the claimed invention and products that embody the claims.” In particular, Zaxcom asserted that “the Board quixotically failed to find that the claimed invention received any industry praise, because the Board held that the ‘feature of repairing dropouts by replacing data’ was not required by the claims.”
Citing Apple, Inc. v. Samsung Elecs. Co., Zaxcom noted that industry praise must have a “reasonably commensurate” nexus to the claimed invention as demonstrated by evidence that the “industry praised  a claimed invention or  a product that embodies the patent claims weighs against an assertion that the same claimed invention would have been obvious.” Zaxcom said that the PTAB did not give weight to the industry praise because it believed that the praise was directed to the Dropout Embodiment, but not the Multitrack embodiment. In particular, according to Zaxcom, the PTAB improperly determined that there was “no nexus” because what the industry praised was “not required” by the claims, since the claim covered multiple embodiments. Zaxcom asserted that the caselaw supported its conclusion that “[i]t was legal error to find ‘no nexus’ simply because the Board thought the claims were ‘too broad’ (i.e., the praised features of a covered embodiment were ‘not required’)”.
Further, Zaxcom noted that Apple nexus requirement dictated that it was sufficient for the praise to be directed to “a product that embodies the patent claims.” Thus, according to Zaxcom, PTAB’s “no nexus” conclusion contradicted the precedent because “it was not disputed that the EMMY and OSCAR were for sold embodiments of the claimed invention.” In conclusion, Zaxcom asserted that even if the PTAB’s claim construction was correct, the EMMY and OSCAR awards “compel a conclusion of nonobviousness.”