Fed Circuit affirms PTAB invalidation of Zaxcom patents
The US Court of Appeals for the Federal Circuit has upheld Patent Trial and Appeal Board (PTAB) reviews which found that three wireless audio recording patents owned by Zaxcom were invalid, while also upholding narrowed substitute claims.
In two non-precedential rulings issued on Friday, February 18, the Federal Circuit held that the PTAB had substantial evidence to support its findings that the patents were unpatentable for obviousness.
Zaxcom had claimed, in relation to US patent number 9,336,307, that no obviousness conclusion should be drawn "because its evidence of industry praise and long-felt need should have outweighed the above-recited determinations based on the prior art”.
In 2017, Zaxcom was awarded a Technical Achievement Academy Award for its design and engineering of the Zaxcom digital recording wireless microphone system. One year prior, Zaxcom had received an Engineering Emmy Award for its innovations in digital wireless technology.
However, the Federal Circuit sided with the PTAB. It held that the board had reasonably found that the praise was primarily directed to the systems’ critical feature of dropout repair, but the claims of the ‘307 patent are “broadly directed to wirelessly transmitting audio data and combining local and remote audio data from a plurality of devices—a technique already known in the prior art”.
Circuit Judge Richard Taranto, on behalf of the court, said: “The evidence, in short, says nothing 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.”
In a win for Zaxcom, the Federal Circuit also affirmed the PTAB’s decision to allow Zaxcom’s proposed substitute claims to be added to the patents because competitor Lectrosonics had not proved them unpatentable.
“In particular, the board determined that Zaxcom’s evidence of industry praise and long-felt need was entitled to a presumption of nexus, noting that these indicia were commensurate in scope with the claims as now narrowed,” said Taranto.
The Federal Circuit, in a separate ruling, affirmed the PTAB’s finding of invalidity for US patent numbers 8,385,814 and 7,929,902. Again, the court upheld the PTAB’s decision to allow Zaxcom’s proposed substitute claims.
The ruling on the ‘307 can be found here, while the ruling on the ‘814 and ‘902 patents can be found here.
