Argument Preview

Next week is argument week at the Federal Circuit, and one patent case being argued next week, Zaxcom, Inc. v. Lectrosonics, Inc., attracted amicus briefs. In this case, Zaxcom appeals an adverse decision by the Patent Trial and Appeal Board in an inter partes review proceeding brought by Lectrosonics. On appeal, Zaxcom argues the Patent Trial and Appeal Board incorrectly construed certain claims, incorrectly found certain claim elements in the prior art, and erred in its analysis of secondary considerations of non-obviousness. Lectrosonics cross-appeals, arguing the Board incorrectly found substitute claims to be patentable. The case attracted two amicus briefs, one from retired Federal Circuit Judge Paul R. Michel and one from U.S. Inventor, Inc. This is our argument preview.

Zaxcom makes several arguments in its opening brief. First, it argues that “[t]he Board erred in construing “‘wearable.’” Second, it contends “the Board lacked substantial evidence for finding that any item or combination of prior art contained the particular ‘master timecode generator’ architecture of the claims.” Third, Zaxcom maintains “[t]he Board erred in construing ‘local audio data . . . combined with said remote audio data’ to encompass more than” a disclosed embodiment and that “[t]he Board further erred in finding” that two data “do not have to derive from the same source.” Finally, Zaxcom contends “the Board erred in its application of industry praise law to the facts of record by overlooking en banc legal standards from this Court that require consideration of industry praise as evidencing nonobviousness.”

In its principal and response brief, Lectrosonics argues that “[t]he Board correctly determined that all original claims were unpatentable based on [35 U.S.C.] § 102 and/or § 103 grounds.” Regarding secondary considerations of non-obviousness, Lectrosonics argues “Zaxcom never made the necessary showings for the nexus requirement to go forward.” With respect to its cross-appeal, Lectrosonics contends that, for “amended claims with narrowed scope, . . . the Board erred in not finding them unpatentable.”

Andrew Hirshfeld, performing the functions and duties of the Under Secretary of Commerce for Intellectual Property and Director of the U.S. Patent and Trademark Office, filed a brief as an intervenor. First, Hirschfeld argues that “[i]ssue preclusion prevents Zaxcom from arguing here that the Board misconstrued the term ‘wearable’ or that Strub does not disclose a ‘wearable’ device.” Second, Hirschfeld argues that “[s]ubstantial evidence supports the Board’s” obviousness analysis with regard to the “master timecode generator.” Third, he contends “substantial evidence supports the Board’s determinations regarding the obviousness of the original and substitute claims, specifically its disposition on Zaxcom’s objective evidence of nonobviousness.” He maintains “the Board correctly found that . . . Zaxcom had failed to establish a nexus presumption, or otherwise demonstrate nexus.” Finally, Hirschfeld argues regarding “the proposed substitute claims [that] substantial evidence supports the Board’s finding that Zaxcom demonstrated a nexus between those substitute claims—now expressly reciting dropout repair—and the evidence directed to that feature.”

In its response and reply brief, Zaxcom argues that “its principal brief presented substantial and meaningful claim construction arguments that, if successful, undisputedly should lead to reversal.” Alternatively, Zaxcom argues that, “if Zaxcom’s appeal does not succeed, Lectrosonics’ cross-appeal should also fail, so that the contingent amendment of the claims would stand.” Zaxcom argues this is because “[t]he Board did not err in holding the substitute claims patentable over Lectrosonics’ ‘weak’ obviousness case.” Finally, Zaxcom contends “Lectrosonics’ arguments as to the lack of nexus between the objective indicia and the substitute claims also lack merit, as do its attempts to ignore and downplay the prestige and depth of the industry praise and long felt need that fills this record.”

In its reply brief, Lectrosonics maintains the Board’s grant of amended claims on two patents should be reversed. First, Lectrosonics argues this was a case of “strong obviousness” rather than a weak one, as the Board found.  Second, Lectrosonics argues that in finding a nexus connecting industry praise and the amended claims “the Board made Zaxcom’s nexus argument for it, but without an adequate basis or warning to Lectrosonics.” Further, Lectrosonics contends that “Zaxcom did not show that its secondary considerations evidence was commensurate in scope with the amended claims to create legally sufficient nexus.” Third, Lectrosonics argues, the Board incorrectly “ignored material evidence” pertinent in the nexus analysis.

Retired Federal Circuit Judge Paul R. Michel filed an amicus brief in support of neither party. Judge Michel argues the panel should “should clarify [its precedent] so that [that precedent] properly resides within this Court’s longstanding nexus presumption precedents,” or, instead, the en banc court should consider the issue.

U.S. Inventor, Inc. also filed an amicus brief, but in support of Zaxcom. U.S. Inventor contends that, if allowed to stand, the Board decision will “further chip away at inventors’ ability to defend the validity of their claims in the inter partes review process against obviousness challenges.” U.S. Inventor argues that “the Board misreads decades of precedent regarding industry praise to . . . effectively strike from law the presumption of a nexus between the industry praise and the scope of the claimed subject matter.”

This case will be argued on Wednesday, February 9. We will keep track of this case and report on developments.