Argument Recap / Panel Activity

Last Wednesday, the court heard oral argument in Zaxcom, Inc. v. Lectrosonics, Inc., an appeal by Zaxcom from an adverse decision by the Patent Trial and Appeal Board in an inter partes review proceeding initiated by Lectrosonics. We have been following the case because it attracted two amicus briefs, one from retired Federal Circuit Judge Paul R. Michel and one from U.S. Inventor, Inc. On appeal, Zaxcom argues the PTAB 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. Judges Lourie, Schall, Taranto heard Wednesday’s argument. This is our argument recap.

Robert Greenspoon argued for Zaxcom. He argued for reversal of the Board’s decision, first, because he claimed there are novel claim combinations that the Board overlooked. Specifically, Greenspoon pointed to a “timecode” management part of the relevant claims.

Judge Taranto asked about secondary considerations of non-obviousness. In response, Greenspoon pointed the court toward more “objective evidence,” noting that evaluation of secondary considerations might involve hindsight bias. Greenspoon further contended the prior art failed to anticipate these claims because the prior art at issue did not have a local timecode stamping function and the prior patent was situated in a backpack rather than as wearable on a wrist. Greenspoon also argued that Lectrosonics conceded a backpack does not meet the “wearable” limitation, and that the original examiner agreed the term “wearable” would not include use of a body pack or backpack. From a functional point of view, Greenspoon argued, the “wearable” functionally of these patents would allow the device to be hidden while worn, but the prior art backpack would not be hidden.

Cory Bell argued for Lectrosonics. First, Bell argued that the description in the patent included language for a backpack, and that that is evidenced by the patent figures. Second, Bell contended, for the nexus argument the “time code” limitation is not present in all the claims. Moreover, he argued, the remaining elements in all of the claims are present in the prior art.

Molly R. Silfen argued for the intervenor, Andrew Hirschfield, who is performing the functions and duties of the Under Secretary of Commerce for Intellectual Property and the Director of the U.S. Patent and Trademark Office. She first noted that the industry praise argument was presented for the substitute claims. Second, she argued that any secondary considerations of non-obviousness present a question of fact, but she conceded that weighing all the evidence would be a question of law for the court’s obviousness determination.

In rebuttal, Greenspoon agreed with Silfen that the court’s obviousness determination is a question of law. He also argued that Bell’s contention that all the elements of the claims at issue were found in the prior art is false.

With respect to the cross appeal, Bell argued that the substitute claims included extra language that expanded their scope beyond the original language. Regardless, Bell argued, the time code generator was actually present in the prior art and, therefore, all the elements of the claims are encompassed in the prior art.

We’ll continue to monitor the case and report on any developments.