Opinions / Panel Activity

In February, the Federal Circuit issued a nonprecedential opinion in Zaxcom, Inc. v. Lectrosonics, Inc., a patent case we have been following because it attracted amicus briefs. On appeal, the parties presented arguments concerning whether the Patent Trial and Appeal Board correctly construed certain claims, correctly found certain claim elements in the prior art, whether its analysis of secondary considerations of non-obviousness was correct, and whether the Board correctly found substitute claims to be patentable. Former Chief Judge Paul R. Michel filed an amicus brief encouraging the court to take the time to clarify the court’s law regarding the non-obviousness requirement, while US Inventor, Inc. also filed an amicus brief arguing the Board disregarded industry praise in finding that the claims were obvious. Judge Taranto authored a unanimous opinion on behalf of himself and Judges Lourie and Schall affirming the Board’s judgments. This is our opinion summary.

Judge Taranto summarized the relevant background:

Lectrosonics, Inc. petitioned the Patent and Trademark Office to institute two inter partes reviews, under 35 U.S.C. §§ 311–19, of claims of two patents owned by Zaxcom, Inc.—claims 7, 8, 11, 12, 14, and 15 of U.S. Patent No. 7,929,902, and claims 1–4, 9, 10, 12, 15, 31, 36, 37, and 41– 45 of U.S. Patent No. 8,385,814. After institution of the requested reviews, Zaxcom filed, in each proceeding, a motion to replace the challenged original claims with corresponding substitute claims if the Patent Trial and Appeal Board held the challenged original claims unpatentable. The Board issued two final written decisions holding all challenged claims unpatentable, and it therefore addressed Zaxcom’s proposed substitute claims, which it allowed to be added to the patents because Lectrosonics had not proved them unpatentable. Zaxcom appeals the Board’s rejection of the original claims, and Lectrosonics appeals the Board’s upholding of the substitute claims.

The court first addressed the matters raised in the appeal. In this regard, Judge Taranto noted how “[t]he ’814 and ’902 patents share a specification, and the audio recording technology described and claimed is similar to that in U.S. Patent No. 9,336,307,” discussed in another opinion of the court. He also framed the court’s analysis by noting that “[t]he ’902 patent had two challenged original independent claims: a system claim (claim 7) and a method claim (claim 12)” and “[t]he ’814 patent had one challenged original independent system claim (claim 1).” Judge Taranto then noted the court “affirm[ed] the Board’s determination as to claim 12 of the ’902 patent and its dependents for the same reasons that, in the ’307 Decision, we have affirmed the Board’s determinations as to the original claims at issue there.” As a result, the court in this opinion limited its discussion to “claim 7 of the ’902 patent and claim 1 of the ’814 patent.”

As to the appeal of the rejection of these claims, Judge Taranto indicated the court “agree[d] with the Board that the broadest reasonable construction of ‘wearable,’ found in both independent claims, is ‘suitable and in a condition to be worn,’ consistent with its dictionary definition.” This ruling extended the claims’ scope into the space of another patent that “discloses a ‘wearable’ device as required by the patent claims at issue here.” Moreover, Judge Taranto explained, there was substantial evidence to conclude that other patents also “disclosed a ‘master timecode generator,’ a term for which there is no claim construction dispute in this appeal.” Finally, he noted, the Board had substantial evidence to support its determination that Zaxcom’s evidence of industry praise and long-felt need lacked a nexus to the claims.” As a result of this analysis, he explained, “the Board properly held all original claims unpatentable.”

As for the cross-appeal, Judge Taranto noted that “Lectrosonics’s arguments in its cross-appeal are materially the same as the cross-appeal arguments [the court] rejected in the ’307 Decision.” Therefore, he concluded, “the Board properly held all substitute claims not unpatentable.” In conclusion, the court “affirm[ed] the final written decisions of the Patent Trial and Appeal Board in IPR2018- 01129 and IPR2018-01130.”

As a result, the court affirmed the Board in all respects. Notably, moreover, the court did not address any of the arguments made in the two amicus briefs.