NOTE: This disposition is nonprecedential. 

United States Court of Appeals 

for the Federal Circuit ______________________ 

ZAXCOM, INC.,

Appellant

v.

LECTROSONICS, INC.,

Cross-Appellant

v.

ANDREW HIRSHFELD, PERFORMING THE 

FUNCTIONS AND DUTIES OF THE UNDER 

SECRETARY OF COMMERCE FOR 

INTELLECTUAL PROPERTY AND DIRECTOR OF 

THE UNITED STATES PATENT AND TRADEMARK 

OFFICE,

Intervenor

______________________ 

2020-1350, 2020-1405

______________________ 

Appeals from the United States Patent and Trademark 

Office, Patent Trial and Appeal Board in No. IPR2018-

00972.

______________________ 

Decided: February 18, 2022 

______________________ 

Case: 20-1350 Document: 71 Page: 1 Filed: 02/18/2022
2 ZAXCOM, INC. v. LECTROSONICS, INC. 

ROBERT GREENSPOON, Dunlap Bennett & Ludwig 

PLLC, Chicago, IL, argued for appellant. Also represented 

by GREGORY J. GONSALVES, Vienna, VA; RITA CHIPPERSON, 

Chipperson Law Group, P.C., New York, NY. 

 CORY C. BELL, Finnegan, Henderson, Farabow, Garrett 

& Dunner, LLP, Boston, MA, argued for cross-appellant. 

Also represented by J. DEREK MCCORQUINDALE, Reston, 

VA. 

 MOLLY R. SILFEN, Office of the Solicitor, United States 

Patent and Trademark Office, Alexandria, VA, argued for 

intervenor. Also represented by THOMAS W. KRAUSE,

ROBERT J. MCMANUS, FARHEENA YASMEEN RASHEED. 

 ______________________ 

Before LOURIE, SCHALL, and TARANTO, Circuit Judges.

TARANTO, Circuit Judge. 

Lectrosonics, Inc. petitioned the Patent and Trademark Office to institute an inter partes review, under 35 

U.S.C. §§ 311–19, of all claims of U.S. Patent No. 

9,336,307, which is owned by Zaxcom, Inc. After institution of the requested review, Zaxcom filed a motion to replace the original claims 1–14 with fourteen corresponding 

claims—substitute claims 15–28—if the Patent Trial and 

Appeal Board held the original claims unpatentable. The 

Board issued a final written decision holding all original

claims unpatentable, and it therefore addressed Zaxcom’s 

proposed substitute claims, which it allowed to be added to 

the patent because Lectrosonics had not proved them unpatentable. Lectrosonics, Inc. v. Zaxcom, Inc., No. 

IPR2018-00972, 2019 WL 5849856, at *29 (P.T.A.B. Nov. 

7, 2019). Zaxcom appeals the Board’s rejection of the original claims, and Lectrosonics appeals the Board’s approval 

of the substitute claims. We affirm both determinations. 

Case: 20-1350 Document: 71 Page: 2 Filed: 02/18/2022
ZAXCOM, INC. v. LECTROSONICS, INC. 3

I 

The ’307 patent describes and claims a system and 

method for recording and processing audio received from 

wireless devices. The specification describes at least the 

following arrangement: Each of a plurality of wireless devices, upon picking up audio, both self-records the audio 

and sends it wirelessly to a remote recorder. ’307 patent, 

col. 2, line 54, through col. 3, line 14. The recordings are 

time-synchronized so that “multiple individually recorded 

audio tracks” can be “combined into one or more multitrack audio files.” Id., col. 4, lines 3–14. One reason for the 

local recording is that wireless transmission to the remote 

recorder may be imperfect due to dropout or noise, id., col. 

4, lines 15–25, and the locally maintained data can be used

for repair—specifically, to replace corrupted data received 

wirelessly at the remote recorder, id., col. 12, lines 59–63. 

The patent had two independent original claims: an apparatus claim (claim 1) and a method claim (claim 12). 

Both claims require wearable local audio devices that wirelessly transmit local audio to a remote recorder and also 

locally record audio in the memory of the device. And both 

claims required that local audio data be “combined” with 

remotely recorded audio data. See id., col. 23, lines 22–42 

(claim 1); id., col. 24, lines 15–32 (claim 12). 

We agree with the Board’s construction of the claims to 

encompass both embodiments described in the specification, i.e., both the repair of dropouts and the creation of a 

multitrack file. Lectrosonics, 2019 WL 5849856, at *4. Under the claims’ broadest reasonable interpretation (BRI), 

local and remote audio data may be “combined” either to 

repair corrupted audio data received by the remote recorder or to create a multitrack audio file. In adopting that 

construction under the BRI standard, the Board correctly

rejected Zaxcom’s argument for a requirement that the

claimed “local audio data” and “remote audio data” derive 

from the same source (i.e., the same local audio event). Id.

Case: 20-1350 Document: 71 Page: 3 Filed: 02/18/2022
4 ZAXCOM, INC. v. LECTROSONICS, INC. 

Given the claim construction, the Board had substantial evidence to support its findings underlying the conclusion that claims 1–11 were unpatentable for obviousness 

over Strub (U.S. Patent No. 6,825,875) when combined 

with either Nagai (U.S. Publication No. 2002/0159179 A1) 

or Gleissner (U.S. Publication No. 2004/0028241 A1), as 

well as its finding that claims 12–14 were anticipated by

Strub. The Strub patent discloses a “small, lightweight, 

wearable recording unit,” Strub, col. 4, lines 29–31, that 

records and transmits audio data that can be used by other 

units, id., col. 12, lines 4–39, and “blend[s]” audio recordings from different devices, id., col. 86, lines 1–9. The 

Board had substantial evidence for its determination that 

Strub alone anticipated claims 12–14. Lectrosonics, 2019

WL 5849856, at *11. And it also had substantial evidence 

that a relevant artisan would have been motivated to combine Strub with either Nagai or Gleissner, both of which 

undisputedly disclose the “audio input port” of claims 1–11. 

Id. at *7–10. 

Zaxcom argues, as to claims 1–11, 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. But 

given the adopted claim construction, the Board determined that Zaxcom’s evidence of such objective indicia 

lacked the nexus to the claimed invention required to alter 

a conclusion of obviousness that would be justified based 

on the prior-art analysis. Id. at *10–11. Zaxcom specifically focused on a Technical Achievement Academy Award, 

J.A. 4272, an Engineering Emmy Award, J.A. 4304, and 

declarations from sound mixers, J.A. 4273–78; J.A. 4281–

84, praising Zaxcom’s wireless recording systems. The 

Board reasonably found that the praise was primarily directed to the systems’ critical feature of dropout repair, 

while the claims of the ’307 patent, under the BRI construction properly adopted, are broadly directed to wirelessly 

transmitting audio data and combining local and remote 

Case: 20-1350 Document: 71 Page: 4 Filed: 02/18/2022
ZAXCOM, INC. v. LECTROSONICS, INC. 5

audio data from a plurality of devices—a technique already 

known in the prior art. 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. See Intercontinental 

Great Brands LLC v. Kellogg North America Co., 869 F.3d 

1336, 1343–44, 1347 (Fed. Cir. 2017) (overall obviousness 

determination is a legal one based on weighing of prior-art 

and objective-indicia facts). Thus, the Board properly held

claims 1–11 unpatentable for obviousness.

II

On Lectrosonics’s cross appeal, we affirm the Board’s 

determination that the substitute claims are not unpatentable. The substitute claims narrow the “combined” claim 

limitation to a limitation that requires “replacing” the remotely recorded data with local audio data from a device’s 

memory. Lectrosonics, 2019 WL 5849856, at *16–17. Although the claim language does not expressly limit the “replacing” to situations where there is a transmission error, 

Lectrosonics accepts that the substitute claims are directed 

to dropout repair. 

We see no reversible error in the Board’s determinations that substitute claims 15–28 are not unpatentable for 

obviousness over Strub and Wood (Int’l Publication No. WO 

2004/091219 A1), alone or in combination with Nagai or 

Gleissner. As to the prior-art analysis, we mention only 

one point—concerning the combination with Wood needed 

for all claims. Although Wood discloses a method of repairing dropouts in a TV broadcast signal, Wood, p. 1, lines 28–

30, the Board had substantial evidence to support its finding that there was only a weak motivation to combine 

Wood’s (non-wearable) TV system with the wearable audio 

device in Strub, particularly because Strub did not contemplate repairing defects caused by transmission errors. 

Case: 20-1350 Document: 71 Page: 5 Filed: 02/18/2022
6 ZAXCOM, INC. v. LECTROSONICS, INC. 

Lectrosonics, 2019 WL 5849856, at *23 (citing Strub, col. 

48, lines 18–30, col. 85, lines 28–41).

Having found the asserted prior-art basis for an obviousness conclusion relatively weak in light of the narrowed 

scope of the claims, the Board determined that the objective indicia evidence was strong in light of that narrowed 

scope—strong enough to support an overall conclusion of 

nonobviousness. Id. at *23–29. We affirm the Board’s findings and ultimate conclusion. 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, id. at *25, a determination that 

comports with the legal standards for a presumption, see, 

e.g., Fox Factory, Inc. v. SRAM, LLC, 944 F.3d 1366, 1373 

(Fed. Cir. 2019); Polaris Indus., Inc. v. Arctic Cat, Inc., 882 

F.3d 1056, 1072 (Fed. Cir. 2018). The Board also reasonably found that the evidence positively showed a nexus, Lectrosonics, 2019 WL 5849856, at *25, as the substitute 

claims are undisputedly directed to dropout repair in systems with wearable recording devices, and this feature was 

discussed in at least the Emmy Award, J.A. 4304, and substantial portions of the declarations, see, e.g., J.A. 4276–77

¶ 6, J.A. 4283–84 ¶ 6. We see no basis for reversing the 

Board’s findings or the conclusion that these findings outweigh the weak prior-art case and therefore warrant rejection of the obviousness challenge to the substitute claims. 

III

For the foregoing reasons, we affirm the final written 

decision of the Patent Trial and Appeal Board.

The parties shall bear their own costs.

AFFIRMED

Case: 20-1350 Document: 71 Page: 6 Filed: 02/18/2022