NOTE: This disposition is nonprecedential.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

______________________ 

2020-1921, 2020-1922, 2020-1943, 2020-1944

______________________ 

Appeals from the United States Patent and Trademark 

Office, Patent Trial and Appeal Board in Nos. IPR2018-

01129, IPR2018-01130.

______________________ 

Decided: February 18, 2022

______________________ 

Case: 20-1921 Document: 92 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 MCBRIDE, ROBERT J. MCMANUS, FARHEENA 

YASMEEN RASHEED. 

 DAVID P. SWENSON, Patterson Thuente Pedersen, PA, 

Minneapolis, MN, for amicus curiae US Inventor, Inc. 

 MATTHEW JAMES DOWD, Dowd Scheffel PLLC, Washington, DC, for amicus curiae Paul R. Michel. 

 ______________________ 

Before LOURIE, SCHALL, and TARANTO, Circuit Judges.

TARANTO, Circuit Judge. 

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

Case: 20-1921 Document: 92 Page: 2 Filed: 02/18/2022
ZAXCOM, INC. v. LECTROSONICS, INC. 3

Zaxcom’s proposed substitute claims, which it allowed to be 

added to the patents because Lectrosonics had not proved 

them unpatentable. Lectrosonics, Inc. v. Zaxcom, Inc., No. 

IPR2018-01129, 2020 WL 407145, at *31 (P.T.A.B. Jan. 24, 

2020); Lectrosonics, Inc. v. Zaxcom, Inc., No. IPR2018-

01130, 2020 WL 407146, at *27–28 (P.T.A.B. Jan. 24, 

2020). Zaxcom appeals the Board’s rejection of the original 

claims, and Lectrosonics appeals the Board’s upholding of 

the substitute claims. We affirm the determinations in 

both IPRs. 

I 

The ’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 the

opinion we issue today in Zaxcom, Inc. v. Lectrosonics, Inc., 

Nos. 20-1350, -1405 (“’307 Decision”). The specification 

also discloses a “master timecode generator” that transmits 

time code references to local audio devices, which synchronize their local timecode generators with the master. ’902 

patent, col. 16, lines 30–37. The ’902 patent had two challenged original independent claims: a system claim (claim 

7) and a method claim (claim 12). See id., col. 24, line 51, 

through col. 25, line 10; id., col. 25, line 66, through col. 26, 

line 17. The ’814 patent had one challenged original independent system claim (claim 1). See ’814 patent, col. 23, 

lines 18–41.

Original independent claim 12 of the ’902 patent and 

its dependent claims are relevantly similar to claim 12 of 

the ’307 patent and its dependent claims. The broadest 

reasonable interpretation of original claim 12 of the ’902 

patent encompasses both multitrack creation and dropout 

repair. We affirm 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. We 

Case: 20-1921 Document: 92 Page: 3 Filed: 02/18/2022
4 ZAXCOM, INC. v. LECTROSONICS, INC. 

limit our discussion here to claim 7 of the ’902 patent and 

claim 1 of the ’814 patent.1

First, we agree 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. Lectrosonics, 2020 

WL 407145, at *4. Zaxcom argues for a narrower meaning, 

requiring that the wearable item be “small, lightweight, 

unobtrusive, easily hidden, not visible, and designed to be 

worn on the body of a creator of audio (i.e., performer).” Id. 

We see no persuasive basis, including in the prosecution 

history cited by Zaxcom, for disagreeing with the Board’s 

conclusion that the broadest reasonable interpretation is 

not limited by the set of restrictions proposed by Zaxcom, 

but extends, even in the context of these patents, to the dictionary-based construction adopted by the Board. And under that construction, there is no dispute that Strub (U.S. 

Patent No. 6,825,875), discloses a “wearable” device as required by the patent claims at issue here. Strub, col. 4, 

lines 29–31. 

Second, we hold that the Board had before it substantial evidence to support its finding that Strub and Woo 

(U.S. Patent No. 5,479,351) disclosed a “master timecode 

generator,” a term for which there is no claim construction 

dispute in this appeal. The Board’s finding is supported by

Woo’s disclosure of a master clock for synchronizing recordings “from a plurality of independent recording devices at 

a shared performance,” Woo, col. 4, lines 62–66, col. 7, lines 

49–50, and of jam synchronization to allow “a time code 

generator to follow the time code off another source,” id., 

1 The Board’s discussion of claim 7 of the ’902 patent 

in IPR2018-01129 is representative of its discussion of the 

similar claim 1 of the ’814 patent in IPR2018-01130, and 

thus this opinion cites only the IPR2018-01129 Board decision. 

Case: 20-1921 Document: 92 Page: 4 Filed: 02/18/2022
ZAXCOM, INC. v. LECTROSONICS, INC. 5

col. 3, lines 37–39, along with Strub’s disclosure of timestamping and synchronizing recordings, Strub, col. 79, line 

54, through col. 80, line 7. 

Finally, 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. Lectrosonics, 2020 WL 407145, at *14. The two independent claims 

at issue claim systems for time-stamping data from local 

audio devices, while the evidence of industry praise was directed primarily to the dropout repair capability of Zaxcom’s systems, as the Board made clear in the decision we 

have affirmed in the ’307 Decision. Thus, the Board 

properly held all original claims unpatentable. 

II

Lectrosonics, in its cross-appeal, challenges the Board’s 

determination that the substitute claims are not unpatentable. Lectrosonics’s arguments in its cross-appeal are materially the same as the cross-appeal arguments we have 

rejected in the ’307 Decision. We see no need for a separate 

discussion of the cross-appeal here. We conclude that the 

Board properly held all substitute claims not unpatentable.

III

For the foregoing reasons, we affirm the final written 

decisions of the Patent Trial and Appeal Board in IPR2018-

01129 and IPR2018-01130. 

The parties shall bear their own costs.

AFFIRMED

Case: 20-1921 Document: 92 Page: 5 Filed: 02/18/2022