Lectrosonics, Inc. v. Zaxcom, Inc.

Trials@uspto.gov 	Paper 33
571.272.7822 	Entered: January 24, 2020
UNITED STATES PATENT AND TRADEMARK OFFICE
____________
BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________
LECTROSONICS, INC.,
Petitioner,
v.
ZAXCOM, INC.,
Patent Owner.
____________
IPR2018-01129
Patent 7,929,902 B2
____________
Before SCOTT R. BOALICK, Chief Administrative Patent Judge,
KALYAN K. DESHPANDE, and LYNNE E. PETTIGREW, Administrative
Patent Judges.
DESHPANDE, Administrative Patent Judge.
JUDGMENT
Final Written Decision
Determining All Challenged Claims Unpatentable
Granting Patent Owner’s Motion to Amend
35 U.S.C. § 318(a)

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I. 	INTRODUCTION
A. Background
Lectrosonics, Inc. (“Petitioner”) filed a Petition requesting an inter
partes review of claims 7, 8, 11, 12, 14, and 15 of U.S. Patent No. 7,929,902
B2 (Ex. 1001, “the ’902 patent”). Paper 2 (“Pet.”). Zaxcom, Inc. (“Patent
Owner”) filed a Preliminary Response. Paper 11 (“Prelim. Resp.”).
On January 24, 2019, we issued a Decision ordering that “an inter
partes review of claims 7, 8, 11, 12, 14, and 15 of the ’902 patent is hereby
instituted with respect to all grounds set forth in the Petition.” Paper 12
(“Dec.”). After institution, Patent Owner filed a Patent Owner’s Response
(Paper 17, “PO Resp.”) and a Patent Owner’s Contingent Motion to Amend
(Paper 16, “PO MTA”). In reply, Petitioner filed a Petitioner’s Reply to
Patent Owner’s Response (Paper 21, “Pet. Reply”) and a Petitioner’s
Opposition to Motion to Amend (Paper 22, “Pet. Opp. to MTA”). In
response, Patent Owner filed a Patent Owner’s Sur-Reply (Paper 24, “PO
Sur-Reply”) and a Patent Owner’s Reply in Support of Motion to Amend
(Paper 25, “PO Reply to Opp. to MTA”). In reply, Petitioner filed a
Petitioner’s Sur-Reply in Opposition to Patent Owner’s Motion to Amend
(Paper 27, “Pet. Sur-Reply to Opp. to MTA”). Patent Owner and Petitioner
presented oral arguments on October 25, 2019, and a transcript has been
entered into the record. Paper 32 (“Tr.”).
The Board has jurisdiction under 35 U.S.C. § 6. In this Final Written
Decision, after reviewing all relevant evidence and arguments, we determine
that Petitioner has met its burden of showing, by a preponderance of the
evidence, that claims 7, 8, 11, 12, 14, and 15 of the ’902 patent are
unpatentable. We further determine that Petitioner has not met its burden of

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showing, by a preponderance of the evidence, that proposed substitute
claims 21–26 are unpatentable.
B. Related Proceedings
The parties indicate that the ’902 patent is involved in Zaxcom, Inc. v.
Lectrosonics, Inc., Civil Action No. 1:17-cv-03408 (E.D.N.Y.), and Zaxcom,
Inc. v. Lectrosonics, Inc., Civil Action No. 2:17-cv-02840 (D.N.J.). Pet. 52;
Paper 10, 1–2. The following proceedings, before the Board, also involve
the same parties: IPR2018-00972 and IPR2018-01130. Paper 3, 2. We
previously issued a decision in IPR2018-00972 (“the ’972 proceeding”). See
Lectrosonics, Inc. v. Zaxcom, Inc., IPR2018-00972, Paper 41 (PTAB Nov. 7,
2019) (Final Written Decision).
C. The ʼ902 Patent (Ex. 1001)
The ’902 patent discloses a system and method “for recording and
processing audio having one or more tracks received from one or more
wireless devices operating in either an asynchronous or synchronous mode.”
Ex. 1001, 1:29–32. Figure 1 is reproduced below.
Figure 1 depicts recording system 100, which “wirelessly records
audio events, such as performances, movie takes, etc. having one or more

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performers.” Ex. 1001, 4:10–14. Recording system 100 includes local
audio devices 102, remote control unit (“RCU”) 104, receiver 106, and
recorder 108. Id. at 4:37–40. Local audio devices 102 record live audio and
store the audio in memory using timestamps that are synchronized with the
timestamps of recorder 108. Id. at 5:2–7. Local audio devices 102 may
transmit both live and replayed audio to receiver 106 to be recorded by audio
recorder 108. Id. at 4:50–52. “RCU 104 includes an RF transmitter capable
of transmitting one or more of a time reference signal, digital commands,
and audio to one or more other components of recording system 100.” Id. at
4:40–43. The RCU may remotely control local audio devices 102, receiver
106, and recorder 108 for “initiating audio playback of all local audio
devices 102 starting at the same time reference, as well as recording thereof
by receiver 106 and recorder 108.” Id. at 4:43–49.
D. Illustrative Claims
Petitioner challenges claims 7, 8, 11, 12, 14, and 15 of the ’902 patent.
Pet. 19–52. Claims 7 and 12 are the independent claims at issue. Claims 7
and 12 are illustrative of the challenged claims and are reproduced below:
7. 	A system for recording locally generated audio
comprising:
at least one master timecode generator for generating a
plurality of master timecodes; and
at least one local audio device wearable by a creator of
said locally generated audio including:
at least one local audio device receiver for receiving at
least one of the group consisting of digital commands and said
master timecodes;
at least one audio input port for receiving locally
generated audio from an audio input device;
at least one memory;

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at least one local timecode generator for generating a
plurality of local timecodes; and
at least one control unit electrically coupled to said local
audio device receiver, said audio input device, said
memory, and said local timecode generator for creating
stamped local audio data and storing said stamped local audio
data in said memory;
wherein said stamped local audio data includes at least
one local timestamp to reference at least a portion of said
stamped local audio data to at least one of said local timecodes;
and
wherein said stamped local audio data includes at least
one identifier selected from the group consisting of track
identifiers, local audio device identifiers, performer identifiers,
and combinations thereof.
Ex. 1001, 24:51‒25:10.
12. 	A method of wirelessly recording local audio, said
method comprising:
locally receiving said local audio generated by at least
one performer during an audio event;
wirelessly transmitting said local audio to at least one of
the group consisting of a recorder, a receiver, and combinations
thereof;
locally recording said local audio as local audio data in at
least one memory of at least one local audio device; and
remotely recording said transmitted local audio via at
least one of the group consisting of a recorder, a receiver, and
combinations thereof as remote audio data;
wherein at least a portion of said local audio data is
retrieved during or subsequent to said audio event and is
combined with said remote audio data;
wherein said local audio data includes at least one
identifier selected from the group consisting of track identifiers,
local audio device identifiers, performer identifiers, and
combinations thereof.
Id. at 25:66–26:17.

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II. 	ANALYSIS
A. Prior Art and Asserted Grounds
Petitioner asserts that claims 7, 8, 11, 12, 14, and 15 of the ’902 patent
are unpatentable based on the following grounds (see Pet. 19–51):1
Claims Challenged 	35 U.S.C. § 	Reference(s) / Basis
7, 8, 11, 12, 14, 15 	103 	Strub2
7, 8, 11 	103 	Strub, Nagai3
7, 8, 11 	103 	Strub, Gleissner4
7, 8, 11 	103 	Strub, Woo5
7, 8, 11 	103 	Strub, Nagai, Woo
7, 8, 11 	103 	Strub, Gleissner, Woo
12, 14, 15 	102 	Strub
12, 14, 15 	103 	Strub, Wood6
B. Claim Construction
The Petition was filed on June 12, 2018, prior to the effective date of
the rule change that replaces the broadest reasonable interpretation (“BRI”)
standard. See Changes to the Claim Construction Standard for Interpreting
Claims in Trial Proceedings Before the Patent Trial and Appeal Board, 83
Fed. Reg. 51,340 (Oct. 11, 2018) (final rule) (“This rule is effective on
1 Petitioner supports its challenge with the Declaration of John Tinsman.
Ex. 1011.
2 U.S. Patent No. 6,825,875 B1, issued Nov. 30, 2004 (Ex. 1003, “Strub”).
3 U.S. Patent Application Publication No. 2002/0159179 A1, published Oct.
31, 2002 (Ex. 1004, “Nagai”).
4 U.S. Patent Application Publication No. 2004/0028241 A1, published Feb.
12, 2004 (Ex. 1005, “Gleissner”).
5 U.S. Patent No. 5,479,351, published Dec. 26, 1995 (Ex. 1020, “Woo”).
6 World Intellectual Property Organization Publication No. WO
2004/091219 A1, published Oct. 21, 2004 (Ex. 1008, “Wood”).

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November 13, 2018 and applies to all IPR, PGR and CBM petitions filed on
or after the effective date.”). We, therefore, interpret claims of an unexpired
patent using the broadest reasonable construction in light of the specification
of the patent in which they appear. See 37 C.F.R. § 42.100(b) (2017);
Cuozzo Speed Techs., LLC v. Lee, 136 S. Ct. 2131, 2142–46 (2016). Under
the broadest reasonable construction standard, claim terms are generally
given their ordinary and customary meaning, as would have been understood
by one of ordinary skill in the art in the context of the entire disclosure. In
re Translogic Tech., Inc., 504 F.3d 1249, 1257 (Fed. Cir. 2007).
1. “local audio data . . . is combined with said remote audio data”
Petitioner asserts that “[f]or the purposes of this Petition, no explicit
construction is needed.” Pet. 11. Patent Owner proposed a construction of
the limitation “local audio data . . . is combined with said remote audio data”
(the “combining” limitation), as recited by independent claim 12, to require
(i) local audio generated by a performer is stored in a wearable
local audio device as local audio data, (ii) the same local audio
is transmitted to a remote recorder or receiver, (iii) the same
local audio is remotely recorded at the recorder or receiver as
remotely recorded audio data, and (iv) that the local audio data
is combined with the remotely recorded audio data (i.e., that a
time segment of the local audio data replaces a corresponding
time segment of the remotely recorded audio data).
Prelim. Resp. 10–11. Patent Owner argued that this interpretation is
consistent with both the claims and the ’902 patent specification. Id. at 10–
12. In our Decision on Institution, we disagreed with Patent Owner that this
limitation requires replacing the remotely recorded audio data with local
audio data. Dec. 7–9.

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Patent Owner now asserts a different construction of this limitation,
requiring
that (i) local audio generated by a performer is stored in a
wearable local audio device as local audio data, (ii) the same
local audio is transmitted to a remote recorder or receiver,
(iii) the same local audio is remotely recorded at the recorder or
receiver as remotely recorded audio data, and (iv) that the local
audio data is combined with the remotely recorded audio data.
PO Resp. 9 (citing Ex. 2111 ¶ 15) (emphases added). Patent Owner asserts
that this construction is consistent with both the claim language and the ’902
patent specification. Id. at 8–11.
Turning first to the claims, Patent Owner asserts that claim 12 requires
the local audio data and the remotely recorded audio data to originate from
the same audio. Id. at 9 (citing Ex. 1001, 26:1–2). Patent Owner asserts that
“said local audio data” is combined with “said remotely recorded audio
data” and both originate from the same source—the “local audio generated
by at least one performer.” Id.; PO Sur-Reply 2–3. Patent Owner further
argues that the ’902 patent specification supports its construction. PO Resp.
10. Specifically, Patent Owner argues that Figure 6 depicts audio replaying
and re-recording processing. Id. (citing Ex. 1001, Fig. 6).
Petitioner argues that Patent Owner’s proposed construction
contradicts the claims and fails to distinguish between “local audio” and
“local audio data.” Pet. Reply 4. Petitioner asserts that there is a distinction
between audio from a performer and audio data from memory. Id. at 16–17.
Petitioner asserts that local audio is generated by a performer in claim 12,
and “[t]here's nothing in the claims, in the specification, at least that the
Patent Owner has pointed to, that would distinguish between local audio
from a performer and local audio received at the unit.” Tr. 16:9–11. In sum,

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Petitioner asserts that claim 12 is directed to “the multi-track embodiments
that the patent talks to.” Tr. 48:3–6.
We agree with Petitioner that the “combined” limitation encompasses
the multitrack embodiment of the ’902 patent. Independent claim 12 recites
that the “local audio data” is “combined with said remote audio data.” In
view of Mr. DeFilippis’s testimony that the “combined” limitation allows
“multiple individually recorded audio tracks to be combined into one or
more multi-track audio files” (see the ’972 proceeding, Ex. 2086 ¶ 18), we
determine that claim 12 does not require the claimed “local audio data” and
“remotely recorded audio data” to be derived from the same source.
Furthermore, every occurrence of the term “combined” in the ’902 patent
specification outside of the claims refers to the combination of audio into a
multi-track file. See, e.g., Ex. 1001, 4:23–25 (“This accuracy allows
multiple individually recorded audio tracks to be combined into one or more
multi-track audio files electronically post-recording.”), 5:18–19 (“the
multiple audio recordings are combined to create one single recording”),
16:51–55 (“[T]he local audio device of each performer . . . may be combined
to create one or more multitrack audio files that are stored with master
timestamps generated by the receiver/recorder’s internal master timecode
generator.”), 19:13–15 (“[A]ll of the individual audio files may be combined
to provide one or more comprehensive audio files.”). Although we agree
with Patent Owner that the ’902 patent specification describes an
embodiment of repairing a dropout (i.e., a loss of audio data during a
wireless transmission is remedied through the replacement of data), we are
not persuaded that the recited “combined” limitation is limited to that
embodiment, but rather also encompasses the multi-track embodiment of the

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’902 patent. Id. at 4:23–25. Thus, we determine that the limitation “said
local audio data is retrieved during or subsequent to said audio event and is
combined with said remote audio data” does not require that the local and
remote audio data originate from the same source because the ’902 patent
specification contemplates a broader definition—one that includes the
combination of local audio data and remotely recorded audio data to create a
multi-track audio file. See id. at 4:23–35, 5:18–19, 16:51–55, 19:13–15.
Based on the foregoing, we construe the “combining” limitation as
broad enough to encompass combining local audio data and remotely
recorded audio data, without a requirement that the local audio data and
remotely recorded audio data are the same. In other words, we construe the
“combining” limitation to encompass the disclosed multitrack embodiment
in the ’902 patent specification, where separate audio tracks are combined to
form a multitrack audio file. See Ex. 1001, 4:23–35, 5:18–19, 16:51–55,
19:13–15.
2. “wearable”
Patent Owner and Petitioner propose different meanings for the term
“wearable.” See PO Resp. 11–12; Pet. Reply 3; PO Sur-Reply 4–6. Claim 7
recites “at least one local audio device wearable by a creator of said locally
generated audio.”
Patent Owner, relying on the Microsoft Encarta Dictionary, asserts
that an “electronic device (e.g., a local audio device) would have been
considered to be ‘wearable’ if it were ‘suitable and in a condition to be
worn.’” PO Resp. 11 (citing Ex. 2110, 1628). Patent Owner then proposes
that “wearable” means “small, lightweight, unobtrusive, easily hidden, not
visible, and designed to be worn on the body of a creator of audio (i.e.,

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performer).” Id. at 12 (citing Ex. 2111 ¶ 15). Patent Owner argues that
Petitioner’s expert, Mr. Tinsman, agrees with this narrower construction. Id.
at 11–12 (citing Ex. 2109, 41:7–42:5, 47:15–48:2).
Patent Owner further asserts that the ’902 patent specification
“repeatedly describes the local audio device as being suitably worn on the
body of a creator of audio (i.e., a performer).” Id. at 12 (citing Ex. 1001,
1:51–53 (“Such wireless transmitters may take the form of body packs that
are worn by each performer.”), 8:65–67 (“Such audio devices may be
manufactured in the form of body-packs, such as those typically worn by
news announcers, performers, and the like.”), 10:7–11 (“In one aspect of the
present invention, local control unit 310 receives recordable audio from local
audio input device 312, which may be worn by the performer and connects
to local audio device 102 at local audio input device port 314.”)). Finally,
Patent Owner asserts that the Examiner considered “wearable” to exclude
devices carried in backpacks. PO Sur-Reply 5 (citing Ex. 2095, 29; Ex.
2117).
Petitioner argues that the ’902 patent specification does not support
the narrow construction proposed by Patent Owner. Pet. Reply 3. Rather,
Petitioner argues that the ’902 patent specification only indicates that a
device may be worn. Id. (citing Ex. 1001, 1:51–53, 8:65–67, 10:7–11).
Petitioner asserts that Mr. Tinsman explains that “wearable” means
“something that was straightforward to carry on your person,” or “designed
to be worn on the body.” Id. (citing Ex. 2109, 41:2–10).
We agree with Petitioner that the term “wearable” means “suitable
and in a condition to be worn.” See id. (quoting Ex. 2110, 1628). This
definition is consistent with the plain meaning of “wearable,” and we find no

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credible evidence on the record that requires a narrower definition.
Furthermore, we are not persuaded that Petitioner’s expert, Mr. Tinsman,
provides a definition consistent with Patent Owner’s narrow definition.
Rather than defining “wearable,” Mr. Tinsman explains that the term
“bodypack” is “[s]omething relatively small and lightweight.” Id. (citing
Ex. 2109, 41:18–22). Further, when describing “wearable” as “unobtrusive,
easily hidden,” Mr. Tinsman clarifies this description as “[y]ou know,
reasonable to carry around.” Ex. 2109, 47:20–22.
3. “master timecode generator”
Patent Owner and Petitioner propose different meanings for the term
“master timecode generator,” as recited in claim 7. PO Resp. 13–17; Pet.
Reply 1–3; PO Sur-Reply 6–7.
Patent Owner proposes that the term “master timecode generator”
should be construed to mean “a producer of a plurality of master timecodes
controlling other time code generators.” PO Resp. 13. Patent Owner further
asserts that the term “master timecodes” should be construed as “codes
synchronizing audio samples.” Id. Relying on the American Heritage
Dictionary, Patent Owner further asserts that the term “master” means “[one]
that has control over another or others.” Id. (quoting Ex. 2084, 835). Patent
Owner argues that the ’902 specification supports the proposed construction
as it describes that a master timecode “(i) is used to control the local
timecode generator and (ii) produces master time codes controlling other
time code generators.” Id. at 13–17 (citing Ex. 1001, 15:10–29, 5:7–14,
6:27–37, 10:20–32, 10:56–61, 14:9–17, 16:30–37).
Petitioner argues that Patent Owner “improperly adds the unrecited
functions of ‘controlling’ and ‘synchronizing.’” Pet. Reply 1 (citing PO

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Resp. 13). Petitioner asserts that claim 7 only requires “generating a
plurality of master timecodes” and “at least one local audio device receiver
receiving at one of the group consisting of digital commands and said master
timecodes.” Id. at 2. More specifically, Petitioner argues that the ’902
patent specification “does not require using master timecodes to control
local timecode generators and instead states that master timecodes may be
used ‘for a variety of purposes.’” Id. (quoting Ex. 1001, 6:12–16; citing
Ex. 1001, Fig. 6, 5:66–6:42 (“master time reference signal”), 16:30–37).
Petitioner argues that cited descriptions in the ’902 patent specification
cannot be overcome by the extrinsic evidence cited by Patent Owner. Id.
(citing Phillips v. AWH Corp., 415 F.3d 1303, 1317 (Fed. Cir. 2005)).
We agree with Patent Owner and construe “master timecode
generator” to mean “a producer of a plurality of master timecodes
controlling other time code generators.” See PO Resp. 13. This definition is
consistent with the plain meaning of “master timecode generator,” and to
construe the claim term as Petitioner proposes would require that we read
the term “master” out of the claim. Furthermore, although we agree with
Petitioner that the ’902 patent specification broadly describes master
timecodes as being used “for a variety of purposes,” we agree with Patent
Owner that the specification also clearly provides support for the plain and
ordinary meaning of master timecode generator—controlling other time
code generators. See id. at 13–17 (citing Ex. 1001, 15:10–29, 5:7–14, 6:27–
37, 10:20–32, 10:56–61, 14:9–17, 16:30–37). Thus, we determine that the
term “master timecode generator” requires the master timecodes to control
the local timecode generators because the plain meaning of master timecode
generator requires control and the ’902 patent specification contemplates

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producing a plurality of master timecodes to control other time code
generators. See Ex. 1001, 15:10–29, 5:7–14, 6:27–37, 10:20–32, 10:56–61,
14:9–17, 16:30–37.
We determine that no other express claim construction analysis of any
claim term is necessary. See Nidec Motor Corp. v. Zhongshan Broad Ocean
Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (holding that only terms in
controversy must be construed and only to the extent necessary to resolve
the controversy) (citing Vivid Techs., Inc. v. Am. Sci. & Eng’g, 200 F.3d
795, 803 (Fed. Cir. 1999)).
C. Obviousness and the Level of Ordinary Skill in the Art
“Section 103(a) forbids issuance of a patent when ‘the differences
between the subject matter sought to be patented and the prior art are such
that the subject matter as a whole would have been obvious at the time the
invention was made to a person having ordinary skill in the art to which said
subject matter pertains.’” KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 406
(2007). The question of obviousness is resolved on the basis of underlying
factual determinations, including: (1) the scope and content of the prior art;
(2) any differences between the claimed subject matter and the prior art;
(3) the level of ordinary skill in the art; and (4) if in the record, objective
evidence of nonobviousness. Graham v. John Deere Co., 383 U.S. 1, 17–18
(1966).
Petitioner asserts that a person of ordinary skill in the art, at the time
of the ’902 patent, would have had “a bachelor’s degree in electrical
engineering or a related subject and two to five years working with audio
and wireless communications systems.” Pet. 11 (citing Ex. 1011 ¶ 27).
Patent Owner’s expert, Mr. DeFilippis, similarly opines that a person of

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ordinary skill in the art would have had a “Bachelor’s degree in electrical
engineering and two years of experience working with audio and wireless
communications systems either in industry or in graduate school.” Ex. 2111
¶ 15.
We adopt Petitioner’s and Patent Owner’s proffered level of ordinary
skill in the art as its essence is agreed upon and consistent with the prior art
of record. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001)
(“[T]he level of skill in the art is a prism or lens through which a judge, jury,
or the Board views the prior art and the claimed invention.”); Ryko Mfg. Co.
v. Nu-Star, Inc., 950 F.2d 714, 718 (Fed. Cir. 1991) (“The importance of
resolving the level of ordinary skill in the art lies in the necessity of
maintaining objectivity in the obviousness inquiry.”). Specifically, we
determine that a person of ordinary skill in the art, at the time of the ’902
patent, would have had a Bachelor’s degree in electrical engineering and two
or more years of experience working with audio and wireless
communications systems. Pet. 11 (citing Ex. 1011 ¶ 27); Ex. 2111 ¶ 15. To
that end, we note that the prior art itself often reflects an appropriate skill
level. See Okajima, 261 F.3d at 1355.
D. Obviousness of claims 7, 8, and 11 of the ’902 patent over Strub in
combination with Nagai or Gleissner, and Woo
Petitioner contends that claims 7, 8, and 11 of the ’902 patent are
unpatentable under 35 U.S.C. § 103(a) as obvious over Strub in combination
with Nagai or Gleissner, and Woo. Pet. 19–41. For the reasons discussed
below, we determine Petitioner has demonstrated by a preponderance of the
evidence that claims 7, 8, and 11 of the ’902 patent are unpatentable under
35 U.S.C. § 103 as obvious over Strub in combination with Nagai or
Gleissner, and Woo.

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1. Strub (Ex. 1003)
Strub, titled “Hybrid Recording Unit Including Portable Video
Recorder and Auxiliary Device,” is directed to “recording of the event by
multiple participants (i.e., from multiple points of view), often
simultaneously.” Ex. 1003, 1:25–31. Strub discloses a “hybrid recording
unit” that is “constructed by adding to a portable video recorder (e.g.,
camcorder, portable dockable videotape recorder (VTR)) one or more
devices (an ‘auxiliary device’) that provide additional functionality to the
portable video recorder.” Id. at 5:23–29. “The auxiliary device can
advantageously provide, for example, one or more of the following
capabilities: marking, position sensing, physiological monitoring and/or
biometric identification.” Id. at 5:29–32. The hybrid recording unit is
adapted to obtain a visual recording of the event as well as an audio
recording of the event. Id. at 8:44–52. Multiple hybrid recording units may
record a single event and one recording unit may transmit its recording to
another recording unit. Id. at 37:18–40; 38:8–10.
2. Nagai (Ex. 1004)
Nagai is directed to a data recording and reproducing apparatus for
recording and reproducing voice data. Ex. 1004 ¶¶ 3–5. Nagai’s apparatus
includes an audio input, a headphone jack for audio output, a memory card
to store audio data, and a USB port for transferring audio data to another
device. Ex. 1004 ¶¶ 106, 125, 126, 139, 140, 145, Figs. 1, 2A, 2B.
3. Gleissner (Ex. 1005)
Gleissner is directed to an audio data recorder that includes a
microphone unit and a recording appliance (audio data recorder), connected
to one another via a plug connection. Ex. 1005 ¶ 10. The plug connection

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between the microphone unit and recording appliance provides both an
electrical connection and a rigid mechanical connection. Id. The recording
appliance may further be connected to headphones to allow a user to
simultaneously hear the input into the microphone. Id. ¶ 33.
4. Woo (Ex. 1020)
Woo is directed to a “time-keeping system for synchronizing sound
and picture recordings from a plurality of independent recording devices at a
shared performance.” Ex. 1020, 4:62–65. The time-keeping system
includes a master clock comprised of a GPS navigation satellite receiver 122
and a digital signal processor 124. Id. at 8:60–63, Fig. 5. The master clock
output 128 is an SMPTE7-formatted timecode that is preferably compatible
with commercially available equipment that has master clock input ports.
Id. at 9:1–4, Fig. 5.
5. Analysis
a. Petitioner’s Contentions
Petitioner contends that claims 7, 8, and 11 of the ’902 patent are
unpatentable under 35 U.S.C. § 103(a) as obvious over Strub in combination
with Nagai or Gleissner, and Woo. Pet. 19–41.
Claim 7 recites a “system for recording locally generated audio.”
Petitioner asserts that Strub discloses a recording unit for use in a system.
Pet. 20 (citing Ex. 1003, 11:32–36). Petitioner also asserts that Strub
discloses the recording unit acquires local audio from a microphone and
stores it in a data storage device. Id. (citing Ex. 1003, 12:13–21, 12:31–39,
25:35–49, 35:54–65, 37:18–40, 38:1–4). Petitioner further asserts that audio
7 SMPTE is the acronym for the Society of Motion Picture and Television
Engineers.

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data acquisition device 303 acquires local audio, the recording unit stores the
audio data in data storage device 305, and transmitter 309 wirelessly
transmits the locally generated audio to a remote recording unit. Id. at 21
(citing Ex. 1003, 6:1–8, 7:25–35, 12:31–39, 35:54–65, 37:18–40, 47:41–48,
53:16–33, 64:57–65:22, 70:38–51, 75:58–76:34, Fig. 1).
Claim 7 also recites “at least one master timecode generator for
generating a plurality of master timecodes.” Petitioner argues that it would
have been obvious to modify Strub’s recording unit to include “a
conventional master timecode input port to receive SMPTE timecodes . . .
from the master clock . . . in Woo.” Pet. 23–24 (citing Ex. 1011 ¶ 56).
Petitioner asserts that Woo discloses “a master clock to synchronize audio
recorders (like Strub’s recording units) at a performance event by
timestamping the audio data with conventional timecodes, including SMPTE
timecodes (like in Strub and the ’902 patent).” Id. at 23 (citing Ex. 1020,
Abstract, 1:21–28, 1:60–2:9, 2:39–48, 3:3–24, 4:3–32 (“audio recorders”),
Figs. 1–5). Petitioner contends that Woo’s master clock receives a GPS time
signal and converts it to a conventional time code output, preferably in
SMPTE timecode format. Id. at 24–25 (citing Ex. 1020, Abstract, 2:2–9,
4:45–55, 8:60–9:4).
Petitioner argues that it would have been obvious to combine the
teachings of Woo with Strub to “provide an SMPTE-formatted master
timecode to Strub’s recording units, as Strub itself teaches.” Pet. 25–26
(citing Ex. 1003, 5:32-6:26, 62:26-63:15, 75:25–57; Ex. 1011 ¶ 58). First,
Petitioner asserts that audio recorders with timecode input ports “were a
conventional way to synchronize two devices recording the same event.” Id.

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at 25 (citing Ex. 1020, 2:2–48, 3:37–57, 4:3–5; Ex. 1011 ¶ 58). Further,
Petitioner asserts that Woo provides express motivation to combine as
(1) the master clock provides accurate synchronization across
recorders 	recording 	a 	performance; 	(2) 	it 	can 	generate
coordinated 	timecodes 	at 	independent 	sites 	proximate 	to
recorders; (3) it is simple to connect to the recorders; and (4) it
provides timecode output in a format that is compatible with a
standard (SMPTE) used by commercially available equipment.
Id. (citing Ex. 1020, 4:3–44; Ex. 1011 ¶ 58). Finally, Petitioner concludes
that a person with ordinary skill in the art would have combined the master
clock and input port described by Woo with Strub for the express reasons
above and because such a combination “would have been simply combining
prior-art elements according to known methods to improve the system and
yield predictable results.” Id. at 25–26 (citing Ex. 1011 ¶ 58).
Claim 7 also recites “at least one local audio device wearable by a
creator of said locally generated audio.” Petitioner asserts that Strub
discloses a “small, lightweight, wearable recording unit.” Pet. 26 (citing
Ex. 1003, 4:29–31). Petitioner further asserts that the recording device may
be worn by “a creator of said locally generated audio.” Id. (citing Ex. 1003,
4:21–31, 25:38–46, 93:26–27, 94:21–27; Ex. 1011 ¶ 59).
Claim 7 also recites “at least one local audio device receiver for
receiving at least one of the group consisting of digital commands and said
master timecodes.” Petitioner contends that Strub discloses a recording unit
that includes multiple receivers including a receiver, position sensing device
(GPS receiver), and an SMPTE timecode input port. Pet. 26–27 (citing
Ex. 1003, 12:39–52, 63:12–15, 70:26–37, 75:25–51, Fig. 3; Ex. 1011 ¶ 61).
Petitioner asserts that “[a]lthough the claim requires only ‘at least one of the

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group,’ Strub discloses receiving ‘digital commands’ and ‘master
timecodes.’” Id. at 27 (emphasis omitted).
First, Petitioner argues that Strub’s receiver 301 may wirelessly
receive digital data from the control interface device including digital
commands for the recording unit. Id. (citing Ex. 1003, 89:21–39).
Petitioner asserts that the digital commands include “control settings of the
data acquisition device.” Id. at 27–28 (citing Ex. 1003, 89:21–39; Ex. 1011
¶ 63). Petitioner further asserts that Strub discloses receiving master
timecodes because the recording unit can “receive a signal representing the
current time that can be used as a clock to generate time-stamps for the
recording data.” Id. at 28–29 (quoting Ex. 1003, 63:41–60; citing Ex. 1011
¶ 65). Further, Petitioner asserts that Strub discloses an alternate method of
receiving a master timecode because the recording unit includes an SMPTE
timecode input port that can receive SMPTE-formatted master timecodes
from an external device. Id. at 26, 29 (citing Ex. 1011 ¶ 66).
Alternatively, Petitioner asserts that Woo discloses a conventional
master timecode input port for receiving SMPTE-formatted timecodes from
the master clock. Id. at 29. Petitioner asserts that it would have been
obvious to a person of ordinary skill in the art to modify Strub’s recording
unit to include Woo’s conventional master timecode input port. Id.
Claim 7 further recites “at least one audio input port for receiving
locally generated audio from an audio input device.” Petitioner asserts that
Strub discloses the recording unit can receive audio from a microphone such
as a lavalier worn by the creator. Id. at 29–30 (citing Ex. 1003, Fig. 3,
21:65–25:49, 68:63–69:67). The microphone or lavalier passes audio data to
the recording unit “using wired or wireless techniques.” Id. at 30 (citing

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Ex. 1003, 64:50–65:3). Petitioner asserts that a person with ordinary skill in
the art would have understood Strub’s wireless or wired connections would
include an “audio input port,” such as a standard microphone jack in the case
of a wired connection. Id. at 30–31. Petitioner’s expert, Mr. Tinsman,
explains that Strub’s wired or wireless techniques connecting the
microphone and recording unit would include an audio input port. Id. (citing
Ex. 1011 ¶ 69).
Alternatively, Petitioner asserts that Strub’s recording unit could be
modified to include an input port disclosed by either Nagai or Gleissner. Id.
at 31–33 (citing Ex. 1011 ¶ 73). Petitioner asserts that Nagai discloses a
“mike jack” that “receives a voice signal from an external device such as an
external mike.” Id. at 32 (quoting Ex. 1004 ¶¶ 109, 139; citing Ex. 1011
¶ 74). Mr. Tinsman explains that Nagai’s “mike jack” would have been
understood by a person of ordinary skill in the art to include, for example, a
conventional tip-ring-sleeve (“TRS”) microphone connector. Id. (citing
Ex. 1011 ¶ 74). Petitioner further asserts that Gleissner also discloses an
audio input, arguing that Gleissner discloses an “XLR plug connector.” Id.
at 32–33 (citing Ex. 1005 ¶¶ 13, 23, 24, 32; Ex. 1011 ¶ 75).
Petitioner argues that it would have been obvious to combine the
teachings of Nagai or Gleissner with Strub. Id. Petitioner argues that a
person with ordinary skill in the art would have understood that Strub
suggests the use of an audio input port, which “provide[s] the benefit of
interchangeability by allowing the user to select the appropriate microphone
for the recording scenario.” Pet. 30–31 (citing Ex. 1003, 25:8–49).
Petitioner further asserts that the ’902 patent recognizes that such a benefit
of using a port for a microphone was known, and describes input port 314 as

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“any commercially available audio input device port” using “any type of
commercially available audio input device such as a microphone.” Id. at 31
(citing Ex. 1001, 9:9–19). Accordingly, Petitioner concludes that a person
with ordinary skill in the art would have combined either of the input ports
described by Nagai and Gleissner with Strub to provide the benefit of
customization and detachability. Id. (citing Ex. 1011 ¶ 73).
Claim 7 further recites “at least one memory.” Petitioner asserts that
Strub discloses its recording unit includes a data storage device 305, which
may include a hard disk, removable data storage medium, or non-volatile
data storage device. Pet. 33 (citing Ex. 1003, 27:36–51, 33:20–35:50, 76:6–
34, 94:15–20, Fig. 3; Ex. 1011 ¶ 76).
Claim 7 further recites “at least one local timecode generator for
generating a plurality of local time codes.” Petitioner asserts that Strub
discloses its recording unit includes an internal clock that provides a
timecode. Id. at 33–34 (citing Ex. 1003, 13:48–67, 63:50–60 (“recording
unit according to the invention typically also includes an internal clock . . .
that . . . can be used to accurately time-stamp data”), 79:54–80:9). Petitioner
further asserts that each recording unit uses its clock to time-stamp recording
data as it is acquired. Id. at 34 (citing Ex. 1003, 79:54–80:9). Petitioner
further asserts that Strub discloses synchronizing recordings from multiple
recording units using those time stamps in post-processing. Id. at 33–34
(citing Ex. 1003, 79:54-80:9 (“temporally synchronize multiple recordings
of the same event that were simultaneously obtained by different recording
units”)).
Claim 7 further recites “at least one control unit electrically coupled to
said local audio device receiver, said audio input device, said memory, and

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said local timecode generator for creating stamped local audio data and
storing said stamped local audio data in said memory.” Petitioner asserts
that Strub discloses system controller 301 and data processing device 304,
which are electrically coupled to receiver 310, position sensing device 311,
and/or SMPTE timecode input port, audio data acquisition device 303, data
storage device 305, and the internal clock. Pet. 35 (citing Ex. 1003, 12:4–
13, 13:36–14:13, Fig. 3; Ex. 1011 ¶ 79). Petitioner asserts that system
controller 301 controls the operation of the components of recording unit
300, “for creating stamped local audio data and storing said stamped local
audio data in said memory.” Id. (citing Ex. 1003, 11:32–56, 12:4–13,
13:36–14:13, 66:7–25, 70:1–5, Fig. 3). Petitioner asserts that “[s]ystem
controller 301 acquires local audio via audio data acquisition device 303 and
stores the acquired audio data in data storage device 305.” Id. at 35–36
(citing Ex. 1003, 12:10–21). Petitioner further asserts that “system
controller 301 may also store information associated with the audio
recording, e.g., a timestamp or information identifying the recording unit
and/or recorder, which become part of the ‘stamped local audio data.’” Id.
at 36 (citing Ex. 1003, 13:48–67; Ex. 1011 ¶ 80).
Claim 7 further recites “wherein said stamped local audio data
includes at least one local timestamp to reference at least a portion of said
stamped local audio data to at least one of said local timecodes.” Petitioner
asserts that Strub discloses the recording unit stores stamped local audio data
in memory where “that data includes a timestamp (‘at least one local
timestamp’), which references at least a portion of the stamped local audio
data to the local timecode (e.g., time) of the recording provided by the

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internal clock (‘at least one of said local timecodes’).” Id. (citing Ex. 1011
¶ 82).
Claim 7 further recites “wherein said stamped local audio data
includes at least one identifier selected from the group consisting of track
identifiers, local audio device identifiers, performer identifiers, and
combinations thereof.” Petitioner asserts that Strub discloses the stamped
local audio data includes data that may identify the recording unit or the
recorder (performer). Pet. 37 (citing Ex. 1003, 8:67–9:3). Petitioner asserts
that Strub discloses biometric data may be obtained that identifies the
recorder, identifiers for recording units, and marks identifying either people
present in recorded content or the speaker. Id. (citing Ex. 1003, 36:52–57,
53:34–44, 55:59–64; Ex. 1011 ¶ 84).
b. Patent Owner’s Arguments
Patent Owner argues that Petitioner fails to demonstrate by a
preponderance of the evidence that claims 7, 8, and 11 would have been
obvious over Strub in combination with Nagai or Gleissner, and Woo. PO
Resp. 21–22, 36–66. Specifically, Patent Owner argues that (i) Petitioner
fails to demonstrate that one of ordinary skill in the art would have been
motivated to combine the teachings of the cited prior art references with a
reasonable expectation of success; (ii) Petitioner fails to demonstrate that the
combination of references teaches each and every element of the challenged
claims; and (iii) the objective indicia of nonobviousness indicates that the
claimed invention of the ’902 patent would not have been obvious to a
person of ordinary skill in the art. Id. at 21–22.

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1. Differences between the prior art and claims
First, Patent Owner argues that Strub does not disclose a local audio
device “wearable by a creator of said locally generated audio.” PO
Resp. 36–38. Patent Owner argues that Strub’s device is not “small,
lightweight, unobtrusive, easily hidden, not visible, and designed to be worn
on the body of a creator of audio (i.e., performer)” based on its claim
construction. Id. at 36; see Section II.B.2. Mr. DeFilippis, Patent Owner’s
expert, opines that Strub’s system “would require a computer that could
compare content from multiple mpeg sources in real time and multiplex the
results to a recording,” and the “hardware and software to do this could not
be incorporated into a device that is wearable.” PO Resp. 37 (citing
Ex. 2111 ¶ 52).
We are not persuaded by Patent Owner’s argument that Strub fails to
teach a “wearable” device because Patent Owner’s argument is based on a
claim construction we do not agree with and do not apply. See Section
II.B.2. We construe “wearable” as “suitable and in a condition to be worn.”
Id.; see also PO Resp. 11 (citing Ex. 2110, 1628). We further agree with
Petitioner that Strub’s device is “wearable.” Pet. Reply 3, 9–10. Strub
describes its device as a “small, lightweight, wearable” unit. Id. at 9 (citing
Ex. 1003, 4:29–31). Accordingly, we are not persuaded by Patent Owner’s
argument that Strub fails to disclose a “wearable” device.
Patent Owner further argues that Strub “does not disclose the
particular electrical coupling of components within a wearable local device
as required by independent claim 7.” PO Resp. 39; PO Sur-Reply 22–23.
More specifically, Patent Owner argues that Figure 3 of Strub does not
disclose the electrical coupling of components because Figure 3 is a

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functional diagram that does not show “electrical couplings, electrical
signals, or intervening circuitry” and, therefore, fails to disclose “at least one
control unit electrically coupled to said local audio device receiver, said
audio input device, said memory and said local timecode generator for
creating stamped local audio data and storing said stamped local audio data
in said memory.” PO Resp. 38–40; PO Sur-Reply 23. Patent Owner argues
that Strub is silent as to any electrical coupling between any components and
the portions relied upon by Petitioner illustrate functional components rather
than electrical coupling. Id. at 39 (citing Ex. 1003, Fig. 3, 7:44–46, 12:4–13,
13:36–14:13, 11:32–56, 12:4–13, 13:36–14:13, 31:51–59, 66:7–25, 70:1–5).
We are not persuaded by Patent Owner’s argument. As argued by
Petitioner, Strub discloses that system controller 301 and data processing
device 304 are electrically coupled to receiver 310, position sensing device
311, and/or SMPTE timecode input port, audio data acquisition device 303,
data storage device 305, and the internal clock. Pet. 35 (citing Ex. 1003,
12:4–13, 13:36–14:13, Fig. 3; Ex. 1011 ¶ 79). We disagree with Patent
Owner’s argument that Figure 3 of Strub is a functional diagram, and we
determine that Strub’s description of Figure 3 indicates that the components
are electrically coupled as claimed. See Ex. 1003, 12:4–13, 13:36–14:13.
Strub describes that “communication among the components of a recording
unit according to the invention can be implemented using conventional
apparatus and techniques (e.g., using conventional bus techniques and
apparatus), and is controlled or mediated by the system controller.”
Ex. 1003, 64:50–65:3 (emphasis added). Patent Owner’s expert,
Mr. DeFilippis, with reference to Strub’s system controller 301, agrees that
“the system controller has some interfaces to the various other blocks in the

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diagram and is either supplying instructions or receiving data or passing
data.” Ex. 1033, 17:13–17; see Pet. Reply 12. As such, we agree with
Petitioner that a person of ordinary skill in the art would have understood
“that the components in Strub’s recording unit are ‘electrically coupled’ to
system controller 301 and data processing device 304 (at least one control
unit).” Pet. Reply 10 (citing Pet. 14–15, 20–21, 35–36).
Patent Owner also argues that Woo fails to teach “at least one master
timecode generator for generating a plurality of master timecodes,” as
recited in claim 7.8 PO Resp. 46–48. Patent Owner, relying on the
Declaration of Mr. DeFilippis, argues that “there is no teaching that Woo’s
master clock produces codes synchronizing audio samples via the control of
other (slave) timecode generators.” Id. at 46 (quoting Ex. 2111 ¶ 59).
Patent Owner argues that “there is no mention of any such timecode
generators in Woo, let alone that they are controlled by Woo’s master
clock.” Id. Mr. DeFillipis explains that “[t]he mere disclosure of a master
clock and master clock input ports on commercially-available equipment
does not nearly meet the requirements of the claimed ‘master clock
generator’ producing codes synchronizing audio samples to control other
timecode generators.” Id. at 47 (quoting Ex. 2111 ¶ 60).
8 Patent Owner further argues that Strub does not disclose the claimed
“master timecode generator for generating a plurality of master timecodes,”
and “one local timecode generator for generating a plurality of timecodes.”
PO Resp. 40–45; PO Sur-Reply 23–25. However, as discussed above,
Petitioner relies on Woo as disclosing this limitation. Accordingly, we are
not persuaded by Patent Owner’s argument because Patent Owner’s
argument is tantamount to an attack on the reference individually rather than
the proposed combination of references. See In re Merck & Co. Inc., 800
F.2d 1091, 1097 (Fed. Cir. 1986).

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We are not persuaded by Patent Owner’s argument that Woo fails to
teach a “master timecode generator.” Rather, we agree with Petitioner that
“the purpose of Woo’s device is to provide master timecodes in SMPTE
format to synchronize recording data in independent sound, film, and video
recorders.” Pet. Reply 7 (citing Ex. 1020, title, abstract, 3:20–24, 8:26–59,
Figs. 4, 5). Woo discloses a master clock comprising a GPS navigation
satellite receiver and a digital signal processor. Pet. 24–25 (citing Ex. 1020,
8:60–9:4 (“The master clock 120 comprises a GPS navigation satellite
receiver 122 and a digital signal processor 124 for accumulating and
averaging code epochs which occur each millisecond in time and having a
precision time-base output.”)). Woo also discloses that the master clock
outputs using the SMPTE timecode format. Ex. 1020, 2:2–9, 3:3–37, 4:3–
37, 8:7–25, 9:1–4. In sum, Woo’s master timecode generator provides a
“precision clock output . . . for synchronizing film and video equipment.”
Id. at 8:65–9:1.
Woo additionally discloses using “jam synchronization” to
synchronize local clocks with a master time clock just as disclosed by the
’902 patent. Pet. Reply 8; Ex. 1001, 6:11–14 (“This master time reference
signal provides a time reference for all local audio devices 102, which may
use this information for a variety of purposes such as jam synchronizing
their respective local timecode generators 304.”). Woo describes the process
of jam synchronization as allowing “a time code generator to follow the time
code off another source.” Pet. Reply 8 (citing Ex. 1020, 3:38–46). Thus, we
find that Woo discloses a master timecode generator that provides an
SMPTE timecode for use in synchronizing film and video equipment, using
the same SMPTE format used in the ’902 patent, and Woo discloses jam

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synchronizing to control other timecode generators. Therefore, we are
persuaded that Woo teaches the “master timecode generator” as properly
construed. See Section II.B.3.
Patent Owner further argues that “Petitioner makes only a conclusory
argument that a POSA would have been motivated to ‘use Woo’s master
timecode generator in the system of Strub,’” Petitioner’s “motivation to
combine is rooted in forbidden hindsight analysis,” and a person with
ordinary skill in the art would not have had a reasonable expectation of
success in combining Strub and Woo. PO Resp. 48–54 (citing Pet. 25;
Ex. 2111 ¶ 62); PO Sur-Reply 25.
We are not persuaded by Patent Owner’s argument. As discussed
above, Petitioner asserts that Woo itself provides an express motivation to
combine, stating
(1) the master clock provides accurate synchronization across
recorders 	recording 	a 	performance; 	(2) 	it 	can 	generate
coordinated 	timecodes 	at 	independent 	sites 	proximate 	to
recorders; (3) it is simple to connect to the recorders; and (4) it
provides timecode output in a format that is compatible with a
standard (SMPTE) used by commercially available equipment.
Pet. 25 (citing Ex. 1020, 4:3–44; Ex. 1011 ¶ 58); Pet. Reply 14. Petitioner
further argues, with support from Mr. Tinsman, that “audio recorders with
timecode input ports were known for more than a decade and were a
conventional way to synchronize two devices recording the same event. Id.
(citing Ex. 1020, 2:2–48, 3:37–57, 4:3–5, 5:16–19; Ex. 1011 ¶ 58).
Petitioner argues that a person of ordinary skill in the art would have
understood that modifying Strub to include “a conventional SMPTE
timecode input port for receiving conventional SMPTE-formatted master
timecodes from Woo’s master clock would have been simply combining

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prior-art elements according to known methods to improve the system and
yield predictable results.” Id. at 25–26 (citing Ex. 1011 ¶ 58). Accordingly,
we disagree with Patent Owner that Petitioner’s rationale to combine Strub
and Woo is merely a conclusory argument without objective evidence, that
Petitioner’s analysis is based on impermissible hindsight analysis, and a
person of ordinary skill in the art would not have a reasonable expectation of
success in combining Strub and Woo. Rather, we determine that Petitioner
has set forth sufficient rationale to combine the teachings of the references in
the manner asserted and specifically has articulated sufficient reasoning with
rational underpinning to combine Strub with Woo. See id. at 25.
Patent Owner further argues that Woo is non-analogous art to the
claimed invention because it is neither in the same field of endeavor as the
claimed invention nor reasonably pertinent to the problems faced by the
inventors of the ’902 patent. PO Resp. 52–54. Patent Owner contends that
“Woo relates to a ‘GPS receiver [that] comprises a data output port for
communicating time code information formatted according to standards,’”
whereas the claimed invention “makes no mention of any GPS satellite or
receiver; it instead relates to using a master timecode generator to control
other timecode generators in other recorders.” Id. at 53 (citing Ex. 1020,
Abstract; Ex. 1001, 26:1–13). We disagree with Patent Owner. Both Woo
and the ’902 patent address problems associated with the synchronization of
audio or visual data using a master timecode. Pet. Reply 13–14 (citing
Ex. 1001, 1:26–32, 6:2–16); see Ex. 1020, Abstract. Furthermore, both the
’902 patent and Woo disclose the use of SMPTE timecodes for use in
synchronization as well as jam synchronization to control other timecode
generators. Ex. 1001, 6:2–11; Ex. 1020, Abstract. Accordingly, we

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determine that Woo is both in the same field of endeavor, synchronizing
different recordings of a live performance, and reasonably pertinent to the
problem of synchronization, and, therefore, is analogous art. Ex. 1020,
Title, Abstract.
Finally, Patent Owner argues that a person of ordinary skill in the art
would not have been motivated to combine Strub and Woo because “Strub
already discloses a solution to post-production editing (i.e., participants
share their locally recorded audio after a recorded event).” PO Resp. 53
(citing Ex. 1003, 80:1–64). We are not persuaded by Patent Owner’s
argument because Petitioner relies on Woo for its disclosure of a master
timecode generator, not for a solution to post-production editing. Pet. 25.
As discussed above, Petitioner’s proposed combination “simply requires
Strub’s unit to receive conventional SMPTE timecodes from Woo’s master
clock.” Pet. Reply 14 (citing Pet. 23–26). As Strub discloses its devices are
capable of receiving SMPTE timecodes, we are not persuaded that the
proposed combination with Woo would result in any dramatic increase to the
size, weight, and battery requirements of Strub’s devices. See Pet. 22 (citing
Ex. 1011 ¶ 52; Ex. 1003, 79:54–80:7); Pet. Reply 15.
2. 	Objective Indicia of Nonobviousness
Patent Owner further asserts that the nonobviousness of the claims is
supported by objective indicia of nonobviousness including long-felt need,
failure of others, and industry praise of the patented invention. PO Resp.
54–66 (citing Exs. 2087, 2098–2104, 2106–2107, 2109, 2111, 2113–2114);
PO Sur-Reply 25–31. Petitioner disagrees. Pet. Reply 22–29. For the
reasons below, we determine that Patent Owner fails to show the requisite

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nexus between its alleged objective indicia of nonobviousness and the merits
of the claimed invention.
For objective indicia of nonobviousness to be accorded substantial
weight, its proponent must establish a nexus between the evidence and the
merits of the claimed invention. ClassCo, Inc., v. Apple, Inc., 838 F.3d
1214, 1220 (Fed. Cir. 2016). “[T]here is no nexus unless the evidence
presented is ‘reasonably commensurate with the scope of the claims.’” Id.
(quoting Rambus Inc. v. Rea, 731 F.3d 1248, 1257 (Fed. Cir. 2013)). A
patentee is entitled to a presumption of nexus “when the patentee shows that
the asserted objective evidence is tied to a specific product and that product
‘embodies the claimed features, and is coextensive with them.’” Fox
Factory, Inc. v. SRAM, LLC, 944 F.3d 1366, 1373 (Fed. Cir. 2019) (quoting
Polaris Indus., Inc. v. Arctic Cat, Inc., 882 F.3d 1056, 1072 (Fed. Cir. 2018)
(quoting Brown & Williamson Tobacco Corp. v. Philip Morris Inc., 229
F.3d 1120, 1130 (Fed. Cir. 2000))). “[T]he purpose of the coextensiveness
requirement is to ensure that nexus is only presumed when the product tied
to the evidence of secondary considerations ‘is the invention disclosed and
claimed.’” Id. at 1374 (quoting Demaco Corp. v. F. Von Langsdorff
Licensing Ltd., 851 F.2d 1387, 1392 (Fed. Cir. 1988)). “[T]he degree of
correspondence between a product and the patent claim falls along a
spectrum. At one end of the spectrum lies perfect or near perfect
correspondence. At the other end lies no or very little correspondence.” Id.
“A patent claim is not coextensive with a product that includes a ‘critical’
unclaimed feature that is claimed by a different patent and that materially
impacts the product’s functionality.” Id. at 1375.

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Patent Owner does not provide an analysis demonstrating that its
products are coextensive (or nearly coextensive) with the challenged claims.
We, therefore, find that a presumption of nexus is inappropriate. See Pet.
Reply 28–29.
However, “[a] finding that a presumption of nexus is inappropriate
does not end the inquiry into secondary considerations.” Fox Factory, 944
F.3d at 1375. “To the contrary, the patent owner is still afforded an
opportunity to prove nexus by showing that the evidence of secondary
considerations is the ‘direct result of the unique characteristics of the
claimed invention.’” Id. at 1373–74 (quoting In re Huang, 100 F.3d 135,
140 (Fed. Cir. 1996)). “Where the offered secondary consideration actually
results from something other than what is both claimed and novel in the
claim, there is no nexus to the merits of the claimed invention,” meaning that
“there must be a nexus to some aspect of the claim not already in the prior
art.” In re Kao, 639 F.3d 1057, 1068–69 (Fed. Cir. 2011) (emphasis in
original). On the other hand, there is no requirement that “objective
evidence must be tied exclusively to claim elements that are not disclosed in
a particular prior art reference in order for that evidence to carry substantial
weight.” WBIP, LLC v. Kohler Co., 829 F.3d 1317, 1331 (Fed. Cir. 2016).
A patent owner may show, for example, “that it is the claimed combination
as a whole that serves as a nexus for the objective evidence; proof of nexus
is not limited to only when objective evidence is tied to the supposedly
‘new’ feature(s).” Id. Ultimately, the fact finder must weigh the secondary
considerations evidence presented in the context of whether the claimed
invention as a whole would have been obvious to a skilled artisan. Id.
at 1331–32.

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As objective evidence of nonobviousness, Patent Owner submits the
Declarations of Mr. Sarokin and Mr. Wexler, user manuals for Patent
Owner’s digital transmitter and digital recording transmitter products, and
evidence of awards for its products and product manuals. See PO Resp. 54–
66; Exs. 2113, 2114. Patent Owner asserts that “[t]he products for which the
inventors of the ‘902 patent received the Emmy award, the Technical
Achievement Award from the Academy of Motion Picture Arts and
Sciences, and other industry praise include the TRX900AA manual
(Ex. 2113) and TRX900LA & TRX900LAS . . . these products contain all of
the limitations recited in the originally-issued challenged claims as well as
the substitute claims.” PO Resp. 59 (quoting Ex. 2111 ¶ 93); see Exs. 2113,
2114.
We determine that Patent Owner has not demonstrated a nexus
exists between the evidence presented and the merits of the claimed
invention because the evidence is directed to features that are not
required by the claims. See Kao, 639 F.3d at 1068–69. We determine
that the evidence submitted by Patent Owner primarily is directed
towards the feature of fixing dropouts. However, the feature of
repairing dropouts by replacing data is not required by claims 7, 8,
and 11, which instead are directed to locally recording and
timestamping audio data. See Ex. 1001, 24:51–25:35, 25:61–65.
We do not discount the importance of receiving an Emmy award or
Technical Achievement Award; however, our analysis requires determining
whether a nexus exists between the evidence and the claimed invention.
ClassCo, 838 F.3d at 1220. The evidence shows that the Emmy and
Technical Achievement Award were awarded for, among other things, the

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critical feature of eliminating dropouts. Ex. 2108, 3; Pet. Reply 26–27
(citing Ex. 2106, 11). Accordingly, we are not persuaded that there is a
nexus between the received award and the claimed invention. Absent a
nexus between the merits of the claimed invention and the submitted
evidence relating to long-felt need, industry praise, and the failure of others,
we determine that Patent Owner’s evidence of secondary considerations
does not weigh in favor of nonobviousness.
6. Conclusion
In summary, we are persuaded by Petitioner’s arguments, as they are
supported by the cited evidence, notwithstanding Patent Owner’s arguments,
addressed above. Having considered the Graham factors, including the
scope and content of the prior art, the differences between the prior art and
the challenged claims, and the objective evidence of nonobviousness, we
determine that Petitioner has demonstrated by a preponderance of the
evidence that independent claim 7 of the ’902 patent is unpatentable under
35 U.S.C. § 103(a) as obvious over Strub in combination with Nagai or
Gleissner, and Woo. Petitioner provides a similar analysis for claims 8 and
11, and we similarly determine that Petitioner has demonstrated by a
preponderance of the evidence that claims 8 and 11 of the ’902 patent are
unpatentable under 35 U.S.C. § 103(a) as obvious Strub in combination with
Nagai or Gleissner, and Woo. See Pet. 19–41.9
9 In view of this determination, we do not reach Petitioner’s challenge to
claims 7, 8, and 11 as obvious over Strub alone, Strub in combination with
Nagai, Strub in combination with Gleissner, and Strub in combination with
Woo.

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E. Anticipation of claims 12, 14, and 15 of the ’902 patent by Strub
Petitioner contends that claims 12, 14, and 15 of the ’902 patent are
unpatentable under 35 U.S.C. § 102(e) as anticipated by Strub. Pet. 41–52.
For the reasons discussed below, we determine Petitioner has demonstrated
by a preponderance of the evidence that claims 12, 14, and 15 of the ’902
patent are unpatentable under 35 U.S.C. § 102(e) as anticipated by Strub.
1. Analysis
a. Petitioner’s Contentions
Claim 12 recites “[a] method of wirelessly recording local audio.”
Petitioner asserts that Strub discloses a recording unit that acquires locally
generated audio data from audio data acquisition device 303 (e.g., a
microphone) and both records the locally generated audio in data storage
device 305 and wirelessly transmits it to another recording unit. Pet. 41–42
(citing Ex. 1003, 6:1–8, 7:25–35, 12:13–21, 12:31–39, 25:35–49, 35:54–65,
37:18–40, 47:41–48, 53:16–33, 64:57–65:22, 70:38–51, 75:58–76:34, Fig. 1;
Ex. 1011 ¶ 94).
Claim 12 also recites “locally receiving said local audio generated by
at least one performer during an audio event.” Petitioner asserts that Strub
discloses “a small, lightweight, wearable recording unit.” Id. at 26–29, 42
(quoting Ex. 1003, 4:29–31; citing Ex. 1003, 14:59–15:11, 16:66–17:24,
38:65–39:11, 66:33–51, 67:54–68:10, 72:9–19, Figs. 1, 8A–8C, 9A, 9B;
Ex. 1011 ¶¶ 59, 95).
Claim 12 further recites “wirelessly transmitting said local audio to at
least one of the group consisting of a recorder, a receiver, and combinations
thereof.” Petitioner asserts that Strub discloses a local audio device that
includes an audio data acquisition device 303 (e.g., a microphone) that

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acquires local audio and stores the audio data in data storage device 305.
Pet. 43 (citing Ex. 1003, 12:13–21, 25:35–49). Petitioner also asserts that
Strub discloses the local audio device includes a transmitter 309 that
wirelessly transmits its locally generated audio to a remote recording unit.
Id. (citing Ex. 1003, 12:31–39, 35:54–65). Petitioner asserts that the
transmission is wireless because (1) Strub discloses the example of a 2.4
gigahertz analog television transmission path and (2) the figures do not show
wires between the local and remote units. Id. at 43–44.
Claim 12 additionally recites “locally recording said local audio as
local audio data in at least one memory of at least one local audio device.”
Petitioner argues that Strub discloses a local audio device that acquires audio
from an attached microphone (“local audio”) and both stores it (“locally
recording”) as audio data (“local audio data”) in a data storage device (“at
least one memory”) and wirelessly transmits it to another recording unit.
Pet. 45 (citing Ex. 1003, 12:13–21, 12:31–39, 25:35–49, 35:54–65, 37:18–
40, 38:1–4, Fig. 3).
Claim 12 additionally recites “remotely recording said transmitted
local audio via at least one of the group consisting of a recorder, a receiver,
and combinations thereof as remote audio data.” Petitioner argues that Strub
discloses a remote recording unit that receives the transmitted audio data via
a receiver and records it. Id. (citing Ex. 1003, 12:13–21, 12:31–39, 25:35–
49, 35:54–65, 37:18–40, 38:1–4, Fig. 3; Ex. 1011 ¶ 98.). Petitioner further
asserts that Strub discloses that “each recording unit can include a receiver
that enables receipt of signals broadcast from other recording units that
represent the recording data.” Id. at 45–46 (quoting Ex. 1003, 35:54-65).

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Claim 12 additionally recites “wherein at least a portion of said local
audio data is retrieved during or subsequent to said audio event and is
combined with said remote audio data.” Petitioner argues that Strub
discloses “the recording units timestamping the recorded audio and
synchronizing recordings from multiple recording units using those
timestamps in post-processing.” Id. at 47 (citing Ex. 1003, 13:50–67).
Petitioner contends that local audio data is retrieved and transmitted to other
devices via transmitter 309 or wired connections. Id. at 47 (citing Ex. 1003,
12:4–39, 66:7–25, Fig. 3).
Claim 12 additionally recites “wherein said local audio data includes
at least one identifier selected from the group consisting of track identifiers,
local audio device identifiers, performer identifiers, and combinations
thereof.” Petitioner argues that Strub discloses the local audio data includes
at least one identifier that “that identifies track (‘track identifiers’), the
recording unit (‘local audio device identifiers’), and/or the recorder
(‘performer identifiers’).” Pet. 50 (citing Ex. 1003, 6:1–8, 7:25–35, 12:31–
39, 35:54–65, 37:18–40, 47:41–48, 53:16–33, 64:57–65:22, 70:38–51,
75:58–76:34, Fig. 1; Ex. 1011 ¶ 107).
b. Patent Owner’s Arguments
Patent Owner argues that Petitioner fails to demonstrate by a
preponderance of the evidence that claims 12, 14, and 15 are anticipated by
Strub. PO Resp. 17–22. Patent Owner argues that Strub fails to disclose
“the same local audio is stored at both the local audio device as local audio
data and the remote receiver/recorder as remote audio data and that the local
audio data is combined with the remote audio data.” PO Resp. 19 (quoting
Ex. 2111 ¶ 21). More specifically, Patent Owner asserts that Strub does not

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satisfy the claim requirements of “(1) the same audio data to be (i) stored at
the local audio device (as ‘local audio data’) and (ii) transmitted to and
recorded at the remote recorder (as ‘remotely recorded audio data’) and
(2) ‘the local audio data’ and the ‘remotely recorded audio data’ to be
combined.” PO Resp. 18–19; PO Sur-Reply 7–12. Patent Owner argues
that Petitioner fails to identify (1) two different devices taught by Strub that
correspond to the claimed wearable local audio device and remote
receiver/recorder or (2) the audio data in Strub that corresponds to the
claimed local audio. PO Resp. 19.
Rather than storing the same data at the local device and the remote
recorder, Patent Owner asserts that Strub discloses that different audio data
from different recording units or data acquisition devices are combined. PO
Resp. 19 (citing Ex. 1003, 13:50–67). Patent Owner contends that
Petitioner’s expert, Mr. Tinsman, conceded that Strub discloses “combining
the different audio data from the different recording units.” Id. (citing
Ex. 2109, 55:3–7). Patent Owner further contends that its expert,
Mr. DeFilippis, explains that in Strub, a “mere multi-track recording
(combining multiple tracks of audio onto a single media) also does not
satisfy these claim requirements.” PO Resp. 19 (citing Ex. 2111 ¶ 21).
Accordingly, Patent Owner asserts that Strub’s “blending (e.g., mixing) of
data from multiple, different data acquisition devices” is different from the
claims, which require “the same audio data to be (i) received and stored
locally, (ii) transmitted and stored remotely, and (iii) then combined.” PO
Resp. 20 (citing Ex. 2111 ¶ 23).
We are not persuaded by Patent Owner’s argument. Petitioner
identifies the first local audio device as including position sensing device

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311 and audio receiver 310 that records audio data, GPS position data or
biometric data, and time data. Pet. 42 (citing Ex. 1011 ¶ 95), 26–27 (citing
Ex. 1003, 12:39–52, 35:53–61, 37:55–62, 63:41–60; Ex. 1011 ¶ 61).
Further, Petitioner identifies Strub’s disclosure of other recording devices to
which local audio data is transmitted via transmitter 309. Pet. 42–43 (citing
Ex. 1003, 12:13–21, 12:31–39, 25:35–49, 35:54–65, 37:18–40, 38:1–4,
Fig. 3; Ex. 1011 ¶ 96). In summary, Strub discloses a local audio device that
records local audio and transmits the local audio to other remote devices.
(Ex. 1001, Fig. 1, 105–108, 8:50–53, 12:4–39, 66:7–25). Therefore,
Petitioner has identified two devices in Strub—a local audio device and a
remote audio device that receives the transmitted audio. Ex. 1003, 12:4–39,
66:7–25, Fig. 3. Petitioner has also identified the claimed local audio as the
audio that is stored by a local audio device and transmitted to a remote audio
device. Id.
Furthermore, Patent Owner’s argument that Strub fails to disclose
“that the same local audio is stored at both the local audio device as local
audio data and the remote receiver/recorder as remotely recorded audio data
and that the local audio data is combined with the remotely recorded audio
data” is not persuasive because it is inconsistent with our claim construction
discussed above. See Section II.B.1; PO Resp. 19. We do not construe the
limitation “said local audio data is retrieved during or subsequent to said
audio event and is combined with said remote audio data” to require that the
local audio data and remotely recorded audio data be the same data. See
Section II.B.1. Accordingly, we agree with Petitioner that Strub discloses
the disputed element because Strub discloses local audio devices
transmitting recordings to other recording units and the recording units

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timestamping the recorded audio and synchronizing, i.e., combining,
recordings from multiple recording units using those timestamps in post-
processing. Ex. 1003, 13:50–67.
2. Conclusion
We are persuaded by Petitioner’s arguments, as they are supported by
the cited evidence, notwithstanding Patent Owner’s arguments, addressed
above. We determine that Petitioner has demonstrated by a preponderance
of the evidence that claim 12 of the ’902 patent is unpatentable under 35
U.S.C. § 102(e) as anticipated by Strub. Petitioner provides a similar
analysis for claims 14 and 15, and we similarly determine that Petitioner has
demonstrated by a preponderance of the evidence that claims 14 and 15 of
the ’902 patent are unpatentable under 35 U.S.C. § 102(e) as anticipated by
Strub. See Pet. 41–52.10 See Pet. 41–52.
III. 	PATENT OWNER’S CONTINGENT MOTION TO AMEND
Pursuant to 35 U.S.C. § 316(d)(1) and 37 C.F.R. § 42.121(a), Patent
Owner moves to replace claims 7, 8, 11, 12, 14, and 15 of the ’902 patent
with proposed substitute claims 21–26. PO MTA 1. The motion is
contingent on our determination as to whether a preponderance of the
evidence establishes that claims 7, 8, 11, 12, 14, and 15 of the ’902 patent
are unpatentable. Id. As discussed above, we determine that original claims
7, 8, 11, 12, 14, and 15 of the ’902 patent have been shown to be
unpatentable by a preponderance of the evidence. See Sections II.D.6,
10 In view of this determination, we do not reach Petitioner’s challenge to
claims 12, 14, and 15 as obvious over Strub alone or in combination with
Wood.

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II.E.2. Therefore, we proceed to address Patent Owner’s contingent Motion
to Amend.
In support of the Motion to Amend, Patent Owner relies on the
Declaration of Mr. DeFilippis. Id.
A. Proposed substitute claims
Patent Owner submits the following proposed substitute claims 21–
26:
21. A system for locally recording locally generated audio and
remotely recording the locally generated audio comprising:
at least one remote recorder;
at least one master timecode generator for generating a plurality
of master timecodes; and
at least one local audio device wearable by a creator of said
locally generated audio including:
at least one local audio device receiver for receiving [at least one
of the group consisting of] digital commands and said master
timecodes;
at least one audio input port for receiving locally generated audio
from an audio input device;
at least one memory;
a wireless transmitter transmitting said locally generated audio
to said at least one remote recorder;
at least one local timecode generator for generating a plurality of
local timecodes, said local timecode generator is synchronized
by said master timecodes; and
at least one control unit electrically coupled to said local audio
device receiver, said audio input device, said memory, and said
local timecode generator for creating stamped local audio data
and storing said stamped local audio data in said memory;
wherein said stamped local audio data includes at least one local
timestamp to reference at least a portion of said stamped local
audio data to at least one of said local timecodes; [and]

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wherein said stamped local audio data includes at least one
identifier selected from the group consisting of track identifiers,
local 	audio 	device 	identifiers, 	performer 	identifiers, 	and
combinations thereof[.]; and
said at least one remote recorder receiving said locally generated
audio and remotely recording said locally generated audio as
remote audio data; receiving said stamped local audio data, and
replacing a portion of said remote audio data with said stamped
local audio data.
22. A system according to claim [7] 21, said system further
comprising:
at least one remote control unit having an RCU transmitter
capable of wirelessly transmitting digital commands;
wherein said remote control unit controls at least one function of
said local audio devices via transmission of at least one of said
digital commands; and
wherein 	said 	function 	includes 	at 	least 	one 	of 	the 	group
consisting of adding said track identifier to at least a portion of
said stamped local audio data, deleting said track identifier from
at least a portion of said stamped local audio data, altering said
track identifier associated with at least a portion of said stamped
local audio data, adding said local audio device identifier to at
least a portion of said stamped local audio data, deleting said
local audio device identifier from at least a portion of said
stamped 	local 	audio 	data, 	altering 	said 	local 	audio 	device
identifier associated with at least a portion of said stamped local
audio data, adding said performer identifier to at least a portion
of 	said 	stamped 	local 	audio 	data, 	deleting 	said 	performer
identifier from at least a portion of said stamped local audio data,
altering said performer identifier associated with at least a
portion of said stamped local audio data, and combinations
thereof.
23. A system according to claim [7] 21, wherein said master
timecode includes at least one of the group consisting of time
data, frame data, timecode type, recorder transport status, name
of scene, name of take, track identifier, and combinations
thereof.

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24. A method of wirelessly recording local audio, said method
comprising:
locally receiving said local audio generated by at least one
performer during an audio event;
wirelessly transmitting said local audio to at least one of the
group consisting of a recorder, a receiver, and combinations
thereof;
locally recording said local audio as local audio data in at least
one memory of at least one wearable local audio device; and
remotely recording said transmitted local audio via at least one
of 	the 	group 	consisting 	of 	a 	recorder, 	a 	receiver, 	and
combinations thereof as remote audio data;
[wherein] retrieving at least a portion of said local audio data [is
retrieved] during or subsequent to said audio event and [is
combined with said remote audio data] combining said remote
audio data with said local audio data by replacing a portion of
said remote audio data with said local audio data;
wherein said local audio data includes at least one identifier
selected from the group consisting of track identifiers, local
audio device identifiers, performer identifiers, and combinations
thereof.
25. A method according to claim [12] 24, said method further
comprising:
remotely controlling at least one function of at least one of said
local audio device via at least one remote control unit;
wherein 	said 	function 	includes 	at 	least 	one 	of 	the 	group
consisting of adding said track identifier to at least a portion of
said local audio data, deleting said track identifier from at least a
portion of said local audio data, altering said track identifier
associated with at least a portion of said local audio data, adding
said local audio device identifier to at least a portion of said local
audio data, deleting said local audio device identifier from at
least a portion of said local audio data, altering said local audio
device identifier associated with at least a portion of said local
audio data, adding said performer identifier to at least a portion
of said local audio data, deleting said performer identifier from

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at least a portion of said local audio data, altering said performer
identifier associated with at least a portion of said local audio
data, and combinations thereof.
26. 	A method according to claim [12] 24, further comprising:
manipulating said local audio data contained in at least a portion
of said memory;
wherein said manipulation includes at least one of the group
consisting of adding said track identifier to at least a portion of
said memory, deleting said track identifier from at least a portion
of said memory, altering said track identifier associated with at
least a portion of said memory, adding said local audio device
identifier to at least a portion of said memory, deleting said local
audio device identifier from at least a portion of said memory,
altering said local audio device identifier associated with at least
a portion of said memory, adding said performer identifier to at
least a portion of said local audio data, deleting said performer
identifier from at least a portion of said local audio data, altering
said performer identifier associated with at least a portion of said
local audio data, and combinations thereof.
PO MTA 30–33.
B. Procedural Requirements
“Before considering the patentability of any substitute claims, . . . the
Board first must determine whether the motion to amend meets the statutory
and regulatory requirements set forth in 35 U.S.C. § 316(d) and 37 C.F.R.
§ 42.121.” Lectrosonics, Inc. v. Zaxcom, Inc., Case IPR2018-01129, Paper
15 (PTAB Feb. 25, 2019) (precedential) (“Lectrosonics”).
First, we consider whether the Motion to Amend proposes a
reasonable number of substitute claims. 35 U.S.C. § 316(d)(1)(B). “There
is a rebuttable presumption that a reasonable number of substitute claims per
challenged claim is one (1) substitute claim.” Lectrosonics at 4–5 (citing 37
C.F.R. § 42.121(a)(3)). The Petition challenges 6 claims. The Motion to

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Amend proposes 6 substitute claims. PO MTA 1. We determine that the
number of proposed claims is reasonable.
Second, we consider whether the proposed substitute claims respond
to a ground of unpatentability involved in this trial. Lectrosonics at 5–6.
The Motion to Amend proposes adding the following limitation to
independent claim 7, resulting in proposed substitute independent claim 21:
said at least one remote recorder receiving said locally generated
audio and remotely recording said locally generated audio as
remote audio data; receiving said stamped local audio data, and
replacing a portion of said remote audio data with said stamped
local audio data.
Further, the Motion to Amend proposes amending the following limitation
of independent claim 12, resulting in proposed substitute independent claim
24:
[wherein] retrieving at least a portion of said local audio data [is
retrieved] during or subsequent to said audio event and [is
combined with said remote audio data] combining said remote
audio data with said local audio data by replacing a portion of
said remote audio data with said local audio data.
PO MTA 31–32. Patent Owner asserts that the proposed substitute claims
are patentable over the references at issue in this proceeding. Id. at 21–29.
We determine that the amended language in the proposed substitute claims is
responsive to the grounds of unpatentability involved in this trial.
Third, we consider the breadth of the substitute claims. “A motion to
amend may not present substitute claims that enlarge the scope of the claims
of the challenged patent or introduce new subject matter.” Lectrosonics at
6–8 (citing 35 U.S.C. § 316(d)(3); 37 C.F.R. § 41.121(a)(2)(ii)). Patent
Owner proposes an amendment that limits claims 21 and 24 to “replacing”
remotely recorded audio data with local audio data, thereby limiting the

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scope of the claims. See PO MTA 2–3. We determine that the proposed
amendment narrows claims 21 and 24.
Patent Owner asserts that proposed substitute claims 21–26 are
supported by the original disclosure in U.S. Patent Application No.
11/404,735 (“the ’735 application”) and U.S. Patent Application No.
11/181,062 (“the ’062 application”) of which it is a continuation in part. PO
MTA 4–16 (providing claim charts with citations to Exs. 2018, 2112).
Petitioner asserts that the Motion fails to show support in the original
disclosure for the “replacing” limitation. Pet. Sur-Reply to Opp. to MTA 3.
We disagree with Petitioner. We recognize that the ’062 application
does not recite the term “replacing.” See generally Ex. 2018. However, the
“description need not recite the claimed invention in haec verba but must do
more than merely disclose that which would render the claimed invention
obvious.” ICU Med., Inc. v. Alaris Med. Sys., Inc., 558 F.3d 1368, 1377
(Fed. Cir. 2009). The ’062 application describes that locally recorded data
may be retrieved and used to repair the corruption of the audio file generated
by the receiver/recorders that occurred due to the receipt of corrupted audio
data or dropouts. Ex. 2018, 12:12–17, 28:18–21. In other words, the ’062
application describes repairing corrupted remotely stored audio using locally
recorded audio data. We determine, based on the testimony of
Mr. DeFilippis, that the term “repair,” in the context of the specification,
adequately supports the claimed “replacing.” Ex. 2111 ¶¶ 68–70.
Mr. Tinsman, Petitioner’s expert, explains that the ’902 patent specification
discloses that timestamps are used to synchronize the “local audio with the
wirelessly transmitted version of the local audio to replace any dropouts.”
Ex. 1011 ¶ 17 (emphasis added). Accordingly, we agree with Patent Owner

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that the proposed substitute claims do not enlarge the scope of the claims or
introduce new subject matter.
Finally, the Motion to Amend includes a claim listing, as required by
37 C.F.R. § 42.121(b). PO MTA 30–33; Lectrosonics at 8.
In view of the above, we determine that Patent Owner’s Motion to
Amend meets the statutory and regulatory requirements of 35 U.S.C.
§ 316(d) and 37 C.F.R. § 42.121 in a manner sufficient to proceed with the
issue of whether Petitioner has met its burden of persuasion with respect to
patentability.
C. Claim Construction
Patent Owner argues that the limitation of “said at least one remote
recorder receiving said locally generated audio and remotely recording said
locally generated audio as remote audio data; receiving said stamped local
audio data, and replacing a portion of said remote audio data with said
stamped local audio data” (the “replacing” limitation) requires:
(i) locally generated audio by a creator is received at a wearable
local audio device,
(ii) the same locally generated audio is transmitted to a remote
recorder or receiver,
(iii) the same locally generated audio is remotely recorded at the
recorder or receiver as remote audio data, and
(iv) 	stamped 	local 	audio 	data 	is 	created 	from 	the 	locally
generated audio and stored in the memory of the local audio
device (in claim 21), and
(v) the stamped local audio data (claim 21) or the local audio data
(claim 24) is retrieved from the memory of the wearable local
audio device and the remote audio data is combined with the
stamped local audio data (claim 21) or the local audio data (claim
24) by replacing a portion of the remote audio data with the

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stamped local audio data (claim 21) or the local audio data (claim
24).
PO MTA 17–19.
Patent Owner asserts that its proposed claim construction is consistent
with both the ’902 patent specification and the proposed substitute claim
language. PO MTA 18–19. Patent Owner further asserts that the ’902
patent specification supports its proposed claim construction. Id. at 17–19
(citing Ex. 1001, 3:57–59, Fig. 6; Ex. 2111 ¶¶ 15, 67). Specifically, Patent
Owner asserts that the ’902 patent specification sets forth an embodiment
where “the ‘902 patent replaces segments of the local audio that were
previously transmitted by a local audio device to a remote receiver/recorder
but not properly received (e.g., dropout).” Id. at 19 (citing Ex. 2111 ¶ 15).
Petitioner asserts that the plain meaning of the substitute claim
language provides that
[T]he “locally generated audio”/“local audio” in claims 21 and
24 is audio generated by a creator/performer, is stored/recorded
in the local audio device as “local audio data,” and is remotely
recorded as “remote audio data.” Thus, no construction is
necessary.
Pet. Sur-Reply to Opp. to MTA 2.
We agree with Patent Owner that the amended claim language
supports its proposed claim construction. Notably, proposed substitute claim
21 requires “locally recording locally generated audio,” transmitting the
“locally generated audio to said at least one remote recorder,” and
“recording said locally generated audio as remote audio data” for “replacing
a portion of said remote audio data with said stamped local audio data.” Id.
Proposed substitute claim 24 recites similar limitations. We determine that

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the addition of the step of “transmitting,” as well as the explicit step of
“replacing,” supports Patent Owner’s proposed construction.
As argued by Patent Owner, the ’902 patent specification discloses “a
process for recording audio and for replaying and re-recording segments of
missed audio.” Ex. 1001, 3:57–59 (emphasis added). Figure 6 describes the
step of “[l]ocal audio devices record audio and transmit to receiving
equipment in real time.” Id. at Fig. 6, step 608. Later, “[l]ocal audio devices
process [a] playback command and synchronize playback to the time code
reference contained in the playback command and transmit synchronization
data to receiving equipment.” Id. at Fig. 6, step 614. Next, the “local audio
devices transmit stored audio, which is simultaneously recorded by the
receiving equipment, starting at the time specified in the playback
command.” Id. at Fig. 6, step 616. The dropout is then corrected as the
“local audio devices continue to replay audio while the receiving equipment
re-records the audio.” Id. at Fig. 6, step 618. Although the ’902 patent
specification does not use the term “replacing,” we determine that the
aforementioned disclosure, and, more specifically, the playback command
causing retransmission of local audio and the subsequent re-recording of the
audio, provides adequate support for the amended claim recitation of
“replacing.”
Based on the foregoing, we agree with, and adopt, Patent Owner’s
proposed claim construction for the “replacing” limitation to require:
(i) locally generated audio by a creator is received at a wearable
local audio device,
(ii) the same locally generated audio is transmitted to a remote
recorder or receiver,

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(iii) the same locally generated audio is remotely recorded at the
recorder or receiver as remote audio data, and
(iv) 	stamped 	local 	audio 	data 	is 	created 	from 	the 	locally
generated audio and stored in the memory of the local audio
device (in claim 21), and
(v) the stamped local audio data (claim 21) or the local audio data
(claim 24) is retrieved from the memory of the wearable local
audio device and the remote audio data is combined with the
stamped local audio data (claim 21) or the local audio data (claim
24) by replacing a portion of the remote audio data with the
stamped local audio data (claim 21) or the local audio data (claim
24).
PO MTA 17–19.
Patent Owner argues that the limitation of “a wireless transmitter
transmitting said locally generated audio to said at least one remote
recorder” (the “transmitting” limitation) requires that the locally generated
audio at a wearable local audio device is wirelessly transmitted to a remote
recorder. PO MTA 19–20. Petitioner does not dispute Patent Owner’s
proposed construction. See Pet. Opp. to MTA 2.
We agree with Patent Owner that the amended claim language
supports its proposed claim construction. Notably, proposed substitute claim
21 explicitly requires “a wireless transmitter transmitting said locally
generated audio to said at least one remote recorder.” We determine that the
plain meaning of the added limitation supports Patent Owner’s proposed
construction. We further determine that the ’902 patent specification
discloses that “each performer is equipped with a local audio device capable
of locally recording the respective performer’s audio while also transmitting
it to a master recorder.” Ex. 2112, 47:5–7. Based on the foregoing, we

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agree with, and adopt, Patent Owner’s proposed claim construction for the
“transmitting” limitation.
Patent Owner argues that the limitation of “said local timecode
generator is synchronized by said master timecodes,” in conjunction with the
claimed “master timecode generator” and “master timecodes,” should be
construed together such that
The claim limitation “master timecode generator” should be
construed as “a producer of a plurality of master timecodes
controlling other timecode generators.” 	The claim limitation
“master timecodes” should be construed as “codes synchronizing
audio samples.”
PO MTA 20–21 (citing Ex. 2111 ¶ 67).
Petitioner disagrees and argues that “‘[m]aster timecode generator’
means a device that provides a timecode to other devices as a reference, and
‘master timecodes’ are time reference data.” Pet. Opp. to MTA 3 (citing Pet.
8). Petitioner asserts that the specification describes a master timecode as a
reference and states that the master timecodes may be used “for a variety of
purposes.” Id. (citing Ex. 1001, Fig. 6, 5:66–6:42, 16:30–37; quoting
Ex. 1001, 6:12–16).
We agree with Patent Owner that the amended claim language
supports its proposed claim construction. As described above, the limitation
“master timecode generator” requires the master timecodes to control the
local timecode generators because the plain meaning of master timecode
generator requires control and the ’902 patent specification contemplates
producing a plurality of master timecodes to control other time code
generators. See Section II.B.3. The proposed substitute claims add further
support for Patent Owner’s proposed construction as they explicitly require

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synchronization of a local timecode generator by a master timecode
generator.
D. Whether the substitute claims comply with 35 U.S.C. § 112
Petitioner argues that the proposed substitute claims fail to
particularly point out and distinctly claim the invention. Pet. Opp. to MTA 5
(citing IPXL Holdings, L.L.C. v. Amazon.com, Inc., 430 F.3d 1377, 1384
(Fed. Cir. 2005)). In particular, Petitioner argues that proposed substitute
independent claim 21 improperly covers both “an apparatus and a method of
using it.” Id. at 5. Specifically, Petitioner argues that proposed substitute
claim 21 recites apparatus or system elements, and also recites “a wireless
transmitter transmitting,” and “at least one remote recorder receiving and
remotely recording . . . , receiving . . . , and replacing.” Id. at 5 (citing PO
MTA 30–31). Petitioner contends that “[t]his is confirmed by Zaxcom’s
own wireless transmitter construction: ‘wireless transmitter on a local audio
device wearable by a creator of locally generated audio transmits the locally
generated audio to a recorder that is remote (i.e., away from the creator).’”
Id. (citing PO MTA 19).
Patent Owner argues that the “claimed phrases quoted by Petitioner
are not steps performed by a user with the claimed system,” as in IPXL, but
“instead qualify the types of components that are in the claimed system.”
PO Reply to Opp. to MTA 5–6. We agree with Patent Owner. The
limitations quoted by Petitioner qualify the functions of the apparatus
elements. See PO MTA 30–31. Specifically, the claimed wireless
transmitter is for “transmitting said locally generated audio to said at least
one remote recorder” and the claimed at least one remote recorder is for
“receiving said locally generated audio and remotely recording said locally

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generated audio as remote audio data; receiving said stamped local audio
data, and replacing a portion of said remote audio data with said stamped
local audio data.” Claim 21 does not recite a step of transmitting or steps of
receiving, recording, and replacing, but rather recites a defined functionality
for the recited wireless transmitter and at least one remote recorder. We
further are not persuaded that substitute claim 21 specifies the remote
recorder as part of the local audio device.
Petitioner further argues that “[c]laim 24 is ‘not sufficiently precise’
because it recites a series of steps without any conjunction before the
retrieving step.” Pet. Opp. to MTA 5 (citing IPXL Holdings, 430 F.3d at
1384). Petitioner argues that “it is unknown whether just one of the
‘remotely recording’ and ‘retrieving’ steps is required or both.” Id. In
response, Patent Owner asserts that “[c]laim 24 recites the conjunction ‘and’
between the ‘retrieving’ step and the last step of the claim (the ‘combining’
step), thereby indicating that all steps of the claimed method are required.”
PO Reply to Opp. to MTA 6 (citing PO MTA 32). We agree with Patent
Owner. The use of the conjunction “and” refers to a previous step, and,
therefore, we are not persuaded that there is any lack of clarity as to whether
any step is required. Accordingly, we determine that the proposed substitute
claims comply with 35 U.S.C. § 112.
E. Level of Ordinary Skill in the Art
As discussed above, Petitioner and Patent Owner assert that a person
of ordinary skill in the art, at the time of the ’902 patent, would have had a
Bachelor’s degree in electrical engineering and two or more years of
experience working with audio and wireless communications systems.
Section II.C; Pet. 11 (citing Ex. 1011 ¶ 27); Ex. 2111 ¶ 15. We adopt the

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same level of ordinary skill in the art in analyzing Patent Owner’s proposed
substitute claims.
F. Patentability of substitute claims over Strub in combination with
Nagai or Gleissner, Woo, and Wood
Petitioner argues that substitute claims 21–26 are unpatentable under
35 U.S.C. § 103(a) as obvious over Strub in combination with Nagai or
Gleissner, Woo, and Wood. PO Opp. to MTA 6–23.
1. Wood (Ex. 1008)
Wood is directed to a method for repairing a broadcast signal to
improve the quality of the signal that is available to the end user. Ex. 1008,
2:28–30. Wood discloses a satellite or terrestrial digital television receiver
10 for receiving a digital video and audio stream. Id. at 3:16–18. Processor
16 monitors the broadcast signal to ascertain when the signal has been
corrupted. Id. at 3:22–23. Transceiver 20 may request a replacement
undamaged copy of the lost video and audio segments upon the detection of
a lost portion of data in order to replace the lost data. Id. at 4:4–10.
Multiplexor 24 is provided for combining the replacement portions supplied
by transceiver 20 with the received broadcast signal. Id. at 4:11–12.
Multiplexor 24 splices the “lost” video and/or audio obtained via the
broadband connection into the “damaged” video and audio stream. Id. at
4:12–14.
2. Differences between the prior art and claims
Petitioner argues that substitute claims 21–23 are unpatentable under
35 U.S.C. § 103(a) as obvious over Strub in view of Nagai or Gleissner,
Woo, and Wood. Pet. Opp. to MTA 6–23. Petitioner argues that Strub in
view of Nagai or Gleissner, and Woo, teaches most of the limitations of
proposed substitute claim 21 for the same reasons discussed in the Petition

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with respect to claim 7. Id. at 6–10 (citing Pet. 20–38, 41–44); see Section
II.D.5. Accordingly, Petitioner asserts that, under Patent Owner’s proposed
construction (which we adopt), Strub in view of Nagai or Gleissner, and
Woo teach all of the limitations of claim 21, except for the newly amended
“replacing” limitation. Pet. Opp. to MTA 6–16; see Section III.C.
Similarly, Petitioner argues that substitute claims 24–26 are
unpatentable under 35 U.S.C. § 103(a) as obvious over Strub in view of
Wood. Pet. Opp. to MTA 16–19. Petitioner argues that Strub discloses
most of the limitations of proposed substitute claim 24 for the same reasons
discussed in the Petition with respect to claim 12. Id. at 16–19 (citing
Pet. 41–49); see Section II.E.1. Accordingly, Petitioner asserts that, under
Patent Owner’s proposed construction (which we adopt), Strub discloses all
of the limitations of claim 24, except for the newly amended “replacing”
limitation. Pet. Opp. to MTA 16–19; see Section III.C.
Petitioner asserts that, although Strub discloses combining local and
remotely recorded audio data, it does not expressly disclose “replacing said
remotely recorded audio data with said local audio data.” Pet. Opp. to
MTA 13. For that limitation, Petitioner relies on the combined teachings of
Strub and Wood. Id. at 13–16. Specifically, Petitioner asserts that Wood
discloses a method to “fix defects or gaps in a recording of a received
transmission (‘remotely recorded audio data’) by requesting an undamaged
local copy and ‘combining the replacement portions’ (‘local audio data’)
with the previously recorded transmission.” Id. at 14 (citing Pet. 28–30); see
Ex. 1008, 1:31–2:13, 3:22–29, 4:11–27, Figs. 1, 2; Ex. 1011 ¶ 58, ¶ 104
(“Wood discloses sending a request when a dropout is detected so that the
content can be re-sent and combined with the previously received audio to

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repair the dropout.”). Petitioner contends that, in the event of a transmission
failure, it would have been obvious to a person of ordinary skill in the art to
fix a defect in a remote recording of Strub’s system by replacing the corrupt
segment with a local copy. Pet. Opp. to MTA 15 (citing Pet. 48).
Patent Owner argues that Petitioner fails to demonstrate that Wood
teaches “‘local audio data’ . . . because ‘there is no local recording device in
Wood.’” PO Reply to Opp. to MTA 7–8 (quoting Ex. 2086 ¶ 35). We are
not persuaded by this argument because, as Petitioner responds,
“Lectrosonics does not rely on Wood to disclose ‘local audio’ or a ‘local
recording device,” and “Zaxcom [] errs by ignoring Lectrosonic’s proposed
combination and focusing only on whether each reference alone discloses
each claim element.” Pet. Sur-Reply to Opp. to MTA 4–5 (citing Pet. Opp.
to MTA 7–9). This argument by Patent Owner is tantamount to an attack on
Wood alone, but Petitioner’s argument is based on the combination of the
cited references. “Non-obviousness cannot be established by attacking
references individually where the rejection is based upon the teachings of a
combination of references.” In re Merck & Co., 800 F.2d 1091, 1097 (Fed.
Cir. 1986).
Regarding the combination of Strub and Wood, Petitioner asserts that
the addition of Wood’s method for replacing a dropout would have been
obvious because Strub contemplated the problem of deficient recordings and
Wood provided a known solution. Pet. Opp. to MTA 13–14. Specifically,
Petitioner asserts that Strub recognized the problem of deficient recordings,
and a person of ordinary skill in the art would have known that one such
deficiency would have been dropouts. Pet. 48 (citing Ex. 1003, 48:18–30,
85:28–41 (“during an event, the recording obtained by a particular recording

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unit will be deficient in some way”); Ex. 1011 ¶ 103). In order to solve the
problem of dropouts, Petitioner asserts a person of ordinary skill in the art
would have combined Wood with Strub in order to improve signal quality
and produce a program free of dropouts. Id. at 49 (citing Ex. 1003, 35:54–
57, 36:10–29, 37:53–38:4, 66:7–15; Ex. 1008, 1:28–30, 3:4–6; Ex. 1011
¶¶ 105–106). In Petitioner’s view, the combination of Strub and Wood
would have been expected because techniques for detecting dropouts and
requesting replacements were well known, and Wood discloses such a
technique. Pet. Opp. to MTA 15 (citing Pet. 48); Pet. Sur-Reply to Opp. to
MTA 3–4. Patent Owner’s own expert, Mr. DeFilippis, explains that if
backup audio was available, a person of ordinary skill in the art would have
known to replace corrupted audio with replacement audio. See generally
Ex. 1034, 19:2–21:12.
Patent Owner argues that “it is unclear how the teachings of Strub and
Wood could be combined in the manner suggested by Petitioner to achieve
the claimed invention with a reasonable expectation of success.” PO
Resp. 26–27 (quoting Ex. 2111 ¶ 39). Specifically, Patent Owner asserts
that Strub “allows the local audio data to be retrieved by transmitting the
data to other devices via transmitter 309 or wired connections, such as
USB,” which differs substantially from Wood’s combining of a broadcast
signal transmitted on one channel with a replacement signal on another
channel. Id. at 27 (citing Pet. 47; Ex. 1003, 12:4–39, 66:7–25, Fig. 3).
Patent Owner argues that Wood discloses a system for “TV broadcasting and
addresses problems with a broadcasting channel using a second channel,”
and a person with ordinary skill in the art “would not have looked to Wood

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to address the problem identified in the ‘902 patent.” Id. at 29 (quoting
Ex. 2111 ¶ 45).11
Patent Owner further argues that “Petitioner erred by focusing on
whether the concept of repairing dropouts was known.” PO Reply to Opp.
to MTA 8–9. Patent Owner argues that Petitioner fails to establish that the
“claimed combination as a whole” would have been obvious. Id. at 8.
Patent Owner argues that “Wood would have taught repairing dropouts by a
completely different approach using a server and recorder, neither of which
is anywhere near the location of the locally generated audio.” Id. at 8–9.
We are persuaded by Petitioner that Wood is analogous art, as it is
reasonably pertinent to the problem faced by the inventors of the
’902 patent. See In re Bigio, 381 F.3d 1320, 1325 (Fed. Cir. 2004); Pet.
Reply 18–19 (citing Ex. 1001, 16:59–17:5; Ex. 1008, 1:31–2:13).
Nevertheless, in view of the differences between the asserted prior art
references and the subject matter of the proposed substitute claims,
Petitioner presents a weak case of obviousness. For instance, although Strub
recognizes that recordings may be deficient, Strub does not specifically
contemplate deficiencies resulting from dropouts in transmission of local
audio to a remote recorder or receiver. See Ex. 1003, 48:18–30, 85:28–41.
Moreover, even if a person of ordinary skill in the art would have
understood that dropouts could be one cause of deficient recordings in Strub,
as Petitioner’s expert opines, and Wood teaches a method for repairing
11 Patent Owner presents several arguments towards the bodily incorporation
of Wood in to Strub. PO Resp. 41–47. We are not persuaded by these
arguments because the test for obviousness is what the combined teachings
of the references would have suggested to a person with ordinary skill in the
art. See In re Keller, 642 F.2d 413, 425 (CCPA 1981).

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dropouts, Wood focuses on repairing dropouts in a received TV broadcast
signal rather than during post-processing of a recording, as in the
’902 patent. Furthermore, the evidence that a person with ordinary skill in
the art would have looked to combine a small, wearable device for recording
the audio of an event, as taught in Strub, with a method for repairing a TV
broadcast signal, as taught in Wood, does not support a strong showing of
obviousness. Considering all of the arguments and evidence of record, we
conclude that Petitioner’s proposed combination of the teachings of Strub in
combination with Nagai or Gleissner, Woo, and Wood, with respect to
proposed substitute claims 21–23, and that Petitioner’s proposed
combination of teachings of Strub in combination with Wood with respect to
proposed substitute claims 24–26, at best only slightly weigh in favor of a
conclusion of obviousness.
3. Objective Indicia of Nonobviousness
Patent Owner further argues that objective indicia of nonobviousness
demonstrate that the substitute claims are patentable over the prior art. PO
MTA 29. Patent Owner asserts that the submitted evidence demonstrates
that: (1) there was a long-felt need for a wearable, wireless device that could
reliably capture sound data from actors recording a movie or television show
and the invention recited in the substitute claims satisfied this need; and
(2) the invention received industry praise and recognition. Id. (citing Exs.
2111 ¶¶ 86–93, 2098, 2099, 2100, 2101, 2102; 2087 ¶¶ 8–10); PO Resp. 54–
66 (citing Exs. 2087 ¶¶ 2–4, 2098–2104, 2107, 2109, 2113–2114, 2111 ¶¶
92–93); PO Sur-Reply 25–31.

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a. Nexus
As described above, for objective indicia of nonobviousness to be
accorded substantial weight, its proponent must establish a nexus between
the evidence and the merits of the claimed invention. ClassCo, 838 F.3d at
1220; see Section II.D.5.b.ii. A patentee is entitled to a presumption of
nexus “when the patentee shows that the asserted objective evidence is tied
to a specific product and that product ‘embodies the claimed features, and is
coextensive with them.’” Fox Factory, 944 F.3d at 1373. However, “[a]
finding that a presumption of nexus is inappropriate does not end the inquiry
in to secondary considerations.” Id. at 1375. “Where the offered secondary
consideration actually results from something other than what is both
claimed and novel in the claim, there is no nexus to the merits of the claimed
invention,” meaning that “there must be a nexus to some aspect of the claim
not already in the prior art.” Kao, 639 F.3d at 1068–69.
In contrast to the original claims of the ’902 patent, we construe
substitute claims 21–26 as being directed to repairing dropouts by receiving
local audio data and replacing remotely recorded audio data with the
received local audio data. See Section III.C. In light of the different scope
of proposed substitute claims 21–26, we consider the issue of nexus anew.
First, we determine that Patent Owner does not provide an analysis
demonstrating that its products are coextensive (or nearly coextensive) with
the challenged claims. We, therefore, find that a presumption of nexus is
inappropriate. See Pet. Reply 28–29; Pet. Opp. to MTA 19–20.
However, we determine that Patent Owner has established a nexus
between the evidence of secondary considerations and substitute claims 21–
26. Fox Factory, 944 F.3d at 1373–74. In its Motion to Amend, Patent

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Owner argues that there was a “long felt need for a wearable wireless device
that could reliably capture sound data from actors recording a movie or
television show” and the “invention received industry praise and recognition
including an Emmy award and a Technical Achievement Award from the
Academy of Motion Picture Arts and Sciences.” PO MTA 29 (citing Exs.
2111 ¶¶ 86–93, 2098, 2099, 2100, 2101, 2102, 2087 ¶¶ 8–10). Although
Patent Owner does not provide any more analysis in its Motion to Amend
(Pet. Opp. to MTA 29), Patent Owner’s arguments and evidence submitted
in its Response are directed to the subject matter added by amendment to the
proposed substitute claims, and we therefore consider the totality of the
evidence regarding objective indicia of nonobviousness.
Patent Owner submits the testimony of Mr. Wexler, who explains: “I
have been in many situations where for a variety of reasons there have been
RF dropouts and in some cases the wireless on the talent has moved way out
of range . . . . [P]rior to Zaxcom’s invention, the audio would be lost
forever in these situations.” PO Resp. 54 (citing Ex. 2104 ¶ 6) (emphasis
added). That is, Mr. Wexler refers generally to the prevention of dropouts
and lost audio, i.e., the “replacing” limitation. See Section III.C. Mr.
Wexler’s testimony has probative value in establishing that the asserted
objective evidence is tied to the proposed substitute claims.
Patent Owner also cites the following testimony from Mr. Sarokin and
Mr. Wexler:
Mr. Sanders announced his 3rd generation units. I purchased 12
TRX 900 transmitters and these included a mini SD card slot for
recording and a built in remote control receiver . . . Not only
could they transmit audio, they could also receive time code sync
signals and remote control commands. 	Zaxcom combined this
incredible capability with a built in digital recorder, making his

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digital transmitters full synchronous recording systems. 	This
capability solved the major limitation of radio mics … radio mics
had a very limited range. 	Depending on what else is on the
frequency, the range can be as little as 50 feet. In a big motion
picture scene, especially on a film that Ridley Scott is directing,
there can be simultaneous action hundreds of feet apart. Prior to
Zaxcom’s invention of recording radios, the field mixer would
capture as much of the dialog as his equipment would allow and
the rest would have to be dubbed in post production. 	I can’t
emphasize enough the revolution these recording radios brought
on. If the actors in a scene went in and out of radio range the SD
card on the transmitter would continue to record the audio . . .
Zaxcom also integrated all their equipment so a sound mixer
could hit a single button on a Zaxcom recorder and all the radios
in use would play back from a certain take or time code start point
so the scene could be remixed without any radio drop outs.
Zaxcom has been doing this since 2005. 14 years! . . .
Each Zaxcom transmitter can digitally record the output of the
microphone along with transmitting the signal to the receiver. If
there is a drop out of the RF signal, the identical recording in the
transmitter can be used by post production. . .
PO Resp. 54–56 (citing Ex. 2103 ¶¶ 3, 4–7; Ex. 2104 ¶¶ 6–7). Mr. Sarokin
and Mr. Wexler refer specifically to the “replacing” limitation of the ’902
patent recited by the proposed substitute claims. For instance, Mr. Wexler
states that each “transmitter can digitally record the output of the
microphone along with transmitting the signal to the receiver. If there is a
drop out of the RF signal, the identical recording in the transmitter can be
used by post production.” Ex. 2104 ¶ 6. In other words, a dropout causing
an issue with remotely recorded audio can be fixed by “replacing” the
remotely recorded audio with local audio data from a recording transmitter.
We determine that this evidence is strongly probative in establishing that the
asserted objective evidence is tied to the invention recited in the proposed
substitute claims.

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Similarly, Patent Owner’s evidence of praise in the form of the
Technical Achievement Award from the Academy of Motion Picture Arts
and Sciences and the Emmy award from the Academy of Television Arts
and Sciences awarded to Patent Owner also has probative value in
establishing that the asserted objective evidence is tied to the invention
disclosed and claimed in the substitute claims. For example, the Emmy
award specifically praises the digital recording of microphone signals in the
wireless transmitter to provide backup recording of the original microphone
signal. PO Resp. 58 (citing Ex. 2106). That is, the Emmy award praises the
“replacing” feature recited by the proposed substitute claims. We determine
that this evidence is probative in establishing that the asserted objective
evidence is tied to the invention disclosed in the substitute claims.
Petitioner contends that Patent Owner “presents no nexus argument,
referring only to ‘[t]he invention.’” Pet. Opp. to MTA 20 (citing PO MTA
29). Petitioner specifically argues that Mr. Wexler and Mr. Sarokin praise
unclaimed features. Id. at 28–29; PO Resp. 21–22. Petitioner further argues
that the Technical Achievement Award and Emmy focus on “digital
modulation technology,” and “merely mention[] the ability to also record
audio in the transmitter bodypack as one feature of the system.” Id. at 22–23
(citing Ex. 2102, 1).
We are not persuaded by Petitioner’s argument that the testimony of
Mr. Wexler and Mr. Sarokin, and the Technical Achievement Award and
Emmy, are directed to unclaimed features. As discussed above, both
Mr. Wexler and Mr. Sarokin specifically identify the “replacing” limitation
as a basis for the praise. See Ex. 2104 ¶ 6; Ex. 2103 ¶¶ 3, 4, 6. The Emmy
similarly discusses providing a backup recording to the original recording,

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and identifies the “replacing” limitation. See PO Resp. 58. As such, the
evidence cited by Patent Owner further supports a finding of a nexus.
Accordingly, considering the totality of evidence before us, we
determine that Patent Owner has established a nexus between the evidence
of industry praise and long-felt need and the “replacing” limitation of the
proposed substitute claims.
b. Long-Felt Need
“Evidence of a long-felt but unresolved need can weigh in favor of the
non-obviousness of an invention because it is reasonable to infer that the
need would not have persisted had the solution been obvious.” Apple Inc. v.
Samsung Elecs. Co., 839 F.3d 1034, 1056 (Fed. Cir. 2016). Patent Owner
asserts that there was a long-felt need for a “wireless, wearable, transmitting
and recording device that could reliably capture sound data from actors
recording a movie or television show.” PO Resp. 54.
Patent Owner argues that the “claimed invention of the ‘902 patent
satisfied this long felt need.” Id. at 55. As support, Patent Owner submits
the declarations of Mr. Sarokin and Mr. Wexler. PO Resp. 55–58 (citing
Exs. 2103, 2104). For example, Mr. Sarokin explains that “[f]or the first
time radio mic transmitters were now transceivers. Not only could they
transmit audio, they could also receive time code sync signals and remote
control commands. Zaxcom combined this incredible capability with a built
in digital recorder, making his digital transmitters full synchronous
recording systems. This capability solved the major limitation of radio
mics.” Ex. 2103 ¶ 6. Mr. Sarokin goes on to explain that “Zaxcom also
integrated all of their equipment so a sound mixer could hit a single button
on a Zaxcom recorder and all the radios in use would playback from a

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certain take or time code start point so the scene could be re-mixed without
any radio drop outs.” Id. Mr. Wexler also explains that “[i]n the past, prior
to Zaxcom’s invention, the audio would be lost forever in these situations
[where there has been a dropout]. With Zaxcom recording transmitters, the
audio will always be available directly from the transmitter.” Ex. 2104 ¶ 6.
Petitioner asserts that Patent Owner has failed to provide evidence of
long-felt need, specifically arguing that Patent Owner “presents no evidence
of the field requesting such a device at any time, much less before the ’902
patent, and no evidence of efforts to meet such a request.” Pet. Opp. to
MTA 21; see Pet. Reply 24–25. More specifically, Petitioner argues that
Patent Owner “only generally discusses RF dropouts and talent moving out
of range, without discussing the significance of the problem, if any, before
2005.” Pet. Reply 24. Petitioner also argues that Patent Owner fails to show
that the “need was unresolved and filled by the claimed features alone.” Pet.
Reply. 25.
Considering the totality of the evidence, we determine that Patent
Owner has demonstrated that a long-felt need existed for a “wireless,
wearable, transmitting and recording device that could reliably capture
sound data from actors recording a movie or television show.” As discussed
above, we credit the testimony of Mr. Sarokin and Mr. Wexler, who both
identify repairing dropouts as a long-felt need. PO Resp. 54–57 (citing
Ex. 2103 ¶ 6; Ex. 2104 ¶ 6). As also discussed above, we credit the
testimony of Mr. Sarokin, who explains that “[b]y 2005 my sound cart was
fully digital . . . I purchased 12 TRX 900 transmitters . . . Zaxcom combined
this incredible capability [of transmitting audio, receiving time code sync
signals, and remote control commands] with a built in digital recorder,

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making his digital transmitters full synchronous recording systems.”
Ex. 2103 ¶ 6. Mr. Sarokin explains that “[t]his capability solved the major
limitation of radio mics.” Id. We also credit the testimony of Mr. Wexler in
explaining how the “replacing” limitation solved the long-felt need of
repairing dropouts. PO Resp. 54–57 (citing Ex. 2104 ¶ 6). As such, we are
not persuaded by Petitioner’s arguments that Patent Owner does not provide
evidence of a long-felt need, and that claimed features solved that long-felt
need.
We, however, agree with Petitioner that Patent Owner has not
presented strong evidence demonstrating that “the need was long felt based
on the date when the problem to be solved was identified and efforts were
made to solve the problem.” Pet. Opp. to MTA 21–22 (citing Texas
Instruments Inc. v. U.S. Int’l Trade Comm’n, 988 F.2d 1165, 1178 (Fed. Cir.
1993). Although Mr. Sarokin generally asserts that there was a long-felt
need as of 2005, Patent Owner’s lack of further evidence regarding a
specific date of the identified problem and efforts to solve the problem does
not provide additional weight in favor of Patent Owner. Nonetheless, in
view of the testimony from Mr. Sarokin and Mr. Wexler, we determine that
Patent Owner provides sufficient evidence there was a long-felt need for a
“wireless, wearable, transmitting and recording device that could reliably
capture sound data from actors recording a movie or television show.”
In sum, the evidence provided by Patent Owner establishes there was
a persistent need, recognized by those of ordinary skill in the art, for a
“wireless, wearable, transmitting and recording device that could reliably
capture sound data from actors recording a movie or television show.” We

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determine that the evidence of long-felt need weighs in favor of
nonobviousness.
c. 	Industry Praise
Evidence that the industry praised a claimed invention or a product
that embodies the patent claims weighs against an assertion that the same
claim would have been obvious. WBIP, 829 F.3d at 1334. As evidence of
industry praise, Patent Owner relies upon the Declarations of Mr. Sarokin
and Mr. Wexler. PO Resp. 54–59; PO Sur-Reply 26–27. Patent Owner
further relies on the evidence of the awards for its products: the Technical
Achievement Award from the Academy of Motion Picture Arts and Sciences
and the Emmy award from the Academy of Television Arts and Sciences.
Id.
For example, Mr. Wexler states that “[w]ith Zaxcom’s brilliant
invention . . . I could always deliver a track to post production even . . .
where there were failures of the RF transmission” and “nothing else even
came close.” PO Resp. 57 (citing Ex. 2104 ¶ 7). Mr. Sarokin explains that
he “can’t emphasize enough the revolution these recording radios brought
on.” Ex. 2103 ¶ 6. Mr. Sarokin further explains that “[n]o other company
has anything remotely close” and “[t]here is nothing even remotely
comparable.” Ex. 2103 ¶¶ 6, 8.
Also probative is Patent Owner’s evidence of the received awards.
Patent Owner asserts the Emmy award specifically praises features of the
proposed substitute claims including the digital recording of microphone
signals in the wireless transmitter “to provide backup recording of the
original microphone signal.” PO Resp. 58 (quoting Ex. 2106) (emphasis
added). Patent Owner further relies on, and we credit, the testimony of

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Mr. DeFilippis, a member of the committee who granted the award, who
explains that “Mr. Sanders also received the Emmy award from the
Academy of Television Arts and Sciences for the Zaxcom, Inc. digital
recording wireless products that embody the claimed invention of the ‘902
patent.” Ex. 2111 ¶ 92; see PO Sur-Reply 28–29. Patent Owner further
asserts that “Glenn Sanders and the co-inventor of the ‘902 patent, Howard
Stark, received the Technical Achievement Award from the Academy of
Motion Picture Arts and Sciences for the digital recording wireless products
that embody the claimed invention of the ‘902 patent.” PO Resp. 58 (citing
Ex. 2101; Ex. 2102; Ex. 2087 ¶¶ 2–4). Patent Owner further provides a
press release for the Emmy that praises Patent Owner’s “digital wireless
transmission system for microphones and a production tool that married
wireless transmission with a recording device located within the actor’s
body pack.” Ex. 2107 (emphasis added).
Petitioner argues that the evidence of industry praise submitted by
Patent Owner is directed to features that are “unclaimed, known in the art, or
both.” Pet. Opp. to MTA 22. Specifically, Petitioner argues that
Mr. Wexler and Mr. Sarokin praise features directed to digital recording,
wireless transmission, and time code signals, features that Petitioner alleges
are not present in the claims. Id.
Although we agree with Petitioner that Patent Owner provides some
evidence of industry praise directed to features not explicitly recited by
proposed substitute claims 21–26, we are persuaded that Patent Owner
provides evidence of industry praise related to the “replacing” limitation that
specifically addresses dropouts. See PO Resp. 54–59. The evidence of
features that are not recited by proposed substitute claims 21–26 weighs

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neither for nor against nonobviousness. However, the testimonial evidence
by Mr. Sarokin and Mr. Wexler praising Patent Owner’s dropout correction
features, as recited by the “replacing” limitation, weighs in favor of
nonobviousness. Furthermore, the awards evidence that praises Patent
Owner’s digital recording devices that “married wireless transmission with a
recording device located within the actor’s body pack” also strongly weighs
in favor of nonobviousness.
In sum, we determine that Patent Owner’s evidence of industry praise
weighs in favor of nonobviousness.
d. Failure of Others
Patent Owner asserts that others tried and failed to provide a device
with similar features to the ’902 patent, namely, “wireless, wearable,
transmitting and recording device that transmits and stores the same local
audio so that the corresponding local audio data can be used to repair
dropouts.”12 PO Sur-Reply 30; see PO Resp. 56–57. More specifically,
Patent Owner relies on the Declaration of Mr. Sarokin who states:
Zaxcom would have no competition for almost 8 years. It was
2009 before SONY engineers were able to figure out the
algorithms pioneered by Zaxcom. By the time Sony came out
with their first digital radio Zaxcom was already on their 3rd
generation . . .
NO ONE else has recording capability, NO ONE else has
systems integration. 	NO ONE else has reduced bandwidth
digital radios, and NO ONE else has micro sized digital radios
period.
12 Although Patent Owner presents the failure of others arguments as
directed to the original claims of the ’902 patent, we understand these
arguments also to apply to the proposed substitute claims for the same
reasons discussed above.

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PO Sur-Reply 30 (citing Ex. 2103 ¶¶ 5, 7); see PO Resp. 56–57.
Petitioner argues that Patent Owner provides no relevant evidence that
others tried and failed to create the claimed technology, and that those
failures were attributable to the claimed features. Pet. Reply 25–26 (citing
Ormco Corp. v. Align Tech., Inc., 463 F.3d 1299, 1313 (Fed. Cir. 2006)).
According to Petitioner, Patent Owner’s evidence of the failure of others at
most demonstrates an attempt at digital modulation. Id. (citing PO
Resp. 56).
We agree with Petitioner. We find Patent Owner’s evidence of the
failure of others to be conclusory and without adequate support for the
proposition that others failed. Mr. Sarokin describes a lack of competition
and states, without evidentiary support, that “it was 2009 before SONY
engineers were able to figure out the algorithms.” Ex. 2103 ¶ 5 (emphasis
added). The submitted evidence, by itself, is insufficient for us to find that
Sony, or any other industry competitor, failed in developing a competing
product as other business or economic factors may have come into play.
The lack of a competing product is insufficient evidence of whether others
tried and failed at development. Accordingly, we do not find Patent
Owner’s evidence of the failure of others to weigh in favor of
nonobviousness.
4. Weighing the Objective Indicia of Nonobviousness
“The objective indicia of non-obviousness play an important role as a
guard against the statutorily proscribed hindsight reasoning in the
obviousness analysis.” WBIP, 829 F.3d at 1328. Indeed, the Federal Circuit
has held that such evidence “may often be the most probative and cogent
evidence in the record.” Id. (quoting Stratoflex, Inc. v. Aeroquip Corp., 713

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F.2d 1530, 1538 (Fed. Cir. 1983)). We determine that Patent Owner has
provided strong evidence of the nonobviousness of proposed substitute
claims 21–26. Specifically, we find that the factors of long-felt need and
especially industry praise weigh heavily in favor of nonobviousness. We do,
however, agree with Petitioner that the evidence of the failure of others does
not tend to show nonobviousness. In sum, we are persuaded by Patent
Owner that the objective indicia of nonobviousness strongly support a
conclusion of nonobviousness.
5. Conclusion
Factual inquiries for an obviousness determination include secondary
considerations based on objective evidence of nonobviousness. Graham,
383 U.S. at 17–18. Weighing all four Graham factors, we conclude that
Petitioner has not shown by a preponderance of the evidence that proposed
substitute claims 21–23 would have been obvious over the combination of
Strub in combination with Nagai or Gleissner, Woo, and Wood, or that
proposed substitute claims 24–26 would have been obvious over the
combination of Strub and Wood. Rather, we determine that Petitioner’s
proposed combination of the teachings of the references presents a weak
case of obviousness, whereas the objective indicia of nonobviousness weigh
heavily in favor of nonobviousness.
Based on the foregoing, we grant Patent Owner’s Contingent Motion
to Amend.
IV. 	Conclusion
Based on the information presented, we conclude that Petitioner has
shown, by a preponderance of the evidence, that claims 7, 8, 11, 12, 14, and

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15 of the ’902 patent are unpatentable. We also grant Patent Owner’s Motion
to Amend to replace claims 7, 8, 11, 12, 14, and 15 with proposed substitute
claims 21–26.
In summary:
Motion to Amend Outcome 	Claims
Original Claims Cancelled by Amendment 	7, 8, 11, 12, 14, 15
Substitute Claims Proposed in the Amendment 	21–26
Substitute Claims: Motion to Amend Granted 	21–26
V. 	ORDER
After due consideration of the record before us, and for the foregoing
reasons, it is:
ORDERED that claims 7, 8, 11, 12, 14, and 15 of the ’902 patent are
held unpatentable;
Reference(s) 	Basis 	Claims
Claims
Shown
Unpatentable
Claims
Not shown
Unpatentable
Strub, and Nagai
or Gleissner, and
Woo
§ 103 	7, 8, 11 	7, 8, 11
Strub and Wood 	§ 103 12, 14,
15 12, 14, 15
Strub 	§ 102 12, 14,
15 12, 14, 15
Overall Outcome 7, 8, 11, 12, 14,
15

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FURTHER ORDERED Patent Owner’s Contingent Motion to Amend
is granted as to proposed substitute claims 21–26, and claims 7, 8, 11, 12,
14, and 15 are cancelled and replaced by proposed substitute claims 21–26;
and
FURTHER ORDERED that because this is a final written decision,
parties to the proceeding seeking judicial review of the decision must
comply with the notice and service requirements of 37 C.F.R. § 90.2.

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FOR PETITIONER:
C. Brandon Rash
Cory C. Bell
FINNEGAN, HENDERSON, FARABOW, GARRETT & DUNNER, LLP
brandon.rash@finnegan.com
cory.bell@finnegan.com
Deborah Peacock
Justin Muehlmeyer
PEACOCK LAW P.C.
DPeacock@peacocklaw.com
jmuehlmeyer@peacocklaw.com
FOR PATENT OWNER:
Dr. Gregory J. Gonsalves
GONSALVES LAW
gonsalves@gonsalveslawfirm.com
Rita C. Chipperson
CHIPPERSON LAW GROUP, P.C.
rcc@chippersonlaw.com