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Recently Designated Precedential PTAB Decision Confirms Objective Indicia of Nonobviousness Can Rescue Patents from Invalidation at the PTAB

Last week, the Patent Trial and Appeal Board (“PTAB”) designated a January 24, 2020 decision, finding objective indicia of nonobviousness, such as evidence of long-felt need and industry praise, saved a patent owner’s amended claims from invalidation, as precedential. This now precedential ruling provides patent owners with a useful guide for successfully asserting objective indicia of nonobviousness to save their patents from being invalidated at the PTAB.

In Lectrosonics, Inc. v. Zaxcom, Inc., Case No. IPR2018-01129, Paper 33 (PTAB Jan. 24, 2020), Lectrosonics, Inc. ( “Lectrosonics”) filed a petition requesting an inter partes review of six claims in U.S. Patent No. 7,929,902, issued to Zaxcom, Inc. ( “Zaxcom”) and relating to wirelessly recording and repairing audio data in the context of film and television production. As part of its efforts to save the patent, Zaxcom filed a contingent motion to amend its claims to expressly include the step of replacing corrupted audio data that was remotely received with locally recorded data (i.e., the feature of eliminating what’s known in the industry as audio dropouts) and further argued that both its original claims and amended claims were valid in view of objective indicia of nonobviousness—specifically, long-felt need, failure of others, and industry praise of the patented invention. To prove these objective indicia, Zaxcom submitted declarations from two experts in the film industry and evidence that Zaxcom had won an Emmy and a Technical Achievement Award from the Academy of Motion Picture Arts and Sciences for the claimed invention.

With respect to the original claims, the PTAB deemed them invalid and determined that Zaxcom’s objective indicia evidence was insufficient.  Specifically, Zaxcom had “not demonstrated a nexus exists between the evidence presented and the merits of the claimed invention because the evidence [was] directed to features that [were] not required by the claims”—i.e., the Emmy and Technical Achievement Award showed industry praise for eliminating audio dropouts, which, the PTAB determined, was not required by the original claims. Slip op., at 34.

The PTAB, however, reached the opposite conclusion regarding the amended claims, holding that they are valid in light of Zaxcom’s evidence of objective indicia of nonobviousness. The key to Zaxcom’s success was its ability to connect the amended claim language to the objective indicia of nonobviousness.  Specifically, the PTAB determined that Zaxcom sufficiently linked its evidence of objective indicia of nonobviousness—i.e., expert testimony and awards—to the amended claim limitation directed to eliminating audio dropouts—i.e., the replacing of corrupted audio data that was remotely received with locally recorded data.  First, in “credit[ing] the testimony of [Zaxcom’s experts], who both identify repairing dropouts as a long-felt need,” the PTAB determined that Zaxcom established a long-felt need for the claimed invention. Slip Op., at 66. The PTAB then found that Zaxcom sufficiently demonstrated industry praise of the claimed invention stating that “[t]he Emmy award praises the ‘replacing’ feature recited by the proposed substitute claims.”  Id., at 64.  Weighed together as a whole, the PTAB concluded that “the factors of long-felt need and especially industry praise weigh heavily in favor of nonobviousness,” and thus determined the amended claims to be patentable.  Id. at 72.

This decision serves as both a reminder to patent owners to always consider objective indicia of nonobviousness when defending the validity of their patent, as well as a useful guide for successfully using such evidence during a PTAB challenge.  In particular, the key takeaway for successfully asserting objective indicia of nonobviousness is the importance of connecting specific language in the patent claims to the evidence of objective indicia of nonobviousness.

©1994-2020 Mintz, Levin, Cohn, Ferris, Glovsky and Popeo, P.C. All Rights Reserved.National Law Review, Volume X, Number 139

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About this Author

Brad Scheller Patent Litigation Attorney Mintz Law Firm
Member

Brad Scheller is a trial attorney who focuses his patent litigation practice on representing clients in the automotive devices, thermoplastics, electronic components and consumer products industries in federal district court, before the Patent Trial and Appeal Board and at the International Trade Commission. With a background in mechanical engineering and over 14 years of experience practicing law, Brad has successfully represented patent owners in enforcing their rights against infringers and protecting those rights from challenges of invalidity, and has also successfully defended and...

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Vincent M. Ferraro, Mintz Levin, Patent Litigation Licensing & Technology Transactions Strategic IP Monetization & Licensing IPRs & Other Post-Grant Proceedings Federal District Court
Associate

Vincent’s practice focuses on patent disputes in Federal District Courts and before the U.S. Patent Trial and Appeal Board. With over 10 years of experience, Vincent has handled patent disputes involving telecommunications, cellphone and smartphone technology, digital photography, image processing, electronic circuitry, electrical components, computer software and hardware, LCD technology, data mining, financing, mechanical devices, medical devices and implants, consumer products, GPS technology, e-commerce, and Internet security. In patent litigation cases, he guides clients through all phases of the case, including pre-suit due diligence, claim construction, discovery, depositions, hearings, and trial.

Vincent also has significant experience representing clients in post-grant proceedings before the Patent Trial and Appeal Board of the U.S. Patent and Trademark Office, including inter partes review (IPR) and covered business method (CBM) patent review proceedings. He has represented both petitioners and patent owners in these proceedings.

Vincent also regularly counsels clients on their IP portfolio strategies and assists them in developing design strategies for their products. He works closely with inventors, analyzes new inventions, drafts U.S. patent applications, and prosecutes patents before the U.S. Patent and Trademark Office in various high-technology fields and on consumer products. He also renders patent freedom-to-operate and validity opinions.

212.692.6214
Associate

Meena focuses her practice on intellectual property litigation. She has handled all aspects of litigation, including drafting pleadings and briefs, and brings to her role prior experience drafting and prosecuting US and international patents and responding to patent office actions. Meena has experience in a broad range of technology areas, including machine learning, malware detection, cybersecurity, networking hardware and software, wireless networks, data encryption, and computer programming.

Prior to joining Mintz, Meena served as an assistant district attorney with the Kings...

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