Zaxcom patent infringement question

[Paul F]

... So what is novel and special about the Zaxcom units?

Here's the crux of it all. From the National Law Review:

"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."

[JAMedia]

Hi

This made me laugh! "Glenn has said that Zaxcom is totally open to any manufacturer who would like to license their IP but at this point the only one who has is Diety. So the onus is on Zoom and was on Tascam to simply connect and license or negotiate with Zaxcom." Can you explain why Zoom and Tascam pay Zaxcom for IP they already have and is prior art anyway. If it was not prior art Zaxcom would have an EU patent to cover the whole of Europe as well as the US. All this does is continue to put the US patent office in a bad light.


Tascam and Zoom have no need to talk to Zaxcom. Why would they?

[mico]

And this for INc.:

"Cost
Surprise is often the reaction from first-time licensees when they see the fees, says Jack Morrow, president of Out of the Box, an agency in Los Angeles that represents both licensees and IP owners. Royalties typically range from 4 to 14 percent for every license-emblazoned item you sell, and a minimum annual royalty payment, part of which is due upon signing, must be guaranteed. In other words, you'd better be confident you've got customers lined up."


from another site:
What are the disadvantages of licensing?
The license agreement is normally for a considerable period of time and there may be an annual minimum royalty required.
New technology may become available making the licensed opportunity obsolete.
The agreement may force the licensee to accept restrictions on its marketing.
The licensee may lose the capacity to develop its own technology internally.

What are the margins on niche products like these. Its almost not worth making the product if you have to pay out 14% and a annual fee on top of feeling the patent is bogus in the first place. And if they add the cost onto the product they alienate the customers who would have been in the original price range. For instance some people are going with the zoom simply based on cost not features or durability.

And importantly does licensing the IP open up the company to litigation on other products they may sell costing time and money? Deity is a small company with fewer sound products than the other companies so licensing might be a better way to go for them.

[Run&Gun]

I have exchanged a couple of emails with Glenn Sanders of Zaxcom since posting my "missing voice" reply. Glenn, much to my surprise responded immediately this morning to my email. I have agreed not to copy and paste his detailed response to my questions but to summarize his position on my concern regarding the patent that prevents Zoom and Tascam from selling their product without disabling output when recording.
Glenn has said that Zaxcom is totally open to any manufacturer who would like to license their IP but at this point the only one who has is Diety. So the onus is on Zoom and was on Tascam to simply connect and license or negotiate with Zaxcom. I think this is a fair statement and position.Certainly both Zoom and Tascam not small companies at all could see the value in offering an unencumbered device to the American market? Obviously Diety did and cut a deal. So help me understand why Zoom and Tascam would "cheap out"? It seems to me that they are the ones doing the wrong thing here to the market in the USA. Zaxcom are not the bad guys, they got a patent for something and they own the rights in the USA. I also wonder why Tentacle would not have licensed this for their latest offering?
Now I am not familiar with the Lectrosonics vs Zaxcom lawsuit, I don't believe it has anything to do with this thread and its sounds complicated. But several folks have expressed opinions about it and how they feel one way or the other. Perhaps that discussion should find its way elsewhere?
Glenn also mentioned that the patent we have been discussing here will expire in about four years but again that they are "totally open to licensing if other manufacturers want to contact us and make a deal." As for Zoom and Tascam, I don't feel I need to contact them to get their side of the story. I have contacted two dealers who have contacted Zoom's distro in Canada and Zoom has not replied to multiple calls and emails. I believe they are well aware of this issue but if one of you wants to, go for it. I still intend to buy a Zoom recorder if it is not disabled and it should not be disabled if sold in Canada, that however remains to be seen...or rather heard.

Please show me where they have a patent on a device having an audio output or "loop-through". Everything seems to be tied to recording and replacing remotely recorded audio that has drop-outs with TC'd locally recorded audio. Every professional (video)camera I have ever owned has at least one audio output that is functioning at all times, regardless of whether the camera is recording or not. And I will bet you a nice cold Coke that Sony, Panasonic, Ikegami, RED, Canon, Arri, etc. are NOT licensing or paying Zaxcom one penny for this capability that has been around longer than Zaxcom. Imagine if the headphone or 5-pin outs shut-off on our cameras whenever we were recording.

At this point, I'm not even talking about recording and transmitting occurring in the same device or even separate devices. Again, no one seems to be able to show how they are preventing other manufacturers from allowing audio to pass through their devices.

[BrianMurphy]

Well if what you say is true then help me understand why Tascam and Zoom chose not to enable the feature. I will take the Coke and bring my own rum. Thanks

[JAMedia]

Well if what you say is true then help me understand why Tascam and Zoom chose not to enable the feature. I will take the Coke and bring my own rum. Thanks

The feature is enabled globaly just not in the USA. It is not worth the expense of a US court case when Zaxcom has a US patent. Especially as anyone who really wants a Zoom or Tascam can get one from Canada (or anywhere else)

However that Zaxcom can't get that patent anywhere else speak volumes. As does the fact that Zoom and Tascam sell with the feature enabled everywhere else in the world without challenge.

[BrianMurphy]

You are missing the point I think.. The USA market is a big market, Zaxcom has a patent, cut a deal with them and enable the American version. All this discussion about whether the patent exists elsewhere is of no matter, especially for you in the UK and those in Europe. As a Canadian, we are often affected by what affects their market such is the case here.

[JAMedia]

You are missing the point I think.. The USA market is a big market, Zaxcom has a patent, cut a deal with them and enable the American version. All this discussion about whether the patent exists elsewhere is of no matter, especially for you in the UK and those in Europe. As a Canadian, we are often affected by what affects their market such is the case here.

You are missing the point. If you have a US patent it should be very easy to get an EU patent. Unless the US patent is prior art or not patentable in Europe. The US often patents things that are prior art in the rest of the world.Europe is a huge market. As is the rest of the world.

That Zaxcom only has a patent in the US and both Zoom and Tascam sell, globally a model that can't be sold in the US suggests that they believe no other country will grant Zaxcom a patent. This basically says the Patent is not strong and has no technical merit. So everyone outside the US ignores it including Canada AFAIK.

Zoom and Tascam that has a version that they can sell in the US that wont cost them anything to do. Certainly less than licensing or a court case. If anyone in the US really wants the global version of Zoom or Tascam they can still get them as a personal grey import.

[Paul F]

It's not unusual to only file in the U.S.. The company I worked for had tens of billions of revenue and sold product in almost every country. Almost exclusively, patents were only filed in the U.S..

[Run&Gun]

Well if what you say is true then help me understand why Tascam and Zoom chose not to enable the feature. I will take the Coke and bring my own rum. Thanks

That's what I and a LOT of others are trying to figure out. Zoom and Tascam make other recorders that have outputs that are not disabled while they are recording, as well as my Sound Devices 664, 633 and every other recorder they make. So what "allows" Zax to single out these small recorders and "force" the manufacturers to disable the audio/headphone output while they are recording(for the models intended for sale/importation in the US)?

I've got some good stuff I haven't cracked open yet. I'll share a pour. But if you want a nice smooth Rum & Coke, get some Captain Silver and Coke Zero. Saves some carbs... Lol