Awarded wireless microphone technology for movies, TV could be invalidated
How could the USPTO grant a patent, the claimed invention earn Emmy and Academy awards, and then the USPTO decide the patent was likely to be invalid?
BY JOSH MALONE
On October 25, the American Intellectual Property Law Association’s annual meeting will host a Patent Trial and Appeal Board inter partes review trial to determine the fate of two patents issued by the United States Patent and Trademark Office to Zaxcom for a digital recording wireless microphone.
An inter partes review trial is one in which the validity of a patent is challenged in front of the USPTO.
Zaxcom is a U.S. manufacturer of high-end, specialized wireless microphones and recording equipment for the film and television industries. The company was founded in 1986 by Glenn Sanders, the named inventor on the challenged patents.
I met Sanders recently at the trial on his first patent, held at USPTO headquarters in Alexandria, Virginia. I monitor the PTAB docket in an attempt to help inventors and their novice attorneys navigate the “patent death squad,” or at least expose the more blatant examples of abuse. I help them if able, but at the very least I Uber down to the USPTO headquarters from my new home in Alexandria to lend moral support.
The Zaxcom case caught my attention for several reasons. First, this was not a patent troll asserting a stack of vague, overly broad patents but was an inventor-owned company that was producing the invention. Second, Sanders was manufacturing his invention and creating jobs in the United States. Third, the technology has won Engineering Emmy Awards and has been honored by the Academy of Motion Picture Arts and Sciences with a Technical Achievement Award.
How could the USPTO grant a patent, the claimed invention earn Emmy and Academy awards, and then the USPTO decide the patent was likely to be invalid? Especially when USPTO Director Andrei Iancu is traveling throughout the country and testifying in Congress that it is a new day at the USPTO and that he has restored balance at the PTAB?
The Zaxcom patents
The three patents owned by Zaxcom are numbers 7,929,902 (IPR2018-01129); 8,385,814 (IPR2018-01130); and 9,336,307 (IPR2018-00972). They are for the invention of the recording wireless microphone, which is a tiny audio transmitter with an internal micro SD card recorder.
This device is hidden on actors and transmits audio to a larger mixer and recorder, where a sound person mixes all of the actors’ performances together to create a single audio track.
The recorder that is built into the actor’s transmitter is used to create an identical time-stamped copy of the audio. This allows any problems that occur during wireless transmission to be fixed after transmission by replacing a portion of the main audio recording track with the audio from the SD card.
The crux of the patents is as follows: They teach the use of a novel system of recording audio within a body-wearable unit that is easily concealed on an actor in the production of television and motion pictures. The system uses a time-stamped reference to record audio from a microphone onto a solid-state medium within the body pack while transmitting an RF signal with identical audio content to a separate recorder.
During the last 10 years, this invention has been a very successful product for Zaxcom and was instrumental to the growth of the company and its entire wireless product line. At the time of the invention in 2005, this market was dominated by petitioner Lectrosonics. Zaxcom had a very small market share.
The Motion Picture Academy and the Television Academy have both recognized Zaxcom for Sanders’ solution to the problem of lost audio that had hindered the production process for decades. Case law recognizes such “industry acclaim … may often be the most probative and cogent evidence in the record” (Stratoflex, Inc. v. Aeroquip Corp., U.S. Court of Appeals for the Federal Circuit, 1983).
The nexus of the Emmy to the claimed invention is astounding—“Outstanding Achievement in Engineering Development – Digital Recording Wireless.”
The essence of the invention is an exact recording of a real-time wireless audio transmission. Why would the Motion Picture Academy and the Television Academy hand out a prestigious award for a patented technology if it were obvious?
Having gone down the PTAB rabbit hole myself and having followed hundreds of other cases, I had a good idea what was in store for Sanders. It is torture for technologists to sit through these hearings.
You want to pull your hair out as the lawyers for the USPTO and the petitioner demonstrate they don’t understand the technology and don’t really care what you invented, because it is just a word game to them. I had an administrative patent judge (APJ) asking my attorney how he knows that the first drop of water in a balloon would not cause it to expand. I watched while Sanders had to endure an APJ ask why vocal sound waves are different than digital audio data.
As a matter of policy, why does the PTAB insist on accusing inventors like Sanders of claiming the rights to old technology? That is nonsensical. If we wanted to use the old technology, we wouldn’t waste our time developing new solutions and filing for patents.
When Sanders and his attorney explained that they were using the same audio for recording and transmission, the dispute was resolved and the petition should have been denied. The public and Lectrosonics would be free to use the inferior prior art of a back-up mic to replace drop-outs without worry of being sued by Zaxcom. But the panel insisted on dragging Sanders’ company through a series of costly trials to jeopardize his business.
I have joined with U.S. Inventor and other stakeholders to ask the USPTO to focus on the tremendous harm that post-issuance reviews cause to the “economy and the integrity of the patent system” when they are used as weapons against small inventor-owned businesses.
For a small company like Zaxcom, the PTAB is a bet-the-company scale threat. AIPLA reports that the average cost for an IPR is $450,000, and the 90th percentile (the fees for a robust defense) is $850,000. Sanders did not share with me the precise financial condition of his enterprise, but it is very clear that these sorts of costs were way, way out of reach.
I funded my PTAB trials with $100 million in product sales, but only a handful of inventors have access to that kind of capital.
I hope that Sanders and his company beat the odds and survive. I hope my article shines the light on his contribution and tips the scales in his favor.
It is a travesty that patent rights have come to this. The merits of the invention carry very little weight. Does he have deep enough pockets and sufficient influence with the government to prevail? That seems to be all that matters.
Josh Malone is the inventor of Bunch O Balloons, a product that was ruled to be patent infringed by U.S. telemarketing firms Telebrands and its subsidiaries. His companies received $31 million in the settlement but spent about $20 million in legal fees. He is a Fellow with US Inventor, working to restore the patent system.