On April 14, 2020 the USPTO designated Lectrosonics a precedential decision. The PTAB determined that the IPR challenged claims are unpatentable because Zaxcom (the patent owner) did not establish a nexus between the claims and objective evidence of non-obviousness. When it comes to the issue of objective indicia of nonobviousness (e.g., long-felt need, failure of others, and industry praise of the patented invention), the PTAB established the following:
1) 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.
2) 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.’”
Here, Zaxcom submitted expert declarations, user manuals, and evidence of awards for its products and product manuals. However, the Board found no nexus between the evidence presented and the claimed invention because the evidence was directed to features that were not required by the claims. That is, Zaxcom presented evidence primarily directed towards the feature of fixing dropouts, while the claims were instead directed to locally recording and timestamping audio data. Therefore, Zaxcom did not demonstrate that its products are coextensive (or nearly coextensive) with the challenged claims.