DCT
2:17-cv-02840
Zaxcom Inc v. Lectrosonics Inc
I. Executive Summary and Procedural Information
- Parties & Counsel:
- Plaintiff: Zaxcom, Inc. (New Jersey)
- Defendant: Lectrosonics, Inc. (New Mexico)
- Plaintiff’s Counsel: Chipperson Law Group, P.C.
- Case Identification: 2:17-cv-02840, D.N.J., 04/25/2017
- Venue Allegations: Plaintiff alleges venue is proper in the District of New Jersey because Defendant Lectrosonics is subject to personal jurisdiction, conducts regular business, and offers its products for sale in the district through its website and third-party distributors like Amazon.com.
- Core Dispute: Plaintiff alleges that Defendant’s Portable Digital Audio Recorder infringes patents related to systems that simultaneously transmit audio wirelessly to a remote recorder while creating a time-coded local backup recording on a wearable device to prevent data loss from transmission failures.
- Technical Context: The technology addresses a critical need in professional film and television production for reliable wireless audio capture, providing a fail-safe mechanism to recover audio lost due to signal dropouts or interference.
- Key Procedural History: The complaint alleges Defendant had pre-suit knowledge of U.S. Patent Nos. 7,929,902 and 8,385,814 via a notice letter dated December 23, 2013, and of U.S. Patent No. 9,336,307 via a notice letter dated March 20, 2017. Subsequent to the filing of this complaint, all three patents-in-suit underwent inter partes review (IPR) proceedings at the USPTO. These proceedings resulted in the cancellation of all claims asserted in this complaint.
Case Timeline
| Date | Event |
|---|---|
| 2005-07-14 | Earliest Priority Date for all Patents-in-Suit |
| 2011-04-19 | U.S. Patent No. 7,929,902 Issues |
| 2013-02-26 | U.S. Patent No. 8,385,814 Issues |
| 2013-12-23 | Notice Letter Sent Regarding ’902 and ’814 Patents |
| 2016-05-10 | U.S. Patent No. 9,336,307 Issues |
| 2017-03-20 | Notice Letter Sent Regarding ’307 Patent |
| 2017-04-25 | Complaint Filed |
| 2018-04-25 | IPR Filed Against '307 Patent (IPR2018-00972) |
| 2018-06-12 | IPR Filed Against '902 Patent (IPR2018-01129) |
| 2018-06-12 | IPR Filed Against '814 Patent (IPR2018-01130) |
| 2022-09-28 | IPR Certificate Issues Cancelling Asserted '902 Claims |
| 2022-10-12 | IPR Certificate Issues Cancelling Asserted '814 Claims |
| 2022-10-14 | IPR Certificate Issues Cancelling Asserted '307 Claims |
II. Technology and Patent(s)-in-Suit Analysis
U.S. Patent No. 9,336,307 - VIRTUAL WIRELESS MULTITRACK RECORDING SYSTEM
- Issued: May 10, 2016
- Asserted Claims: 1-10 (Compl. ¶19)
The Invention Explained
- Problem Addressed: In professional audio settings, wireless microphone systems are susceptible to signal interference and dropouts, which can result in the permanent loss of recorded audio. (’307 Patent, col. 2:1-11).
- The Patented Solution: The patent describes a system where a performer wears a "local audio device" that functions as both a wireless transmitter and a self-contained recorder. While transmitting audio to a main (remote) recorder, the device simultaneously saves a high-quality copy to its own internal memory. This locally stored audio, which is time-coded for synchronization, can then be retrieved after the event to "combine" with the remotely recorded audio, effectively repairing any portions lost during transmission. (’307 Patent, Abstract; col. 26:12-21).
- Technical Importance: This dual-recording architecture provides a robust data-recovery solution for high-stakes environments like film production, where audio integrity is paramount and re-shoots are costly. (’307 Patent, col. 1:31-41).
Key Claims at a Glance
- The complaint asserts claims 1-10. (Compl. ¶19). Independent claim 1 is representative.
- The asserted claims were cancelled during a subsequent inter partes review (IPR2018-00972).
- Essential elements of original independent claim 1 include:
- An apparatus with a wearable local audio device.
- The device includes a receiver, an audio input port, a memory, and a control unit.
- The control unit creates and stores local audio data in the memory.
- The stored local audio data can be retrieved and combined with remotely recorded audio data.
- The complaint does not explicitly reserve the right to assert other dependent claims.
U.S. Patent No. 8,385,814 - VIRTUAL WIRELESS MULTITRACK RECORDING SYSTEM
- Issued: February 26, 2013
- Asserted Claims: 1, 2, 9-10, 15, 31, 36-37, and 41-45 (Compl. ¶28)
The Invention Explained
- Problem Addressed: Similar to the '307 patent, the invention addresses data loss in wireless audio transmission. (’814 Patent, col. 2:5-11).
- The Patented Solution: This patent elaborates on the synchronization mechanism. The system includes a master timecode generator and a local timecode generator within the wearable device. The local generator is synchronized with the master timecode, and a feedback loop algorithm (illustrated in Fig. 5) continuously compares the local and master timecodes, adjusting the local clock's speed to maintain sample-accurate alignment between the local backup recording and the main remote recording. (’814 Patent, col. 11:1-20; Fig. 5).
- Technical Importance: This precise synchronization is crucial for seamlessly combining audio tracks from multiple sources in post-production without introducing audible phasing artifacts or timing errors. (’814 Patent, col. 5:8-19).
Key Claims at a Glance
- The complaint asserts claims 1, 2, 9-10, 15, 31, 36-37, and 41-45. (Compl. ¶28). Independent claim 1 is representative.
- All asserted claims were cancelled during a subsequent inter partes review (IPR2018-01130).
- Essential elements of original independent claim 1 include:
- A system with a master timecode generator and a wearable local audio device.
- The local device includes a receiver, audio input port, memory, and a local timecode generator.
- A control unit creates "stamped local audio data" using the local timecodes.
- The complaint does not explicitly reserve the right to assert other dependent claims.
U.S. Patent No. 7,929,902 - VIRTUAL WIRELESS MULTITRACK RECORDING SYSTEM
- Issued: April 19, 2011
- Asserted Claims: 7, 11, and 12 (Compl. ¶37)
Technology Synopsis
- As the parent of the other patents-in-suit, this patent introduces the foundational system of using a wearable device that simultaneously records audio locally while transmitting it wirelessly. The invention proposes using this local recording, which is timestamped, to repair or replace any audio data lost or corrupted during wireless transmission to a master recorder. (’902 Patent, Abstract).
- All asserted claims were cancelled during a subsequent inter partes review (IPR2018-01129).
Accused Features
- The complaint alleges that the Lectrosonics PDR, when used with a time code source as shown in instructional videos, embodies the claimed system for creating a time-coded local backup recording. (Compl. ¶14, ¶37).
III. The Accused Instrumentality
Product Identification
- The Lectrosonics Portable Digital Audio Recorder ("PDR") and related accessories, such as the MC70 cable. (Compl. ¶13, ¶19).
Functionality and Market Context
- The complaint describes the PDR as a wearable local audio device that includes a time code sync port, an audio input, a microSD card for memory, a clock that functions as a timecode generator, and a processing unit. (Compl. ¶14).
- It is alleged to create time-stamped local audio data in the form of ".wav" files, which are "capable of being retrieved and combined with locally generated audio that is remotely recorded." (Compl. ¶14). The complaint references a YouTube video from Gotham Sound showing a lavalier microphone connected to the PDR for local recording. (Compl. ¶20, Exhibit H).
- Plaintiff alleges that Lectrosonics markets the PDR to directly compete with Zaxcom's own TRX series transmitter products. (Compl. ¶13).
IV. Analysis of Infringement Allegations
'307 Patent Infringement Allegations
| Claim Element (from Original Independent Claim 1) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| An apparatus for locally recording locally generated audio... | The Lectrosonics PDR is a wearable local audio device. | ¶14 | col. 23:35-40 |
| at least one local audio device receiver for receiving... digital data, time data... | The PDR includes a "time code sync port" alleged to function as the local audio device receiver. | ¶14 | col. 9:1-2 |
| at least one audio input port for receiving said locally generated audio... | The PDR includes an "audio input" port. A YouTube video is cited showing a microphone connected to the PDR for local recording. | ¶14, ¶20 | col. 9:3-4 |
| at least one memory | The PDR includes a microSD card slot for memory storage. | ¶14 | col. 9:6-12 |
| at least one control unit... for creating local audio data... and storing said... data | The PDR includes a "processing unit" for creating stamped local audio data in the form of ".wav" files and storing them on the microSD card. | ¶14 | col. 9:10-20 |
| wherein said local audio data may be retrieved... and combined with... remotely recorded data | The complaint alleges that the locally recorded data from the PDR "is capable of being retrieved and combined with locally generated audio that is remotely recorded." | ¶14 | col. 23:40-42 |
'814 Patent Infringement Allegations
| Claim Element (from Original Independent Claim 1) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| a system for recording locally generated audio... | The PDR and its accessories are alleged to form an infringing system. | ¶28 | col. 1:15-16 |
| at least one master timecode generator for generating a plurality of master timecodes | The system operates with an external timecode source, which serves as the master timecode generator. | ¶28 | col. 2:13-15 |
| at least one local audio device wearable by a creator of said locally generated audio... | The PDR is a local audio device that is wearable by a performer. | ¶14 | col. 2:35-36 |
| at least one local timecode generator for generating a plurality of local timecodes | The PDR includes a "clock (i.e., a timecode generator)" that is alleged to be the local timecode generator. | ¶14 | col. 2:39-40 |
| at least one control unit... for creating stamped local audio data... | The PDR's processing unit creates stamped local audio data in the form of ".wav" files. | ¶14 | col. 2:41-45 |
| wherein the stamped local audio data includes at least one local timestamp... to at least one of the local timecodes | The ".wav" files created by the PDR are alleged to be time-stamped based on the device's internal timecode generator. | ¶14 | col. 2:45-48 |
Identified Points of Contention
- Validity: The most significant issue is the validity of the asserted claims. Post-filing IPR proceedings resulted in the cancellation of every claim asserted in the complaint across all three patents. This raises the threshold question of whether Plaintiff has a viable cause of action based on the original complaint.
- Scope Questions: Assuming the case were to proceed on amended or substitute claims, a potential dispute may arise over whether the PDR’s "time code sync port" meets the definition of a "local audio device receiver," which the patent specifies is for receiving not only timecodes but also "digital commands" and "non-local audio data." (’902 Patent, col. 23:43-45).
- Technical Questions: A key technical question is whether the PDR is merely a standalone recorder with a timecode input, or if it functions as an integrated component of a system for the specific purpose of repairing a remote recording, as taught by the patents. The complaint alleges the PDR's data is "capable" of being combined, but does not allege that Lectrosonics provides a system to perform the patented combination and repair functions. (Compl. ¶14).
V. Key Claim Terms for Construction
The Term: "local audio device receiver"
- Context and Importance: This term is central to defining the architecture of the claimed device. The complaint maps this term to the PDR's "time code sync port." (Compl. ¶14). The construction will determine if a component that only receives timecode signals can satisfy a limitation that, in some embodiments, describes a more complex transceiver component.
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The specification describes "local receiver 302" as receiving "non-audio information (e.g., time reference signals, digital commands, audio, etc.)." (’902 Patent, col. 9:53-56). The use of "e.g." and "or" could support an interpretation where receiving only a subset of these, such as time reference signals, is sufficient.
- Evidence for a Narrower Interpretation: The detailed embodiments describe the receiver as part of an integrated system where it receives complex digital commands from a remote control unit (RCU 104) to control functions like playback and recording. (’902 Patent, col. 4:43-48). This may support a narrower construction requiring capabilities beyond just receiving a timecode signal.
The Term: "stamped local audio data"
- Context and Importance: The infringement theory depends on the PDR creating audio files that meet this limitation. Practitioners may focus on this term because its construction will determine whether the PDR's method of generating time-coded ".wav" files performs the specific time-referencing function required by the claims. (Compl. ¶14).
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The specification states that a timestamp is "information stored with an audio sample or audio file conveying the time at which the audio sample or first audio sample of the file occurred." (’814 Patent, col. 4:17-20). This broad language could be argued to cover any file where time information is associated with the audio data.
- Evidence for a Narrower Interpretation: The patent describes a specific technical implementation where the "stamped" data results from a local timecode generator that is actively synchronized with a master timecode generator via a feedback loop. (’814 Patent, col. 11:1-20, Fig. 5). This could support a narrower interpretation requiring this active synchronization process, not just the presence of a timestamp in a file.
VI. Other Allegations
Indirect Infringement
- The complaint alleges that Lectrosonics induces infringement by providing instructional materials, including user manuals and YouTube videos, that teach customers to use the PDR in an infringing manner, such as by connecting it to an external timecode source to create time-synced local recordings. (Compl. ¶20, ¶28, ¶37). For the ’814 Patent, the complaint also alleges contributory infringement, asserting the PDR is a material component of an infringing system and that its time code sync port is not a staple article of commerce with substantial non-infringing uses. (Compl. ¶29).
Willful Infringement
- Willfulness is alleged for all three patents. The allegations are based on pre-suit knowledge of the patents via notice letters sent on December 23, 2013 (for the '902 and '814 patents) and March 20, 2017 (for the '307 patent). (Compl. ¶16, ¶25, ¶34, ¶42).
VII. Analyst’s Conclusion: Key Questions for the Case
- A dispositive issue for the case as filed will be one of claim validity: given that every asserted claim across all three patents was cancelled in post-filing inter partes review proceedings, a threshold question is whether Plaintiff can maintain its action based on the allegations in the original complaint.
- Should the case proceed, a central infringement dispute will be one of system scope: does the accused PDR, alleged to be a wearable recorder with a timecode input, constitute a component of the claimed "system" for automatically repairing a remote recording, or is there a fundamental architectural and functional mismatch between the accused product and the patented invention?
- A key evidentiary question will be one of technical operation: does the PDR's function of creating a time-stamped ".wav" file perform the specific, synchronized time-stamping required by the claims—particularly the active synchronization via a feedback loop taught in the '814 patent—or is it a generic feature that operates differently from the claimed solution?