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: Dematteo Law, PLLC
• Case Identification: 1:17-cv-03408, E.D.N.Y., 06/06/2017
• Venue Allegations: Plaintiff alleges venue is proper because Defendant conducts regular business in the district, is subject to personal jurisdiction there, and has offered for sale and sold the accused products in the district through its own website and third-party distributors like Amazon.com.
• Core Dispute: Plaintiff alleges that Defendant’s Portable Digital Audio Recorder infringes patents related to wireless multi-track audio recording systems that locally record audio to prevent data loss from transmission errors.
• Technical Context: The technology addresses the need for reliable audio capture in professional film and television production, where multiple wireless bodypack microphones are used simultaneously and signal dropouts can lead to the loss of irreplaceable audio takes.
• Key Procedural History: The complaint alleges Defendant had notice of U.S. Patent Nos. 7,929,902 and 8,385,814 as of December 23, 2013, and of U.S. Patent No. 9,336,307 as of March 20, 2017. The complaint also references a prior lawsuit filed by Zaxcom against Lectrosonics in the District of New Jersey on April 25, 2017. Subsequent to the filing of this complaint, all asserted claims of the three patents-in-suit were cancelled in Inter Partes Review (IPR) proceedings (IPR2018-01129, IPR2018-01130, IPR2018-00972) and replaced with substitute claims. This procedural history suggests that the focus of the dispute, should it proceed, would shift to the scope and infringement of these substitute claims rather than the claims originally asserted in this complaint.

Case Timeline

Date	Event
2005-07-14	Earliest Priority Date for ’902, ’814, and ’307 Patents
2011-04-19	’902 Patent Issued
2013-02-26	’814 Patent Issued
2013-12-23	Alleged Notice of ’902 and ’814 Patents to Defendant
2016-05-10	’307 Patent Issued
2017-03-20	Alleged Notice of ’307 Patent to Defendant
2017-04-25	Prior Zaxcom v. Lectrosonics action filed in D.N.J.
2017-06-06	Complaint Filing Date

II. Technology and Patent(s)-in-Suit Analysis

U.S. Patent No. 7,929,902 - "VIRTUAL WIRELESS MULTITRACK RECORDING SYSTEM"

The Invention Explained

• Problem Addressed: In professional audio settings like film production, wireless microphone systems are prone to transmission errors, such as signal dropouts or interference, which can result in the permanent loss of recorded audio. (’902 Patent, col. 1:53-col. 2:6).
• The Patented Solution: The patent describes a system where each performer is equipped with a wearable "local audio device" that both wirelessly transmits audio to a central recorder and simultaneously records the same audio to a local memory. (’902 Patent, Abstract). This local recording, which is time-stamped, serves as a backup, allowing any audio lost during transmission to be recovered from the local device and inserted into the main recording during post-production. (’902 Patent, col. 4:26-37).
• Technical Importance: This dual record-and-transmit architecture provides a robust failsafe against data loss, which is critical in high-stakes recording environments where reshooting scenes is costly or impossible. (’902 Patent, col. 4:57-67).

Key Claims at a Glance

• The complaint asserts independent claims 7 (system) and 12 (method), along with dependent claim 11 (Compl. ¶37).
• Independent Claim 7 (System) requires:
  • A master timecode generator.
  • A wearable local audio device that includes: a receiver for master timecodes and commands, an audio input port, a memory, a local timecode generator, and a control unit that creates and stores timestamped local audio data.
• Independent Claim 12 (Method) requires:
  • Locally receiving audio from a performer.
  • Wirelessly transmitting the local audio.
  • Locally recording the audio into the device's memory.
  • Remotely recording the transmitted audio.
  • Retrieving a portion of the locally recorded audio and combining it with the remotely recorded audio to repair any data loss.

U.S. Patent No. 8,385,814 - "VIRTUAL WIRELESS MULTITRACK RECORDING SYSTEM"

The Invention Explained

• Problem Addressed: As a continuation of the '902 Patent, the '814 patent addresses the same fundamental problem of data loss in wireless multi-track audio recording. (’814 Patent, col. 1:52-col. 2:11).
• The Patented Solution: The invention again employs wearable local audio devices that simultaneously transmit and record. This patent elaborates on the data management aspect, specifically teaching the inclusion of "identifiers" with the locally recorded audio data. (’814 Patent, Abstract). These identifiers can specify the track, the local audio device, or the performer, simplifying the process of organizing and synchronizing audio from multiple sources in post-production. (’814 Patent, col. 2:38-41; col. 7:10-15).
• Technical Importance: By adding structured identifiers to the timestamped local recordings, the invention aims to streamline the complex post-production workflow of combining audio from numerous separate sources into a single, synchronized multi-track file. (’814 Patent, col. 7:25-33).

Key Claims at a Glance

• The complaint asserts independent claims 1, 15, 31, and 41, among others (Compl. ¶28).
• Independent Claim 1 (System) requires:
  • A system with a master timecode generator and a wearable local audio device.
  • The local device creates and stores "stamped local audio data" that includes a local timestamp referencing a local timecode.
  • The stamped data must also include an "identifier" (e.g., track, device, performer).
• Independent Claim 31 (System) requires:
  • A system with a master timecode generator and a wearable local audio device.
  • The local device creates "stamped local audio data" that includes a first timestamp referencing a master timecode.

U.S. Patent No. 9,336,307 - "VIRTUAL WIRELESS MULTITRACK RECORDING SYSTEM"

Technology Synopsis

Continuing the same patent family, this invention also addresses data loss in wireless audio recording by using local, wearable recorders. The solution described in this patent further refines the time-stamping process, teaching a system where the local audio data includes at least two timestamps that reference at least two master timecodes, which may allow for more accurate synchronization or interpolation of the audio data in post-production. (’307 Patent, col. 2:28-34).

Asserted Claims

Claims 1-10 are asserted, with Claim 1 being the sole independent claim (Compl. ¶19).

Accused Features

The complaint alleges that the Lectrosonics PDR, a wearable local recorder, infringes by embodying the claimed system, particularly its method of creating and storing timestamped local audio data (Compl. ¶14, ¶19).

III. The Accused Instrumentality

Product Identification

The accused products are the Lectrosonics Portable Digital Audio Recorder (“PDR”) and its 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 designed for professional use (Compl. ¶14). Its key alleged functionalities include a "time code sync port" for receiving timecode, an audio input, a microSD card for memory, an internal clock functioning as a timecode generator, and a processing unit that creates timestamped ".wav" audio files (Compl. ¶14).
• 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" (Compl. ¶14). It further alleges the PDR allows users to assign unique alphanumeric names to recording files (Compl. ¶14).
• The complaint positions the PDR as a direct competitor to Zaxcom's own TRX series transmitter products in the professional audio market (Compl. ¶13).

IV. Analysis of Infringement Allegations

The complaint references preliminary claim charts in Exhibits F, I, and J, which were not attached to the publicly filed document. Therefore, the infringement allegations are summarized in prose based on the complaint's narrative.

’902 Patent Infringement Allegations

The complaint alleges that Lectrosonics induces infringement of claims 7, 11, and 12 by instructing customers to use the PDR in an infringing manner (Compl. ¶37, ¶39). The core of the theory is that the PDR constitutes the claimed "local audio device" and that customers, following instructions from Lectrosonics, combine it with an external time code source to create the infringing system and perform the infringing method (Compl. ¶37). Exhibit H is cited as a screen capture from a YouTube video demonstrating how to connect the accused PDR to a time code source for receiving a time code (Compl. ¶37). This visual evidence is used to support the allegation that Lectrosonics teaches users how to assemble the infringing system.

’814 Patent Infringement Allegations

The complaint alleges indirect infringement of claims including 1, 15, and 31, based on theories of inducement and contributory infringement (Compl. ¶28, ¶29). The infringement theory alleges that the PDR is a "material component" of an infringing system and that its "time code sync port" has the "sole purpose" of connecting to a timecode generator in an infringing manner (Compl. ¶29). The PDR's ability to assign file names is mapped to the "identifier" limitation of claim 1 (Compl. ¶14). The complaint again cites instructional materials, including product web pages and a YouTube demo, as evidence that Lectrosonics instructs users on how to combine and use the PDR in a way that infringes (Compl. ¶28).

Identified Points of Contention

• Scope Questions: A central issue for claim construction may be whether the PDR's "time code sync port" meets the claim limitation of a "local audio device receiver." The patent specifications describe this receiver in the context of a wireless RF component that can receive audio, commands, and timecodes, which raises the question of whether a wired port that only receives a timecode signal falls within the scope of the claims. (’902 Patent, Fig. 3A, col. 9:47-50).
• Technical Questions: A factual question for infringement of the '814 Patent is whether the PDR's function of allowing a user to "assign a unique alpha numeric identifier/name to file names" (Compl. ¶14) satisfies the claim requirement for an "identifier selected from the group consisting of track identifiers, local audio device identifiers, performer identifiers, and combinations thereof." (’814 Patent, col. 2:38-41). The analysis may turn on whether a simple filename constitutes the specific, structured identifier contemplated by the patent specification.

V. Key Claim Terms for Construction

• The Term: "local audio device receiver" (from ’902 Patent, Claim 7; ’814 Patent, Claim 1)
• Context and Importance: This term is a foundational element of the claimed "local audio device." The complaint maps this element to the accused PDR’s "time code sync port" (Compl. ¶14). The construction of this term is therefore critical to determining whether the accused product meets a core limitation of the asserted system claims.
• Intrinsic Evidence for Interpretation:
  • Evidence for a Broader Interpretation: The claim language itself does not restrict the "receiver" to being wireless. The specification states the receiver is for "receiving at least one of the group consisting of digital commands, master timecodes, and non-local audio data," functions which could arguably be performed by a wired port. (’902 Patent, col. 2:15-18).
  • Evidence for a Narrower Interpretation: The specification's primary embodiment shows the "Local Receiver" (302) as a distinct wireless component for receiving RF signals, separate from other inputs. (’902 Patent, Fig. 3A). The description of the receiver as part of a "RadioWire® transceiver" could support an argument that the term implies wireless capability beyond that of a simple wired sync port. (’902 Patent, col. 9:3-4).

VI. Other Allegations

Indirect Infringement

The complaint heavily emphasizes indirect infringement. For all three patents, it alleges inducement based on Defendant’s promotional and instructional materials, including YouTube videos, product data sheets, and user manuals, which allegedly instruct end-users to combine and operate the PDR in an infringing manner (Compl. ¶20, ¶28, ¶37). For the ’814 Patent, it also alleges contributory infringement, asserting the PDR is a material, non-staple component whose "time code sync port" has the sole purpose of being used in an infringing system (Compl. ¶29).

Willful Infringement

Willfulness is alleged for all three patents. The claim is based on alleged pre-suit knowledge from notice letters sent in December 2013 and March 2017, as well as knowledge from a prior lawsuit filed in April 2017 (Compl. ¶16, ¶21, ¶25, ¶34, ¶42).

VII. Analyst’s Conclusion: Key Questions for the Case

• A threshold issue for the entire case is the impact of the post-filing IPR proceedings. Because all claims originally asserted in this 2017 complaint were subsequently cancelled and replaced by new substitute claims, the central legal and factual questions will revolve around the scope and infringement of these new claims, not the ones analyzed here.
• A key claim construction dispute will concern the scope of "local audio device receiver." The court's determination of whether this term can be read to cover a wired timecode input port, as opposed to the wireless RF receiver depicted in the patent's embodiments, will be a critical factor in the infringement analysis.
• A central evidentiary question for the indirect infringement claims will be whether Plaintiff can prove Defendant possessed the specific intent to encourage infringement. This will require analyzing whether Defendant's instructional materials merely explain the features of the PDR or actively teach users to assemble and operate it in a configuration that satisfies every limitation of the asserted claims.