Rode Microphones LLC v. Zaxcom Inc

1. Case Identification

• Case #: IPR2025-00557
• Patent #: 12,051,444
• Filed: February 7, 2025
• Petitioner(s): Rode Microphones, LLC and Freedman Electronics Pty Ltd
• Patent Owner(s): Zaxcom, Inc.
• Challenged Claims: 1-7, 9-10, 12-20, 22-24, 26, 27

2. Patent Overview

• Title: Wireless Audio Recording and Transmission System
• Brief Description: The ’444 patent describes a system featuring a wearable local audio device that records locally generated audio. The device receives a master timecode, uses it to create time-referenced audio data, stores this data in local memory, and simultaneously transmits the audio to a remote device.

3. Grounds for Unpatentability

Ground 1: Obviousness over Strub and Woo - Claims 1-7, 9-10, 13-15, 17-20, 22-23, and 27 are obvious over Strub in view of Woo.

• Prior Art Relied Upon: Strub (Patent 6,825,875) and Woo (Patent 5,479,351).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner argued that Strub taught a system of wearable recording units that locally store generated audio and wirelessly transmit it to other units. These units function as both local devices and remote receivers, can be worn by performers, and include components like memory, transmitters, receivers, and processors. Strub also taught time-stamping recorded data using a clock synchronized by a master recording unit. Woo taught a multi-recorder system that uses a GPS-based master timecode generator to create and distribute standardized, SMPTE-compatible timecodes for accurately synchronizing recordings. Petitioner contended that the combination of Strub's wearable system with Woo's superior timecode generation and synchronization method met all limitations of independent claims 1 and 13.
  • Motivation to Combine: A Person of Ordinary Skill in the Art (POSA) would combine these references to solve the known problem of synchronizing recordings from multiple wireless devices. A POSA would incorporate Woo’s accurate, standardized GPS and SMPTE-based timecode synchronization into Strub’s wearable multi-recorder system to gain the predictable benefits of improved timing accuracy and interoperability. Petitioner also asserted that Patent Owner is collaterally estopped from disputing this motivation due to prior adverse findings in the related Lectrosonics inter partes reviews (IPRs).
  • Expectation of Success: A POSA would have a high expectation of success, as the combination involved applying a known synchronization technique (Woo) to a known type of system (Strub) using standard, off-the-shelf components to achieve a predictable improvement.

Ground 2: Obviousness over Strub, Woo, Nagai, and Gleissner - Claims 12 and 26 are obvious over Strub and Woo in view of Nagai and/or Gleissner.

• Prior Art Relied Upon: Strub (Patent 6,825,875), Woo (Patent 5,479,351), Nagai (Application # 2002/0159179), and Gleissner (Application # 2004/0028241).
• Core Argument for this Ground:
  • Prior Art Mapping: This ground built upon the combination of Strub and Woo to address the additional limitation of claims 12 and 26: a local audio device comprising "at least one audio input configured to receive the local audio data." While Strub taught an internal microphone, Nagai and Gleissner were cited for their explicit disclosure of portable audio recorders with standard, detachable audio inputs. Nagai taught a "mike jack," and Gleissner taught a standard XLR connector for attaching various external microphones.
  • Motivation to Combine: A POSA would be motivated to modify the Strub/Woo system by incorporating a standard audio input jack as taught by Nagai or Gleissner. This modification would provide the well-known advantage of allowing users to easily swap different types of commercially available microphones to suit various recording applications, a common and obvious design choice for improving versatility.
  • Expectation of Success: Success would be highly likely, as adding a standard, well-understood audio connector to a portable recording device was a routine and predictable engineering task.

Ground 3: Obviousness over Strub, Woo, and Samadani - Claims 16 and 24 are obvious over Strub and Woo in view of Samadani.

• Prior Art Relied Upon: Strub (Patent 6,825,875), Woo (Patent 5,479,351), and Samadani (Application # 2004/0267387).
• Core Argument for this Ground:
  • Prior Art Mapping: This ground addressed the limitation in claims 16 and 24 requiring the "remote control unit is a personal computer." The base combination of Strub and Woo provided the core system with a remote control unit. Samadani was introduced for its teaching that components of a media recording system, including the central processing station (the remote receiver/controller), can be implemented on a personal computer featuring a graphical user interface (GUI) for control.
  • Motivation to Combine: A POSA would be motivated to implement Strub’s remote control unit as a personal computer, as taught by Samadani. This would leverage the significant benefits of using standard hardware and software, including the convenience and flexibility of a GUI for system configuration and the cost savings in development and components.
  • Expectation of Success: A POSA would have a high expectation of success in using a personal computer to control a recording system, as this was a common and well-understood implementation that yielded predictable results.

4. Arguments Regarding Discretionary Denial

• Petitioner argued that discretionary denial under 35 U.S.C. §325(d) is unwarranted because the key prior art references and combinations asserted in the petition were not substantively considered by the USPTO during prosecution. It was argued that the references were either not before the examiner (Samadani) or were merely listed in an Information Disclosure Statement without evidence of meaningful review.
• Petitioner further argued against discretionary denial under Fintiv factors, stating that the co-pending district court litigation is in its early stages with minimal investment and no trial date set. A Final Written Decision (FWD) from the IPR would issue long before any potential trial, promoting efficiency and conserving resources.

5. Relief Requested

• Petitioner requests institution of an inter partes review and cancellation of claims 1-7, 9-10, 12-20, 22-24, 26, and 27 of Patent 12,051,444 as unpatentable.