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2020 Pat. App. LEXIS 2043

Patent Trial and Appeal Board Representative Orders, Decisions and Notices

                              January 24, 2020, Decided

  IPR2018-01129, Paper 33 ; Patent 7,929,902 B2

USPTO Bd of Patent Appeals & Interferences; Patent Trial & Appeal Bd Decs.

Opinion

                  DESHPANDE, Administrative Patent Judge.

                    JUDGMENT

                    Final Written Decision Determining All Challenged Claims Unpatentable Granting Patent Owner's Motion to Amend

                                                                                                              35 U.S.C. § 318(a)                                                                                               

                    I. INTRODUCTION

                                                              A. Background                                                     

                    Lectrosonics, Inc. ("Petitioner") filed a Petition requesting an inter partes review of claims 7, 8, 11, 12, 14, and 15 of U.S. Patent No. 7,929,902 B2 (Ex. 1001, "the '902 patent "). Paper 2 ("Pet."). Zaxcom, Inc. ("Patent Owner") filed a Preliminary Response. Paper 11 ("Prelim. Resp.").

                    On January 24, 2019, we issued a Decision ordering that "an inter partes review of claims 7, 8, 11, 12, 14, and 15 of the '902 patent is hereby instituted with respect to all grounds set forth in the Petition." Paper 12 ("Dec."). After institution, Patent Owner filed a Patent Owner's Response (Paper 17, "PO Resp.") and a Patent Owner's Contingent Motion to Amend (Paper 16, "PO MTA"). In reply, Petitioner filed a Petitioner's Reply to Patent Owner's Response (Paper 21, "Pet. Reply") and a Petitioner's Opposition to Motion to Amend (Paper 22, "Pet. Opp. to MTA"). In response, Patent Owner filed a Patent Owner's Sur-Reply (Paper 24, "PO Sur-Reply") and a Patent Owner's Reply in Support of Motion to Amend (Paper 25, "PO Reply to Opp. to MTA"). In reply, Petitioner filed a Petitioner's Sur-Reply in Opposition to Patent Owner's Motion to Amend (Paper 27, "Pet. Sur-Reply to Opp. to MTA"). Patent Owner and Petitioner presented oral arguments on October 25, 2019, and a transcript has been entered into the record. Paper 32 ("Tr.").

                    The Board has jurisdiction under 35 U.S.C. § 6. In this Final Written Decision, after reviewing all relevant evidence and arguments, we determine that Petitioner has met its burden of showing, by a preponderance of the evidence, that claims 7, 8, 11, 12, 14, and 15 of the '902 patent are unpatentable. We further determine that Petitioner has not met its burden of showing, by a preponderance of the evidence, that proposed substitute claims 21-26 are unpatentable.

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2020 Pat. App. LEXIS 2043

  LECTROSONICS, INC., ; Petitioner, ; v. ; ZAXCOM, INC., ; Patent Owner.

Notice:

            

               PRECEDENTIAL OPINION. PURSUANT TO THE PATENT TRIAL AND APPEAL BOARD STANDARD OPERATING PROCEDURE 2, THE OPINION BELOW HAS BEEN DESIGNATED AN PRECEDENTIAL OPINION.

            

               This decision determines that the challenged claims are unpatentable because the Patent Owner did not establish a nexus between the claims and objective evidence of non-obviousness. This decision determines, however, that the Patent Owner’s amended claims are patentable because the Patent Owner did establish a nexus to objective evidence of non-obviousness, including long-felt need and industry praise.

         

CORE TERMS

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