Nexus Required for Objective Indicia, PTAB Litigation Blog

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In a recent precedential decision, the PTAB emphasized that objective indicia of nonobviousness must have a nexus to the claimed invention. Lectrosonics, Inc. v. Zaxcom, Inc., No. IPR2018-01129, Paper 33 (P.T.A.B. Jan. 24, 2020) (designated as precedential Apr. 14, 2020). The PTAB instituted Lectrosonics’s petition seeking IPR of U.S. Patent No. 7,929,902 B2 (“the ’902 patent”), a Zaxcom-owned patent that is directed to a system for recording live audio to a wearable local device. Zaxcom filed a Patent Owner Response and a Contingent Motion to Amend the claims in the event that they were found unpatentable. In its Patent Owner Response, Zaxcom argued that objective indicia of nonobviousness—including long-felt need, failure of others, and industry praise of the invention—support its argument that the claims were not obvious. The PTAB analyzed Zaxcom’s objective evidence in view of the original and contingently amended claims. Regarding the original claims, the PTAB found that Zaxcom failed to show the requisite nexus between its alleged indicia of nonobviousness and the merits of the claimed invention, but it reached the opposite conclusion for the amended claims.

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