Shure Incorporated et al v. Clearone, Inc.

Filing 359

REPORT AND RECOMMENDATION regarding claim construction. Please note that when filing Objections pursuant to Federal Rule of Civil Procedure 72(b)(2), briefing consists solely of the Objections (no longer than ten (10) pages) and the Response to the Objections (no longer than ten (10) pages). No further briefing shall be permitted with respect to objections without leave of the Court. Objections to R&R due by 10/29/2020. Signed by Judge Christopher J. Burke on 10/15/2020. (mlc)

IN THE UNITED STATES DISTRICT COURT
FOR THE DISTRICT OF DELAWARE
SHURE INCORPORATED and
SHURE ACQUISITION HOLDINGS, INC.,
Plaintiffs,
v.
CLEARONE, INC.,
Defendant.

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Civil Action No. 19-1343-RGA-CJB

REPORT AND RECOMMENDATION
In this action filed by Plaintiffs Shure, Inc. and Shure Acquisition Holdings, Inc.
(collectively “Plaintiffs” or “Shure”) against Defendant ClearOne, Inc. (“Defendant” or
“ClearOne”), presently before the Court is the matter of claim construction. The Court
recommends that the District Court adopt the construction set forth below.
I.

BACKGROUND
Shure and ClearOne are competitors in the installed audio-conferencing market. (D.I. 64

at ¶¶ 14-15; see also D.I. 22 at 1; D.I. 40 at 1) On July 18, 2019, Shure filed the instant action
against ClearOne in this Court. (D.I. 1) 1 On November 19, 2019, Shure filed the operative
Second Amended Complaint (“SAC”), in which it first asserted the patent at issue in this Report
and Recommendation, United States Design Patent No. D865,723 (the “'723 patent”). (D.I. 64)
The '723 patent is entitled “Array Microphone Assembly” and it issued on November 5,
2019. (D.I. 239, ex. 1 (hereinafter, “'723 patent”)) It is a continuation of a parent application
filed on April 30, 2015, which matured into U.S. Patent No. 9,565,493 (the “'493 patent”). (Id.

1

The parties have also been involved in litigation against each other in the United
States District Court for the Northern District of Illinois since April 2017. (See D.I. 155 at 2-3)

at 1-2; id., ex. 4 at 1 (hereinafter, “'493 patent”)) 2 Further details concerning the '723 patent will
be addressed below in Section III.
On June 24, 2020, the parties filed their joint claim construction brief for the '723 patent.
(D.I. 238) 3 The Court conducted a Markman hearing by video conference on July 28, 2020.
(D.I. 327 (hereinafter, “Tr.”))
II.

STANDARD OF REVIEW
Generally, a “‘utility patent’ protects the way an article is used and works (35 U.S.C. [§]

101), while a ‘design patent’ protects the way an article looks (35 U.S.C. [§] 171).” MPEP §
1502.01 (9th ed. Rev. Jan. 2018); see also L.A. Gear, Inc. v. Thom McAn Shoe Co., 988 F.2d
1117, 1123 (Fed. Cir. 1993). A design patent may be obtained for “any new, original and
ornamental design for an article of manufacture[.]” 35 U.S.C. § 171; Durling v. Spectrum
Furniture Co., 101 F.3d 100, 103 (Fed. Cir. 1996). Only the novel, ornamental features of the
patented design are protected by a design patent. OddzOn Prods., Inc. v. Just Toys, Inc., 122
F.3d 1396, 1405 (Fed. Cir. 1997). The scope of a design patent does not extend to any functional
elements. Richardson v. Stanley Works, Inc., 597 F.3d 1288, 1293-94 (Fed. Cir. 2010) (“[A]
design patent, unlike a utility patent, limits protection to the ornamental design of the article.”).
A design feature is functional, inter alia, “if it is essential to the use or purpose of the article[.]”

2

The '493 patent, a utility patent, is entitled “Array Microphone System and
Method of Assembling the Same.” ('493 patent) Shure asserts infringement of the '493 patent in
this action. (D.I. 64 at ¶¶ 26-41) However, the case as to the '493 patent is currently stayed,
pending completion of an inter partes review proceeding involving that patent. (D.I. 53; D.I.
326)
3

The Court has been referred the instant case for all purposes, up through the case
dispositive motions deadline, by United States District Judge Richard G. Andrews. (D.I. 9)
2

Amini Innovation Corp. v. Anthony Cal., Inc., 439 F.3d 1365, 1371 (Fed. Cir. 2006); see also
L.A. Gear, Inc., 988 F.2d at 1123.
Just as with utility patents, determining whether a design patent claim has been infringed
first requires that the claim be properly construed, in order to determine its meaning and scope.
Lanard Toys Ltd. v. Dolgencorp LLC, 958 F.3d 1337, 1341 (Fed. Cir. 2020). Claim construction
is a question of law. Markman v. Westview Instruments, Inc., 52 F.3d 967, 979 (Fed. Cir. 1995).
Because it is difficult to describe ornamental designs with words, a design patent’s claim
is typically better represented by illustrations instead of a written claim construction. Sport
Dimension, Inc. v. Coleman Co., Inc., 820 F.3d 1316, 1320 (Fed. Cir. 2016); see also Crocs, Inc.
v. Int’l Trade Comm’n, 598 F.3d 1294, 1302 (Fed. Cir. 2010) (“Depictions of the claimed design
in words can easily distract from the proper infringement analysis of the ornamental patterns and
drawings.”). However, a district court may utilize claim construction to provide guidance to the
finder of fact with respect to issues that bear on claim scope. Sport Dimension, Inc., 820 F.3d at
1320; see also Richardson, 597 F.3d at 1293. For example, while design patents “‘typically are
claimed as shown in drawings’” the United States Court of Appeals for the Federal Circuit has
instructed that “it can be helpful to ‘distinguish[] between those features of the claimed design
that are ornamental and those that are purely functional.’” Lanard, 958 F.3d at 1342 (quoting
Egyptian Goddess, Inc. v. Swisa, Inc., 543 F.3d 665, 679-80 (Fed. Cir. 2008)). Indeed, if a
design patent contains both functional and non-functional elements, the scope of the claim must
be construed to identify the non-functional aspects of the design as shown in the patent. Id. The
Federal Circuit has also explained that it can be helpful to point out “various features of the
claimed design as they relate to the accused design and the prior art.” Id. (internal quotation
marks and citation omitted).

3

Additional principles of design patent claim construction will be addressed below in
Section III, to the extent they are relevant to the Court’s decision herein.
III.

DISCUSSION
The parties’ competing proposed claim constructions present three different disputes for

the Court to resolve. In addition to those claim construction-related disputes, ClearOne also
argues that the '723 patent is indefinite and not enabled under 35 U.S.C. § 112. The Court will
first take up the claim construction-related disputes, and will then turn to definiteness- and
enablement-related issues.
A.

Claim Construction

The '723 patent recites one claim: “[t]he ornamental design for an array microphone
assembly, as shown and described” in six figures. ('723 patent at 1, 9-13) Figure 1 is a “front,
top, right perspective view of an array microphone assembly, showing the new design;” Figure 2
is a “rear, bottom, left perspective thereof;” Figure 3 is a “top plan view thereof;” Figure 4 is a
“bottom plan view thereof;” Figure 5 is a “front view thereof;” and Figure 6 is a “left side view
thereof.” (Id. at 1)
While Shure wishes for a “relatively simple” claim construction that focuses on the
patent’s figures, (Tr. at 20-21), ClearOne requests that the Court provide a detailed verbal
description delineating the scope of the '723 patent claim, (id. at 36). The parties’ respective
proposed constructions for the sole claim of the '723 patent are set out in the chart below:
Claim
“The ornamental design for
an array microphone
assembly, as shown and
described”

Shure’s Proposed
Construction
“The ornamental design for
an array microphone
assembly, as shown in the
solid lines and associated
claimed surfaces of Figures
1-6 and described in the
4

ClearOne’s Proposed
Construction
“Indefinite. The scope of the
claim is not clear with
reasonable certainty because
the ordinary observer would
have no way of resolving the
differences between Figure 2

specification of the '723
patent.
The Claimed Design should
be considered as a whole and
the broken lines in Figures 16 of the '723 patent form no
part of the Claimed Design.
No features of the Claimed
Design are purely functional
and/or dictated solely by
function, thus all features of
the Claimed Design have
ornamental design elements
and should be included in the
claim construction.”

(showing and claiming a
pattern of sixteen slots around
the periphery of the back
panel) and Figure 4 (showing
and claiming a square shaped
back panel with no slots
around the periphery).
To the extent the claim can be
construed, the Court should
determine that the thin,
square shape of the claimed
array microphone assembly
design is functional because,
as the array microphone
assembly is intended to
replace a standard ceiling tile,
the thin, square shape of the
claimed array microphone
assembly is dictated by the
shape of a standard ceiling
tile.
To the extent the claim can be
construed, the Court should
also determine that the extent
to which the front face of
Shure’s design (as depicted in
Figure 3) looks like prior art
ceiling vents is functional,
because that allowed the
claimed device to blend
invisibly into a drop ceiling
by adopting an air-and-sound
passing form with which
people were already familiar.
To the extent the claim can be
construed, the Court should
also account in its claim
construction for the fact that
numerous pieces of prior art,
including ceiling speaker
prior art and HVAC prior art,
feature the same thin, square
shape as that shown in the

5

claimed design, as well as the
same perforated metal grille,
both with a white frame and
without, as depicted in the
tables on pages 34 and 40 of
the Joint Claim Construction
Brief.
To the extent the claim can be
construed, Defendant agrees
with Plaintiff that the broken
lines in Figures 1-6 of the
D'723 patent form no part of
the claimed design.”
(D.I. 280 at 1-2)
The Court will take up in turn the parties’ three disputes regarding the scope of the design
claimed in the '723 patent.
1.

Is the thin, square shape of the claimed design dictated by function,
and if so, how should the Court account for that in its claim
construction?

ClearOne first argues that the claim of the '723 patent should be construed to exclude the
“‘thin, square shape’” of the claimed design because these “are purely functional aspects dictated
by the goal of allowing an embodying device to be installed in a standard ceiling grid in place of
a standard ceiling tile.” (D.I. 238 at 70-72; see also id. at 31-39; Tr. at 77-90) Shure’s primary
arguments in response are that: (1) ClearOne’s position is flawed because it presumes that
“allowing an embodying device to be installed in a standard ceiling grid in place of a standard
ceiling tile” is actually a function that the '723 patent aims to serve, when in fact, that is not
correct; and (2) there is at least one other alternative design (the “Sennheiser TeamConnect” or
the “Sennheiser TC2”) that accomplishes the same underlying function but looks different than
the claimed design, which shows that the thin, square shape of the claimed design is not purely
functional. (D.I. 238 at 52-54; Tr. at 25-26, 34-35) Further, Shure asserts that even if the Court
6

concludes that the scope of the claimed design is limited due to the functional nature of its thin,
square shape, the Court should not “eliminate[]” any such functional elements in the claim
construction process; instead, Shure argues the Court should simply limit the scope of the
claimed design “to the overall ornamental visual impression as shown and described in the '723
patent.” (D.I. 238 at 11 (emphasis omitted), 51, 56; Tr. at 30-34)
The first step is for the Court to assess whether (as ClearOne claims) a function of the
claimed design is to replace a standard ceiling tile in a standard ceiling grid. In disagreeing with
this premise, Shure contends that the article of manufacture at issue is an array microphone
assembly, and that its sole intended function is “receiving and transmitting sound.” (D.I. 238 at
54 (emphasis omitted))
The Court agrees with ClearOne. Now, to be sure, the '723 patent does not state in
writing that the function of the claimed design is to replace a standard ceiling tile, and the
patent’s figures do not depict the claimed design being mounted in a standard ceiling grid. (See
id.; Tr. at 21, 39-45) That said, the '723 patent: (1) depicts the claimed design as a square; (2)
illustrates a design that looks, facially, as if it could replace a standard ceiling tile; and (3) is
replete with citations to relevant prior art that relate to ceiling tiles, ceiling microphones or flushmounted ceiling microphones. ('723 patent) And the '493 patent, to which the '723 patent claims
priority, describes and claims, inter alia, housing for an array microphone “sized and shaped to
be mountable in a drop ceiling in place of at least one of a plurality of ceiling tiles included in the
drop ceiling[.]” (D.I. 239, ex. 4 at col. 18:42-45; id. at Abstract; id., col. 6:8-20) 4 In the Court’s

4

Shure argues that, when determining what is a function of the claimed design, the
court must “stick relatively close to the design patent”—i.e., that there is something wrong with
the Court looking for guidance to a related utility patent (here, the '493 patent). (Tr. at 43) But
the Court agrees with ClearOne that, pursuant to Federal Circuit guidance in cases such as
OddzOn Prods., Inc. v. Just Toys, Inc., 122 F.3d 1396 (Fed. Cir. 1997), a court does not need to
7

view, this evidence helps to demonstrate that a function of the claimed design is to replace a
standard ceiling tile. (See D.I. 238 at 71-72; Tr. at 44-45); see, e.g., Dyson, Inc. v. Sharkninja
Operating LLC, Case No. 14-cv-779, 2016 WL 6037688, at *3 (N.D. Ill. Oct. 13, 2016) (finding
that the grip element in certain asserted design patents relating to a vacuum cleaner was
functional, in that it provided the user with a needed way to hold the vacuum, and citing in
support to the fact that the orientation of the grip was mentioned as a benefit in a co-pending
utility patent).
Now that we have established that a function of the claimed design is to replace a
standard ceiling tile in a standard ceiling grid, the next question in dispute is: Is either the
“square shape” or the “relative thinness” of the design a design element that is dictated by this
function (i.e., are either or both of these elements “purely functional”)? 5 Sport Dimension, Inc.,

“limit [itself] to the face of the patent disclosure” to define the function(s) of a claimed design.
(D.I. 238 at 71; see also Tr. at 87) In OddzOn Prods., the design patent claimed a tossing ball
that was shaped like a football with a tail and fin structure attached to one end. OddzOn Prods.,
122 F.3d at 1399; (D.I. 248, ex. 53). Although the design patent did not mention that the design
was intended to travel farther than a typical football, (D.I. 248, ex. 53), the Court found that: (1)
the ball was “specifically designed to be thrown like a football, yet travel farther than a
traditional foam football” and (2) it was the tail and fins on the football’s design that promoted
these functional qualities. OddzOn Prods., 122 F.3d at 1406. While these points were not
disputed in OddzOn Prods., id., the case suggests that one can look to sources other than the text
of the design patent itself in assessing this question of function.
5

The Court acknowledges that some district courts have noted uncertainty as to
whether they may (or if they may, whether they should) make a determination at the claim
construction stage as to whether a particular element of a design is purely functional. Vertical
Tank, Inc. v. BakerCorp, Case No. 1:18-CV-00145-LJO-JLT, 2019 WL 2207668, at *19 (E.D.
Cal. May 22, 2019) (citing cases); Focus Prods. Grp. Int’l, LLC v. Kartri Sales Co., Inc., 15 Civ.
10154 (PAE), 2018 WL 3773986, at *15 (S.D.N.Y. Aug. 9, 2018). Many courts have taken this
step during claim construction. See, e.g., Graphic Packaging Int’l, LLC v. Inline Packaging,
LLC, File No. 15-cv-03476 (ECT/LIB), 2019 WL 4786148, at *3 (D. Minn. Oct. 1, 2019)
(“Whether a design is functional or ornamental (or both) is a fact question, but the Court may
decide fact disputes pertaining to claim construction.”). Some courts, however, have concluded
that it is the jury who should decide whether a certain feature of a design patent is functional or
not. See Deckers Outdoor Corp. v. Rue Servs. Corp., Case No. CV 13-06303-JVS (VBKx),
8

820 F.3d at 1320; (D.I. 238 at 70). At the claim construction stage, several factors (the “Berry
Sterling factors”) may serve as a useful guide for answering this question of “claim construction
functionality[.]” Sport Dimension, Inc., 820 F.3d at 1322. 6 These include “[1] whether the
protected design represents the best design; [2] whether alternative designs would adversely
affect the utility of the specified article; [3] whether there are any concomitant utility patents; [4]
whether the advertising touts particular features of the design as having specific utility; and [5]
whether there are any elements in the design or an overall appearance clearly not dictated by
function.” Id. (quoting Berry Sterling Corp. v. Pescor Plastics, Inc., 122 F.3d 1452, 1455 (Fed.

2014 WL 12588481, at *3 (C.D. Cal. Aug. 29, 2014); Black & Decker (U.S.) Inc. v. Pro-Tech
Power Inc., No. 97-1123-A, 1998 WL 633636, at *3-6 (E.D. Va. June 2, 1998). In the Court’s
view, the Federal Circuit has clearly indicated that the Court may play this role at claim
construction. See Sport Dimension, Inc., 820 F.3d at 1320 (noting that district court can use
claim construction to guide fact finder through issues that bear on claim scope, such as by
distinguishing between those features of claimed design that are ornamental and those that are
purely functional); see also Lanard, 958 F.3d at 1342. And because both sides here are asking
the Court to determine whether the disputed claim elements at issue are purely functional or not,
the Court will do so.
6

As Shure points out, function may be assessed in two contexts: in construing a
design patent claim (i.e., what the Court is doing here), and in assessing the validity of a design
patent (i.e., what the Court is not doing here). (Shure’s Markman Presentation, Slide 21) As to
the latter analysis, if a claimed design’s “overall appearance” is dictated by function, then the
design patent is invalid. Ethicon Endo-Surgery, Inc. v. Covidien, Inc., 796 F.3d 1312, 1333 (Fed.
Cir. 2015); see also Richardson, 597 F.3d at 1293-94. The Berry Sterling factors are also
utilized in this validity analysis in order to determine whether a claimed design as a whole is
dictated by its function. To determine whether a design as a whole is primarily functional or
ornamental, the claimed design must be “viewed in its entirety[.]” L.A. Gear, Inc., 988 F.2d at
1123.
The law is clear, however, that certain design elements may serve a functional purpose
and yet the overall design may still possess protectable ornamentation. Sport Dimension, 820
F.3d at 1321-22. If the “overall appearance” of a claimed design is not dictated by function, then
the design claim is not invalid, even if certain elements of the design have purely functional
purposes. Ethicon Endo-Surgery, Inc., 796 F.3d at 1333. Courts apply “a stringent standard” for
invalidating a design patent on grounds of functionality and clear and convincing evidence is
required. Rosco, Inc. v. Mirror Lite Co., 304 F.3d 1373, 1378 (Fed. Cir. 2002).
9

Cir. 1997)). The availability of alternative designs is an important, if not dispositive, factor.
Ethicon Endo-Surgery, Inc. v. Covidien, Inc., 796 F.3d 1312, 1329-30 (Fed. Cir. 2015); see also
Automotive Body Parts Assoc. v. Ford Global Techs., LLC, 930 F.3d 1314, 1319 (Fed. Cir. 2019)
(“We have often emphasized the presence or absence of alternative designs, noting that the
existence of ‘several ways to achieve the function of an article of manufacture,’ though not
dispositive, increases the likelihood that a design serves a primarily ornamental purpose.”)
(citation omitted). When a design has “many functional elements” and “minimal ornamentation,
the overall [] scope of the claim is accordingly narrow.” Sport Dimension, 820 F.3d at 1323.
With regard to the square shape of the claimed design, application of the Berry Sterling
factors demonstrates that this particular element is dictated by the functional ability to fit into a
ceiling tile. It certainly represents the best design for this function, because if the design were of
a different shape, the assembly at issue could not replace a standard ceiling tile. (D.I. 238 at 32;
D.I. 239, ex. 10 at ¶ 81; D.I. 240, ex. 11 at ¶¶ 80-81); see also, e.g., Lifted Ltd., LLC v. Novelty
Inc., Civil Action No. 16-cv-03135-PAB-GPG, 2020 WL 2747814, at *4 (D. Colo. May 27,
2020) (finding that the size and shape of the oval central recess was functional because those
features were “necessarily dictated by the dimensions of a standard lighter” that the recess would
hold); Furrion Prop. Holding Ltd. v. Way Interglobal Network, LLC, Case No. 3:19-cv-566-PPSMGG, 2019 WL 5587147, at *6 (N.D. Ind. Oct. 30, 2019) (examining whether a design patent
contained functional elements, and finding that the bracket that held a glass cover of the oven in
place was functional, because “[i]ts size is invariably linked (and thus dictated) by the size and
shape of the glass cover of the oven, which is in turn dictated by the size of the oven”). With
regard to the “whether alternative designs would affect the utility of the specified article” factor,
here surely they would, as a product adopting a different shape could not be installed to replace a

10

standard ceiling tile. (D.I. 238 at 37; D.I. 239, ex. 10 at ¶ 81; D.I. 240, ex. 11 at ¶ 80) 7 As for
any concomitant utility patents, as discussed above, the '493 utility patent describes and claims
an embodiment in which the housing for the claimed array microphone is square-shaped, so that
it can replace a ceiling tile. And with regard to “whether the advertising touts particular features
of the design as having specific utility,” Shure’s advertising materials do clearly tout the ability
of its embodying product to mount directly into a ceiling tile grid. (D.I. 243, exs. 22-23)
However, when it comes to the “relative thinness” of the claimed design, the record is not
as strong for ClearOne. The Sennheiser TC2 reference (“Sennheiser”), which is square-shaped
but is not nearly as thin as the claimed design, demonstrates that there are alternative, non-“thin”
designs that would serve the same function as the claimed design. (D.I. 238 at 52-53; Tr. at 18,
27-28; id. at 79-80 (ClearOne’s counsel acknowledging that, in view of Sennheiser, “the thinness
[aspect] of our claim construction is slightly less definite than the square shape”)) Additionally,
ClearOne’s argument here is compromised by the fact that it points to no record guidance
regarding how “thin” of a design would qualify as “relatively thin” for purposes of this
functionality analysis. See, e.g., Vertical Tank, Inc. v. BakerCorp, Case No. 1:18-CV-00145LJO-JLT, 2019 WL 2207668, at *18 (E.D. Cal. May 22, 2019) (rejecting defendant’s argument
that the Court should “‘factor out’” lengths of the various components depicted in the design
patents because they were functional, where “[n]othing in the design or any other evidence of
which the Court is aware provides absolute lengths. . . . It is therefore entirely unclear how, if at

7

While Shure asserts that the Sennheiser TC2 represents a workable, alternative
design, (D.I. 238 at 18, 35), that product undisputedly has a square shape, (D.I. 239, ex. 7; Tr. at
45-47). And although Shure also pointed to a prior art rectangular speaker as an alternative
design that would purportedly serve this function, (D.I. 238 at 53), the Court agrees with Clear
One that this art is not helpful to Shure. As ClearOne notes, such a rectangular speaker appears
to serve a different function, as it only replaces half of a standard ceiling tile, instead of replacing
a whole tile (and thus its use requires additional ceiling tile installation efforts). (Id. at 71 n.17)
11

all, the Court should or could ‘factor out’ lengths from a design patent that does not obviously
claim specific lengths”). In the end, as one of Shure’s experts noted, it does not appear that a
ceiling-mounted device’s “ability to [replace a ceiling tile requires] the device to be thin,
especially where much of the device can be mounted above the level of the ceiling tile where
there is adequate room for comparatively tall devices.” (D.I. 247, ex. 46 at ¶ 30 (certain
emphasis in original)) Therefore, the Court cannot conclude that this element of the design is
dictated by function.
So now that the Court has concluded that the square shape of the claimed design is
dictated by the function of replacing a standard ceiling tile, the last issue in dispute is about how
that conclusion should affect the Court’s claim construction. ClearOne wants this “squareshaped” element to be “excluded” from the scope of the claim; Shure contends that to do this
would be improper.
In support of its view, ClearOne relies on the Federal Circuit’s decision in Richardson v.
Stanley Works, Inc., 597 F.3d 1288 (Fed. Cir. 2010). (D.I. 238 at 31; Tr. at 73) In that case, the
district court construed the claim after a trial (in the same opinion in which it assessed
infringement). Richardson v. Stanley Works, Inc., 610 F. Supp. 2d 1046 (D. Ariz. 2009). In
doing so, the district court noted that the design patent at issue did not “protect the configuration
of the handle, hammer-head, jaw and crow-bar utilized” in the claimed design because such a
configuration was functional; however, it explained that the patent did protect the “ornamental
aspects” of the design, including the “standard shape of the hammer-head, the diamond-shaped
flare of the crow-bar and the top of the jaw, the rounded neck, the orientation of the crowbar
relative to the head of the tool, and the plain, undecorated handle.” Id. at 1050. The Federal
Circuit affirmed the construction, holding that the district court had “properly factored out the

12

functional aspects of Richardson’s design as part of its claim construction.” Richardson, 597
F.3d at 1293 (emphasis added).
Yet despite what is said in Richardson, the Court agrees with Shure that, in the main, the
caselaw counsels against eliminating whole aspects of the claimed design at the claim
construction stage. (D.I. 238 at 11, 51, 56; Tr. at 30-34) Instead, the Federal Circuit has
suggested that in this situation, the Court’s claim construction should “identify” that it found a
particular element to be dictated by function. (Tr. at 34) 8 On this score, the Federal Circuit has
explained that while certain design patent claims may require a construction that “assist[s] a
finder of fact in distinguishing between functional and ornamental features . . . in no case did [the
Federal Circuit] entirely eliminate a structural element from the claimed ornamental design, even
though that element also served a functional purpose.” Sport Dimension, Inc., 820 F.3d at 1321
(finding that the district court erred in “eliminat[ing] whole aspects of the claimed design” that it
found to serve functional purposes, in construing a design patent claim) (emphasis added).
Instead, if an element of the design serves a functional purpose, the Federal Circuit counsels that
this element may still be considered as part of the design “to the extent that [it] contribute[s] to
the overall ornamentation of the design”; in determining infringement, however, the fact finder
should “not focus on [such] elements . . . but rather focus on what these elements contribute to
the design’s overall ornamentation.” Id. at 1323. Various district courts have attempted to
implement this guidance in subsequent cases. 9 Thus, here the Court’s claim construction will
simply note that the square shape of the claimed design is dictated by function, nothing more.

8

Indeed, that is essentially what ClearOne’s proposed construction accomplishes.

(D.I. 280 at 1)
9

See also, e.g., Lifted Ltd., LLC, 2020 WL 2747814, *6 (explaining that excluding
elements in their entirety is inconsistent with the Federal Circuit’s most recent guidance on claim
13

2.

Is the perforated metal front face of the claimed design dictated by
function?

Second, ClearOne argues that “the extent to which the front face of Shure’s design (as
depicted in Figure 3) looks like prior art ceiling vents should be excluded from claim scope”
because Shure’s decision to model its claimed design after prior art ceiling air vents served two
purely functional purposes: (1) it allowed the claimed device to blend invisibly into a ceiling by
adopting a form with which people were already familiar; and (2) it allowed sound to pass to the
microphones inside the device. (D.I. 238 at 2; see also id. at 39-42, 75-76; Tr. at 90-108) The
Court is not persuaded by ClearOne’s position here.
The first “functional” purpose highlighted by ClearOne—that the design of the front face
enables the claimed device to blend into the ceiling—seems to be an example of a type of
functionality recognized in trademark law as “aesthetic functionality.” (D.I. 238 at 57 n.9; Tr. at
49-51) Aesthetic functionality is based on how good the product looks, Blumenthal Distrib., Inc.
v. Herman Miller, Inc., 963 F.3d 859, 865 (9th Cir. 2020), and in the trademark law context, “a
party cannot use trademark protection to prevent its competitors from . . . making their products
as visually entrancing as its own[,]” Automotive Body Parts Ass’n, 930 F.3d at 1319-20 (internal
quotation marks, brackets and citation omitted). However, in Automotive Body Parts Ass’n v.
Ford Global Techs., LLC, 930 F.3d 1314 (Fed. Cir. 2019), the Federal Circuit recently held that
“[t]he considerations that drive the aesthetic functionality doctrine of trademark law simply do

construction in the design patent context); Graphic Packaging Int’l, LLC, 2019 WL 4786148, at
*4 (“[C]ourts recognize that it makes little sense to extract aspects of a design at claim
construction when the ultimate inquiry is supposed to be about the overall design.”) (emphasis in
original); HFA, Inc. v. Trinidad/Benham Corp., CIVIL ACTION NO. 6:17-CV-00343-RWS,
2018 WL 1210880, at *4 (E.D. Tex. Mar. 7, 2018) (“While the nested pans serve a functional
purpose, that does not deem them excluded from the claim” because such exclusion would “go
against the principles set forth in case law regarding the scope of design patents.”).
14

not apply to design patents.” 930 F.3d at 1320. In that case, which involved a design patent, the
accused infringer had argued that the patentee’s hood and headlamp designs were functional
because they aesthetically matched the patentee’s F-150 truck. Id. at 1319. The Federal Circuit,
however, concluded that “the aesthetic appeal of a design to consumers is inadequate to render
that design functional.” Id.
ClearOne argues that Shure did not create its design to make its product aesthetically
appealing—but instead that it did so to achieve the functional purpose of making its product
“unobtrusive.” (D.I. 238 at 73) Yet that purpose (being “unobtrusive”) is all about how the
product looks. Indeed, at one point during the Markman hearing, ClearOne’s counsel seemed to
acknowledge that utilizing a front face with a perforated metal grille “is useful to aesthetically
match standard ceilings by looking like a standard HVAC ceiling diffuser.” (Tr. at 96) So in
line with Federal Circuit precedent, the Court declines to apply the aesthetic functionality
doctrine in construing the claim of the '723 patent. It thus concludes that allowing the “claimed
device to blend invisibly into a ceiling” is not a functional purpose at all.
ClearOne’s other “functional purpose” argument—that the appearance of the front face of
the claimed design is purely functional because it ensures that sound will pass to the
microphones inside the device—is also not persuasive. Of course, it is not disputed that allowing
sound to pass is one function served by the claimed design. (Tr. at 53-54) And it is also not
disputed that some acoustic considerations were involved in Shure’s conception of the
perforation pattern on the front face of the design (i.e., that Shure was cognizant of the fact that
the perforations on the front face needed to be of a type that would allow sound to reach the
microphones in the array). (D.I. 238 at 58; Tr. at 53; see also D.I. 247, ex. 49 at 14) However,
the record evidence shows that “the actual design of the perforations was mainly aesthetic [not

15

functional] in nature[.]” (D.I. 247, ex. 49 at 14) This is underscored by the design choice to
include “substantially more perforations than what was needed acoustically[,]” such as at the
four corners of the front face—areas that have perforations but that do not have microphones
located directly behind those perforations. (D.I. 238 at 58; see also D.I. 247, ex. 49 at 14; Tr. at
13, 53-56) The evidence also demonstrates that there are alternative designs with respect to the
perforations on the front face that also allow sound to pass through, such as the elongated
perforations on the Sennheiser microphone array. (D.I. 154, ex. F at ¶ 40 & ex. 6; see also D.I.
247, ex. 46 at ¶ 35; Tr. at 53-54, 56) 10 The Court therefore declines to find that the front face of
Shure’s design is dictated by function. See, e.g., Furrion Prop. Holding Ltd., 2019 WL 5587147,
at *6 (explaining that the design of the grate over the burners of an oven involves both functional
and non-functional elements, in that “[t]he grate clearly serves a function of holding a pot or pan
in place over a gas burner, but the pattern of that grate is only partially dictated by its function
and one can imagine a multitude of different patterns that could be employed”); Calphalon Corp.
v. Meyer Corp., No. CIV. S-05-971 WBS DAD, 2006 WL 2474286, at *2 n.3 (E.D. Cal. Aug.
25, 2006) (“The holes are functional in that they serve the purpose of dissipating heat, but the
position and shape of the holes is not ‘dictated by’ this function.”). 11
3.

10

Should the Court consider prior art in defining claim scope?

Indeed, this point is undisputed by ClearOne. (Tr. at 108)

11

In ClearOne’s proposed claim construction, it states with respect to this disputed
issue that “the Court should also determine that the extent to which the front face of Shure’s
design (as depicted in Figure 3) looks like prior art ceiling vents is functional” because this
element serves the two assertedly functional purposes described above. (D.I. 280 at 1 (emphasis
added)) The question of what “prior art ceiling vents” depict, and how that relates to claim
construction, is relevant to ClearOne’s next argument about the prior art. (See, e.g., Tr. at 10809) Below, the Court will explain why it will not be comparing the front face of the claimed
design to the front face of prior art at this stage of the case.
16

Third, ClearOne asserts that the Court’s claim construction should “point out . . . the fact
that numerous pieces of prior art feature the same thin, square shape as that shown in the claimed
design, as well as the same perforated metal grille, both bounded by a white frame and not.”
(D.I. 238 at 2; see also id. at 43-44, 75-76; Tr. at 109-12) ClearOne argues that such an analysis
is appropriate at this stage, where “there is a large body of prior art directed to the shape and
design of mechanical or electrical elements . . . that are designed to replace a ceiling tile in a
standard ceiling tile grid.” (D.I. 238 at 43) The impetus behind ClearOne’s position here is the
principle that a design patent “cannot be granted for one device made to look like another.” (Id.;
see also Tr. at 111 (“[A] party should not be able to capture within the claim scope an old design
transferred to a new use.”))
In Egyptian Goddess, Inc. v. Swisa, Inc., 543 F.3d 665 (Fed. Cir. 2008), the Federal
Circuit stated that in the claim construction process, “[w]hile it may be unwise to attempt a full
description of the claimed design, a court may find it helpful to point out, either for a jury or in
the case of a bench trial by way of describing the court’s own analysis, various features of the
claimed design as they relate to the accused design and the prior art.” 543 F.3d at 680. The
Egyptian Goddess Court went on to note that in the case before it, “for example, there would be
nothing wrong with the court pointing out to a jury that in the patented design only three sides
have buffers attached, while in the accused product (and in the three-sided Nailco patent), all of
the sides have buffers attached. It would similarly be permissible for the court to point out that,
for example, although the Falley Buffer Block has four sides, it is not hollow, unlike the design
of the ′389 patent, the Nailco patent, and the accused Swisa product.” Id.
The Court is not convinced that it need make reference to the prior art in its proposed
claim construction for the '723 patent. This is so for a few reasons.

17

For one thing, as Shure points out, ClearOne’s request is focused only on the front side of
the prior art devices. (See Tr. at 62) Yet all sides of a design claimed in a design patent are
relevant (and therefore, so too would be all sides of the prior art). (Tr. at 119); cf. Apple, Inc. v.
Samsung Elecs. Co., 678 F.3d 1314, 1326 (Fed. Cir. 2012) (concluding that the district court
misconstrued the full scope of the design patent in finding that the patent was likely anticipated
by a piece of prior art, where the district court had based its finding on comparison of the front
views of the patent and the prior art, and had refused to consider any other views of the
patent/prior art). Indeed, in the Egyptian Goddess Court’s description of how prior art might be
utilized in the claim construction process (set out above), the Court appeared to be focused on all
sides of the claimed design, the accused device and the prior art.
Additionally, as other courts have noted, “[t]he limitation in scope of a design patent in
light of prior art is necessarily folded into the infringement analysis[.]” See, e.g., Jenny Yoo
Collection, Inc. v. Essense of Austl., Inc., Case No. 17-2666-JAR-GEB, 2020 WL 263583, at *13
(D. Kan. Jan. 17, 2020). To determine whether a design patent has been infringed, where the
claimed and accused designs “are not plainly dissimilar, resolution of the question whether the
ordinary observer would consider the two designs to be substantially the same will benefit from a
comparison of the claimed and accused designs with the prior art[.]” Egyptian Goddess, 543
F.3d at 678. Having not been presented with any compelling reason why the Court must account
for prior art in construing the scope of the claimed design, the Court believes that it will make
more sense to assess prior art in the later stages of the case. See, e.g., Jenny Yoo Collection,
2020 WL 263583, at *13 (concluding that defendant’s position that the scope of the design
patents should be construed to be circumscribed by prior art was inappropriate during claim
construction, as doing so would “invade the province of the jury to determine infringement under

18

the ‘ordinary observer’ test”); Reddy v. Lowe’s Cos., Inc., 60 F. Supp. 3d 249, 254, 258-59 (D.
Mass. 2014) (rejecting defendant’s request that the Court consider prior art when construing the
design patent claim, finding that such considerations would best be considered as part of the
infringement analysis) (citing cases).
Lastly, ClearOne desires the Court to address and account for certain prior art “because a
design patent cannot be granted for one device made to look like another[.]” (D.I. 238 at 43; Tr.
at 111-12) But this seems to be more of an invalidity argument than an issue for claim
construction. See, e.g., Phoenix Knitting Works v. Rich, 194 F. 708, 713 (N.D. Ohio 1911) (“In
patentable designs a person cannot be permitted to select an existing form, and simply put it to a
new use[.]”); (Tr. at 118). 12
For all of these reasons, the Court declines to recommend that the portion of ClearOne’s
proposed claim construction referencing prior art be adopted.
4.

Conclusion

12

Beyond Egyptian Goddess, ClearOne cites only to one other case in which a
Court considered prior art in connection with construing a design patent: Lanard Toys Ltd. v.
Toys “R” Us-Del., Inc., Case No. 3:15-cv-849-J-34PDB, 2019 WL 1304290, (M.D. Fla. Mar.
21, 2019), aff’d, Lanard Toys Ltd. v. Dolgencorp LLC, 958 F.3d 1337 (Fed. Cir. 2020), in which
the patent related to a chalk holder in the shape of an oversized no. 2 pencil. (D.I. 238 at 9-10,
43; see also Shure’s Markman Presentation, Slide 39) But the Court is not convinced that it
should follow the same path as the Lanard Court did. For one thing, in Lanard, the district court
was not only determining the proper claim construction for the claimed design, but it was also
then considering motions for summary judgment relating to invalidity and infringement. Lanard,
2019 WL 1304290, at *15-18 (“Indeed, in their briefs, when analyzing the prior art, Defendants
often argued that to the extent the patented design is distinguishable from the prior art, and thus
not anticipated, it is likewise distinguishable from the accused design, and thus not infringed.”).
Here, in contrast, the summary judgment stage is far off. Further, the Lanard Court considered
all sides of the relevant prior art pencil designs, not just one view of the pencil, in describing the
design features that the prior art and claim design shared. Id. at *12; see also (Tr. at 62-63). Yet
here, as noted above, ClearOne has pointed the Court only to the front side of the prior art
devices—not to a holistic view of those devices.
19

In light of the Court’s conclusions above, it recommends that the District Court construe
the claim as follows: “The ornamental design for an array microphone assembly, as shown in
the solid lines and associated claimed surfaces of Figures 1-6 and described in the specification
of the '723 patent. The broken lines in Figures 1-6 of the '723 patent form no part of the claimed
design. The square shape of the claimed design is functional.”
B.

Definiteness and Enablement

The definiteness and enablement requirements of 35 U.S.C. § 112 apply to design
patents. In re Maatita, 900 F.3d 1369, 1375 (Fed. Cir. 2018).
The purpose of the definiteness requirement is to “ensure that the disclosure is clear
enough to give potential competitors (who are skilled in the art) notice of what design is
claimed—and therefore what would infringe.” Id. at 1376. A visual disclosure may be
inadequate—and its associated claim indefinite—if it includes multiple, internally inconsistent
drawings. Id. at 1375. Such inconsistencies will not render a patent indefinite, however, if they
“do not preclude the overall understanding of the drawing as a whole.” Id. at 1375-76 (internal
quotation marks and citations omitted). “Given that the purpose of indefiniteness is to give
notice of what would infringe . . . one skilled in the art would assess indefiniteness [of a design
patent] from the perspective of an ordinary observer.” Id. at 1377. A patent is indefinite under
Section 112 “if one skilled in the art, viewing the design as would an ordinary observer, would
not understand the scope of the design with reasonable certainty based on the claim and visual
disclosure.” Id. And “[b]ecause design patent claims are limited to what is shown in the
application drawings . . . there is often little difference in the design patent context between the
concepts of definiteness (whether the scope of the claim is clear with reasonable certainty) and

20

enablement (whether the specification sufficiently describes the design to enable an average
designer to make the design)[.]” Id. at 1375.
Like claim construction, definiteness and enablement are questions of law for the court.
H-W Tech., L.C. v. Overstock.com, Inc., 758 F.3d 1329, 1332 (Fed. Cir. 2014); Moba, B.V. v.
Diamond Automation, Inc., 325 F.3d 1306, 1321 (Fed. Cir. 2003). The Federal Circuit has stated
that “[a]ny fact critical to a holding on indefiniteness . . . must be proven by the challenger by
clear and convincing evidence.” Intel Corp. v. VIA Techs., Inc., 319 F.3d 1357, 1366 (Fed. Cir.
2003); see also Tech. Licensing Corp. v. Videotek, Inc., 545 F.3d 1316, 1338 (Fed. Cir. 2008). 13
Clear and convincing evidence is also required to show that a patent is invalid for lack of
enablement. Cephalon, Inc. v. Watson Pharms., Inc., 707 F.3d 1330, 1336 (Fed. Cir. 2013).
ClearOne argues that the '723 patent is invalid for indefiniteness and that it is not enabled
pursuant to Section 112. (D.I. 238 at 25-31, 76-78) As was noted above, the '723 patent
contains six figures, two of which (Figures 2 and 4) depict the back view of the claimed array
microphone assembly design. ('723 patent) 14 It is undisputed that Figure 2 and Figure 4 are
internally inconsistent, because Figure 2 claims 16 slots in a pattern around the back panel of the
design (with the slots depicted in solid, not broken, lines), while Figure 4 depicts the same panel
with a smooth edge with no slots. ('723 patent, FIGS. 2, 4; see also D.I. 238 at 62; D.I. 247, ex.

13

In Nautilus, Inc. v. Biosig Instruments, Inc., 572 U.S. 898 (2014), the Supreme
Court of the United States left open the question of whether factual findings subsidiary to the
ultimate issue of definiteness should, in fact, trigger the application of a “clear-and-convincingevidence standard[,]” noting that it would “leave th[is] question[] for another day.” 572 U.S. at
912 n.10. In the absence of Supreme Court precedent to the contrary, the Federal Circuit’s case
law (utilizing the clear-and-convincing-evidence standard) controls. See Cal. Inst. of Tech. v.
Hughes Commc’ns Inc., 35 F. Supp. 3d 1176, 1182 n.4 (C.D. Cal. 2014).
14

The other four figures depict front and side views of the claimed design. ('723

patent)
21

46 at ¶ 10) ClearOne contends that this inconsistency renders it impossible for the ordinary
observer to understand the scope of the claimed design or to know how to make that design.
(D.I. 238 at 27; Tr. at 125); Gorham Mfg. Co. v. White, 81 U.S. 511, 528 (1871) (noting that in
the design patent context, the “ordinary observer” is typically the “the principal purchaser[] of
the articles”).
The Court continues to view ClearOne’s position as a strong one. (See D.I. 176 at 9 n.8)
It feels this way for a number of reasons.
For one thing, ClearOne has made a good record in support of its claim that the 16 slots
are material to the claimed design, and that the differences between Figure 2 and Figure 4 would
matter to the ordinary observer. It is undisputed that all sides of the claimed design (including
the back) are important features from both an infringement and a validity perspective. (D.I. 238
at 77 n.22; Tr. at 119, 138) It is also undisputed that the back panel of the claimed design
contains “few claimed visual features.” (D.I. 154, ex. F at 26; see also D.I. 238 at 76, 78; D.I.
248, ex. 57 at 241; Tr. at 134, 137, 148) And ClearOne’s expert, Joel Delman, relatedly opines
that the 16 slots are “significant features, symmetrical in their orientation, identical in size and
appearance, and carefully placed for maximum aesthetic impact along the perimeter of a highly
prominent feature of the claimed design” such that they would be “highly noticeable” to an
ordinary observer. (D.I. 239, ex. 10 at ¶¶ 73-76 (emphasis omitted)) Thus, according to Mr.
Delman, the inconsistency between Figure 2 and Figure 4 “prevents the ordinary observer from
understanding the overall appearance of what is claimed by the '723 [p]atent” and would prevent
that observer from knowing how to create the design. (Id. at ¶ 76) 15

15

As ClearOne notes, this does not seem to be a case where “a close review of the
figures would reveal to . . . an ordinary observer[] which figure depicts the claimed design, and
which contains an error.” (D.I. 238 at 26-27) This is because there are only two figures that
22

Moreover, Shure’s position on these slots—and whether they are or are not part of the
claimed design—has been confused. (Tr. at 135, 150-51) Shure first asserted that the 16 slots
were “unclaimed subject matter[.]” (D.I. 238 at 20) Then, during oral argument on its motion
for a temporary restraining order, Shure conceded that the slots were claimed subject matter.
(D.I. 178 at 30) And yet as late as in a June 2020 deposition, Shure’s expert, Paul Hatch, could
not take a position on whether or not the slots are claimed in the '723 patent. (D.I. 248, ex. 57 at
239) Shure’s back-and-forth only further highlights that there is an inconsistency in the patent
that could well render the patent indefinite and not enabled.
Shure’s current position to the contrary is that, when viewed in context, the discrepancy
regarding the 16 slots does not render the patent invalid because it does not impact an overall
understanding of the design. Instead, Shure argues that the slots affect only a portion of the
design (a small part of the back side of the array), such that the overall understanding of the
design remains clear. (D.I. 238 at 59-68; Tr. at 156-57)
In the end, the Court concludes that Shure has done just enough to demonstrate why the
claim should not now be found indefinite. To a great degree, the Court’s conclusion here is
driven by the fact that Shure has put forward the declaration of its own expert, Mr. Hatch. In
contrast to the conclusions of ClearOne’s expert, Mr. Hatch opines that the 16 slots “have an
insignificant effect on the overall visual impression” of the design claimed in the '723 patent.

show the back view; one depicts the slots at issue as part of the claimed design, one does not. Cf.
Times Three Clothier, LLC v. Spanx, Inc., Nos. 13 Civ. 2157(DLC), 13 Civ. 7260(DLC), 2014
WL 1688130, at *7 (S.D.N.Y. Apr. 29, 2014) (“Times Three cites several cases in which
inconsistencies have not been fatal to the validity of the patent, but these cases are inapposite.
Here, half of the figures depict the ornamental line with one shape and position, half depict it
another way, and neither half can be disregarded as unclear due to the use of an unusual
perspective.”).
23

(D.I. 247, ex. 46 at ¶ 11) This is because the slots are “but one of many features” embodied by
the claimed design as a whole. (Id.) Mr. Hatch also opines that the slots are not located at the
outer perimeter of the claimed design, but instead are located on the recessed back plate, behind
the inner edge of the outer frame. (Id. at ¶¶ 13-14) For these reasons, Mr. Hatch asserts that the
slots are “not immediately prioritized in the eyes of the ordinary observer.” (Id. at ¶ 14) 16 Mr.
Hatch concludes that the inconsistency between Figure 2 and Figure 4 amounts to “a detail so
small it went unnoticed by both the draftsman and the Examiner at the United States Patent
Office.” (Id. at ¶ 16) Therefore, according to Mr. Hatch, a person of ordinary skill would be on
notice as to what design would infringe the design claimed in the '723 patent, because the
disclosure therein “sufficiently conveys the overall impression of the Claimed Design.” (Id. at ¶
15) To further underscore Mr. Hatch’s position in this regard, Shure also points to: (1)
testimony from a ClearOne manufacturer representative, who indicates that no one in the
industry has ever commented to him about the slots on the back of Shure’s MXA910 product or
ClearOne’s BMA CT product; and (2) testimony of its industry expert, who similarly stated that

16

That said, Mr. Hatch’s statements to this effect (i.e., that the slots are but one of
many features in the design, and are less noticeable or significant because they are found on the
design’s back panel) seem to conflict with certain statements he made in support of Shure’s
motion for a preliminary injunction. There, in discussing a different feature of the design that is
found on the back panel, Mr. Hatch stated that “[t]he Accused Products, like the Claimed
Design, also feature a ‘mitered’ corner where the sidewalls meet. Given there are few claimed
visual features on the rear of the Claimed Design, this detail would be relatively noticeable to the
Ordinary Observer.” (D.I. 154, ex. F at 26; see also Tr. at 145, 147-48) This apparent
discrepancy is troubling, and is another reason why the Court finds ClearOne’s position overall
to be a strong one. But for the reasons set out below, the Court nevertheless concludes that there
is a sufficient credibility dispute here as to key factual issues, such that definiteness and
enablement should go to a jury.
24

end-user purchasers would not be concerned with the look of “the minor details of the back face”
such as slots. (D.I. 238 at 61 (citing D.I. 247, ex. 50 at ¶ 38; id., ex. 51 at 23)) 17
In the end, the parties have presented competing expert evidence with respect to these
important, validity-related issues. (See Tr. at 145 (ClearOne’s counsel acknowledging the
dueling expert opinions on this issue)) While definiteness and enablement are ultimately
questions of law, addressing relevant disputes of fact would require assessing the credibility and
the weight to be afforded these differing expert opinions. This task is within the province of the
jury, not the Court. See Presidio Components, Inc. v. Am. Tech. Ceramics Corp., CASE NO. 14CV-2061-H (BGS), 2016 WL 7326609, at *5-6 (S.D. Cal. Jan. 12, 2016); Weber-Stephen Prods.
LLC v. Sears Holding Corp., No. 13 C 01686, 2015 WL 9304343, at *19 (N.D. Ill. Dec. 22,
2015); see also, e.g., Verinata Health, Inc. v. Ariosa Diagnostics, Inc., 809 F. App’x 965, 974–
75 (Fed. Cir. 2020); Bombardier Recreational Prods. Inc. v. Arctic Cat Inc., 785 F. App’x 858,
867 (Fed. Cir. 2019); Pac. Biosciences of Cal., Inc. v. Oxford Nanopore Techs., Inc., C.A. No.
17-275-LPS-CJB, C.A. No. 17-1353-LPS-CJB, 2020 WL 4699049, at *1, *10-11 (D. Del. Aug.
13, 2020).
At this time, then, the Court cannot conclude that ClearOne has satisfied its burden of
proving indefiniteness and non-enablement of the '723 patent by clear and convincing evidence.
IV.

CONCLUSION
For the foregoing reasons, the Court recommends that the District Court adopt the

following construction: “The ornamental design for an array microphone assembly, as shown in
the solid lines and associated claimed surfaces of Figures 1-6 and described in the specification

17

This other testimony seems like it could be relevant to the
definiteness/enablement of the patent claim, in that the MXA910 product is said to embody that
claim and the BMA CT product is said to infringe that claim.
25

of the '723 patent. The broken lines in Figures 1-6 of the '723 patent form no part of the claimed
design. The square shape of the claimed design is functional.”
This Report and Recommendation is filed pursuant to 28 U.S.C. § 636(b)(1)(B), Fed. R.
Civ. P. 72(b)(1), and D. Del. LR 72.1. The parties may serve and file specific written objections
within fourteen (14) days after being served with a copy of this Report and Recommendation.
Fed. R. Civ. P. 72(b)(2). The failure of a party to object to legal conclusions may result in the
loss of the right to de novo review in the district court. See Sincavage v. Barnhart, 171 F. App’x
924, 925 n.1 (3d Cir. 2006); Henderson v. Carlson, 812 F.2d 874, 878-79 (3d Cir. 1987).
The parties are directed to the Court’s Standing Order for Objections Filed Under Fed. R.
Civ. P. 72, dated October 9, 2013, a copy of which is available on the District Court’s website,
located at http://www.ded.uscourts.gov.

Dated: October 15, 2020
Christopher J. Burke
UNITED STATES MAGISTRATE JUDGE

26