Shure Incorporated v. ClearOne, Inc.

Filing 279

(PUBLIC REDACTED VERSION) MEMORANDUM Opinion and Order signed by the Honorable Edmond E. Chang. (This is the initial public redacted version of the Opinion.) For the reasons stated in the Opinion, ClearOne's motion [90, 145] for preliminary in junction is denied. As detailed in the Opinion, there is a substantial question on the validity of the '186 patent. But ClearOne did otherwise prove infringement on Claim 7, joint infringement with Biamp and QSC, and irreparable harm and inadequ ate remedy at law. If not for the substantial question on validity, the preliminary injunction would have issued. The Court urges the parties to reassess their settlement positions as promptly as possible, to avoid the further risk and delay of litig ation. Assuring certainty of outcome with a settlement will allow both sides to move forward; otherwise, the only certainty from further litigation will be fees, expenses, and distraction of each side's executives and engineers. Of course, it ul timately is up to the parties whether they wish to settle. To allow time to assess the situation (as well as address the propriety of sealing), the status hearing of 03/19/2018 is reset to 04/03/2018 at 1:30 p.m. In the meantime, the Court adopts the parties' proposed initial schedule on the '806 patent (Local Patent Rules 2.1-2.5), R. 277 at 3, so the parties shall follow those agreed deadlines. The parties shall file another joint status report proposing the remainder of the litigati on schedule on 03/28/2018. The prior motion 63 filed by Shure to dismiss the first amended counterclaim is denied, as explained on page 2 at n.3. An initial public redacted version of the Opinion will be entered (some of the citations in the Opinio n are to sealed evidence but cannot possibly be properly sealed, so redactions were not applied to those sentences). The parties must file a joint position paper on sealing on 03/21/2018, so that another public version of the Opinion, with as few redactions as possible (and perhaps zero), may be entered.Emailed notice(slb, )

UNITED STATES DISTRICT COURT
FOR THE NORTHERN DISTRICT OF ILLINOIS
EASTERN DIVISION
SHURE, INC.,
Plaintiff,
v.
CLEARONE, INC.,
Defendant.
CLEARONE, INC.,
Counter-Plaintiff
SHURE, INC., BIAMP SYSTEMS CORP.,
and QSC, LLC
Counter-Defendants.

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No. 17 C 3078
Judge Edmond E. Chang

MEMORANDUM OPINION AND ORDER
(INITIAL REDACTED PUBLIC VERSION)
This litigation concerns a set of patents on audioconferencing technology.
Shure, Inc., sued its competitor ClearOne (the owner of the patents), seeking a
declaratory judgment of invalidity and non-infringement of U.S. patent no.
9,635,186 (the ’186 patent) and a judgment of non-infringement of U.S. patent no.
9,264,553 (the ’553 patent).1 R. 1, Compl. ¶ 1.2 In response, ClearOne filed a
counterclaim for infringement against Shure, and also named Biamp Systems

1The

Court has subject matter jurisdiction over this case under 28 U.S.C. § 1338(a).
to the record filings are “R.” followed by the docket number and, when
necessary, a page or paragraph number. Many exhibits have overlapping names or
numbering, so exhibits will be identified by docket number throughout to avoid confusion.
2Citations

1

Corporation and QSC Audio Products, LLC, as counter-defendants.3 R. 28,
Counterclaim. Several months later, ClearOne filed a motion for preliminary
injunction against Shure in an attempt to halt Shure’s alleged infringement of the
’186 patent.4 R. 81, Mot. Prelim. Inj. Shure and ClearOne engaged in extensive
discovery and filed several briefs with supporting evidence. A hearing was held on
the preliminary injunction motion on February 14, 2018. R. 266, Feb. 14, 2018
Minute Entry.
After hearing arguments and reviewing the parties’ evidence, the Court finds
that ClearOne has not met its burden of demonstrating entitlement to the
extraordinary relief of a preliminary injunction. Shure has raised a substantial
question of the ’186 patent’s validity in light of two prior art references by Dr.
Walter Kellerman. This substantial question of validity blocks the issuance of a
preliminary injunction, so ClearOne’s motion is denied. For the sake of
completeness, however, and to speed along the litigation if there is appellate review,

3Shure

moved to dismiss ClearOne’s First Amended Counterclaim for infringement
on the grounds that it did not contain enough well-pleaded facts to state a claim upon which
relief could be granted. R. 63, Shure Mot. Dismiss; see Bell Atlantic Corp. v. Twombly, 550
U.S. 544 (2007); Ashcroft v. Iqbal, 556 U.S. 662 (2009). As discussed in an earlier hearing,
that motion is denied. The Counterclaim contained more than enough facts to state a claim
of infringement on theories of joint, induced, contributory, and willful infringement,
especially because the counterclaim incorporated by reference a number of documents
supporting those theories. See R. 57, Counterclaim Exhibits. Shure’s motion to dismiss
sought too much from Twombly and Iqbal, which require only “sufficient factual matter,
accepted as true, to ‘state a claim to relief that is plausible on its face.’” Iqbal, 556 U.S. at
678 (quoting Twombly, 550 U.S. at 570). The shortcomings of the motion to dismiss are
highlighted by the finding that ClearOne could likely prove Shure’s infringement. See
Section III.B, below.
4Biamp and QSC are not involved in the preliminary injunction litigation (except to
provide some discovery). See R. 107, Aug. 17, 2017 Minute Entry.

2

the Court will still evaluate the parties’ arguments on infringement and irreparable
harm.
I. Background
A. The ’186 Patent
For the purposes of the preliminary injunction motion, the only patent at
issue is the ’186 patent (though the ’553 patent still plays a role in the analysis, as
will become clear). The invention claimed in the ’186 patent is a method of
combining two well-known audio signal processing techniques: beamforming and
acoustic echo cancellation. Beamforming is a technology that combines signals from
multiple microphones in a microphone array to generate combined audio signals
(called “beams”) that pick up sounds from a particular location. Mot. Prelim. Inj. at
5; R. 83, Schonfeld Decl. ¶ 22. The advantage of a beamforming microphone is that
it can focus in on the sounds that audio-conference participants want to hear (that
is, people’s voices), while filtering out unwanted sounds (like background noise and
paper shuffling). R. 83, Schonfeld Decl. ¶ 22; R. 82, Graham Decl. ¶ 8. Beamforming
microphones are also practical: one beamforming microphone can replace ten or
more tabletop or ceiling microphones. R. 82, Graham Decl. ¶ 9. Meanwhile, acoustic
echo cancellation (often abbreviated in the industry as “AEC”) is a technology that
removes far-end echo.5 Without acoustic echo cancellation, near-end microphones
would pick up far-end speakers’ voices and transmit them back to the far-end, so
that the far-end speakers would be subjected to an annoying echo of their own
5“Far-end”

and “near-end” are simply industry terms for the two separate rooms of
people participating in the audio conference.

3

voices. Id; R. 83, Schonfeld Decl. ¶ 22. Figuring out how to combine beamforming
and acoustic echo cancellation in a cost-efficient way—while still preserving audio
quality—has been a longstanding challenge in the audio industry. See, e.g., R. 158,
Kellerman Decl. Exh. 2 (“Kellerman 2001”) (“[S]traightforward combinations of the
two techniques either multiply the considerable computational cost of AEC by the
number of array microphones or sacrifice algorithmic performance if the
beamforming is time-varying.”); R. 83, Schonfeld Decl. ¶ 23.
The illustrative claim of the ’186 patent (Claim 7) discloses an efficient
method of combining a beamforming microphone with AEC. U.S. Patent No.
9,635,186 (“’186 Patent”) at Col. 19:48-20:8. The claimed method reduces AEC
processing costs by providing a beamformer capable of picking up a number of audio
signals, which are then combined into a smaller number of “fixed” beams. Id. Col.
2:3-16. AEC is then performed on only the smaller number of fixed beams. Id. Col.
19:65-67. Performing AEC on fixed (as opposed to adjustable) beams reduces the
amount of work for the acoustic echo cancellers, which would otherwise need to
constantly adjust to track the changing beams. Id. Col. 2:3-16. After AEC is
performed, a “signal selection module” selects one or more of the echo-cancelled
signals to transmit to the far end. Id. Col. 20:1-3. The signal selection module also
uses the far-end signal as information to inhibit the change of the near-end signal
selection while only the far-end signal is “active.” Id. Col. 20:3-8.

4

B. Alleged Infringement
The Shure MXA910 is a ceiling-mounted beamforming microphone array. R.
157, Cerra Decl. ¶¶ 7, 13. The MXA910

. R.

169, Cerra Decl. ¶ 20 (sealed). It can, however, be used in combination with a
category of devices called digital signal processors (DSPs for short). Id. Digital
signal processors perform a variety of functions, including acoustic echo cancellation
and mixing or gating audio signals. Id. Shure produces a DSP device called the
Shure P300 Intellimix. Id. ¶ 22. The two other companies named as counterdefendants, QSC and Biamp, also sell DSP devices. Biamp’s line of DSP devices is
called the Tesira/TesiraFORTÉ; QSC’s is known as the Q-SYS. Mot. Prelim. Inj. at
8-9. ClearOne argues that Shure’s MXA910 beamforming microphone, when paired
with a digital signal processors produced by Shure, QSC, and Biamp, practices all
the elements of Claim 7 of the ’186 patent.
II. Preliminary Injunction Standard
The Patent Act authorizes courts to grant injunctions to prevent violations of
patent rights. 35 U.S.C. § 283. To obtain a preliminary injunction, the moving party
must show: (1) a reasonable likelihood of success on the merits; (2) irreparable harm
if an injunction is not granted; (3) a balance of hardships tipping in its favor; and (4)
the injunction’s favorable impact on the public interest. Amazon.com, Inc. v.
Barnesandnoble.com, Inc., 239 F.3d 1343, 1350 (Fed. Cir. 2001). On likelihood of
success, ClearOne must show that (1) it can likely prove that Shure is infringing the
’186 patent and (2) that the ’186 patent will likely withstand Shure’s challenge to its

5

validity. See Genentech, Inc. v. Novo Nordisk A/S, 108 F.3d 1361, 1364 (Fed. Cir.
1997). A preliminary injunction is an extraordinary remedy never awarded as of
right. Wind Tower Trade Coalition v. United States, 741 F.3d 89, 95 (Fed. Cir. 2014)
(citing Winter v. Natural Res. Def. Council, Inc., 555 U.S. 7, 24 (2008)).
III. Analysis
A. Claim Construction
Before digging into the arguments on infringement and invalidity, the Court
must decide what invention the ’186 patent actually claims. Claim construction
requires that the Court determine how a person of ordinary skill in the art would
understand the claim terms. Phillips v. AWH Corp., 415 F.3d 1303, 1313 (Fed. Cir.
2005) (en banc). The claim’s own language is the starting point, but “[c]laims must
be read in view of the specification, of which they are a part.” Markman v. Westview
Instruments, Inc., 52 F.3d 967, 979 (Fed. Cir. 1995). Prosecution history is also “of
primary significance” in determining how a claim should be understood. Id. at 980.
Lastly, extrinsic evidence—that is, expert testimony or any other evidence outside
of the patent and prosecution history—can also be considered, but carries less
weight than intrinsic evidence. Id. at 980-982. Extrinsic evidence is mostly useful
for helping the Court to understand the relevant art and to explain how the
invention works. Phillips, 415 F.3d at 1318-19.
At the preliminary injunction stage, the parties focus on the meaning of three
terms in Claim 7: (1) “fixed beam”; (2) “select with a signal selection module”; and
(3) “inhibit said signal selection module from changing the selection of the combined

6

echo cancelled signals while only the far end signal is active.” See ’186 Patent Col.
19:48-Col. 20:8. The Court will take each in turn.
1. Fixed Beams
The core insight behind the ’186 patent is that processing costs can be
lowered by performing acoustic echo cancellation on a limited number of “fixed”
beams, instead of performing AEC on every incoming microphone signal, or on
moving beams. See ’186 Patent Col. 2:3-16. Shure and ClearOne disagree on the
meaning of the crucial term “fixed beam.” Shure argues that a fixed beam is a
“beam that has non-adjustable filter coefficients.” R. 186, Joint Claim Construction
Chart. To Shure’s way of thinking, this means that a fixed beam is a beam that can
never be adjusted.6 ClearOne, on the other hand, argues that “fixed beams” are
“beam[s] defined by parameters determined before a conference,” or, alternatively,
“beams having non-adjustable filter coefficients during use.” Id.; R. 195, ClearOne
Reply at 3. In other words, ClearOne thinks that the claim refers to beams that are
fixed while the conferencing system is in use (that is, when people are talking), but
which might be capable of being adjusted at other times (before a conference, for
example).
Viewed from the perspective of a skilled artisan, ClearOne’s construction of
“fixed beam” makes more sense than Shure’s, especially in light of the purpose of
the patented method. The point of using fixed beams is to reduce the workload for
the echo cancellers. With adjustable beams, the echo cancellers would need to

6Filter

coefficients are used to change the look direction of a beam. R. 174, Turner
Decl. Exh. 2., Graham Dep. Tr. 103:4-20 (sealed); R. 196, Schonfeld Supp. Decl. ¶¶ 8-9.

7

constantly adjust to changes in the beamformer, resulting in high processing costs
for the AEC devices, which in turn would limit the number of microphones in the
microphone array. See ’186 Patent, Col. 1:60-Col. 2:15; see also R. 158, Kellerman
2001 at 297. But echo cancellation is only needed while the audioconferencing
system is in use, so adjusting the beams before or after a conference makes no
difference to the AEC processing costs.
The ’186 patent’s specification also supports ClearOne’s reading. The
specification explicitly defines “fixed beam” as “a beam that is defined with precomputed parameters rather than being adaptively steered to look in different
directions in real time. The pre-computed parameters are configured prior to use of
the beamforming microphone array in a conference.” ’186 Patent, Col. 8:50-54
(emphasis added). So the specification says outright that fixed beams are beams
with parameters defined “prior to use” in conference, which implies that the beams
could be adjusted before the conference and yet still be considered a “fixed” beam.
Some of the specification’s suggested embodiments confirm this reading. For
example, the specification says that the beamforming microphone can be installed
in different positions in the room, and that the beam pick-up pattern would be
changed depending on the orientation of the conferencing apparatus. ’186 Patent
Co. 7:44-45. These beams would not be considered “fixed” under Shure’s definition,
because they could be adjusted before or after a conference, which confirms that
Shure’s proposed construction is wrong.

8

To refute the specification’s definition, Shure relies heavily on prosecution
history. Specifically, Shure points out that ClearOne added the “fixed beam”
limitation to distinguish its invention from a prior art publication authored by
Matti Kajala, U.S. Pub. No. 2004/0013033 (“Kajala”).7 R. 193, Shure Resp. Br. 8-9.
As explained during the preliminary-injunction hearing, however, Shure’s
prosecution history argument does not hold water. See R. 269, Hearing Tr. 51:15-19
(sealed). The Kajala publication actually promoted the opposite of a fixed beam.
Kajala wrote that the “main advantage” of his invention is that “the filter
coefficients of the beamformer are not fixed but adjustable.… In particular the
adjustable filter coefficients enable the system to continuously and smoothly steer
the look direction of the beamformer.” Kajala ¶ 34. So ClearOne did not actually
disclaim beams fixed during conference in its communications with the patent
examiner; instead, ClearOne merely explained that Kajala contemplated beams
that adjusted constantly during use, in sharp contrast to ClearOne’s fixed (nonmoving) beams. See R. 163, Turner Decl. Exh. 12 at 9.8 This attempt to distinguish
Kajala’s continuously adjusting beams thus does not foreclose ClearOne’s definition
of “fixed beams” as beams that have non-adjustable filter coefficients during use. All

7This

so-called disclaimer was actually made during the application for the ’186
patent’s grandparent application, Application No. 13/493,921. ClearOne assumes, for the
purposes of the preliminary injunction litigation, that a disclaimer in the prosecution
history of the grandparent application is binding on the child patent. ClearOne Reply at 4
n.8.
8Exhibit 12 to the Turner Declaration appears to have been misfiled in CM/ECF. The
link on the docket designated as Turner Exhibit 12 actually links to Turner Exhibit 10. See
R. 163-12. The Court was able to use the paper copy of the exhibit submitted by Shure to
write this opinion, but Shure should file a corrected version of this docket entry as soon as
possible.

9

in all, ClearOne has the better of the argument on the construction of fixed beams,
so the Court will use ClearOne’s definition of fixed beams: beams defined by
parameters determined before a conference.
2. Select with a Signal Selection Module
The next disputed part of Claim 7 is the phrase “select with a signal selection
module one or more of the combined echo cancelled signals for transmission to the
far end.” Shure argues that both “signal selection module” and “select” are in need
of construction, while ClearOne insists that the terms are clear on their face. See R.
186, Joint Claim Construction Chart. Here again, ClearOne has the better of the
arguments.
a. Signal Selection Module
Shure asserts that the term “signal selection module” is indefinite, or,
alternatively, that it is a means-plus-function claim and thus triggers 35 U.S.C.
§ 112(f). Section 112(f) applies when a claim limitation is stated in a way that
identifies the means and function of the limitation, but does not identify “structure,
material, or acts in support thereof.” 35 U.S.C. § 112(f). If Section 112(f) applies,
then the claim must be construed to cover the structure disclosed in the
specification and equivalents. Id. There is a weak presumption that if a limitation
does not use the word “means,” then the claim is not subject to Section 112(f).
Williamson v. Citrix Online, LLC, 792 F.3d 1339, 1349 (Fed. Cir. 2015). The
ultimate question is “whether the words of the claim are understood by persons of

10

ordinary skill in the art to have a sufficiently definite meaning as the name for
structure.” Id.
In Shure’s view, the phrase “signal selection module” is an empty term.
Shure points out that “module” is so generic that it is really a substitute for the
word “means.” See Shure. Resp. Br. 10-11; Williamson, 792 F.3d at 1350. Some of
Shure’s experts testified that the term “signal selection module” does not have
defined meaning for persons of skill in the art. Dr. Wilfrid LeBlanc, for example,
opined that he has never heard the term “signal selection module” used in the audio
signal processing field. R. 160, LeBlanc Decl. ¶ 43. One of the inventors named on
the ’186 patent even testified that he has “no idea” what a signal selection module
is. R. 163, Turner Decl. Exh. 7, Thurston Dep. Tr. 29:12-15.
But even if the term “signal selection module” is unclear when viewed in
isolation, it is clear enough in context to avoid a means-plus-function construction.
“Structure may [ ] be provided by describing the claim limitation’s operation, such
as its input, output, or connections,” considered in the context of the invention.
Apple, Inc. v. Motorola, Inc., 757 F.3d 1286, 1299 (Fed. Cir. 2014), overruled on
other grounds, Williamson, 792 F.3d at 1349. Structure may also be provided by
considering the term in the context of the specification and prosecution history. Id.
Here, Claim 7 and the specification provide enough information about the “signal
selection module” to make its structure apparent to a skilled artisan. According to
the claim, the signal selection module “select[s]… one or more of the combined echo
cancelled signals for transmission to the far end” and “uses the far-end signal… to

11

inhibit… changing the selection of the combined echo cancelled signals.” ’186
Patent, Col. 20:1-7. From this description, a skilled artisan would understand that
the signal selection module must be a device that can select one or more desired
signals from multiple incoming signals, and transmit the selected signals to the far
end. Those devices are well known in the art. See, e.g., R. 196, Schonfeld Decl. ¶ 13;
R. 196, Loy Decl. ¶¶ 29-30; see also R. 160, LeBlanc Decl. ¶ 44 (“A multiplexer… is
something a POSITA would understand and recognize.”).
The specification provides even more information about the structure of the
signal selection module. In the description of one of the disclosed embodiments of
the invention, the specification gives an example of a signal selection module, and
says that the signal selection module is a “selector.” Specifically, a “signal selection
module (selector) 901, such as a multiplexer… selects one or more of the M combined
echo cancelled signals.” Col. 12:43-50 (emphasis added). The description of the
module as a “selector” and the example of a “multiplexer” provide yet more direction
for the skilled artisan, affirming that the signal selection module is a selector, or a
category of devices that select signals, a number of which are recognized in the art.
See R. 160, LeBlanc Decl. ¶¶ 44, 57 (describing multiplexers and automixers); see
also Apple v. Motorola, 757 F.3d at 1300 (“The limitation need not connote a single,
specific structure; rather, it may describe a class of structures.”); Personalized
Media Commc’ns, LLC v. Int'l Trade Comm'n, 161 F.3d 696, 705 (Fed. Cir.
1998) (“Even though the term ‘detector’ does not specifically evoke a particular
structure, it does convey to one knowledgeable in the art a variety of structures

12

known as ‘detectors.’”). The term “signal selection module” is neither indefinite nor
a trigger for § 112(f).
b. Select
Shure’s next argument is labeled as a non-infringement argument, but it
actually depends on the construction of the word “select” in Claim 7, so the Court
will address it here. Shure argues that “selecting” signals implies choosing some
signals to the exclusion of others, as opposed to combining all the signals into one
blended signal. Shure Resp. Br. 24-25; R. 160, LeBlanc Decl. ¶ 57 (“Selection is, by
definition, an exclusionary process.”). This argument is rejected. It is true that some
devices, such as multiplexers, select signals by switching off the undesired signals
and transmitting only the desired signals. R. 160, LeBlanc Decl. ¶¶ 57-58. But other
devices select signals by attenuation—that is, they attenuate the undesired signals
and amplify the desired signals to form one combined signal. See R. 160, LeBlanc
Decl. ¶ 58. Selection by attenuation is an accepted method of signal selection in the
audio industry, known to skilled artisans, as even Shure’s expert agrees. R. 244,
Patel Decl. Exh. 18, Kellerman Dep. Tr. 131:19-132:10 (“Q: Is selection by
attenuation something that a person of ordinary skill in the art at the time of the
invention would have known? / A: Yes.”); see also R. 163, Turner Exh. 6, Schonfeld
Dep. at 87:15-88:4. Even the language Shure uses to describe how its own
automixer combines signals—calling unattenuated signals “gated on,” and
attenuated signals “gated off”—confirms that attenuation is widely understood as a
form of selection. See R. 157, Cerra Decl. ¶ 10. Because selection by attenuation is a

13

recognized method of signal selection in the art, there is no reason to narrow the
construction of “select” to exclude selection by attenuation.9
2. Inhibit While the Far End is Active
Last up of the claim construction issues is the final step of the claimed
method: the signal selection module “uses the far end signal as information to
inhibit said signal selection module from changing the selection of the combined
echo cancelled signals while only the far end signal is active.” ’186 Patent Col. 20:48. On first glance, this language is opaque. ClearOne argues that this limitation
refers to “last mic on” or “last mic hold,” an old and well-known technique in the
audioconferencing industry. See Mot. Prelim. Inj. at 13 n.10, 19; R. 169, Cerra Decl.
¶ 11. The last mic on feature leaves the last active near-end signal on while far-end
speakers are talking. The goal of last mic on is to transmit some near-end
background noise to the far end to reassure far-end speakers that the call has not
dropped. See R. 157, Cerra Decl. ¶ 11.
Shure and ClearOne go back and forth over the exact nuances of the words
“inhibit” and “while,” and ask the Court to interpret those terms.10 See Shure Resp.
9Shure’s

expert Dr. LeBlanc argues that attenuation is “functionally distinct” from
selection by exclusion, but does not explain how they differ in practice. R. 160, LeBlanc
Decl. ¶ 58. From a technological perspective, the difference between attenuation and
selection might be one of degree rather than kind. See, e.g., R. 244, Patel Decl. Exh. 18,
Kellerman Dep. Tr. 132:2-5 (“And if my voting stage multiplies all incoming signals by
zero—which is attenuation by infinitely many dBs—and just retains one, then it’s a
selector.”). At the preliminary injunction hearing, Shure’s counsel argued that accepting the
idea of selection by attenuation would start a slide down a slippery slope: who is to say how
much a signal must be attenuated in or amplified in order to “select” it? See R. 269, Hearing
Tr. 121:3-25 (sealed). But the slippery slope argument cuts the other way as well: why is
attenuating some signals to near-zero any different than excluding them? The nonattenuated signal is still the “selected” one, especially if whatever is receiving the signals
just disregards the attenuated signal.

14

Br. at 14-15; ClearOne Reply at 9-10. But it is not at all clear why the Court must
do so. The parties’ differences of opinion on “inhibit” and “while” do not seem to
have any impact on whether the accused devices infringe (at least as disputed at
this stage of the case), or whether the ’186 patent is valid. This means that the
interpretation of those terms does not affect ClearOne’s likelihood of success on the
merits one way or the other. Indeed, when the Court expressed confusion at the
hearing about the relevance of the “inhibit … while” limitation, the parties were not
able to satisfactorily explain the dispute’s importance for the preliminary injunction
decision.11 See R. 269, Hearing Tr. 36:18-37:7; 60:21-62:14 (sealed). In the interest of
avoiding advisory pronouncements on what these claim terms might mean, the
Court declines to interpret “inhibit” or “while.”
B. Infringement
With claim construction on the books, the next question is infringement. A
method patent is not infringed unless every step of the patented claim is carried
out. Limelight Networks, Inc. v. Akamai Techs., Inc., 134 S. Ct. 2111, 2117 (2014).
In order to show entitlement to a preliminary injunction, ClearOne must

10Shure

also asserts again that the term “signal selection module” fails to disclose
structure, but, as explained above, the Court disagrees.
11Later in the hearing, Shure’s counsel explained that ClearOne’s construction of the
word “while” could mean that the ’186 patent was anticipated by Kellerman’s 1997 article.
R. 269, Hearing Tr. 136:17-24 (sealed). As discussed below, however, the presence or
absence of the last mic on feature in the Kellerman references does not make a difference to
the ultimate question of validity. The last mic on feature was so well known and widely
used that it would be obvious to combine it with the kind of device proposed by Kellerman.
See R. 157, Cerra Decl. ¶ 11 (“[E]ssentially everyone in the industry has used “Last Mic On”
for many years.”). So the only question is whether Kellerman disclosed the other limitations
in the ’186 patent. If he did, then the patent is invalid, whether or not Kellerman disclosed
last mic on.

15

demonstrate that it will likely be able to prove that Shure is infringing the ’186
patent. Amazon.com, 239 F.3d at 1350. Shure argues that ClearOne cannot do so
because the devices ClearOne accuses of infringing the ’186 patent—the MXA910
and the three accused digital signal processors—do not perform all the steps of
Claim 7. ClearOne (of course) contends that they do. Shure also takes issue with
ClearOne’s claims of joint and induced infringement, levying different arguments
against each theory.
1. Whether the Accused Devices Practice the Patented Method
a. Fixed Beams
Shure’s first non-infringement argument is that its MXA910 microphone does
not have “fixed” beams, and so does not infringe the ’186 patent. Shure Resp. Br. at
23-24. This argument depends heavily on Shure’s interpretation of “fixed” beams as
beams that cannot be adjusted at any time. Unfortunately for Shure, as discussed
above, the correct interpretation of the “fixed beams” is beams fixed during a
conference. On that definition, the Shure device practices the limitation. Although
the Shure beams are capable of being adjusted during conference—that is, capable
of being used in a non-infringing way—it is clear that most of the time, the beams
are fixed as defined by the ’186 patent. Yes, the Shure microphone does has an autoadjust feature that adjusts beam patterns during use, see R. 160, LeBlanc Decl.
¶ 56, but the auto-adjust feature is not enabled by default; users must enable it
manually. R. 196, Schonfeld Supp. Decl. ¶ 35 (sealed). In theory, users could
manually adjust the beams during conference, but Shure’s Vice President of

16

Engineering for Conferencing and Audio Processing, David Cerra, testified that he
has never seen anyone do so, even though he has observed the MXA910 in action
many times. R. 199, Giza Decl. Exh. 3, Cerra Dep. at 144:17-23 (sealed). Indeed,
Cerra was not even sure how users would go about adjusting the beams during
conference. Id. at 145:13-25 (sealed). If Shure’s Vice President of Engineering is
unsure how beams could be adjusted during use, then it is very unlikely that
Shure’s customers are adjusting the beams. This means that, in practical terms, the
beams of the Shure device usually end up being “fixed” as described in the 186
patent.
b. Signal Selection
Shure’s next argument is that the accused digital signal processer devices do
not “select” signals in the way envisioned by the ’186 patent. The first version of
this argument is that the accused devices have automixers (which combine all
signals for transmission to the far end) as opposed to multiplexers (which exclude
some signals before transmission). See Shure Resp. Br. at 24-25. But the Court has
already rejected the argument that selection necessarily implies exclusion. See
Section III.A.2.b, above. The accused devices’ automixers do “select” signals: they
select by attenuation. See R. 157, Cerra Decl. ¶ 10. The argument that the accused
devices do not select signals fails.
The other version of Shure’s signal selection argument is that the accused
devices do not infringe because they do not select signals based on the signal’s
direction of arrival. See Shure Resp. Br. 25-26. Claim 7, however, does not specify

17

that the signal selection module must use direction of arrival to select; only that it
must (in some way) select signals. See ’186 Patent, Col. 20:1-3. If Shure had
prevailed on its means-plus-function claim construction argument, then it might
have been able to establish that the only structures disclosed in the specification
use direction of arrival to select signals. See, e.g., ’186 Patent at Col. 12:43-50, Col.
13:30-35. But, as it stands, there is no reason to think that Claim 7 requires the
signal selection module to use direction of arrival. Indeed, the principles of claim
construction point the other direction: Claim 7 does not mention direction of arrival,
yet—in contrast—one of its dependent claims, Claim 12, does. ’186 Patent, Col
20:26-30 (“The method of claim 7 wherein said processor is further configured to
perform a direction of arrival determination… to select one of the plurality of
combined echo cancelled signals.”) (emphasis added). The explicit inclusion of a
direction-of-arrival determination in one of Claim 7’s dependent claims suggests
that Claim 7 itself is not limited to signal selection via direction-of-arrival
determination. See Eli Lilly and Co. v. Teva Paternal Medicines, Inc., 845 F.3d
1357, 1371 (Fed. Cir. 2017) (The doctrine of claim differentiation [ ] presumes that
dependent claims are of narrower scope than the independent claims from which
they depend.”) (cleaned up).12 So the second version of the “selection” argument also
does not help Shure.

12This

opinion uses (cleaned up) to indicate that internal quotation marks,
alterations, and citations have been omitted from quotations. See, e.g., United States v.
Reyes, 866 F.3d 316, 321 (5th Cir. 2017).

18

c. Use of the Far-End Signal to Inhibit
Shure’s last non-infringement argument is that the accused devices do not
use the far-end signal as information to inhibit changing of the signal selection. The
gist of this argument seems to be that the accused digital signal processors cannot
“use” the far-end signal because they do not receive it.13 But even if the accused
devices do not directly receive the far-end signal, they could still use it as
information to inhibit a change in signal selection. In fact, the accused devices must
use the far-end signal as information to inhibit changes in signal selection. The idea
of the “last mic on” feature is that when only far-end talkers are active, the nearend processor transmits only the last active near-end signal. See R. 157, Cerra Dec.
¶ 11. The far-end signal has to be used as information to make this work. If the
selection module did not somehow use the far-end signal, then the near-end
microphones would pick up on the far-end signal as if it were a near-end talker.
This would result in the near-end mic selector sending the far-end talkers’ own
signal back to them—changing the signal selection during the far-end talk period.
See Shure Resp. Br. at 38; R. 157, Cerra Decl. ¶¶ 11, 30 (explaining that the Shure
automixer gates on any signal that exceeds an assigned threshold); R. 163, see also
Turner Decl. Exh. 2, Graham Dep. 37:22-38:9 (explaining that the echo canceller

13ClearOne

disputes this, arguing that at least the Shure P300 receives the far-end
signal. The basis for this argument is a “signal flow diagram” depicting the setup of the
Shure P300 digital signal processor platform. This diagram appears to show the far-end
signal going into the Shure automixer. See R. 204, Giza Decl. Exh. 111, LeBlanc Dep. 247:27 (sealed). At the hearing, Shure’s counsel disagreed that the P300 uses the far-end signal.
R. 269, Hearing Tr. 124:1-2 (sealed). It is not obvious how the signal flow diagram should be
read; but, as explained in the text, the Court’s conclusion on infringement of this step does
not depend on the automixer directly receiving the far-end signal.

19

removes residual echo, which prevents other microphones from gating on during
far-end activity). So, for last mic on to work properly, the selector must either be
able to recognize the far-end signal as the far-end signal (to avoid treating it as a
near-end talker), filter out the far-end signal to prevent it from being transmitted,
or recognize that only the far-end is active and halt the signal selection process
accordingly. This means that last mic on can only work if the selector uses the farend signal as a reference. Both sides agree that the accused devices have the last
mic on feature,14 so the accused devices practice this part of the claimed method.
2. Joint Infringement
ClearOne does not claim that any one of Shure’s microphones on its own
practices all steps of the claimed method. Instead, it argues that Shure’s MXA910
microphone infringes when it is used in combination with the digital signal
processors produced by Biamp, QSC, and Shure itself. It is worth noting that Shure
controls both the MXA910 and the P300 (Shure’s digital signal processor), so Shure
could infringe the ’186 patent even without involving Biamp or QSC. But if Shure
and Biamp or Shure and QSC are jointly infringing, the scope of the infringement is
much larger, which is relevant to the magnitude of harm and the reach of the
potential injunction, so the Court will address the joint infringement theory of
liability.

14See

R. 199, Giza Decl. Exh. 3, Cerra Tr. 134:22-24 (last mic on is enabled by default
in the P300 Intellimix); R. 200, Giza Decl. Exh. 31, Rosenboom Tr. 166:8-10 (last mic on is
enabled by default in the Q-SYS); R. 200, Giza Decl. Exh. 32, Snook Tr. 160:9-22 (Biamp
recommends using last mic on).

20

When more than one actor performs the steps of a patented method, the
accused infringer is liable only if (1) it directs or controls the others’ performance of
the method steps or (2) if the actors have formed a joint enterprise. Akamai Techs.,
Inc. v. Limelight Networks, Inc., 797 F.3d. 1020, 1022 (Fed. Cir. 2015). ClearOne
does not argue that Shure directed or controlled Biamp or QSC’s performance of any
method steps, so the only question is whether Shure formed a joint enterprise with
Biamp or QSC. In Akamai Technologies, Inc. v. Limelight Networks, Inc., the
Federal Circuit adopted the definition of joint enterprise set out in the Second
Restatement of Torts. 797 F.3d. at 1023. A joint enterprise requires proof of four
elements: (1) an agreement, express or implied, among the members of the group;
(2) a common purpose to be carried out by the group; (3) a community of pecuniary
interest in that purpose; and (4) an equal right to a voice in the direction of the
enterprise, which gives an equal right of control. Id. (citing Restatement (Second) of
Torts § 491 cmt.c). Under the Restatement approach, a joint enterprise need not be
a formal, contractual partnership; looser arrangements can suffice. See Restatement
(Second) of Torts § 491 cmt.b (“A joint enterprise includes a partnership, but it also
includes less formal arrangements for cooperation, for a more limited period of time
and a more limited purpose.”).
ClearOne will likely be able to prove its joint-enterprise theory. The evidence
on the record shows that Shure coordinated extensively with both Biamp and QSC
to make the MXA910 more compatible with Biamp’s and QSC’s digital signal
processors. For example, Shure worked with both Biamp and QSC to create

21

software and plugins that would allow the MXA910 to pair with Biamp and QSC’s
products. See R. 199, Giza Decl. Exh. 12, Wiggins Dep. 92:21-94:2 (sealed); R. 200,
Giza Decl. Exh. 31, Barbour Dep. 60:2-61:22 (sealed); R. 204, Giza Decl. Exhs. 124129 (sealed). The goal of these efforts was to make it easier for customers to use the
devices together. See, e.g., R. 199, Giza Decl. Exh. 12, Wiggins Dep. 94:3-95:8
(sealed); R. 200, Giza Decl. Exh. 32, Snook Dep. 210:24-211:15 (sealed); R. 204, Giza
Decl. Exh. 129 (sealed). Shure also worked with both Biamp and QSC to inform
customers about their products’ interoperability. These efforts included press
releases touting the parties’ “partnership[s]” and “integrated compatibility,” as well
as the creation of instructional materials to inform customers about how to
integrate the devices. See R. 200, Giza Decl. Exhs. 20-25 (sealed); R. 88, Giza Decl.
Exhs. A-F, Q.
Interoperability was good for business all around. It was in QSC and Biamp’s
interest to make their products compatible with as many different devices as
possible. Customers preferred and demanded interoperability, and meeting
customer demands meant more sales. See R. 200, Giza Decl. Exh. 31, Barbour Dep.
53:3-54:20 (sealed); Exh. 32, Snook Dep. 244:6-16 (sealed). Shure had an equally
powerful financial interest in promoting interoperability. The market for installed
audioconferencing is facilitated by system integrators, who liaise between
customers and companies like Shure. R. 89, Waadevig Decl. at 17-18. Most
integrators use either Biamp or QSC products, but not both. R. 199, Giza Decl. Exh.
12, Wiggins Dep. 95:24-96:10 (sealed). In order to maximize sales, it was in Shure’s

22

best interest to make the MXA910 compatible with both QSC and Biamp’s signal
processing platforms. Id. at 95:13-96:17; R. 203, Giza Decl. Exh. 81 (sealed). Shure,
Biamp, and QSC responded to these financial incentives by making their products
easier to combine.
All these actions satisfy the first three elements of the joint-enterprise test.
Shure had informal agreements with both Biamp and QSC to further a common
purpose of increasing interoperability and marketing the products’ compatibility.
Shure, Biamp, and QSC entered into these agreements because they wanted to
increase sales, which establishes the pecuniary-interest element. As for the final
element—equal right to control the enterprise—it is met by the fact that the parties
had to work together to undertake the joint project of promoting interoperability.
Contrary to Shure’s assertions, ClearOne does not need to establish that Shure
exercised control over QSC or Biamp; it need only show that Shure and Biamp or
QSC both controlled their shared enterprise. See Restatement (Second) of Torts
§ 491 cmt.c (“an equal right to a voice in the direction of the enterprise”) (emphasis
added). It is clear from the communications between Shure, Biamp, and QSC that
each had the ability to direct and control the joint efforts to promote product
integration and marketing. Shure and QSC employees worked together on the
language of a joint press release announcing their partnership. See R. 200, Giza
Decl. Exhs. 20-25 (sealed). Emails between marketing staff show that each party
was exercising control over the joint press releases, including providing feedback
and edits to the draft documents. See R. 200, Giza Decl. Exh. 22, 24 (sealed). Each

23

party also had control over the decision whether to make their products compatible,
and could have opted out of the compatibility efforts at any time. See R. 200, Giza
Decl. Exh. 32, Snook Dep. 237:21-238:13 (sealed); Exh. 31, Barbour Dep. 43:19-24
(sealed). The parties’ interactions made it clear that “all [had] a voice in directing
the conduct of the enterprise.” See Restatement (Second) of Torts §491 cmt.b. So, on
this record, all the elements of joint enterprise have been established.15
C. Validity
Next up is the question of the ’186 patent’s validity. This is a crucial question,
because if Shure can demonstrate a “substantial question” of the patent’s validity,
then the preliminary injunction cannot issue. Amazon.com v. Barnesandnoble.com,
Inc., 239 F.3d 1343, 1350-51 (Fed. Cir. 2001). A substantial question exists if the
challenger raises an invalidity defense that the patentee cannot prove lacks
substantial merit. Id. (citing Genentech, Inc. v. Novo Nordisk, A/S, 108 F.3d 1361,
1364 (Fed. Cir. 1997)). The Court will address each of Shure’s major invalidity
arguments.16

15ClearOne

also argues that Shure (again, along with QSC or Biamp) has induced
system integrators and end users to infringe. Mot. Prelim. Inj. at 17-20. It is not necessary
to address this argument in light of the Court’s holding on joint infringement. The harm
from Shure’s joint-enterprise infringement would be enough to justify issuing an injunction
if all other requirements were met, see Section III.D, below, so the outcome on induced
infringement would not impact the overall result.
16ClearOne argues that Shure did not disclose its invalidity theories based on the
ClearOne BMA, the ClearOne XAP 800, Kellerman 2001, or Kajala in its initial invalidity
contentions as required by Local Patent Rule 2.3. ClearOne Reply at 30 n.39. But Shure did
disclose Kellerman 2001, see R. 205, Giza Decl. Exh. 148, Shure’s 2.3 Contentions at 5-8,
Exh. B at 26-50 (sealed). It makes sense that Shure’s invalidity contentions would evolve as
discovery progressed and Shure learned more about ClearOne’s invention and legal
theories. The Local Patent Rules do allow (and even expect) parties to amend and update
their contentions. See Local Patent Rules 3.1.-3.2 Shure updated its invalidity contentions

24

1. The ClearOne BMA and Converge Pro
ClearOne launched its beamforming microphone, the BMA, in 2012. In
combination with the ClearOne ConvergePro, a digital signal processor, the BMA
practices the patented method. See Mot. Prelim. Inj. 8-9; R. 56, First Am.
Counterclaim ¶¶ 34-35. The ’186 patent application was not filed until 2016. Shure
argues that ClearOne’s early sales of the patented technology render the ’186 patent
invalid. See 35 U.S.C. § 102(a) (no entitlement to a patent if the invention was “in
public use, on sale, or otherwise available to the public before the effective filing
date of the claimed invention”); Shure Resp. Br. at 29-30. ClearOne responds that
the elements of the ’186 patent were disclosed in earlier-filed patent applications in
the same family of patents, so the pre-2016 sales do not invalidate the ’186 patent.
ClearOne Reply at 30-31.
The Patent Act gives a patent the benefit of an earlier-filed application if,
among other things,17 the earlier-filed application disclosed the invention. See 35
U.S.C. § 120. In this case, at least one of the prior applications identified by
ClearOne discloses the claimed invention. Specifically, all elements of Claim 7 of the
’186 patent were described in provisional patent application number 61/495,968 (the
’968 application). See R. 194, Loy Decl. ¶ 38. Shure concedes that the ’968
application discloses most of the elements of the invention, but argues that it lacks
the “last mic on” limitation (requiring the signal selection module to limit change of

accordingly, see R. 244, Patel Decl. Exh. 4, Shure’s Amended 2.3 Contentions at 4-6, so
there is no reason to exclude these theories for noncompliance with the Local Patent Rules.
17There are other requirements for priority, but none are relevant here because
Shure does not dispute that they are met. See 35 U.S.C. § 120.

25

selection while the far end is active). But that is wrong: the ’968 application states
that “The ‘RX ONLY’ state is used as the activity of the far-end audio. To further
improve the direction-of-arrival activity, the SRP-PHAT is calculated and the DOA
is updated only if the local activity is present at least a few frames of audio at a
stretch; otherwise the old value of the DOA is used for processing.” ’968 Application,
App’x at 13. Stripped of the technical jargon, this means that, when the far-end
audio is active, signal selection occurs only if there is significant near-end activity;
otherwise the old signal is transmitted to the far end. See R. 194, Loy Decl. ¶ 44. In
even simpler terms, it discloses inhibiting a change of signal selection while only
the far end is active. So Shure’s priority argument fails, and the ’186 patent is not
invalid based on ClearOne’s prior sales.
2. The ClearOne XAP 800
Under 35 U.S.C. § 103, patents should not be granted if the claimed invention
would have been obvious before the filing date to a person of ordinary skill in the
art. The framework for evaluating obviousness was set forth by the Supreme Court
in Graham v. John Deere Co., 383 U.S. 1, 17-18 (1966), and KSR Int'l Co. v. Teleflex
Inc., 550 U.S. 398, 406 (2007). Factors to be considered include the scope and
content of the prior art, the differences between the prior art and the claims at
issue, and the level of ordinary skill in the art; as well as secondary considerations
like commercial success, long-felt need, and the failure of others to arrive at the
invention. Graham, 383 U.S. at 17-18.

26

Shure argues that another of ClearOne’s own microphones, the XAP 800,
renders the method of the ’186 patent obvious. The XAP 800 is a digital signal
processor. This processor has the last mic on feature, performs echo cancellation on
individual audio signals, and has a signal selection device (a gating automixer). See
R. 160, LeBlanc Decl. Exh. 7, XAP 800 Installation & Operation Manual at 1, 45; R.
174, Turner Decl. Exh. 2, Graham Dep. Tr. 50:5-14 (sealed). Shure argues that the
claimed invention was a predictable variation in light of the XAP 800, because all
the invention does is add a beamformer to the XAP 800. See Shure Resp. Br. 31-33.
This argument misses the mark. The XAP 800 had eight individual
microphones, and one acoustic echo canceller for each microphone signal. R. 163,
Turner Decl. Exh. 7, Thurston Dep. Tr. 84:4-15. The key insight of the ’186 patent,
on the other hand, is to combine the microphone signals from the beamformer into a
smaller number of fixed beams, and then perform AEC on the fixed beams. See ’186
Patent Col. 19:58-67. The point is to save on AEC processing costs while still
allowing for a large number of microphones. See ’186 Patent Col. 1:60-Col 2:9. The
XAP 800, on the other hand, suffered from the limitations of the pre-’186 art: echo
cancellation had to be performed on each microphone signal, so the number of
microphones was limited. So the XAP 800 does not itself render the ’186 patent
obvious.
3. Kellerman 2001
Shure’s most serious invalidity argument is that the ’186 patent is obvious in
light of a 2001 book chapter published by Dr. Walter Kellerman, entitled “Acoustic

27

Echo Cancellation for Beamforming Microphone Arrays.” (To avoid this mouthful of
a title, call it “Kellerman 2001”). See R. 158, Kellerman Decl. Exh. 2 (“Kellerman
2001”). Kellerman’s 2001 book chapter was at the heart of a recent opinion by the
Patent Trial and Appeal Board, which initiated inter partes review of the ’553
patent (a sister patent to the ’186 patent). After considering Shure and ClearOne’s
arguments on validity—which appear to have been similar to their arguments in
this case—the PTAB held that there was a reasonable likelihood that Shure will
prevail on its argument that the illustrative claim of the ’553 patent is obvious in
light of Kellerman 2001. See R. 244, Patel Exh. 35, PTAB Opinion, Case No.
IPR2017-01785 at 11-14. The ’553 patent’s claims are very similar to the ’186
patent’s claims,18 so the PTAB’s opinion on the ’553 patent is persuasive authority
in the Court’s analysis of the ’186 patent’s validity. It is true, as ClearOne points
out, that the PTAB opinion is not binding on this Court. But at this stage, the Court
agrees that Kellerman 2001 is similar enough to the ’186 patent to raise a
substantial question of the patent’s validity.
Kellerman 2001 proposes a method for combining acoustic echo cancellation
and beamforming. R. 158, Kellerman 2001 at 281.19 Kellerman begins by noting the
challenges of combining AEC and beamforming—the same problems the ’186 patent
tries to solve—and proposes a fix: “decompose[]” the beamformer “into a timeinvariant and a time-varying part in the sequel, with AEC acting only on the output
of the time-invariant part.” R. 158, Kellerman 2001 at 297. Shure argues that this is
18Claim

1 of the ’553 patent has all the same elements as Claim 7 of the ’186 patent,
except for the last mic on limitation.
19For ease of reference, the Court will use the textbook’s own page numbers.

28

the same idea as the method outlined in the ’186 patent: perform AEC only on fixed
(“time-invariant”) beams and then select which beam to transmit to the far end.
Like the ’186 patent, Kellerman 2001 envisions that cost savings will be realized by
having fewer fixed beams than microphones. R. 158, Kellerman 2001 at 299.20 In
other words, Kellerman saw the same problem as the ’186 patent (the problem of
efficiently combining AEC and beamforming) and arrived at the same solution (save
on AEC costs by performing AEC on a smaller number of fixed beams).
Not surprisingly, ClearOne advances a number of arguments to try to
distinguish Kellerman 2001. First, ClearOne argues that Kellerman was interested
in adaptive beamforming, and that his book chapter taught away from fixed beams.
It is true that Kellerman was interested in promoting what he called “time-varying”
beamforming. R. 158, Kellerman Decl. ¶ 16; R. 158, Kellerman 2001 at 281
(describing methods for integration of AEC into time-varying beamforming). But, as
Kellerman explained, his chapter describes a beamformer that is adaptive in the
system sense. R. 204, Kellerman Sur-Reply Decl. ¶ 5. Kellerman’s “time-varying
part” of the conferencing apparatus refers to the conferencing system’s ability to
select desired signals for transmission to the far end (what the ’186 patent calls
“signal selection” and Kellerman calls “voting”), not the steering of the microphone
beams themselves. Id. ¶¶ 5-7; R. 158, Kellerman 2001 at 299-300; cf. R. 158,
Kellerman Decl. Exh. 4, “A Self-Steering Digital Microphone Array” (“First, fixed
beams are formed… and second, a voting algorithm selects the beams that should
20In

Kellerman’s own words: “Thus, if M [the number of fixed beamforming filters] <
N [the number of microphones]… AEC operates at a reduced computational cost.” R. 158-2,
Kellerman Decl. Exh. 2 at 299.

29

contribute to the output signal.”). The Kellerman chapter does not teach away from
fixed beamforming (in the sense of the ’186 patent); it envisions fixed beams as an
integral part of an adaptive conferencing system. R. 204, Kellerman Sur-Reply Decl.
¶ 6; R. 158, Kellerman 2001 at 297-299.
ClearOne points to parts of the Kellerman chapter that appear to suggest
that Kellerman’s so-called “time-invariant” beams might actually be updated during
conference. In particular, Figure 13.8 of the Kellerman chapter shows a box labeled
“Beam design and Control” providing input to the fixed beamformer. R. 158,
Kellerman 2001 at 299; see R. 265, Loy Sur-Reply Decl. ¶¶ 17-19. Here it is:

ClearOne admits that it is not exactly clear what the box labeled “Beam design and
Control” does, but argues that it must be conveying information in real time,
presumably to update the so-called fixed beams. R. 265, Loy Sur-Reply Decl. ¶ 19;
30

but see R. 240, Kellerman Sur-Reply Decl. ¶ 9 (“[S]imply allowing a fixed
beamformer to receive data does not convert it into an adaptive beamformer.”).
Other parts of the Kellerman chapter also seem to suggest that Kellerman’s timeinvariant beams could be updated during a conference, which would render them
not “fixed” in the sense of the ’186 patent. For example, Kellerman suggests that in
some situations, the beams would adjust during a “training phase” at the beginning
of a conference, or even update continuously. R. 158, Kellerman 2001 at 300;21 see
also R. 217, Morrow Decl. Exh. C, Kellerman Dep. 93:22-94:6.22
Beams that are adjusted during conference are not, of course, “fixed beams”
under the Court’s interpretation of the ’186 patent. Adjusting the beams during
conference would lead to higher AEC processing costs, which is what the ’186 patent
tries to avoid. But the fact that Kellerman discloses the option of updating the fixed
beams during conference does not change the fact that his book chapter first
disclosed the basic idea of holding the beams fixed. Indeed, Kellerman seems to
envision that beam updating would only need to happen in more complex
conferencing scenarios, such as situations where there are “several desired sources
or moving desired sources.” R. 158, Kellerman Decl. Exh. 2 at 299-300. A skilled
artisan would recognize that the best way to limit AEC processing costs would be to

21“[L]earning

of optimum beamformers for deciding upon [the fixed beams] can be
carried out during an initial training phase only, or continuously.” R. 158, Kellerman 2001
at 300.
22“Q: The adaptive beamformer also updates the coefficients for the fixed
beamformer, and you said, for example, on a level of seconds. / A: For example. Or even less.
So for example, in this room, we would initially run an adaptive beamformer which pick our
two voices mainly, right, and learns the background noise statistics. And then we would use
it as a fixed beamformer for the rest of the session.” R. 217, Kellerman Dep. 93:22-94:6.

31

not update the fixed beams during use. For a conference with seated participants,
the beams might not be updated at all. See R. 240, Kellerman Sur-Reply Decl. ¶ 8;
see also R. 158, Kellerman Decl. Exh. 5 (“Kellerman 1997”) at 222 (“Assuming
seated participants, the [beamforming] filters must be updated very infrequently.”).
The idea proposed in the Kellerman chapter is close enough to the crucial steps of
the ’186 patent—perform AEC only on a small number of fixed beams, then select
from those beams for transmission to the far end—that the method of the ’186
patent would likely have been obvious to a person of skill in the art in light of
Kellerman.
The fact that Kellerman 2001 did not describe “last mic on” does not change
this conclusion. Last mic on was a well-known industry feature for decades before
the publication of the Kellerman chapter or the issuance of the ’186 patent. See R.
157, Cerra Decl. ¶ 11 (“[E]ssentially everyone in the industry has used ‘Last Mic On’
for many years.”); ClearOne Reply at 2 n.3 & R. 198, Giza Decl. Exh. 109 (noting
that Bell Labs invented last mic on in 1973). ClearOne’s own devices have long
made use of last mic on. See R. 163, Turner Decl. Exh. 7, Thurston Dep. 66:3-9; R.
160-7, LeBlanc Decl. Exh. 7, XAP 800 Installation & Operation Manual at 45; R.
163, Turner Decl. Exh. 2, Graham Dep. 28:22-29:17. The benefits of last mic on are
obvious: last mic on prevents the impression of a dropped call, and so improves the
user experience. See R. 82, Graham Decl. ¶¶ 13-14; R. 157, Cerra Decl. ¶¶ 11-12. It
would not tax the imagination of a skilled artisan to recognize that last mic on

32

would improve a conferencing apparatus that practiced the method described by
Kellerman.
ClearOne next points to the secondary considerations of the obviousness
inquiry, which include commercial success, long-felt but unsolved need, and the
failure of others to arrive at the invention. KSR, 550 U.S. at 399. It is true that the
secondary considerations do cut in ClearOne’s favor. ClearOne received industry
awards for innovation for its beamforming microphone. See R. 87, Hakimoglu Decl.
¶ 10. The ClearOne beamforming microphone has been commercially successful,
generating

in revenue for ClearOne and arguably leading to a

rise in ClearOne’s market share. Id; see also R. 191, Waadevig Decl. ¶¶ 8-9 (sealed).
What’s more, the Kellerman book chapter was hardly hidden away in the archives;
according to Kellerman himself, the textbook containing Kellerman 2001 is “the
single most cited text in the entire field of microphone array technology.” R. 240,
Kellerman Supp. Decl. ¶ 4. Yet it apparently took over ten years for anyone in the
industry to arrive at the method of the ’186 patent. See R. 87, Hakimoglu Decl. ¶ 10;
R. 157, Cerra Decl. ¶ 4. This delay would be surprising if Kellerman rendered the
patented method obvious, because Shure’s own market research shows that there
was a long-felt need for a ceiling-mounted microphone that still preserved audio
quality. See R. 200, Giza Decl. Exh. 30, “2006 U.S. Corporate Boardroom Research”
(sealed). All of these considerations do cut against a conclusion of obviousness, and
secondary considerations can be powerful evidence of non-obviousness. See
Stratoflex, Inc. v. Aeroquip Corp., 713 F.2d 1530, 1538-39 (Fed. Cir. 1983). But

33

secondary-consideration evidence can be overcome if other facts point strongly in
the other direction. See, e.g., ClassCo, Inc. v. Apple, Inc., 838 F.3d 1214, 1222-23;
Ohio Willow Wood Co. v. Alps South, LLC, 735 F.3d 1333, 1344 (Fed. Cir. 2013). In
this case, Shure’s obviousness argument is strong. Kellerman discloses all the steps
in Claim 7 of the ’186 patent, except utilizing last mic on, which is an obvious and
predictable improvement given the ubiquity of that feature. See KSR, 550 U.S. at
401. So, although secondary considerations do cut the other way, they are not
persuasive enough to overcome the strong evidence of obviousness.
ClearOne also argues that the Kellerman chapter cannot render the patent
invalid because it is not enabling. But this argument fails because the basic
technologies described by the Kellerman chapter existed long before the invention
date of the ’186 patent. Beamforming and acoustic echo cancellation are both old
technologies, and have long been used in the audio industry. See, e.g., R. 158,
Kellerman Decl. Exh. 5 (“Kellerman 1997”) at 221 (noting in 1997 that adaptive
beamforming and AEC are both “intensively researched areas”); R. 163, Turner
Decl. Exh. 7, Thurston Dep. 28:4-15 (“Q: And how long as AEC been around in the
trades? / A. Before my day. So some of it was in the 1950s and earlier.”), 175:20-25
(noting that beamforming products had been on the conferencing and audio market
since at least the early 2000s); R. 169, Cerra Decl. ¶ 4 (noting that Shure began
work on a ceiling-mounted beamforming microphone in 2001). What Kellerman
brought to the table was an idea for combining well-known existing technologies.
Based on the Kellerman 2001 chapter, a skilled artisan would have been able to

34

practice the method described by the ’186 patent.23 See R. 217, Morrow Decl. Exh. C,
Kellerman Dep. at 95:3-7, 96:3-20. Enablement is not an obstacle to Shure’s reliance
on Kellerman 2001.
A preliminary injunction cannot issue unless the moving party can show, “in
light of the presumptions and burdens that will inhere at trial on the merits” that it
will likely withstand challenges to the patent’s validity. Amazon, Inc. v.
Barnesandnoble.com, Inc., 239 F.3d 1343, 1350 (Fed. Cir. 2001). The Court cannot
say at this point that it is likely that ClearOne will be able to withstand Shure’s
validity challenge, even taking into account Shure’s enhanced burden at trial. But
this is a close call. It might be that, at the summary judgment stage or at trial, after
more discovery (and when Shure bears the burden), Shure will be the one to fall
short. But for now, ClearOne has not established that it is likely to succeed on the
merits, and so the injunction cannot issue.
3. Kellerman 1997
For the sake of completeness, the Court will also address Shure’s final
obviousness argument. Shure argues that Kellerman’s 1997 article, “Strategies for
Combining Acoustic Echo Cancellation and Adaptive Beamforming Microphone
Arrays” (Kellerman 1997 for short), either anticipates the claimed method or
renders it obvious. The analysis here is almost the same as the analysis above.
Kellerman 1997 discloses the same idea as Kellerman 2001—reducing processing

23Whether

the artisan would have been able to do so in a marketable or cost-effective
way is another matter; but that does not matter for enablement (though it might explain
why it took ten years to get the ClearOne BMA to market even if Kellerman rendered the
invention obvious).

35

costs by decomposing beamforming into “time-invariant” (fixed) and “time-variant”
parts, and performing AEC only on the time-invariant part. R. 158-5, Kellerman
Decl. Exh. 5 (“Kellerman 1997”) at 219.24 So the outcome here is the same as for
Kellerman 2001: Kellerman 1997 renders the patented method obvious.
The only difference in the analysis between Kellerman 1997 and Kellerman
2001 is that Shure argues that Kellerman 1997 actually anticipates the ’186 patent
instead of just rendering it obvious. To anticipate Claim 7, Kellerman 1997 would
have to disclose the last mic on feature. Shure argues that it does, at least on one
possible version of the claim construction. Kellerman 1997 suggests that “[w]hen
entering a far-end talk period we propose to start out with the weights for the most
recently active local talker and gradually change weights to arrive at a
beamforming averaging over all [ ] talker beams.” R. 158, Kellerman 1997 at 221. In
other words, Kellerman suggests gradually changing local signal selection during
far-end talk periods. On its face, this looks quite different from last mic on, which is
supposed to prevent signal selection from changing at all during far-end talk. But
Shure argues that the language of Claim 7, which requires “inhibit[ing]… changing
the selection… while only the far end signal is active” is actually broad enough to
cover the gradual change of signal selection suggested by Kellerman.25 Shure’s
argument only works if “inhibit” means something like “slow down” or “lessen”
rather than “prevent.” This reading of the word “inhibit” is certainly possible,
although it does not make much sense if the point of Claim 7’s final limitation is to
24The

Court uses the article’s own page numbering.
Kellerman himself does not think that his article disclosed this limitation.
See R. 217, Morrow. Decl. Exh. C, Kellerman Dep. at 140:6-19.
25Notably,

36

disclose last mic on. And possible or not, the posture of the argument is odd: Shure
has argued at length that “inhibit” means “prevent,” not “lessen,” see Shure Resp.
Br. at 14, Shure Reply at 10-11, so Shure’s argument that K-97 discloses last mic on
actually depends on Shure losing to ClearOne on the construction of “inhibit” (which
the Court has already found to be unnecessary). Shure’s argument that Kellerman
1997 is anticipatory is a fallback argument now rendered unnecessary by the
opinion on claim construction.
But the Court need not get too far into this problem, because it does not make
a difference to the outcome of the preliminary injunction. As discussed above, it
would be obvious to combine last mic on with Kellerman’s idea for fixed beams.
Because last mic on is an obvious addition, Kellerman 1997 at the very least
renders the claimed method obvious. Obviousness and anticipation would both
render the patent invalid, and the issue at the preliminary injunction is whether
Shure has raised a substantial question of validity. It has, regardless of the
construction of “inhibit… while only the far end signal is active.”
D. Irreparable Harm
Although the injunction will not issue because of substantial questions about
the ’186 patent’s validity, it is worth discussing the other requirements for a
preliminary injunction in case the Court is mistaken on the validity issue (this will
provide the most complete and efficient opportunity for appellate review, as well as
to inform the parties in evaluating settlement positions in the here and now). When
a party seeks the extraordinary remedy of a preliminary injunction, it “must make a

37

clear showing that it is at risk of irreparable harm, which entails showing a
likelihood of substantial and immediate irreparable injury.” Apple, Inc. v. Samsung
Electronics Co. Ltd., 678 F.3d 1314, 1325 (Fed. Cir. 2012) (“Apple I”) (cleaned up).
For the harm inquiry, the Court considers factors like the nature of competition
between the patentee and the infringer, the willingness of a patentee to license, and
any lost sales the patentee has proven. Presidio Components, Inc. v. American
Technical Ceramics Corp., 875 F.3d 1369, 1383 (Fed. Cir. 2017). In addition to
harm, the patentee must show that there is a “sufficiently strong causal nexus”
between the harm and the infringement. Apple Inc. v. Samsung Electronics Co.,
Ltd., 695 F.3d 1370, 1374 (Fed. Cir. 2012) (“Apple II”). ClearOne has met its burden
of showing both harm and causal nexus.
1. Harm
ClearOne has established that it is suffering harm from Shure’s alleged
infringement. The record is replete with examples of customers switching their
loyalty from the ClearOne beamformer to the Shure MXA910. See, e.g., R. 191,
Waadevig Supp. Decl. at ¶¶ 17-18 (sealed). For example, Shure and ClearOne
competed to install their microphones in

new Plano headquarters. R. 87,

Hakimoglu Decl. ¶¶ 23-24. Shure ultimately won the job,26 and was able to grow an
initial installation of 19 or 20 units into a sale of over 200 MXA910s. See R. 94,
26It

is not crystal clear whether ClearOne won the initial bid and then lost it, or
whether Shure was chosen from the start. Compare Mot. Prelim. Inj. at 22 (“
… had
initially selected ClearOne’s BMA Solutions…”) with R. 94, Hakimoglu Decl. ¶ 26 (noting
that an integrator on the project “attempted to install 20 units of the Shure MXA910 ceiling
array”) and ¶ 30 (“But for the fact that another integrator [ ] offered
the option to
install Shure/Biamp products in these conference rooms, ClearOne and its customer
would have sold and installed… ClearOne products… at
.”).

38

Hakimoglu Decl. ¶ 30 (sealed); R. 201, Giza Decl. Exh. 52 (sealed). A sale of this
magnitude would have been hugely important to ClearOne, which sells around a
couple thousand BMA units each year.27 See R. 96, Waadevig Decl. at 29-30 (sealed).
ClearOne also lost out to Shure in a battle to install audioconferencing equipment
for

records show that

planned to install either Shure or

ClearOne ceiling arrays in its conference rooms. See R. 202, Giza Decl. Exh. 60 at
13, 19, 20 (sealed); Exh. 61 (sealed). In the end,

went with Shure. See R. 202,

Giza Decl. Exh. 63. In addition to lost bids, Shure has also started switching
customers who were formerly loyal to ClearOne to Shure microphones. For example,
and

—both established ClearOne customers—

have changed their loyalties to Shure. See R. 181, Turner Decl. Exh. 40 (sealed)
(emails from

s integrator) (sealed); R. 93, DiCampello Decl. ¶¶ 14-17

(discussing lost business at

(sealed).

It appears that Shure and ClearOne are the only suppliers of this type and
quality of installed audioconferencing system, so any sales to Shure are likely losses
to ClearOne.28 R. 96, Waadevig Decl. at 4, 16-17 (“ClearOne and Shure are the two
Installed Audio Conferencing Market participants that offer beamforming

27Shure

argues that ClearOne did end up selling 20 units to
Shure Resp. Br.
38-39. It is not clear that this actually happened, see R. 94, Hakimoglu Decl. ¶¶ 27-30, but
it does not much matter. Shure eventually sold over 200 units to
—sales which
probably would have gone to ClearOne had Shure not been in the picture.
28Shure points to a microphone by Sennheiser as comparable, but the Sennheiser’s
price is several times higher than the price of the MXA910 or the ClearOne BMA, making it
an unlikely substitute product. In fact, Shure’s own marketing executive, Chad Wiggins,
testified that he does not consider the Sennheiser to be a direct competitor because of its
much higher price point. See R. 199, Giza Decl. Exh. 12, Wiggins Dep. at 287:14-288:8
(sealed).

39

microphone array technology with comparable marketing factors (price, target
market, target use case).”) (sealed); see also R. 199, Giza Decl. Exh. 12, Wiggins
Dep. 285:23-291:22 (admitting that Shure considers the ClearOne BMA the primary
direct competitor to the Shure MXA910) (sealed); R. 86, DiCampello Decl. ¶ 8
(“Shure is ClearOne’s only competitor as a provider of beamforming microphones in
the installed audio conferencing market in the United States today.”) (emphasis
added). The pattern of ClearOne’s lost sales tends to confirm that the BMA and the
MXA910 are the only two options for many customers in their target market.
ClearOne’s losses often happened in head-to-head quality tests where Shure and
ClearOne were the only competitors, making it clear that the sales to Shure were
direct losses to ClearOne. ClearOne’s lost sale to
pattern, for example, as did its lost sales to
Decl. Exh. 40 (sealed) (

followed this
and

See R. 181, Turner

); R. 94, Hakimoglu Decl. ¶ 24 (stating that

requested a “shoot-out” between the Shure and ClearOne microphones); R.
202, Giza Decl. Exhs. 60-63 (

The evidence shows that customers are

usually choosing between the Shure and ClearOne beamformers for their
audioconferencing needs, so sales to Shure tend to be direct losses to ClearOne. See
Robert Bosch LLC v. Pylon Mfg. Corp., 659 F.3d 1142, 1151 (Fed. Cir. 2011) (“[T]he
existence of a two-player market may well serve as a substantial ground for
granting an injunction—e.g., because it creates an inference that an infringing sale
amounts to a lost sale for the patentee.”) (emphasis deleted); Presidio Components,
Inc. v. American Technical Ceramics Corp., 702 F.3d 1351, 1363 (Fed. Cir. 2012)

40

(evidence of “direct and substantial competition between the parties” weighed in
favor of irreparable harm).
The characteristics of the installed audioconferencing market make these lost
sales particularly devastating to ClearOne. End users often prefer to use the same
brand of installed audioconferencing equipment for all their rooms and facilities,
because using the same supplier makes maintenance easier for the user. R. 94,
Hakimoglu Decl. ¶ 13 (sealed). Consultants and integrators also prefer to stick with
one brand, allowing them to develop expertise in designing and installing that
brand. R. 96, Waadevig Decl. at 18-19; R. 94, Hakimoglu Decl. ¶ 14 (sealed). Sales
can be infrequent and unpredictable due to the long life span of the equipment and
the uncertain needs of end-users. R. 94, Hakimoglu Decl. ¶ 15; R. 96, Waadevig
Decl. 20-21. These factors can magnify the impact of even small lost sales. An
example of this phenomenon is Shure’s sale to

Shure internal

communications noted that it might grow the initial installation into far more sales:
“This 1 job could become much bigger—world standard for

buildings.” R.

200, Giza Decl. Exh. 52 (sealed). In the audioconferencing market, individual lost
sales can balloon into substantial downstream lost business.
In addition to tangible harms like lost sales, ClearOne also argues that it is
suffering intangible harms, such as loss of customer goodwill and reputation.
ClearOne used to be able to market itself as the sole purveyor of a beamforming
microphone with the patented technological features. See R. 86, DiCampello Decl. ¶
6; R. 84, Sanderson Decl. ¶ 4. Now that Shure offers a competing device, ClearOne

41

can no longer sell itself as the only source of this technology. R. 86, DiCampello
Decl. ¶ 7; R. 84, Sanderson Decl. ¶¶ 6-7. The fact that there are now two sources of
this technology makes the ClearOne product appear less innovative, which in turn
damages ClearOne’s reputation for innovation. See R. 87, Hakimoglu Decl. ¶¶ 8, 10;
R. 84, Sanderson Decl. ¶ 6; R. 86, DiCampello Decl. ¶ 7. Erosion of reputation and
brand distinction are yet more evidence of irreparable harm. See Douglas Dynamics,
LLC v. Buyers Prods. Co., 717 F.3d 1336, 1344-45 (Fed. Cir. 2013) (“Where two
companies are in competition against one another, the patentee suffers the harm—
often irreparable—of being forced to compete against products that incorporate and
infringe its own patented inventions.”).
ClearOne’s refusal to license its technology also helps to establish its
irreparable injury. ClearOne’s CEO, Zee Hakimoglu, has testified that ClearOne
has no plans to license the ’186 patent because “this patented technology goes to the
core of [ClearOne’s] business.” R. 87, Hakimoglu Decl. ¶ 9. As the Federal Circuit
has often held, unwillingness to license weighs in favor of a finding of irreparable
harm. See Douglas, 717 F.3d at 1345; Presidio, 702 F.2d at 1363. All these factors—
lost sales and business, reputational harm, and refusal to license—show that
ClearOne will likely be able to show that it is suffering harm, and that it will
continue to suffer harm if Shure continues to sell its competing devices.29

29Shure

argues that ClearOne unreasonably delayed asserting its patent rights.
Delay would undermine ClearOne’s argument that it was being irreparably harmed. But
the record shows that ClearOne asserted its patent rights even before the litigation began.
See R. 88, Giza Decl. Exhs. J-M. And any delay by ClearOne in requesting a preliminary
injunction is not long enough to raise suspicion given the complexity of this case. The Court

42

2. Nexus
ClearOne has also established that its injuries are caused by Shure’s alleged
infringement.30 It is worth clarifying at the outset that ClearOne does not need to
show that the patented features of its product are the only or even the main reason
for consumer demand for the product. See Genband US LLC v. Metaswitch
Networks Corp., 861 F.3d 1378, 1382-84 (Fed. Cir. 2017) (explaining that the
patented feature need only be “a driver” rather than “the driver” of demand).
Instead, ClearOne need only show “some connection between the patented feature
and demand” for its products. Apple, Inc. v. Samsung Electronics Co., Ltd., 735 F.3d
1352, 1364 (Fed. Cir. 2013) (“Apple III”). This can be done in a number of ways,
including by showing that the patented features are one of many factors in
consumers’ purchasing decision, or by showing that the presence of the patented
features makes the product significantly more desirable. Id; see also Apple, Inc. v.
Samsung Electronics Co., Ltd., 809 F.3d 633, 644 (Fed. Cir. 2015) (“Apple IV”)
(holding that causal nexus was established by showing that the features at issue
“were important to customers when they were examining their phone choices”).
With these standards in mind, it is clear that there is a causal nexus between
the accused devices’ use of the patented features and harm to ClearOne. It is
obvious that audio quality is important to customers buying audio conferencing

will not penalize ClearOne for not rushing headlong into litigation, especially when the
relief of a preliminary injunction is extraordinary in nature.
30Of course, an invalid patent cannot be infringed. See Commil USA, LLC v. Cisco
Sys., Inc., 135 S. Ct. 1920, 1929 (2015). But it is not yet clear whether Shure will be able to
prove that the ’186 patent is invalid, so the Court will address the harm from the alleged
infringement under the assumption that the patent is valid.

43

products, and the evidence on the record bears this out. For example, the integrator
who described the head-to-head test of Shure and ClearOne’s products at
emphasized sound quality above all, and noted that the end users at
the bank were also comparing the sound quality of the microphones. R. 181, Turner
Decl. Exh. 40 (“One person thought gen 2 [BMA] and Shure sounded about equal in
quality… The other person liked the sound of Shure a bit more.”; “Noise cancelling
on the new DSP was great.”). Although the integrator mentioned other features of
the devices, like the software interface, sound quality was clearly the main metric
on which the devices were being judged. See id.

internal communications

also demonstrate that sound quality is end users’ major concern. R. 202, Giza Decl.
Exh. 63 (“The Shure produced cleaner dialogue, less room noise, and an overall
more refined sound.” “I found the difference in audio quality to be pretty
significant… I recommend that everyone listen to the difference in as many
different ways as possible.”) (sealed). ClearOne’s current sales efforts focus on
promoting their products’ audio quality as superior to Shure’s—a strategy that
makes no sense unless audio quality is a major driver of consumer demand. See R.
86, DiCampello Decl. ¶ 7. Shure’s own market research confirms that “[i]n this
market, audio quality is king.” See R. 96, Waadevig Decl. at 37 (sealed); R. 200, Giza
Decl. Exh. 30, “2006 U.S. Corporate Boardroom Research” (“sound quality and
clarity ultimately trump aesthetic concerns”; “Although end-users do want to ‘get
mics off the tables,’ they do not want to do so if it means lower audio quality.”

44

“Integrators perceive ceiling mounted microphones as a ‘last resort’ primarily due to
concerns over audio quality.”).
It is also clear that the patented features improve the sound quality of the
accused audioconferencing systems. As ClearOne’s marketing expert testified,
beamforming technology is considered to be far superior to non-beamforming
technology for audioconferencing applications. R. 96, Waadevig Decl. at 5 (sealed);
see also R. 158, Kellerman 2001 at 292 (noting that beamforming is “undisputed for
its effectiveness in suppressing local noise and reverberance of local desired
sources”). The parties also agree that acoustic echo cancellation and last mic on (the
two other key features claimed in the patent) are important to users’ audio quality
experience. Acoustic echo cancellation saves users from being subjected to
distracting echoes of their own voices, and last mic on prevents the disturbing
impression of a dropped call. See R. 82, Graham Decl. ¶¶ 9, 13-14; R. 157, Cerra
Decl. ¶¶ 8, 11. Without this combination of features—a beamforming microphone
array, acoustic echo cancellation, and last mic on, combined in the efficient manner
suggested by the ’186 patent—the Shure microphone would not be competing with
the ClearOne microphone in the first place.
Shure argues that the MXA910’s popularity is due to other features,
especially its adaptive steering, which allows it to adjust to different room setups.
See R. 171, Wiggins Decl. ¶¶ 67 (sealed); R. 270, Sealed Hearing Tr. 5:23-10:7
(sealed). It is probably true that some users prefer the Shure microphone because of
its adaptability, but that does not undermine ClearOne’s showing of a nexus

45

between the patented features and demand for the device. Again, the patented
features need not be the only driver of consumer demand; it is enough that they
make the product significantly more desirable. Apple III, 735 F.3d at 1364. That is
exactly the situation here: the patented features make the MXA910 attractive to
consumers; the fact that the MXA910 has other, non-infringing features that make
it more attractive does not change the fact that Shure’s purported infringement is
driving sales. ClearOne has shown what it needs to show in order to establish a
nexus between its harm and Shure’s alleged infringement.
E. Inadequate Remedy at Law
The question of adequate remedy at law “inevitably overlaps” with the
irreparable harm inquiry. MercExchange, L.L.C. v. eBay, Inc., 500 F.Supp.2d 556,
582 (E.D. Va. 2007). As explained above, ClearOne has shown that it is losing many
sales to Shure, and is likely to lose more. The structure of the market makes it hard
to measure the impact of these sales. A single lost sale could mean a loss of yet more
business down the road, because integrators and users prefer to stick with the audio
technology they know. From this evidence, it is clear that money damages would be
difficult to quantify, which is evidence that remedies at law are inadequate to
compensate the harm. Broadcom Corp. v. Qualcomm Inc., 543 F.3d 683, 703-04
(Fed. Cir. 2008); i4i Ltd. Partnership v. Microsoft Corp., 598 F.3d 831, 862 (Fed. Cir.
2010); Metalcraft of Mayville, Inc. v. The Toro Co., 848 F.3d 1358, 1368 (Fed. Cir.
2017). ClearOne has also pointed to evidence of other hard-to-measure harms, such
as the loss of its reputation as a market-leading innovator. ClearOne affirms that it

46

has no plans to license the patented technology because it benefits so much from
exclusivity. R. 87, Hakimoglu Decl. ¶ 9. This loss of exclusivity cannot easily be
made whole by money damages. See Douglas, 7171 F.3d at 1345 (holding that
remedies at law were inadequate to compensate patentee’s reputation loss from
infringement); i4i, 598 F.3d at 862. An injunction is the right remedy for these
harms (if there was no substantial question on validity).
F. Balance of Harms and the Public Interest
The last two preliminary-injunction factors ask the Court to weigh the
relative costs and benefits of an injunction to ClearOne and Shure, and to examine
whether an injunction is in the public interest. Metalcraft, 848 F.3d at 1369, citing
Luminara Wordwide, LLC v. Liown Elecs. Co. Ltd., 814 F.3d 1352 (Fed. Cir. 2016).
Every injunction has costs, and here the costs to Shure would be significant.
Shure would have to stop selling its products to comply with an injunction, or
modify them to comply with the scope of the injunction. ClearOne says that the
modifications would not be costly—Shure could avoid infringement simply by telling
their customers to disable last mic on, see Mot. Prelim. Inj. at 30—but Shure argues
persuasively that having to do that could harm Shure’s reputation and relationships
with customers. See Shure Resp. Br. at 43-44. But even though Shure would be
harmed by the injunction, the balance of harms would still favor ClearOne (again, if
ClearOne had refuted the substantial question on validity). As has been discussed
at length, if an injunction was granted, ClearOne would benefit enormously from
the prevention of those harms and the restoration of its monopoly on the technology.

47

These benefits would outweigh the reputational costs to Shure, especially if the
injunction was narrowly tailored.
In addition to its effect on Shure, an injunction would impose costs on the
public. Having more than one supplier of any product increases competition, which
can drive down prices and promote innovation. The Shure product is innovative in
some respects and highly useful. As Shure has argued, its adjustable beams make it
highly adaptable to consumer needs. R. 171, Wiggins Decl. ¶¶ 67 (sealed); R. 176,
Sanderson Dep. 25:20-21 (sealed) (“[G]enerally, the perception was that [Shure] did
have a better product.”), R. 270, Sealed Hearing Tr. 5:23-10:7 (sealed). But,
assuming ClearOne had a valid patent, any harms from loss of competition would
be offset by the benefits of the injunction to the public. The point of granting a
period of exclusivity over patented technology is to reward innovation and
investment in research. The public benefits when this system works, and suffers
when patents are infringed, so it is in the public interest—in the long run—to
protect valid patents. See Douglas, 717 F.3d at 1345 (“While the general public
certainly enjoys lower prices, cheap copies of patented inventions have the effect of
inhibiting innovation and incentive.”); Broadcom, 543 F.3d at 704 (agreeing that “it
is generally in the public interest to uphold patent rights”). And even with an
injunction in place, the public would still have access to the technology through the
rightful supplier, ClearOne. See Metalcraft, 848 F.3d at 1369. Of course, because
there are substantial questions about the patent’s validity, the public interest does
not weigh in favor of enforcement. See Abbott Labs. v. Sandoz, Inc., 500 F.Supp.2d

48

846, 855 (N.D. Ill. 2007) (“The public interest is not served by the enforcement of
allegedly invalid patents or the extension of monopoly pricing by means of invalid
patents.”).
IV. Conclusion
Substantial questions about the ’186 patent’s validity in light of the
Kellerman prior art references prevent the issuance of a preliminary injunction. But
it is worth noting that ClearOne had the better of the arguments on claim
construction, infringement, and harm. If not for the validity problem, then the
preliminary injunction would have issued. As it is, ClearOne’s motion is denied.
The Court does encourage the parties to evaluate their litigation and
settlement positions as promptly as possible. To that end, it would make sense (1) to
adopt the parties’ initial schedule on the ’806 patent (Local Patent Rules 2.1-2.5), R.
277 at 3, so the parties shall follow those agreed deadlines; and (2) postpone the
status hearing of March 19, 2018 to April 3, 2018 at 1:30 p.m., to consider the
impact on the ’186 schedule. The parties shall file another joint status report on
March 28, 2018. The other reason to postpone the status hearing is that the parties
also must quickly file a position paper explaining why the sentences preceding the
citations to the (sealed) exhibits or transcripts must remain under seal. The Court
believes that most, and perhaps all, of the sentences were written at a high enough
level of generality that sealing is unnecessary. The position paper detailing what, if
any, part of the Opinion should remain sealed (and why) is due by March 21, 2018.

49

In the meantime, to give the public as much information as possible, the Court will
issue an initial redacted version of the Opinion.
ENTERED:
s/Edmond E. Chang
Honorable Edmond E. Chang
United States District Judge
DATE: March 16, 2018

50