Shure Incorporated v. ClearOne, Inc.

Filing 551

MEMORANDUM Opinion and Order signed by the Honorable Edmond E. Chang. This is the public redacted version of the opinion. For the reasons stated in the Opinion, ClearOne's motion 369 for preliminary injunction on the '806 patent is GRANTE D. The parties shall immediately confer and then litigate the bond-security issue as described in the Opinion. Also, by 08/26/2019, the parties shall file a Joint Position Paper on Redactions. The position paper shall set forth the parties' posi tions, and the specific reasons for them (including supporting evidence if needed), on each of the redactions in the Opinion (by page and line number). The Court urges the parties to bear in mind the strict standard for sealing information, Baxter Int'l v. Abbott Laboratories, 297 F.3d 544, 546-47 (7th Cir. 2002), and to avoid proposing overbroad sealing. Emailed notice(slb, )

UNITED STATES DISTRICT COURT
FOR THE NORTHERN DISTRICT OF ILLINOIS
EASTERN DIVISION
SHURE, INC.,
Plaintiff, Counter-Defendant,
v.
CLEARONE, INC.,
Defendant / Counter-Plaintiff.

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No. 17 C 3078
Judge Edmond E. Chang

MEMORANDUM OPINION AND ORDER
This litigation concerns two patents on audio conferencing technology. Shure,
Inc. sued its competitor ClearOne (the owner of the patents), seeking a declaration of
invalidity and non-infringement at first on U.S. Patent No. 9,635,186.1 R. 1, Compl.
¶ 1.2 In response, ClearOne filed a counterclaim for infringement against Shure.3
R. 28, Counterclaim. After expedited discovery, ClearOne moved for a preliminary
injunction to halt Shure’s alleged infringement of the ’186 Patent. R. 81, Mot. Prelim.
Inj. ’186 Patent (redacted). The Court denied ClearOne’s motion. R. 279, Mem. Op.
and Order (redacted). During the pendency of the first preliminary-injunction motion,

1The

initial complaint also included claims about U.S. Patent No. 9,264,553, which
also involved audio conferencing, but the inter partes review (IPR) on that patent prompted
a dismissal of those claims, R. 280, though after the IPR finished, ClearOne filed a new case
on it, R. 541. The Court has subject matter jurisdiction over this case under 28 U.S.C. §
1338(a).
2Citations 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.
3ClearOne’s counterclaim also named Biamp Systems Corporation and QSC Audio
Products, LLC, as counter-defendants. R. 28, Counterclaim. Biamp and QSC are not involved
in the preliminary injunction litigation and were later dismissed from the case. R. 141.

ClearOne was granted another audio conferencing patent, U.S. Patent No. 9,813,806,
and asserted infringement on that patent too. R. 260, Second Am. Compl. ClearOne
later also moved for a preliminary injunction to halt Shure’s alleged infringement of
the ’806 Patent, also based on Shure’s MXA910. R. 369, Mot. Prelim. Inj. ’806 Patent
(redacted). In November 2018, the Court held a hearing on that motion and took it
under advisement.
Meanwhile, the parties finished fact discovery and briefed their claim
construction arguments on both the ’186 and ’806 Patents. See R. 508, Shure Claim
Const. Br.; R. 520 ClearOne Claim Const. Resp. (redacted); R. 522, ClearOne Claim
Const. Resp. (sealed); R. 535, Shure Claim Const. Reply. The Court heard oral
argument on claim construction on July 12, 2019. See R. 520, Minute Entry.
Arguments and evidence presented for the first time at the claim construction stage
are discussed below where they are relevant to issues that had already been raised
in the preliminary injunction context.4
After hearing arguments and reviewing the parties’ evidence, the Court finds
that ClearOne has met its burden of demonstrating entitlement to the extraordinary

4This

Opinion includes claim construction decisions on the following construction
issues and terms, which overlap with issues raised at the preliminary injunction stage: the
person of ordinary skill in the art for the ’806 Patent; “beamforming microphone array”’; “said
beamforming microphone array integrated into said ceiling tile as a single unit”; “the drop
space of the drop ceiling”; and “wherein said outer surface is coplanar with said ceiling tile.”
The Court reserves its claim construction decisions on the ’186 Patent terms, as well
as the following terms from the ’806 Patent, which do not overlap directly with issues raised
at the preliminary injunction stage: “is acoustically transparent,” and “used in a drop ceiling
mounting configuration.” The Court will issue a separate claim construction opinion on those
terms.

2

relief of a preliminary injunction on the ’806 Patent. ClearOne has shown a
reasonable likelihood of success on the merits: Shure is likely infringing the ’806
Patent and has not raised a substantial question of the patent’s validity. ClearOne
has established that it will suffer irreparable harm without a preliminary injunction,
and the balance of harms and public interest tip in its favor. As discussed in the
Opinion’s end, the Court sets a prompt litigation schedule on the appropriate bond
amount so that it may be decided and posted in order to make the preliminary
injunction operative.
I. Background
A. The ’806 Patent
The only patent at issue in this preliminary injunction motion is the ’806
Patent (referred to by ClearOne as the “Graham Patent”). The ’806 Patent claims an
invention that combines a beamforming microphone array (commonly abbreviated in
the industry as “BFMA”) with a ceiling tile so that the BFMA can pick up sound
throughout a conference room while remaining somewhat hidden from view. As
ClearOne’s expert, Dan Schonfeld, has explained it, “The Graham Patent covers the
integration of beamforming microphones into a ceiling tile, which delivers audio
through an acoustically-transparent outer surface, but conceals the microphone array
on its backside, so that it can be seamlessly integrated into the drop ceiling of a room.”
R. 372, Schonfeld Decl. ¶ 25 (redacted).
The benefit of integrating a beamforming microphone array with a ceiling tile
is that it allows the technology to be out-of-sight. In the context of audio conferencing,

3

the typical conference setup involves multiple attendees in one room, all
communicating with attendees in another location. R. 372, Schonfeld Dec. ¶ 26
(redacted). The “conventional wisdom” has traditionally been that in such scenarios,
microphones should be as close to the attendees as possible. Id.; R. 360, Graham Decl.
¶ 8 (“[T]he conventional wisdom was that closer is better regarding the distance
between a talker and a microphone for audio conferencing.”); R. 367-1, Giza Exh. 22
at 1 (Shure blog explaining that “to an experienced audio engineer, the ceiling is the
last place to mount a microphone. Why? Because it is far away from the desired audio
source (the talker) …”). At the same time, popular demand from many audio
conferencing users was that microphones not be on conference room tables, and that
they be as close to out-of-sight as possible. R. 366, Mot. Prelim. Inj. ’806 Patent at 2223 (sealed).5
The development of beamforming microphones did not immediately disrupt the
traditional view. As the Court explained in its decision denying ClearOne’s motion
for a preliminary injunction on the ’186 Patent,
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. … 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).

5This

Opinion cites to the public, redacted versions of filings when possible
(“redacted”), but to the under-seal version of each document when necessary (“sealed”). In
certain instances, the Opinion cites to a sealed filing for a general proposition that has been
publicly argued or briefed by the parties, but for which some supporting facts are sealed. The
public version of this Opinion does not show any redactions in those instances, simply
because the general proposition described in the text of the Opinion itself is properly in the
public record.

4

R. 279, Mem. Op. and Order at 3 (cleaned up)6 (redacted). ClearOne’s original
beamforming microphone product, the BMA, responded to the traditional view
requiring microphones located close to speakers. Because most conferencing users
wanted their conferencing microphones off their conference tables, teams at ClearOne
first focused on extending their ceiling-mounted beamforming microphone down into
the room as far as possible, minimizing the distance between the attendees and the
microphone. R. 360, Graham Decl. ¶¶ 8-10 (“ClearOne engineers … spent several
months of engineering effort to design a new ceiling mount that would allow the
beamforming array to be adjustably positioned as much as 24 inches down from the
ceiling in order to be closer to the audio source—the talkers in a room.”).
But in the course of product development, ClearOne engineers realized that
mounting their BFMA on the ceiling—that is, increasing the distance between the
BFMA and the speakers in the room—reduced the quality of the sound it produced
less than the engineers thought it would. R. 360, Graham Decl. ¶ 9. Their
beamforming technology made the audio quality better than the quality a nonbeaming microphone would achieve when mounted on the ceiling. R. 477, Prelim. Inj.
Hrg. Tr. at 76:1-9 (Graham testifying that the “actual test results indicated that the
beamforming microphone array actually sounded better than the traditional ceiling
microphones that were used at the time.”); R. 370, Giza Exh. 10 (sealed) (

6This

opinion uses (cleaned up) to indicate that internal quotation marks, alterations,
and citations have been omitted from quotations. See Jack Metzler, Cleaning Up Quotations,
18 Journal of Appellate Practice and Process 143 (2017).

5

). The next month, ClearOne engineers came up
with the idea to integrate a BFMA with a ceiling tile. Prelim. Inj. Hrg. Tr. at 80:2581:20; R. 360, Graham Decl. ¶ 10. And alas, the ‘806 Patent came into being.
ClearOne has identified four representative claims of the ’806 Patent: Claim 1
is the independent claim, and Claims 4, 5, and 6 depend on it. R. 326-1, ClearOne
Am. Alleged Infring. Content. at 1. The preamble to Claim 1 disclosed a BFMA
integrated with a ceiling tile as a “single unit where the ceiling tile is used in a drop
ceiling mounting configuration.” R. 412-1, Patel Exh. 1, ’806 Patent Col. 13:12-15.
Limitation 1 of Claim 1 requires “a beamforming microphone array that includes a
plurality of microphones that picks up audio input signals.” Id. Col. 13:16-17.
Limitations 2 and 3 disclose an acoustically transparent outer surface to the tile
through which the BFMA picks up audio input signals. Id. Col. 13:18-24. Limitation
4 requires using the integrated tile-BFMA in a “drop ceiling mounting configuration.”
Id. Col. 13:25-26. And finally, Limitation 5 discloses that the BFMA is “coupled to the
back side of said ceiling tile and all or part of said beamforming microphone array is
in the drop space of the drop ceiling.” Id. Col. 13:27-30. Dependent Claims 4, 5, and 6
disclose, respectively, that the ceiling tile “comprises acoustic or vibration damping
material” (Claim 4); that the “outer surface [of it] comprises a grille” (Claim 5); and
that “said outer surface is coplanar with said ceiling tile” (Claim 6). Id. Col. 13:38-43.

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B. Alleged Infringement
The Shure MXA910 is a beamforming microphone array that “may be mounted
to replace a ceiling tile.” R. 402, Shure Resp. at 16 (emphasis omitted) (redacted). The
MXA910 includes
placed in a two-foot by two-foot housing. R. 417, Cerra Decl. ¶ 12
(sealed). The array is “sized to align with the grid of a drop ceiling.” R. 407, LeBlanc
Decl. ¶ 28. ClearOne alleges that Shure’s MXA910 practices all the elements of
Claims 1, 4, 5, and 6 of the ’806 Patent.
II. Standard of Review: Preliminary Injunction Motions
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
’806 Patent and (2) that the ’806 Patent will likely withstand Shure’s challenge to its
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 Coal. v. United States, 741 F.3d 89, 95 (Fed. Cir. 2014)
(quoting Winter v. Nat. Res. Def. Council, Inc., 555 U.S. 7, 24 (2008)).

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III. Analysis
A. Claim Construction
Before digging into the arguments on infringement and invalidity, the Court
must decide what invention the ’806 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 dispute the definition of a
person of ordinary skill in the art, as well as the meaning of three terms in the
patent’s specification and claims: (1) “beamforming microphone array”; (2) “drop
space”; and (3) “ceiling tile.” See ’806 Patent Col. 13:12-43. As noted above, this
Opinion also considers the additional arguments presented on “beamforming
microphone array” and “drop space” in the claim construction briefing and the claim

8

construction hearing held on July 12, 2019. The Court will take each of those three
terms in turn.7
1. Person of Ordinary Skill in the Art
The Federal Circuit has set out several factors to help courts determine the
level of ordinary skill in the art through which to view claim construction. Daiichi
Sankyo Co., Ltd. v. Apotex, Inc., 501 F.3d 1254, 1256 (Fed. Cir. 2007). Those factors
include “(1) the educational level of the inventor; (2) type of problems encountered in
the art; (3) prior art solutions to those problems; (4) rapidity with which innovations
are made; (5) sophistication of the technology; and (6) education level of active
workers in the field.” Id. (cleaned up).
Shure and ClearOne’s disagreement in this arena largely comes down to
whether a person of ordinary skill would have experience in beamforming, specifically
digital signal processing. See R. 369, ClearOne Mot. Prelim. Injunction at 8 (“Here, a
POSITA would have … at least one year of work experience in the field of digital
signal processing.”) (redacted); R. 402, Shure Resp. at 9-10 (“The art involved in the
’806 Patent is the attachment of a BFMA in a room, and the technology involves basic
mechanical or electrical attachments. … One need not have experience in
beamforming to accomplish this.”) (redacted). The parties’ arguments on this point
did not change substantively between the preliminary injunction and claim

7Later

in this Opinion, the Court will also discuss constructions of two new terms
raised at the claim construction stage because they overlap with infringement and validity
issues for the preliminary injunction decision. See supra at 2 n.4.

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construction phases. See R. 508, Shure Claim Const. Br. at 22-23; R. 520, ClearOne
Resp. at 21-22 (redacted).
On review of the competing arguments, the Court concludes that ClearOne is
correct that a person of ordinary skill in the art of the ’806 Patent should have
experience in beamforming, likely by digital signal processing. Shure argues that “the
’806 Patent does not disclose or deal with complex beamforming algorithms or teach
the design of a BFMA.” R. 402, Shure Resp. at 10 (redacted). But the ’806 Patent does
disclose beamforming—and it discloses somehow integrating a beamforming
microphone array with a ceiling tile. A person of ordinary skill looking to practice the
’806 Patent would have to figure out how to make that combination work, and that in
turn would require understanding digital signal processing.
Practically speaking—and being able to practice the patent is important—
ClearOne is correct that most of the current applications of beamforming rely on
digital signal processing, and evidence that ClearOne offered in the context of its
claim construction argument on “beamforming microphone array” (discussed further
below) makes that clear. To resist this, Shure’s expert, Wilfred LeBlanc, says that a
digital signal processor is not the only “device capable of” performing the operations
disclosed in the ’806 Patent. R. 407, LeBlanc Decl. ¶ 25. But modern beamformers
generally use digital signal processors: one of ClearOne’s inventors, Derek Graham,
credibly testified that he had never seen an application of beamforming without a
digital signal processor, though it might be theoretically possible to create one.
Prelim. Inj. Hrg. Tr. at 87:15-89:10. When asked for an example of a beamformer that

10

does not use digital signal processing, Shure pointed to the Miki patent. Id. at 40:211. ClearOne argues that Miki does not teach beamforming at all.8 R. 440, ClearOne
Reply at 14-15 (redacted). But even if the Miki patent discloses some type of
beamforming, there is no evidence that any product currently on the market performs
beamforming without DSP.
Given that a person of ordinary skill in the art disclosed in the ’806 Patent
would need a working understanding of digital signal processing,9 the Court adopts
ClearOne’s definition of a person of ordinary skill in the art: the skilled artisan must
have at least one year of work experience in the field of digital signal processing.
2. Beamforming Microphone Array
As discussed earlier, the ’806 Patent teaches combining a beamforming
microphone array (again, commonly referred to in the industry as “BFMA”) with a
ceiling tile. But Shure and ClearOne disagree on exactly what comprises a
“beamforming microphone array.” Shure argues that a BFMA is “a plurality of

8It

is not clear from the Miki patent what type of processor it uses, or whether its
inventors would describe it as disclosing beamforming. The invention described in the patent
does include “a sound-source position detection means, which detects the position of the
sound source based on signals input from the aforementioned multiple sound-collection
devices and then selects the input signal from the sound-collection device that is detected as
the position of the sound source.” R. 412-1, Patel Exh. 13, Claim 1, Lim. 2. It is unclear if this
“means” describes a digital signal processor or some other type of signal processor. On the
other hand, the patent also states that it does not “focus[] the sound-collection beam on a
specific speaker.” Id. ¶ 0008. So it is simply not clear whether Miki is a good example of a
beamforming microphone array without a signal processor.
9Shure also argues that “[t]he backgrounds of the inventors of the ’806 Patent” also
support its definition. R. 402, Shure Resp. at 10 (redacted). But by its own admission both
Derek Graham and David Lambert have degrees in electrical engineering—not just
experience installing audio equipment.
R. 421, Patel Exh. 70, Braithwaite Dep. Tr. at 16:1317:16 (sealed).

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microphones that produce audio signals to be used to form a directional pick up
pattern.” R. 419-1, Joint Claim Const. Chart. In contrast, ClearOne proposes that a
BFMA consists of “microphones coupled together and positioned at predetermined
locations that are used with digital signal processing algorithm to form a directional
pickup pattern.” Id. At the preliminary injunction stage, Shure and ClearOne agreed
that the relevant difference between their constructions is that ClearOne’s, in
addition to microphones, includes related hardware that accomplishes the
beamforming, while Shure’s does not. Id. At the claim construction stage, ClearOne
highlighted that difference further by proposing to add the words “and related
hardware capable of using a DSP algorithm to form a directional pickup pattern” to
the end of its construction. R. 520, ClearOne Claim Const. Resp. at 22 (redacted); R.
548, Claim Const. Hrg. Tr. at 44:4-5 (Shure pointing out ClearOne’s addition).10
The other point of dispute is whether the construction should include the
requirement that the microphones in the array are “positioned at predetermined
locations.” R. 520, ClearOne Claim Const. Resp. at 26-27 (redacted); R. 535, Shure
Claim Const. Reply at 11; Claim Const. Hrg. Tr. at 49:2-50:18. The Court will discuss
each disagreement in turn.

10ClearOne’s

complete proposal in its claim construction briefing is: “multiple
microphones coupled together and positioned at predetermined locations that are used with
a digital signal processing (“DSP”) algorithm to form a directional pickup pattern, and related
hardware capable of using a DSP algorithm to form a directional pickup pattern.” R. 520,
ClearOne Claim Const. Resp. at 22 (redacted).

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a. Digital Signal Processing Hardware
On the issue of the “related hardware,” ClearOne essentially argues that the
BFMA cannot be “beamforming” without a digital signal processor to do the
beamforming. See R. 440, ClearOne Reply at 5 (“Shure proposes a construction …
which effectively strips the word ‘beamforming’ out of this claim term.”) (redacted);
Claim Const. Hrg. Tr. at 54:3-5 (“The term ‘beamforming’ is used in this claim over
and over again. Shure’s claim construction would mean that word just disappeared
to no end.”). Shure responds by pointing to language in the specification that suggests
that a “beamforming microphone” should be construed “in the context of its broadest
definition” and that references to the BFMA in the patent refer to “any and/or all
devices capable of performing respective operations in the applicable context.” R. 402,
Shure Resp. at 12 (quoting ’806 Patent Col. 4:12-13, 4:25-29) (redacted); R. 407,
LeBlanc Dec. ¶ 25 (“While a digital signal processing algorithm might be used to
[perform the operations of the ’806 Patent], it is not the only ‘device capable of’ doing
so, and should not be read into the claims as a requirement.”); Claim Const. Hrg. Tr.
at 48:9-11 (“Shure’s construction allows for the communication device to be located
remotely or also to be contained within the array, because the communication device
is not part of the array.”).
Shure also argues that beamforming need not even involve digital signal
processing. LeBlanc points out that “beamforming does not need to be complicated
signal processing, two microphones mounted planar (horizontal) to the ceiling can be
used in a broadside delay and sum array, and two microphones placed vertically can

13

be used in an endfire differential array (cardioid or other simple configuration).”
R. 407, LeBlanc Decl. ¶ 22; see also id. ¶¶ 21-27 (“Any microphone inherently (e.g.,
physically) designed to have directional pickup pattern can be described as a
beamforming microphone.”). Given that the patent requires a broad construction of
beamforming, Shure argues, it would be inappropriate to read in a requirement of a
digital signal processor or any other hardware at all.
Based on the text and context of the ’806 Patent, Shure’s construction of
“beamforming microphone array” makes more sense than ClearOne’s. As noted
above, modern applications of beamforming microphones generally rely on digital
signal processing to form beams from audio input signals. But even if a person of
ordinary skill would assume that the invention claimed in the ’806 Patent requires
DSP to function, the patent itself does not teach that the DSP is part of the BFMA,
that it must be in the same location, or even that they must be near each other.
Beginning in Column 4 of the ’806 Patent, Graham and the other inventors
describe a “first environment,” pertaining to Fig. 1A. ’806 Patent Col. 4:35. According
to the patent itself, that environment could involve “audio conferencing, video
conferencing, etc.”—essentially, communication “between multiple users located
within one or more substantially enclosed areas. Id. Col. 4:35-38. That is the
embodiment relevant for this motion. The patent describes two different components
relevant to how the communication between the different sets of users works: the
“beamforming microphone array” (Array), and a “first communication device.” Id. Col.
5:9-12 (“The first environment 100 may also include a beamforming microphone array

14

116 (hereinafter referred to as Array 116) interfacing between the first set of users
104 and the first communication device 110 over the network 114.”). At this point,
the patent describes the Array as including various microphones, possibly a
“combination of beamforming microphones … and non-beamforming microphones.”
Id. Col. 5:17-19. Both sets of microphones, unsurprisingly, “capture [] audio input
signals.” Id. Col. 5:20-23.
But in the environment described in Columns 4-6, the Array itself does not
process those audio signals. Instead, the Array “may transmit the captured audio
input signals to the first communication device 110 for processing and transmitting
the processed, captured audio input signals to the second communication device 112.”
’806 Patent Col. 5:24-27. Not only that, the first communication device performs the
beamforming: “In one embodiment, the first communication device 110 may be
configured to perform augmented beamforming … using a combination of the
[beamforming microphones] and one or more [non-beamforming microphones].” Id.
Col. 5:27-31; Col. 6:3-8 (“[T]he first communication device 110, which is configured to
perform beamforming, may be implemented in hardware or a suitable combination of
hardware and software, and may include one or more software systems operating on
a digital signal processing platform.”).
The description above makes clear that the device performing the beamforming
(the “first communication device”) is conceptually different from the BFMA. That
alone is enough to establish that under the terms of the patent the hardware that
applies the beamforming algorithm is distinct from the beamforming microphone

15

array itself. But the patent makes the case even clearer by implying that the “first
communication device” could be in an entirely different location from the
beamforming microphone array. The patent states that, “[i]n another embodiment,
the functionality of the communication device 110 may be incorporated into Array
116.” ’806 Patent Col. 5:44-46 (emphasis added). Similarly, it later states that “[i]n
some embodiments, the Array 116 may be integrated with the first communication
device 110 to form a communication system.” Id. Col. 6:1-3 (emphasis added). This
language implies that the communication device could be totally separate from the
Array itself—they need not be incorporated or even located together.11
The language in the patent describing the processor as distinct and possibly
even distanced from the BFMA fits well with a few different references to digital
signal processing in the parties’ testimony and exhibits.

R. 421, Patel Exh. 70, Braithwaite Dep.
Tr. at 70:6-72:4 (sealed). Now that digital signal processing requires smaller

11Of

course, at the claim construction hearing, ClearOne argued that while some
embodiments in the patent transmit audio signals to a separate communication device, some
do not. Claim Const. Hearing Tr. at 53:4-21. Counsel for ClearOne argued, “So Shure
complains that ClearOne’s claim construction reads out the embodiment in which audio
signals are transmitted to another communication device, but ClearOne submits that Shure’s
proposed construction reads out these other embodiments in which the functionality of the
communication device is incorporated into the array.” Id. at 53:16-21. But that is not quite
right. Shure’s construction does not require that the processing hardware be included with
the BFMA, but it also does not require that the processing hardware be excluded from the
apparatus entirely. Excluding the hardware from the definition of BFMA does not require it
to be located in a separate location.

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equipment that can be controlled remotely, it makes sense that processors are more
frequently located near the beamforming microphone arrays that they receive inputs
from. See id.; see also R. 409, Cerra Decl. ¶ 14. (“The need for a remotely-located
separate processor box would have driven the cost of the product up significantly over
today’s model.”) (redacted). But it was not long ago that processors had to be located
at a distance from microphone arrays. Id. ¶ 14. (“[T]he required processors in 2006
would have generated enough heat to require a separate, remotely-positioned
processor box”) (redacted). And there is no reason to suppose that the ’806 Patent
assumes that the BFMA and DSP will be located in the same place. Even one of
ClearOne’s experts, Paul Waadevig, stated—in the present tense—that “[d]igital
signal processing, which includes acoustic echo cancellation, is done in specialized
units, usually in a cabinet or otherwise not visible to the end user.” R. 362, Waadevig
Rep. ¶ 27 (redacted).
At the claim construction stage, ClearOne also argued that that the Court
should take a clue from the definition of “array system” in the ’524 provisional
application. Claim Const. Hrg. Tr. at 54:20-55:4. The relevant excerpt from the
provisional is this: “The system includes the following: a beamforming microphone
array system; a beamforming array algorithm that uses the beamforming microphone
array system; and a mounting method for the beamforming microphone array
system.” R. 508-11, Claim Const. Exh. B-103, ’524 Provisional ¶ 11. ClearOne argues
that because “array system” in the ’524 provisional includes “the algorithm,” the
BFMA in the ’806 Patent must also include the hardware that implements whatever

17

algorithm is used to do the beamforming. Claim Const. Hrg. Tr. at 54:20-55:4 (“It
makes clear that the beamforming microphone array system includes the
beamforming microphone array and the algorithm that uses that array system … So
in the 524 provisional, at least, it’s clear that the claimed system incorporates the
algorithms and itself does the beamforming.”). But the language in the provisional is
somewhat circular, because it says that the “system includes … a … system.” R. 50811, Claim Const. Exh. B-103, ’524 Provisional ¶ 11 (emphasis added). Even setting
aside that ambiguity, a “system”—which is what the ’524 provisional is describing—
is not analogous to a “beamforming microphone array.” Indeed, it seems that the
“beamforming microphone array” is just part of the “system.” The “algorithm,” in
turn, is a separate part. If so, the definition of “system” from the ’524 provisional is
simply further evidence that the algorithm need not be built into the array.12
Shure’s definition of BFMA recognizes that the processing—digital or
otherwise—that accomplishes the beamforming itself need not take place next to or
even near the microphones. According to the terms of the patent, as well as the
realities of digital signal processing, the array and the processor are two different
devices. So Shure’s construction of “beamforming microphone array” is the correct
one on that issue.

12At

the claim construction hearing, Shure made an additional argument that the
array should include “a combination of beamforming microphones and non-beamforming
microphones” and that “reading the definition of beamforming microphone into the array
would be unduly limiting.” Claim Const. Hrg. Tr. at 44:24-45:4. This appears to be a
continuation of Shure’s argument that the array itself should not be required to perform
beamforming. But ClearOne does not appear to argue the opposite—that the array can only
include beamforming microphones. And in any case, for the reasons already explained, it is
clear that Shure’s definition, at least on the issue of the DSP hardware, is the correct one.

18

b. Predetermined Locations
The other dispute is whether the microphones in the BFMA are required to be
at “predetermined locations.” R. 508, Shure Claim Const. Br. at 26-27; Claim Const.
Hrg. Tr. at 49:22-50:18. Shure argues that including “predetermined locations” in the
construction would improperly import a term from Claim 2 into Claim 1, making
Claim 2 essentially meaningless. R. 508, Shure Claim Const. Br. at 26-27 (citing ’806
Patent at 13:31-33). In response ClearOne argues that using “predetermined
locations” in the construction of BFMA would not render Claim 2 meaningless,
because what Claim 2 really adds is not predetermined locations but instead that the
microphones be located “on or in [the] ceiling tile,” as opposed to just above it. R. 520,
ClearOne Claim Const. Resp. at 26-27 (“Claim 1—as construed by ClearOne—does
not require that the microphones are ‘on or in’ the ceiling tile; the mics could be
recessed further into the drop space beyond the ceiling tile.”) (redacted). ClearOne
explains that the language stipulating that the microphones will be positioned at
“predetermined locations” in the array is consistent with other language in the ’806
Patent that describes the microphones as “arranged in a specific pattern that
facilitates maximum directional coverage,” Col. 11:21-23, or “selectively placed at
known locations to design a set of desired audio pick-up patterns,” Col. 9:53-55. See
R. 520, ClearOne Claim Const. Resp. at 26 (redacted).
ClearOne has the better argument. The language in support of ClearOne’s
interpretation comes from the specification, reflects details about the BFMA found
throughout the ’806 Patent, and is consistent with what a skilled artisan would

19

understand a microphone array to be. Because the language “positioned at
predetermined locations” will likely assist the jury in understanding what the BFMA
is and how it works, the Court includes it in its construction.
Ultimately, then, the Court uses most of Shure’s construction, leaving the
digital signal processor out of the BFMA, but adding that the microphones in the
array must be “positioned at predetermined locations.” The Court thus arrives at the
following construction: a beamforming microphone array is “a plurality of
microphones positioned at predetermined locations that produce audio signals to be
used to form a directional pick up pattern.”
3. Drop Space
The ’806 Patent claims an invention that puts a beamforming microphone
array in the ceiling. In a room with a dropped ceiling, the claimed ceiling tile fits into
the drop ceiling grid, and at least some of the array is hidden behind the drop ceiling
in what is called the “drop space.” The parties disagree on the meaning of “drop
space.” Although the term is used throughout Claim 1 of the ’806 Patent, the parties’
dispute centers on its use in Limitation 5, which specifies that the “beamforming
microphone array is coupled to the back side of said ceiling tile and all or part of said
beamforming microphone array is in the drop space of the drop ceiling.” ’806 Patent
Col. 13:27-30 (emphasis added).
The parties’ disagreement on the proper construction of “drop space” comes
down to whether the lower boundary of the space is at the back or top of the ceiling
tiles that make up the ceiling, or whether it extends to the tiles’ lower surface—that

20

is, the surface facing down into the room. Shure’s proposed construction is that the
drop space is “the space between the lower surface of the true ceiling of the room and
the upper surface (back surface) of the drop ceiling tile.” R. 419-1, Claim Const. Chart.
Shure argues that the ceiling tiles in a drop ceiling cannot be part of the drop space
because the tiles themselves are not “space,” and because ceiling tiles are not
conventionally understood to be part of the “plenum” (an industry term used to refer
to the “open air space from the back surface of the ceiling tiles to the true ceiling
above”).13 R. 402, Shure Resp. at 14 (redacted). Initially, ClearOne’s proposed
construction was that the drop space is “the space between the surface of the
structural ceiling of the room and the lower surface of a suspended ceiling tile.”
R. 419, Claim Const. Chart. In other words, ClearOne believed the drop space should
“include[] the space in which a drop ceiling tile rests.” R. 440, ClearOne Reply at 7
(redacted). At the claim construction hearing, ClearOne revised its construction
slightly to: “the space between the surface of the structural ceiling of the room and a
plane defined by the support beams for the drop ceiling.” Claim Const. Hrg. Tr. at
74:13-16; see also R. 520, ClearOne Claim Const. Resp. at 29 (“Put another way, a

13Both

parties referenced the “plenum” in their arguments about the drop ceiling.
ClearOne argued, for example, that the fact the MXA910 is plenum rated suggests it must
be in the drop space. Prelim. Inj. Hrg. Tr. at 25:2-5 (“[H]ere’s a document that’s describing
the MXA910 product, and it talks about it being plenum rated, and it says it has this
FyreWrap protection, and it clearly it’s talking about it being in the plenum space”). Shure,
on the other hand, argued that “drop space” must be the same as the plenum space, and thus
have the same definition. Id. at 49:8-50:22. The Court did not find arguments about the
plenum to be particularly persuasive, given that Shure seems to acknowledge that the term
“plenum” is related to ventilation and fire regulations and is not necessarily used in the same
context as the ’806 Patent. See, e.g., id. at 64:24-65:4 (“It’s only when you take an electrical
device and you’re putting it up into the plenum space, the air space, such that it is—has
exposure to the air, then it has to be rated as plenum rated.”).

21

space is all the space above the horizontal T-bar grid. The lower plane of the drop
space does not then change simply because ceiling tiles are placed in it. Shure is, of
course, correct that ceiling tiles are not themselves “space.” See R. 402, Shure Resp.
at 14 (“This construction is nonsensical, because the material of the ceiling tiles is not
‘space.’”) (redacted). But that is not the point: the ceiling tiles are in the drop space.
This is clear in the figure above: the yellow components of the image are the
tiles themselves; the black bar along the top represents the structural ceiling; the
vertical black lines represent the vertical bars of the suspended ceiling; and the short,
horizontal black lines at the bottom are the horizontal part of the grid, on which the
tiles rest. In the figure, the drop space is not defined by the ceiling tiles but by the Tbar structure on which they rest. The bottom of the structure is the lower boundary
of the space.14
One potential problem with ClearOne’s construction of “drop space” is whether
it jibes with the language in Limitation 5 requiring “all or part” of the array to be in
the drop space. Under ClearOne’s construction, it is easy to envision what it would
look like for all of an array to be in the drop space—anything integrated with the
ceiling tile that does not extend below it would be within the drop space. But it is
more difficult to envision how only part of the array would be in the drop space. Under
Shure’s construction, the possibility of only “part” of the array existing in the drop

As a side note, ClearOne argues that the drop space must extend to the bottom of
the tiles because there is air between the tiles, presumably touching the sides of the tiles
themselves. R. 440, ClearOne Reply at 7 (redacted); Prelim. Inj. Hrg. Tr. at 18:17-19:11. That
argument is not convincing—where air can be found is not a useful limiting principle for the
drop space, because air could be found in any small nook or cranny.
14

23

space is more obvious—the part of the array that is within the ceiling tile (or below
its back surface) would not be in the drop space, while any part extending above the
back surface of the tile would be. Shure pointed this out in the preliminary injunction
hearing. Prelim. Inj. Hrg. Tr. at 47:5-7 (“[I]f the lower surface of the ceiling tile is the
boundary, wouldn’t the beamforming array always be all in the drop space?”).
In grappling with this issue, at the preliminary injunction hearing, the Court
asked one of the inventors of the ’806 Patent, Derek Graham, “what would be an
example of a situation where the array would be just in part of the drop space?”
Prelim. Inj. Hrg. Tr. at 90:1-3. Graham responded that it could be possible for the
“front surface, the acoustically transparent outer surface” to be “lowered somewhat
to allow the microphones to be dropped down a little bit into the room.” Id. at 90:710. Graham testified that the integrated array-and-ceiling tile in that scenario would
either be lower than the other tiles in the room, or “lower than just the support grid.”
Id. at 90:11-15. Under ClearOne’s proposed construction of “drop space” it is
uncertain how the microphones would be only partly in the drop space if all the tiles
in the room were lowered slightly below the support grid, and the microphones were
above them. But the possibility remains that the tile practicing the patent could be
lower than the rest of the tiles in the room, in which case microphones directly above
that tile could be only partly in the drop space. And that possibility might still be
aesthetically superior to the current BMA-1 ceiling mount. ClearOne reiterated that
point at the claim construction hearing by presenting a slide that illustrated how a

24

Examiner’s concern about the Chhetri patent, exactly as Shure has argued. See
R. 402, Shure Resp. at 8 (redacted). And ClearOne’s construction does not interfere
with that balance at all: Limitation 5 (by Shure’s argument) vitally differentiates the
’806 Patent from Chhetri. Of course, a product like the middle tile in the image might
face a different set of invalidity challenges than a version of the product that lines up
perfectly with all the other tiles in the room, and perhaps Shure will present some
arguments to that effect at the summary judgment stage. But at the very least, it is
safe to say that the image provided by ClearOne shows a BFMA unlike Chhetri both
in that it is (1) partly in the drop space, not dangling totally into the room, and (2)
integrated with a ceiling tile—not just hanging from it.
Relatedly, ClearOne’s construction is also a better fit with the context of the
’806 Patent. If the goal of the patent was to get microphones mostly out of sight of the
people in the room, it does not matter whether they are located above the top side of
a drop ceiling tile—as long as they are above the bottom of it—despite Shure’s
protestations to the contrary. See Claim Const. Hrg. Tr. at 68:6-12.
Three other arguments raised by Shure at the claim construction phase are
worth addressing. First, Shure points out that not all drop ceiling tiles sit in drop
ceiling support grids quite the same way, using this image to illustrate the point:

26

See Claim Const. Hrg. Tr. at 69:6-12. Shure argues that because of this diversity of
beam-and-tile configurations, relying on the beam to define the drop space creates
confusion. Id. But it is not clear why that would be, because it does not appear to
matter to any of the litigated issues exactly how the tile sits in the beam. A BFMA
integrated with any of the tiles shown above could sit either totally or partly in the
drop space. It is true that in the case of a tegular, shiplap, or beveled tegular edge,
the starting point of the drop space depends on how the term is interpreted. But there
is nothing wrong with that (and it is true for the square edge model, too)—if anything,
the diversity of tiles actually makes it more sensible to define “drop space” by
referring to support beams that, by physical necessity, are always part of a drop
ceiling.
Second, Shure has argued that the support beams should not be used as a
reference point in defining the drop space because the support grid itself does not
create the ceiling. Claim Const. Hrg. Tr. at 69:22-70:2 (“And this notion that the grid
or the support beam in any way should be considered the drop space doesn’t make
sense. Without the ceiling tiles, the grid just creates openings of infinite space. It
doesn’t create any type of a boundary.”). But of course, no one is arguing that support
beams create a ceiling all by themselves if there are no ceiling tiles installed on them.
What the beams do is create the boundary of the drop space, which after all, is just
space—not the ceiling. Shure’s argument relies on the fallacy of singling out one piece
of the overall system and then challenging it as non-sensical when divorced from all

27

of the other pieces. Protesting that the beams do not create a ceiling without tiles is
just as wrong as pointing to a ceiling tile that is not installed, just lying on the floor,
and saying, “That’s not a ceiling tile, it’s a floor tile.”
Third, at the claim construction hearing, Shure encouraged the Court to think
about the ceiling as the equivalent of a wall (albeit a horizontal one) between two
rooms. Claim Const. Hrg. Tr. at 70:11-20 (“[I]f a skilled artisan wanted two rooms …
and wanted to put a partition in the middle … [t]hat thickness of the partition should
not be attributed to either room.”). But a drop ceiling is not a wall, and drop space is
not a room. As ClearOne points out, the drop space consists of “space”—it need not
all be “useful space.” Id. at 71:4-6; see also id. at 70:15-17 (Shure arguing that the
wall thickness “should not be attributed to either room, because it does not provide
any useful space.”). Regardless of the thickness of the tiles used in a drop space, they
are in the space—they do not define it.
4. Ceiling Tile
Both Shure and ClearOne agree that “ceiling tile” should have its plain and
ordinary meaning. R. 402, Shure Resp. at 11 (redacted); R. 440, ClearOne Reply at 45 (redacted). The Court agrees. The Court also notes that the plain and ordinary
meaning of the term “ceiling tile” is not limited in terms of the material from which
the tile is made. Shure argues that the tile must denote a “standard” ceiling tile,
R. 402, Shure Resp. at 11 (redacted), “made from a mineral fiber or other material[
with] a high noise reduction coefficient,” R. 406, Roy Decl. ¶ 42. But even Shure’s
expert, Kenneth Roy, acknowledges that “[c]eiling tile[s] come in a variety of textures

28

and designs,” id., and the ’806 Patent does not limit the definition of “ceiling tile”
further. The one exception, of course, is Claim 4 of the patent, which requires that
the ceiling tile “comprise[] acoustic or vibration damping material.” ’806 Patent Col.
13:38-39. Ultimately, though, Claim 1 does not require a specific type of material.
B. Infringement
With claim construction in place, the next question is infringement. In order
to show entitlement to a preliminary injunction, ClearOne must demonstrate that it
will likely be able to prove that Shure is infringing the ’806 Patent. Amazon.com, 239
F.3d at 1350. Shure argues that ClearOne cannot do so because the MXA910 does not
practice all the limitations of Claims 1, 4, 5, and 6. ClearOne (of course) contends that
it does.
1. Whether the MXA910 is Integrated with a Ceiling Tile
Shure argues that the MXA910 does not practice Claim 1 of the ‘806 Patent
because although the MXA910 “may be mounted to replace a ceiling tile, it is not
integrated into a ceiling tile.” R. 402, Shure Resp. at 16 (redacted). To counter Shure’s
argument, ClearOne and its expert both point to internal Shure documents that refer
to the MXA910 as a “ceiling tile” or as somehow capable of being integrated into a
ceiling tile configuration. R. 439, ClearOne Reply at 9 (sealed); R. 372, Schonfeld Decl.
at 8-9 (redacted); see, e.g., R. 370-1, Giza Exh. 18 at 69
(sealed); R. 370-13, Giza
Exh. 120 at 1
(sealed).

29

Shure’s argument here is unconvincing: the MXA910 is indeed a beamforming
microphone array integrated with a ceiling tile. The fact that it may not look like
every other ceiling tile in a given room does not matter. The bottom line is that it fits
the plain meaning of a “ceiling tile,” that is, a tile that forms part of the boundary
between the drop space and the rest of the room.
At the preliminary injunction hearing, Shure argued that ClearOne’s
allegations of how the MXA910 was integrated with a ceiling tile had changed over
time. Prelim. Inj. Hrg. Tr. at 58:25-59:6 (“ClearOne’s late-filed newest argument as
of just last week is that the MXA910 includes a metal ceiling tile with an acoustically
transparent grille pattern. … This was the first time this was introduced. Until now
they have referred to the entire device[.]”); id. at 61:19-22 (“[P]art of our contention
has been you can’t say, you have to tell us what is the ceiling tile because from that,
we can define some other things, right, that are claim limitations.”). But Shure misses
the point. The MXA910 is a BFMA in the form of a ceiling tile—ClearOne does not
have to point to one particular component of the MXA910 as the ceiling tile, distinct
and separate from the beamforming microphone array. That is the point of the
invention: they are integrated together.
On a similar note, at the claim construction stage, Shure also argued that the
relevant language from Claim 1 (“said beamforming microphone array integrated into
said ceiling tile as a single unit),” ’806 Patent Col. 13:20-21, should be construed as
“two separate structures (a beamforming microphone array and a ceiling tile)
combined together to form a single unit.” R. 508, Shure Claim Const. Br. at 27-29;

30

Claim Const. Hrg. Tr. at 57:5-64:9. This argument—which mirrors Shure’s
infringement argument about the supposed lack of integration—hinges on
interpreting the claim language to mean that the apparatus must start with both a
standalone ceiling tile and a standalone BFMA, and then fastening them together
through some mechanical means. R. 508, Shure Claim Const. Br. at 27-29. In support
of that argument, Shure says, the patent uses the word “combining” several times to
describe the types of features of a room that could be combined with a BFMA. See id.
at 27-28 (citing ’806 Patent Cols. 6:41-60, 6:61-8:24, 8:25-10:8, 10:9-11:15 (describing
a combination of a BFMA with a spanner post, lighting fixtures, ceiling tile, and wall
panel)). The idea is that in order to “combine” or “integrate” a BFMA with something
else, the two items must start out as a separate structures. R. 508, Shure Claim
Const. Br. at 28 (“Such combinations necessarily require two structures brought
together.”). Shure also points to intrinsic evidence that the process of combining the
ceiling tile with the BFMA was meant to be mechanical—involving “hooks” or
“fasteners.” See id. (citing ’806 Patent Col. 9:5-25 (“The reverse side 270 of the ceiling
tile 264 may include hooks … for securing the Array 116 to the ceiling tile 264.”));
Claim Const. Hrg. Tr. at 59:12-15.
But Claim 1 speaks for itself. Its plain and ordinary language requires that “a
beamforming microphone array [be] integrated into [a] ceiling tile as a single unit,”
’806 Patent Col. 8:20-21 (emphasis added), and that is readily understandable to a
skilled artisan that the BFMA and the ceiling tile together form a single unit. The
plain and ordinary language does not set limits on how the “single unit” must be

31

created—or how the integration between the ceiling tile and the BFMA must be
achieved. And that is not a problem, because Claim 1 is not a method of
manufacturing claim. See R. 508, Shure Claim Const. Br. at 15 (acknowledging that
Claim 15 is a “method-of-manufacture” claim, but never arguing that Claim 1 should
be understood that way). Also, as ClearOne points out, while the patent does discuss
embodiments created by combining two separate structures, see ’806 Patent Col. 8:5863 (“In one embodiment, the ceiling tile 264 may include a geometrical socket …
having an appropriate dimension to substantially receive the Array 116, which
integrates the tile and the Array as a standalone unit.”), it explicitly states that the
process can happen “in a variety of ways,” id. Col. 8:58-59; see also Claim Const. Hrg.
Tr. at 63:8-64:7. Another way to do it, according to the patent, is by “integrat[ing] []
the ceiling tile 264 [with the Array 116] as a single unit.” ’806 Patent Col. 9:26-27.
It is true, as Shure argues, that in the first embodiment (Column 8:58-63) there
could be a concern about “damage to the ceiling tile 264 due to the load or weight of
the Array 116.” ’806 Patent Col. 9:27-29; R. 535, Shure Claim Const. Reply at 12;
Claim Const. Hrg. Tr. at 61:3-10 (“You’re only worried about damage on the one object
due to the other object when you are, in fact, combining two separate objects.”). But
according to the language of the patent itself, one of the reasons to choose the second
embodiment—in which the tile and BFMA are integrated into a single unit instead
of one structure receiving the other as described in the first embodiment (Col. 8:5863)—is that “[s]uch [integrated] construction of the unit may be configured to prevent
any damage.” ’806 Patent Col. 9:27-29 (emphasis added). So Shure’s argument for

32

reading the two embodiments together actually points in the other direction—the
second, integrated embodiment (’806 Patent Col. 9:26-27) is an alternative to the first,
separate-structures embodiment (’806 Patent Col. 8:58-63)—an alternative that
might alleviate at least one potential issue with using two separate structures as the
starting point for manufacturing.
All that said, the point remains that Claim 1 is not a method of manufacturing
claim, so it does not set limits on exactly how the ceiling tile and BFMA must be
integrated, much less require that they start as two separate structures. The Court
will rely on the plain and ordinary meaning of this language, which the MXA910
clearly practices.
2. Whether the MXA910 Includes Microphones in the Drop Space
Shure argues that no part of the MXA910 is in the drop space of the drop
ceiling, as claimed by the ’806 Patent at Claim 1, Limitation 5. R. 402, Shure Resp.
at 17-18 (redacted). Because the lower boundary of the drop space is the plane defined
by the support beams for the drop ceiling (see above), any MXA910 mounted in the
drop ceiling grid practices Limitation 5 of Claim 1.
3. Whether the MXA910 Includes Acoustic or Vibration Damping Material
Finally, Claim 4 of the ’806 Patent teaches the invention according to Claim 1,
“wherein said ceiling tile comprises acoustic or vibration damping material.” Shure
argues that the MXA910 does not practice Claim 4, because it does not “include[] the
required acoustic vibration or damping material.” R. 402, Shure Resp. at 19
(redacted). ClearOne responds by pointing to seven “vibration damping pads” inside
the MXA910, referred to in the preliminary injunction hearing as “poron
33

marshmallows.” R. 440, ClearOne Reply at 9 (redacted); Prelim. Inj. Hrg. Tr. at 26:2328:14. ClearOne’s expert Schonfeld points to the pads circled in red on the figure
below and identifies them as “vibration damping pads.” R. 372, Schonfeld Decl. ¶ 49
(redacted).

ClearOne also points to an internal Shure email

R. 389-1, Giza Exh. 132 at 5 (sealed); R. 439, ClearOne
Reply at 9 (sealed).
Shure contests the function of the gray pads pictured above. David Cerra,
Shure’s Associate Vice President of Engineering for Conferencing and Audio
Processing, stated in his declaration that
R. 417, Cerra Decl. ¶ 13 (sealed). Instead, he claims,
Id. (sealed). Cerra
34

also contends that
According to Cerra,

R. 417, Cerra
Decl. ¶ 13 (sealed). The MEMS microphones used in the MXA910, because they are
“poor mechanical transducers,” turned out not to require “mechanical isolation.”
R. 409, Cerra Decl. ¶ 13 (redacted). Cerra’s account maps onto at least one Shure
internal slideshow document that states

R. 370-10, Giza Exh. 110 at 3 (sealed). But the
presentation continues:

Id. (sealed).

In the end, Cerra never averred that the seven pads identified by Schonfeld
are not foam pads, and there is no evidence that they were removed before
production—in fact they could not have been (at least not universally), because
ClearOne obtained this version of the MXA910 by purchasing it. All of the
circumstantial evidence shows that the pads within the red circles identified by
Schonfeld are made of foam or some other vibration-damping material. Whether or
not they are necessary for acoustic dampening, or whether Shure placed them on the

35

board for that purpose, is irrelevant. If the material dampens, as this does, then it
practices Claim 4.
C. Validity
Next up is the question of the ’806 Patent’s validity. This is a crucial question.
Under 35 U.S.C. § 282 an issued patent “shall be presumed valid.” 35 U.S.C. § 282.
But if Shure can demonstrate a “substantial question” of the patent’s validity, then
the preliminary injunction cannot issue. Amazon, 239 F.3d at 1350-51. A substantial
question exists if the challenger raises an invalidity defense that the patentee cannot
prove lacks substantial merit. Id. (citing Genentech, 108 F.3d at 1364). The Court will
address each of Shure’s major invalidity arguments.
1. Anticipation
Shure argues that an audio conferencing system produced by the Conference
Technology Group, LLC (CTG) anticipated the invention claimed in the ’806 Patent.
The parties refer to the system as the “CTG System,” and the Court will do so too. A
“single prior art reference” anticipates a patent, making it invalid, if it “discloses each
and every limitation of the claimed invention.” Schering Corp. v. Geneva Pharms.,
339 F.3d 1373, 1377 (Fed. Cir. 2003). Shure argues that the CTG System includes a
BFMA, a BFMA integrated into a ceiling tile as a single unit, and “at least a portion
of the BFMA in the drop space.” R. 402, Shure Resp. at 20 (redacted).
ClearOne offers several arguments in response. First, ClearOne argues that
the CTG System includes
R. 366, Mot. Prelim. Inj. ’806 Patent at 12 (sealed). Second, ClearOne

36

argues that
such that they cannot be part of a BFMA as required by the ’806
Patent. Id. (sealed). Relatedly, ClearOne argues that the CTG System does not
actually perform beamforming at all. Id. at 12-13 (sealed).
On review of the evidence, the Court concludes that the CTG System does not
anticipate the ’806 Patent. First, the CTG System is not an array. Shure argues that
“having more than one CM-01 on a ceiling tile forms a BFMA integrated into the
ceiling tile as a single unit.” R. 402, Shure Resp. at 20 (redacted). But there is no
evidence that more than one CM-01 has ever been used on a ceiling tile. CTG’s CM01 is one microphone, and while Shure argues that consumers could combine several
of the CTG microphones together, Prelim. Inj. Hrg. Tr. at 95:16-21, ClearOne points
out that there is no evidence anyone has ever done that—much less in the space of a
single ceiling tile, R. 440, ClearOne Reply at 10 (redacted). And it is not clear why a
consumer would do that. In fact, CTG advertised that the system could “[p]rovide[]
even pick up for the maximum number of participants with the minimum number of
microphones,” R. 405-5, Newman Decl. Exh. E at 1 (redacted), and that each “CTG
microphone has a pickup range with a radius of up to 10 feet or more,” R. 405-6,
Newman Decl. Exh. F at 9 (redacted).
Second, the CTG System is not “integrated with a ceiling tile,” as required to
practice Claim 1 of the ’806 Patent. Instead, it is installed by drilling a hole in an
existing tile and “[p]ushing [the] microphone barrel … through [the] hole in [the] tile
until [its] lip stops against [the] tile.” R. 405-9, Newman Decl. Exh. I (redacted). It is

37

then secured atop the tile with a friction clip. Id. (redacted). The product is not a
ceiling tile combined with a beamforming microphone array but simply a microphone
that can be inserted into a ceiling tile. Shure’s anticipation theory fails.15
2. Obviousness
Under 35 U.S.C. § 103, a proposed patent must not be granted if the claimed
invention would have been obvious before the filing date to a person of ordinary skill
in the art. To evaluate obviousness, courts consider 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. KSR Int’l Co. v.
Teleflex Inc., 550 U.S. 398, 417-18 (2007); Graham v. John Deere Co., 383 U.S. 1, 1718 (1966).
Shure divides its prior art references into two categories. The first is
“[r]eferences that disclose beamforming microphone arrays integrated with a ceiling.”
R. 399-1, Shure Am. Final Inv. Content. at 8. And the second is “[r]eferences that
replace a ceiling tile in a drop ceiling with sound collection equipment.” Id. at 14.

15On

ClearOne’s argument that the CTG System does not performing beamforming,
ClearOne points primarily to an admission from Joseph Marash, an employee of the company
that created the processor for the CTG System:
R. 370-8, Giza Exh. 94 (sealed); see
also R. 368, Schonfeld Decl. ¶¶ 57-58 (explaining that the CTG System’s mixers “do not
perform a beamforming algorithm to form a directional pickup pattern using multiple
microphone inputs”) (sealed). Naturally, Shure disagrees, pointing primarily to testimony
from LeBlanc that the simple mixing performed by the CTG System satisfies the “broad”
definition of beamforming disclosed in the ‘806 Patent. See R. 402, Shure Resp. at 21 (citing
R. 407, LeBlanc Decl. ¶¶ 30-36) (redacted). The Court does not need to reach this question
given how clear it is that the CTG System is not an array and is not integrated with a ceiling
tile.

38

Shure advocates a sort of mix-and-match approach. By pairing a reference from the
first category with a reference from the second category, Shure argues, a person
skilled in the art could create a product that practices all the representative claims
of the ’806 Patent. Id. at 22. These combinations would then make the ’806 Patent
obvious. Id.
In determining whether Shure’s proposed combinations render the ’806 Patent
invalid, the Court must examine whether it would have occurred to a skilled artisan
to combine the elements of these prior art references with one another in the first
place. ActiveNetworks, Inc. v. Verizon Comms., Inc., 694 F.3d 1312, 1327 (Fed. Cir.
2012) (“To invalidate a patent claim based on obviousness, a challenger must
demonstrate by clear and convincing evidence that a skilled artisan would have been
motivated to combine the teachings of the prior art references to achieve the claimed
invention, and that the skilled artisan would have had a reasonable expectation of
success in doing so.”) (cleaned up); KSR, Int’l, 550 U.S. at 418 (“[A] patent composed
of several elements is not proved obvious merely by demonstrating that each of its
elements was, independently, known in the prior art. … [I]t can be important to
identify a reason that would have prompted a person of ordinary skill in the relevant
field to combine the elements in the way the claimed invention does.”). In doing so,
the Court must be careful to “guard against slipping into use of hindsight” and the
“temptation to read into the prior art the teachings of the invention in issue.”
Graham, 383 U.S. at 36 (cleaned up). The Supreme Court has warned, however, that
identifying a motivation for a skilled artisan to combine elements of prior art should

39

not require a rigid test, and a qualifying motivation can be provided by “design
incentives or other market forces,” KSR, Int’l, 550 U.S. at 417-19. Often whether a
combination is obvious will come down to whether it “yield[s] predictable results.” Id.
at 416.
None of Shure’s proposed combinations make the ’806 Patent obvious. All of
Shure’s proposed combinations involve combining a microphone with a loudspeaker
located in a ceiling tile. Shure’s combinations feature three different loudspeaker
devices: IPSCM Ceiling Tile IP Speaker produced by Advanced Network Devices
(AND), the I128SYSM IP Compliant Loudspeaker with Microphone produced by
Atlas, and the I-Ceilings tile developed by Armstrong. See R. 403, Donahoe Decl.
(describing the IPSCM Ceiling Tile IP Speaker) (redacted); R. 402, Marlin Decl.
(describing the I128SYSM IP Compliant Loudspeaker with Microphone) (redacted);
R. 406, Roy Decl. ¶¶ 119-20 (describing the I-Ceilings device). Shure argues that the
loudspeaker devices “provide[] concealment, ease of installation, and maximization of
room space.” R. 402, Shure Resp. at 24 (redacted). The idea is that adding a BFMA to
a loudspeaker that is integrated into a ceiling tile would reap the same aesthetic
rewards of the ’806 Patent and practice all its claims.
It is not at all clear that a skilled artisan would have been motivated to
combine any of the loudspeaker prior art references with a BFMA. ClearOne argues
that the objectives of loudspeakers are different than those of audio conferencing
microphone arrays, and explains that while “an ideal loudspeaker would transmit
sound equally well to everyone in the room … (less directional) … an ideal microphone

40

would pick up only the active talker and ignore others so that only the active talker
is heard (more directional).” R. 369, Mot. Prelim. Inj. ’806 Patent at 17-18 (redacted);
R. 372, Schonfeld Decl. ¶¶ 87-89 (redacted). The Court agrees: given the differences
in the applications of the two types of devices, a person of ordinary skill might very
well not have thought to combine them. Shure points out that that the IPSCM, Atlas,
and I-Ceilings devices all include microphones or have the capability to receive audio
signals. R. 403, Donahoe Decl. ¶ 3 (explaining that the IPSCM product “features a
built-in microphone and speaker that allow for two-way communications”) (redacted);
R. 402, Marlin Decl. ¶ 7-8 (explaining that the Atlas product “includes a single
omnidirectional electret condenser microphone … [that] allows for two-way
communication with any PC or IP phone.”) (redacted); R. 406, Roy Decl. ¶ 120 (“While
the I-ceiling speaker is marketed primarily as a loudspeaker, it is also advertised in
its brochures, and in US Patents, as useful for direct use in a ‘Talk Back’ enabled DSP
system as a microphone.”); see also R. 402, Shure Resp. at 23-24 (redacted); but see
R. 372, Schonfeld Decl. ¶ 68 (disputing whether I-Ceilings is or has a microphone)
(redacted). But Shure never argues that the products have particularly high audio
quality, or that the microphones are anything more than an attractive add-on to
inventions that are mainly used for hearing information—not delivering it back.
There is no suggestion that the loudspeaker/microphone combinations are similar in
design or use to the type of products commonly used in audio conferencing settings.
And even if—given the superior aesthetics of the existing loudspeakers—a
skilled artisan would have had a motivation to combine them with a BFMA, there is

41

no reason to believe that the skilled artisan would have had any expectation of
success. As discussed above, the context for the ’806 Patent was a world in which
conferencing microphones usually were not installed in the ceiling. See R. 440,
ClearOne Reply at 13 (redacted). Inventors and integrators believed that placing
microphones as close as possible to the talker was necessary for the type of audio
quality the market demanded. R. 360, Graham Decl. ¶ 8; R. 367-1, Giza Exh. 22 at 1;
R. 372, Schonfeld Decl. ¶ 26 (redacted). And Graham explained that his team was
surprised by the quality of audio they were able to create in their first tests. See
Prelim. Inj. Hrg. Tr. at 76:1-9 (Graham testifying that the “actual test results
indicated that the beamforming microphone array actually sounded better than the
traditional ceiling microphones that were used at the time.”); R. 370, Giza Exh. 10
(sealed); R. 360, Graham Decl. ¶ 9. Against this evidence, Shure has failed to show
that the results of ClearOne’s tests should have been predictable.
Of course, Shure argues that the audio quality of its proposed combinations is
irrelevant, because the ‘806 Patent does not require a certain level of quality. R. 402,
Shure Resp. at 27 (“The claims are silent as to quality or conferencing, and could be
just as easily practiced by a lower quality voice recognition system for use in a
residential application as they could by a professional conferencing system.”)
(redacted). But the context of the ’806 Patent is illuminating here, as is the fact that
according to its own terms the patent is responding to the traditional method of
configuring beamforming microphone arrays. ’806 Patent Col. 1:51-54. ClearOne has
produced significant evidence that the traditional method of installing beamforming

42

microphones—that is, installing them somewhere in the room below the drop ceiling
(like on the conference tables)—prevailed for so long precisely because of concerns
about quality. See R. 360, Graham Decl. ¶ 8; R. 367-1, Giza Exh. 22 at 1; R. 372,
Schonfeld Decl. ¶ 26 (redacted). In context, the ’806 Patent is responding to the
problem of the competing needs for attractive aesthetics and high audio quality in
the installed audio conferencing market. The motivations of a skilled artisan working
in that market and responding to those market pressures would obviously take audio
quality into account. So Shure’s arguments that quality should not be taken into
account at all in the obviousness analysis is unpersuasive.
Rejecting combinations that require combining microphone arrays with
loudspeakers knocks out all of Shure’s possible combinations: IPSCM plus Sasaki,
IPSCM plus Soda, Atlas plus Chhetri, IPSCM plus the BMA-1, IPSCM plus Miki,
IPSCM plus Chhetri, and I-Ceilings plus Chhetri. There are other reasons why many
of these combinations fail to make the ’806 Patent obvious. For example, many of the
devices would be quite difficult to combine. Chhetri’s proposed array seems to be
larger than what would easily map onto a two-foot by two-foot ceiling tile such that
attempting to simply combine it with ceiling tile loudspeaker art would involve
changing it substantially. See R. 440, ClearOne Reply at 13-14 (redacted). Miki is
similar: it discloses locating microphones all around a room—not in one location
behind one tile. R. 412-1, Patel Exh. 13, Claim 1 (disclosing “[m]ultiple soundcollection devices dispersed over a ceiling or a wall so as to collect sound within the
respective prescribed areas.”). Combining Miki with a loudspeaker ceiling tile would

43

seem to involve distorting it beyond recognition. And some of the combinations might
be even less obvious because the microphones involved were developed for entirely
different purposes. Chhetri was developed for use in an augmented reality system,
for example. R. 372, Schonfeld Decl. ¶ 80 (redacted). Soda and Sasaki are both
intended for use in home voice-command systems. Id. ¶¶ 78, 81-85 (redacted).
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, Int’l, 550 U.S. at 399. Secondary
considerations are only a part of the analysis, but here they generally weigh against
finding a substantial question of the ’806 Patent’s validity. Again, ClearOne has
pointed to a long-felt need for more remote and aesthetically discreet audio
conferencing microphones. See R. 362, Waadevig Rep. ¶ 31 (“[E]nd users have long
sought microphones that are remote from conference participants and functionally
invisible to them. But because microphones are notorious for producing lower quality
audio when placed farther away, vendors in the installed audio conferencing market
have long struggled to meet this demand.”) (redacted); see also R. 360, Graham Decl.
¶ 8; R. 367-1, Giza Exh. 22 at 1; R. 372, Schonfeld Decl. ¶ 26 (redacted). And it is
indisputable that Shure’s MXA910 has enjoyed commercial success, likely at least in
part because of its infringing features—an issue the Court will address further below.
See R. 439, ClearOne Reply at 18 (sealed).
For all these reasons, Shure has failed to raise a substantial question of the
’806 Patent’s non-obviousness.

44

3. Arguments under 35 U.S.C. § 112
At the preliminary injunction stage, Shure makes three primary arguments
that the ’806 Patent is invalid under 35 U.S.C. § 112 because the patent’s terms are
either indefinite or lack a written description. On indefiniteness, a patent is invalid
“if its claims, read in light of the specification delineating the patent, and the
prosecution history, fail to inform, with reasonable certainty, those skilled in the art
about the scope of the invention.” Nautilus, Inc. v. Biosig Instruments, Inc., 572 U.S.
898, 901 (2014). As to lack of written description, 35 U.S.C. § 112(a) requires the
specification of the patent to “contain a written description of the invention.” 35
U.S.C. § 112 (a). The Federal Circuit has explained that the “essence of the written
description requirement is that a patent applicant, as part of the bargain with the
public, must describe his or her invention so that the public will know what it is and
that he or she has truly made the claimed invention.” Quake v. Lo, 928 F.3d 1365,
1373 (Fed. Cir. 2019) (cleaned up). “The purpose of the written description
requirement is to prevent an applicant from later asserting that he invented that
which he did not.” Id. (cleaned up). As discussed next, none of Shure’s arguments
raises a substantial question of the ’806 Patent’s validity.
a. Claim 1
First, Shure argues that the term “drop space” in Limitation 5 of Claim 1 is
indefinite and lacks a written description. R. 399-1, Shure Am. Final Invalidity
Content. Exh. 1 at 36-37; R. 402, Shure Resp. at 29-30 (redacted). Shure’s argument
has to do with ClearOne’s addition of the term “drop space” to the patent. R. 399-1,
Shure Am. Final Invalidity Content. Exh. 1 at 36-37. ClearOne added the term to the
45

dependent claims in June 2017 and attempted to add it to the specification at the
same time. Id. But the term was not added to the specification until after the patent
issued and ClearOne filed a Certificate of Correction. Id. Before the term was added
to Claims 1, 8, and 15, the limitation already disclosed that the array would be
“coupled to the back side of [the] ceiling tile.” ’806 Patent Col. 13:27-28. Shure
contends that because the patent only issued after the addition of the disclosure that
“all or part of [the] beamforming microphone array [would be] in the drop space,”
there must be some difference between the “coupled to the back side” language and
the language locating the array in the drop space. R. 399-1, Shure Am. Final Inv.
Content. Exh. 1 at 36-37 (“This distinction indicates that there is a difference between
the ‘back side’ of the ceiling tile, and the start of any ‘drop space.’ However, the
specification does not indicate what that difference is.”). Shure argues that because
the ‘806 Patent is not clear about what that difference is, Limitation 5 of Claim 1 is
indefinite and lacks a written description.
There are two problems with Shure’s argument. First, the claim construction
of “drop space” adopted by the Court, as detailed earlier in this Opinion, is not
dependent on the back side of the ceiling tile. In other words, Shure’s argument is
premised on Shure’s proposed construction of “drop space”—but that construction
was rejected. Second, there is no real conflict between language that describes the
BFMA as being all or in part in the “drop space” and language that describes the
BFMA as “coupled to the back side” of the ceiling tile. Those terms play different roles
in describing the invention. For its part, the term “coupled to the back side” describes

46

where and how the array is attached to the rest of the tile. In contrast, “all or part in
the drop space” refers to how the BFMA is positioned in relation to the drop space.
The terms are not so redundant that the patent is indefinite or lacks a written
description.
b. Claim 5
Second, Shure argues that Claim 5 is invalid for lack of written description.
R. 399-1, Shure Am. Final Inv. Content. Exh. 1 at 44; R. 402, Shure Resp. at 30
(redacted). Shure’s argument about Claim 5 is that the term “grille,” which was added
as an amendment to the specification in March 2017 and as a new claim in June 2017
is not synonymous with the other items listed with it in the specification. Id. Aside
from the claims themselves, the term “grille” is used twice in the specification. For
example: “The front surface 220 may be substantially flat, though may include other
surface configurations such [as] contours, corrugations, depressions, extensions,
grilles, and so on, based on intended applications.” ’806 Patent Col. 7:12-15; see also
id. 9:60-62. Shure contends that a “grille” is not similar enough to a “contour” or
“corrugation,” and as a result, the additions of the term “grille” to the specification
and to Claim 5 should have been rejected as new matter. R. 399-1, Shure Am. Final
Invalidity Content. Exh. 1 at 44.
But a “grille” is not categorically dissimilar to contours, corrugations, and
depressions. As the language of the patent suggests, they are all “surface
configurations” of the tile. In other words, all the items in the list describe the design
or pattern of the material making up the room-facing surface of the tile. The bottom

47

line is that it is clear what a grille is (so it is reasonably certain what it is being
claimed), and it is not so incongruous with other items listed in the original filing that
it creates a substantial question of the ‘806 Patent’s validity.
c. Claim 6
Third, Shure argues that Claim 6 is indefinite because it requires an “outer
surface” to be “coplanar” with “said ceiling tile,” even though—according to Shure—
the “outer surface” is elsewhere defined as the outer surface of the ceiling tile. ’806
Patent Col. 13:6-7; R. 402, Shure Resp. at 30-31 (redacted). In its reply, ClearOne
argues that it would be possible to have one product, described in Claim 6, in which
“the outer surface of the apparatus is on the same plane as the drop ceiling,” and
another product, described in Claim 7, in which “the outer surface extends below the
plane of the drop ceiling.” ClearOne Reply at 15 (redacted). At the claim construction
stage, perhaps in an attempt to avoid the vice of indefiniteness in Claim 6, ClearOne
additionally proposed a different construction of the terms in Claim 6, namely,
“wherein said outer surface is configured to be on the same plane as the plane of said
ceiling tile.” R. 520, ClearOne Claim Const. Resp. at 34-35 (emphasis added)
(redacted); Claim Const. Hrg. Tr. at 83:14-15 (“ClearOne has offered a claim
construction for that term because Shure has argued that th[e] term is indefinite.”).
Shure, on the other hand, argues that the claim term is “not amenable to
construction” because it is indefinite under 35 U.S.C. § 112(b). R. 508, Shure Claim
Const. Br. at 34-35.

48

The language of the Claim is not indefinite as written. It is possible for an
apparatus to have an outer surface that is part of the apparatus but also be
considered distinct from the rest of it. In that scenario, the outer surface could be
either “coplanar” with the apparatus itself (precisely what Claim 6 sets forth) or it
could be an additional structure that—although still part of the apparatus—is lower
than the rest of the tile, as in Claim 7. Claim 5 helps illustrate that point. There, the
“outer surface comprises a grille.” ’806 Patent 13:40-41. A grille is an outer surface
that, while considered part of the tile, could either be located right along the plane of
the tile, or a few inches (for example) below it. In either scenario, the grille is still
part of the tile. It is simply incorrect that the surface of a thing can never be lower
than the thing itself, especially if the “thing” is comprised of various parts. Consider,
for example, a light fixture dropping down from the ceiling. One part of the fixture
could be a decorative cover that is still considered part of the fixture, but is lower
than the rest of it. So too with the outer surface of a ceiling tile. There is no
indefiniteness problem here.16

16There

seems to be another issue, which is whether the “outer surface” referred to in
Claim 6 is the outer surface of the BFMA, rather than the outer surface of the tile. ClearOne
made arguments at the claim construction hearing that suggested it hopes the outer surface
will be understood as that of the BFMA rather than the tile. See, e.g., Claim Const. Hrg. Tr.
at 84:5-12 (“[T]he patent discusses the plane of an array and also discusses the plane of the
drop ceiling … in which the front surface of the ceiling tile is dropped below the plane of the
array and below the plane of the drop ceiling so as to move the microphones of the array away
from the drop ceiling.”). The confusion seems to stem from a specification in the patent that
refers to the “front surface of the Array 116” and describes a scenario in which the front
surface of the BFMA and the tile line up (rather than the tile and its own outer surface). See
’806 Patent Col. 9:38-45. To be clear—the language in Column 9 notwithstanding—the “said
outer surface” in Claim 6 cannot refer to the outer surface of the BFMA. In Claim 6, “said
outer surface” clearly refers back to Limitation 2 of Claim 1, which discloses “a ceiling tile
with an outer surface on the front side of said ceiling tile wherein said outer surface is
acoustically transparent.” Id. Col. 13:18-20. Claim 6, as a dependent claim of Claim 1, of

49

Having decided that Claim 6 is not indefinite, the next question is whether it
needs to be interpreted. ClearOne’s proposed construction modifies the language of
the patent only slightly, by adding three words: “configured to be.” But ClearOne fails
to provide a convincing reason for why a jury needs “configured to be” in order to
understand the Claim, and it is not clear how “configured to be” makes the Claim
more definite or would otherwise mitigate the potential issue that Shure has raised
(which in any case, as explained above, is not a fatal one). See generally, R. 520,
ClearOne Claim Const. Resp. at 34-35 (redacted). So the Court need not construe the
language of Claim 6. It will be read for its plain and ordinary meaning, and it is not
indefinite under 35 U.S.C. § 112(b).
D. Irreparable Harm
Moving on from the infringement and invalidity issues (which address the
likelihood of success), the next question is whether ClearOne has clearly shown that
it is suffering irreparable harm without an adequate legal remedy. Specifically, when
a party seeks the extraordinary remedy of a preliminary injunction, it “must make a
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 Elecs. Co.
Ltd., 678 F.3d 1314, 1325 (Fed. Cir. 2012) (“Apple I”) (cleaned up). For the harm

course, invokes that language directly: “The claim according to claim 1, wherein said outer
surface is coplanar with said ceiling tile.” Id. Col. 13:42-43 (emphasis added). So, the “said”
outer surface is the outer surface of the tile—not the outer surface of the BFMA (which is still
part of the apparatus and integrated with the ceiling tile). See Claim Const. Hrg. Tr. at 86:2487:7 (counsel for Shure drawing the same distinction). Claim 5 supports the same reading:
while a BFMA is unlikely to have a grille as an outer surface, a ceiling tile apparatus certainly
could. See ’806 Patent Col. 13:40-41.

50

inquiry, the Court considers factors like “the nature of competition between the
patentee and the infringer, the willingness [(or refusal)] of a patentee to license, and
any lost sales the patentee has proven.” Presidio Components, Inc. v. Am. Tech.
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 Elecs. 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
The Court has previously found that Shure’s sale of the MXA910 is harming
ClearOne, R. 279, Mem. Op. and Order (redacted), and many of the facts that
established harm in the context of the ’186 Patent are still true now. For example,
ClearOne lost opportunities to install its microphones at
, as well as at

, and some of ClearOne’s existing customers have

started switching to Shure microphones. Id.; R. 363, Waadevig Rep. ¶¶ 69-71; 74
(sealed).
Since then, ClearOne has learned about additional sales that it has lost to the
MXA910. First, ClearOne lost a sale to American Water, which chose the MXA910 at
least in part because it could be integrated into a drop ceiling. R. 361, DiCampello
Decl. ¶¶ 12-18 (sealed); R. 362, Waadevig Rep. ¶ 69(a) (redacted). American Water
was previously a ClearOne end user, R. 371, DiCampello Decl ¶ 12 (redacted), and
according to the audio integrator (essentially the distributor-installer of conferencing

51

systems), the lost sale was worth around $140,000, id. ¶ 16 (redacted). Also, ClearOne
recently learned that it lost a sale to Bristol-Myers Squibb, which instead went with
Shure after a side-by-side comparison (or “shoot-out”) in which ClearOne believes its
audio actually performed better than the MXA910’s. R. 371, DiCampello Decl. ¶¶ 1923 (redacted); R. 362, Waadevig Rep. ¶ 69(b) (redacted). Finally, ClearOne lost a sale
to a “major hardware and software company.” R. 364, Hakimoglu Decl. ¶¶ 19-22
(redacted); R. 362, Waadevig Rep. ¶ 69(c) (redacted). Although the company does
allow different end users at different locations to use different audio conferencing
equipment, the end users at the company apparently typically prefer the MXA910
because it “remain[s] out of sight in a ceiling tile.” R. 364, Hakimoglu Decl. ¶ 22
(redacted). ClearOne has identified several other end users and integrators with
which it may have lost opportunities over the past months. R. 363, Waadevig Rep.
¶ 71 (sealed).
As the Court found in the context of the ’186 Patent, lost sales in the installed
audio-conferencing market are particularly devastating because end users often use
the same brand of audio conferencing equipment throughout their facilities and
because sales tend to be infrequent given the long life-span of the equipment. See R.
279, Mem. Op. and Order. at 41 (redacted); R. 364, Hakimoglu Decl. ¶ 15 (“Customers
purchase installed audio conferencing products rarely, so those who have already
installed an MXA910 are unlikely to purchase a replacement for several years.”)
(redacted); R. 362, Waadevig Rep. ¶ 67 (“[B]ecause audio conferencing products are
expensive and durable, end users typically will not purchase an upgrade for several

52

years.”) (redacted). The dynamics of the installed audio conferencing market and the
technology itself contribute to a scenario where integrators and end users are
incentivized to stick with one vendor or product for as long as is feasible. R. 362,
Waadevig Rep. ¶¶ 40-41 (describing how audio conferencing end users “prefer[] to
deal with the same vendor for all their installed audio conferencing needs” and the
reasons why) (redacted); id. ¶¶ 49-52 (explaining the factors that contribute to the
high cost of switching vendors for most integrators and consultants) (redacted); id.
¶ 59 (pointing out that purchasers often buy in volume to outfit as many conference
rooms as possible) (redacted). ClearOne believes this to be the case for Bristol-Myers
Squib: it was the understanding of one of ClearOne’s sales managers, Jason
DiCampello, “that in choosing the MXA910, Bristol-Myers was selecting the
beamforming microphone with which it will standardize its facilities for the
foreseeable future.” R. 371, DiCampello Decl. ¶ 24 (redacted).
ClearOne also maintains that it continues to suffer other intangible harms,
like loss of customer goodwill and reputation. ClearOne’s BMA-1 used to be “the only
beamforming microphone of its kind.” R. 371, DiCampello Decl. ¶ 6 (redacted). Now,
ClearOne is concerned that it is no longer the “cool new product,” and that instead,
Shure’s MXA910 is. Id. ¶ 17 (redacted). ClearOne’s evidence shows that “this
reputation matters” to consultants and integrators. Id. (redacted). And it is not clear
that whenever ClearOne releases its own product practicing the ’806 Patent it will
regain its reputation. R. 361, DiCampello Decl. ¶ 10

53

(sealed); R. 365,
Hakimoglu Decl. ¶ 16
(sealed).
Waadevig agrees. R. 362, Waadevig Rep. ¶¶ 79-86 (explaining that integrators and
purchasers are more likely to “invest in their relationship[s]” with “vendors who are
perceived as thought leaders.”) (redacted).
ClearOne’s loss of market share is the starkest evidence of the harm it has
suffered and is likely to continue to suffer. Almost immediately after the MXA910
was released in 2016, ClearOne’s BMA sales declined. R. 363, Waadevig Rep. ¶¶ 8791 (sealed). ClearOne’s DSP sales have also decreased, in part because the MXA910
can be used with several different DSPs, while the BMA-1 requires use of ClearOne’s.
Id. ¶¶ 92-93. These sales losses also have led ClearOne to drop prices on all its DSP
platforms more than the industry average. Id. ¶¶ 96-97 (identifying several reasons
for the DSP price drops, but claiming they are in part “an attempt to compete on price
with Shure’s MXA910 and compatible DSP products.”). ClearOne has learned of
additional lost sales, and its stock price has continued to plummet. R. 364, Hakimoglu
Decl. ¶ 12 (redacted).
It also remains the case that ClearOne refuses to license its technology,
including the ’806 Patent. ClearOne’s CEO, Zee Hakimoglu, continues to maintain
that ClearOne has no plans to license the ’806 Patent’s technology, in part because
“[n]o license could make up for” losing exclusive control of its patented technology.
R. 365, Hakimoglu Decl. ¶¶ 17-18 (sealed). As the Federal Circuit has held,

54

unwillingness to license weighs in favor of a finding of irreparable harm. See Presidio,
702 F.2d at 1363; Douglas Dynamics, LLC v. Buyers Prods. Co., 717 F.3d 1336,1345
(Fed. Cir. 2013).
Shure has argued in this litigation that more installed audio conferencing
devices are now on the market, and that the increased competition changes the
calculus from when the Court decided the analogous issue in ClearOne’s favor for the
’186 Patent. See Shure Resp. at 38-39. Shure’s Senior Director, Chad Wiggins, has
described several wall- and ceiling-mounted beamforming products that have become
more prominent in the audio conferencing market since the ’186 Patent litigation.
R. 418, Wiggins Decl. ¶¶ 19-21 (sealed). Those include a product produced by
Sennheiser, similar to the MXA910, which has allegedly become more competitive in
price in recent months. Id. ¶¶ 20-21 (sealed); see also R. 442, Giza Exh. 137, Wiggins
Dep. Tr. at 145:15-146:10

(sealed). ClearOne disputes that there has been a real change in circumstances and
points out that
. R. 439, ClearOne Resp. at 19 (sealed); see R. 442, Giza Exh.
137, Wiggins Dep. Tr. at 114:10-116:12, 148:19-151:23 (sealed).
But more importantly, there is no disagreement that ClearOne’s BMA directly
competes with Shure’s MXA910 in the installed audio conferencing market. R. 440,
ClearOne Reply at 19 (redacted). Both products are “installed audio conferencing
endpoints.” R. 362, Waadevig Rep. ¶ 24 (redacted). And as described above, there is

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ample evidence that they have previously competed directly for several different
sales. That is an important factor: The Federal Circuit has held that direct
competition is “one factor suggesting strongly the potential for irreparable harm.”
Apple, Inc. v. Samsung Elecs. Co., Ltd., 809 F.3d 633, 653-54 (Fed. Cir. 2015) (“Apple
IV”) (cleaned up); Douglas, 717 F.3d at 1344-45. There is simply no requirement that
the ClearOne BMA and the Shure MXA910 be the only products on the market.
Robert Bosch LLC v. Pylon Mfg. Corp., 659 F.3d 1142, 1151 (Fed. Cir. 2011)
(“[W]ithout additional facts showing that the presence of additional competitors
renders the infringer’s harm reparable, the absence of a two-supplier market does not
weigh against a finding of irreparable harm.”).
2. Nexus
ClearOne has established that its injuries are caused at least in part by the
infringing aspects of Shure’s MXA910. 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 it. 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.” Apple, Inc. v. Samsung Elecs. 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 decisions, or
by showing that the presence of the patented features makes the product significantly

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more desirable. Id.; see also Apple IV, 809 F.3d at 644 (holding that causal nexus was
established by showing that the features at issue “were important to customers when
they were examining their phone choices”).
There is clearly a nexus between ClearOne’s loss of sales, market share, and
reputation, and the MXA910’s integration of a BFMA with a ceiling tile that can be
mounted flush in a drop ceiling. As noted above, ClearOne lost a sale to American
Water in part because the MXA910 could be integrated into a drop ceiling. ClearOne
has also heard from at least one integrator that “its end user customers prefer the
MXA910’s form factor over the BMA’s due to the MXA910’s aesthetic appeal—
specifically, because it can drop right into a ceiling tile.” R. 371, DiCampello Decl. ¶ 8
(redacted). The integrator liked the MXA910 for that reason, too. Id. (redacted).
ClearOne’s expert, Paul Waadevig, has also explained why the flush mounting option
is appealing to so many: “[T]he visual integration of such a product into a conference
room is important as well. … [I]nstalled audio end users prefer conferencing products
that … are also unobtrusive once installed.” R. 362, Waadevig Rep. ¶¶ 31, 35
(“Because [the MXA910] finally satisfies the demand for a seamlessly-integrated,
high-quality installed audio microphone, it is highly innovative.”) (redacted). In
response, Shure offers other reasons for the MXA910’s success,
. R. 418, Wiggins Decl. ¶¶ 11, 15
(sealed). But ultimately Wiggins (Shure’s own executive) acknowledges that
Id.;
see also R. 442, Giza Exh. 137, Wiggins Dep. Tr. at 181:25-182:5

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(sealed).
Shure also points to evidence that there were other issues with the production
and sale of ClearOne’s BMA, suggesting that ClearOne’s drop in market share is less
a result of competition from the MXA910 and more the natural consequence of its
alleged low quality. Shure also points out that
and that it does not allow for adjustable beams. R. 413,
Shure Resp. at 37-38 (sealed). Also, Shure points to emails and other communications
between ClearOne managers and employees and its end users and integrators, all

Id. at 38 (sealed) (citing R. 422, Patel Exh. 73-78 (sealed)). But some of the
communications identified by Shure do not relate to the quality of the products
themselves. For example, an email exchange between Hakimoglu and a product line
manager in April 2015 appears to have more to do with preparation than function.
See generally R. 422, Patel Exh. 78
(sealed). But in any case, Shure
has not presented any evidence actually linking these anecdotes to the BMA’s poor
performance against the MXA910.
At the hearing, Shure also argued that the presence of other competitors of
ClearOne’s BMA would make it difficult to remedy the harm suffered by ClearOne by
enjoining Shure. That is, to Shure’s way of thinking, any sales that would have gone
to the MXA910 might not go to ClearOne’s BMA anyway. Prelim. Inj. Hrg. Tr. at

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150:10-152:1. But the presence of other competitors does not weaken ClearOne’s
rights under its patent. If ClearOne believes that other potential competitors are
infringing the patent, then it may choose to litigate against them as well. And in any
case, even if some of the displaced sales went to companies other than ClearOne, the
fact that Shure would not gain those customers would prevent ClearOne from having
to compete against Shure to regain them in the future. Also,
. See
R. 365, Hakimoglu Decl. ¶ 14 (sealed).
Finally, in its response to ClearOne’s motion, Shure asserted that, because
ClearOne did not yet market a product practicing the ’806 Patent, “its theory of
irreparable harm [was] even more convoluted.” R. 402, Shure Resp. at 37 (redacted).
But ClearOne was not required to practice the patent to be irreparably harmed by
Shure’s infringement of it. See Presidio, 702 F.3d at 1363 (“Even without practicing
the claimed invention, the patentee can suffer irreparable injury. Direct competition
in the same market is certainly one factor suggesting strongly the potential for
irreparable harm without enforcement of the right to exclude.”). At any rate,
ClearOne has since announced that it has begun selling a product that practices the
’806 Patent. See R. 479, Not. of Release of Product. But the new product does not
significantly change the analysis: the evidence was already clear that the BMA itself
had been competing directly—albeit unsuccessfully—with the MXA910.
Relatedly, Shure also seems to argue that it is implausible that the MXA910
could harm ClearOne by infringing both the ’186 Patent and the ’806 Patent. R. 402,

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Shure Resp. at 37 (“ClearOne has already argued that its harm has been caused by
Shure’s alleged infringement of the ’186 Patent. Now it uses its same charts and same
data to allege that same harm is actually caused by the ’186 Patent”) (redacted). But
there is nothing odd about competing products having different features that
contribute to customer buying decisions. And, as discussed above, the evidence clearly
proves that the BMA-tile integration is a material factor in customers’ decisionmaking.
E. Inadequate Remedy at Law
The question of adequate remedy at law is often closely related to the
irreparable harm inquiry. As explained above, ClearOne has shown that it is losing
sales to Shure and is likely to lose more. The structure of the market makes it hard
to measure the impact of these sales. As discussed earlier in the Opinion, 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. And it is difficult to know
with certainty even which sales have been lost thus far, because neither company
sells directly to its end users. R. 362, Waadevig Rep. ¶ 72 (redacted). 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 for the harm. Metalcraft
of Mayville, Inc. v. The Toro Co., 848 F.3d 1358, 1368 (Fed. Cir. 2017) (“Where the
injury cannot be quantified, no amount of money damages is calculable, and therefore
the harm cannot be adequately compensated and is irreparable.); i4i Ltd. P’ship v.
Microsoft Corp., 598 F.3d 831, 862 (Fed. Cir. 2010); Broadcom Corp. v. Qualcomm

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Inc., 543 F.3d 683, 703-04 (Fed. Cir. 2008). 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 has no plans to license the patented technology
because it benefits so much from exclusivity. R. 365, Hakimoglu Decl. ¶¶ 17-18
(sealed). 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.
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 1343, 1352 (Fed. Cir. 2016)).
To be clear at the outset, Shure’s MXA910 has multiple mounting options, and
ClearOne has only alleged that one of them—its drop ceiling mounting
configuration—is infringing. See also R. 402, Shure Resp. at 32 (“By suggesting the
MXA910’s success is due to one of four optional mounting configurations, ClearOne
ignores the real reasons for the success.”) (redacted). So an appropriately tailored
preliminary injunction in this case would only prohibit Shure from selling the
MXA910 to be used in a drop ceiling mounting configuration—it would not impede
Shure’s ability to sell the MXA910 for use in other configurations. Additionally, the
Court has the discretion to limit the harm to end users who have already installed

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the MXA910 in a drop ceiling configuration to continue using it that way, and by
allowing Shure to continue servicing those customers.
It is true that the preliminary injunction will impose substantial costs on
Shure. Shure would have to modify its promotional and marketing materials, and
would very likely lose at least some sales to customers interested solely in dropceiling-mounted audio conferencing products.
But Shure does not know how many of its MXA910 sales end up mounted in
drop ceiling configurations. R. 418, Wiggins Decl. ¶¶ 8-9 (sealed). The only
benchmark it has is the number of special brackets it has sold for mounting the
MXA910 to a hard ceiling. Even this is a rough gauge because customers can also use
suspension mounting to install the MXA910 in a room with a hard ceiling, or buy a
different Video Electronics Standards Association (VESA) bracket. R. 410, Wiggins
Decl. ¶¶ 6-7 (redacted). But Shure has sold over

hard-ceiling mounting

brackets, which suggests that at least some portion of its customer base uses the
MXA910 with a hard ceiling—not in a drop ceiling. R. 418, Wiggins Decl. ¶ 8-9
(sealed).
Shure’s uncertainty about how its MXA910s are most often installed makes it
difficult to know precisely how much harm Shure would suffer under an injunction.
That is not necessarily a problem: because the MXA910 only infringes ClearOne’s
patent when mounted in a drop ceiling configuration, ClearOne’s harm without an
injunction is directly related to the number of MXA910s that would be sold for the
drop-ceiling mounting. And in any case, because Shure argues that its drop ceiling

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mounting option is not the primary reason for the MXA910’s success, R. 402, Shure
Resp. at 32 (redacted), end users who are attracted to the MXA910 for any of its other
advantages might not be put off by their inability to mount it in a drop-ceiling grid.
And that means it may not expect to see significant losses from an injunction tailored
specifically to the drop ceiling mounting configuration.
Of course, in addition to its effect on Shure, an injunction would impose costs
on the public. Shure’s MXA910 might very well have advantages beyond the fact that
it can mount cleanly into a drop ceiling. In addition, because ClearOne is not
currently practicing the patent, it is not clear that the public will be able to purchase
a practicing product while the injunction is in place. But any harms from loss of
competition should 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 1346 (“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”).
IV. Conclusion
For all the reasons detailed above, ClearOne has established that it is likely to
succeed on the merits: Shure is likely infringing the ‘806 Patent, and it has failed to
raise a substantial question of the patent’s validity. In addition, ClearOne is suffering

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irreparable harm from Shure’s infringement, and the balance of the harms and the
public interest both weigh in favor of issuing an injunction against Shure’s infringing
sales of the MXA910 going forward. In order to ensure that harm to ClearOne is
minimized without placing an unfair burden on Shure, the tailored preliminary
injunction is this:
Shure shall cease manufacturing, marketing, and selling the MXA910 to be
used in its drop-ceiling mounting configuration, including marketing and
selling the MXA910 in a way that encourages or allows integrators to install it
in a drop-ceiling mounting configuration. This injunction applies to Shure’s
officers, agents, servants, employees, and attorneys, as well as anyone who is
in active concert or participation with those listed persons. But Shure
customers that have already installed the MXA910 in a drop-ceiling mounting
configuration shall be permitted to continue using their MXA910s in that way,
and Shure will be able to continue servicing those already-installed products.
In the preliminary injunction briefing, the parties did not address the issue of the
appropriate amount of the bond ClearOne will have to post under Federal Rule of
Civil Procedure 65(c) before the preliminary injunction goes into effect. The parties
shall promptly confer over the issue by 5 p.m. Central on August 6, 2019. Absent an
agreement, ClearOne shall file its motion to set the security amount by 5 p.m. on
August 7, 2019. Shure shall respond by 5 p.m. on August 9, 2019. ClearOne may reply
by 5 p.m. on August 12, 2019 (all times Central). In light of the ongoing irreparable
harm, these deadlines are not extendable absent extraordinary circumstances.
ENTERED:
s/Edmond E. Chang
Honorable Edmond E. Chang
United States District Judge

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DATE: August 5, 2019

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