DCT

1:19-cv-01343

Shure Incorporated et

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I. Executive Summary and Procedural Information

  • Parties & Counsel:
  • Case Identification: 1:19-cv-01343, D. Del., 11/19/2019
  • Venue Allegations: Venue is alleged to be proper in the District of Delaware because Defendant ClearOne, Inc. is incorporated in Delaware and thus resides in the judicial district.
  • Core Dispute: Plaintiff alleges that Defendant’s BMA CT ceiling array microphone infringes a utility patent and a design patent related to ceiling-mountable array microphone technology.
  • Technical Context: The technology concerns professional audio equipment, specifically microphone arrays designed to be mounted flush within a standard drop-ceiling grid to provide high-quality audio capture in conference rooms while remaining aesthetically unobtrusive.
  • Key Procedural History: The complaint notes that the parties have been engaged in prior patent litigation since 2017 in other districts. It also states that on February 15, 2019, Defendant ClearOne filed a petition for inter partes review (IPR) of the ’493 Patent (Case IPR2019-00683), which was ongoing at the time of filing. The complaint cites ClearOne's IPR filing and an earlier Information Disclosure Statement as evidence of pre-suit knowledge of the patent.

Case Timeline

Date Event
2015-04-30 Earliest Priority Date for '493 and ’723 Patents
2016-02-09 Shure announces its Microflex Advance product portfolio
2017-02-07 U.S. Patent No. 9,565,493 issues
2017-07-19 ClearOne identifies '493 Patent in an IDS
2019-02-15 ClearOne files IPR petition challenging the '493 Patent
2019-02-25 ClearOne announces shipments of the accused BMA CT product
2019-11-05 U.S. Patent No. D865,723 issues
2019-11-19 Complaint Filed

II. Technology and Patent(s)-in-Suit Analysis

U.S. Patent No. 9,565,493 - "Array Microphone System and Method of Assembling the Same"

  • Patent Identification: U.S. Patent No. 9,565,493, "Array Microphone System and Method of Assembling the Same," issued February 7, 2017.
  • The Invention Explained:
    • Problem Addressed: The patent describes drawbacks of conventional microphones in conferencing environments. Tabletop microphones are obtrusive and pick up surface noise, while existing ceiling-mounted microphones often require complex installation, are visually disruptive, and have their own audio pickup challenges due to distance from speakers and proximity to HVAC systems (’493 Patent, col. 1:15-63; Compl. ¶28).
    • The Patented Solution: The invention is a microphone assembly specifically designed to be "unobtrusive, easy to install into an existing environment," and to optimally detect sound while rejecting noise (’493 Patent, col. 1:64-2:3). Its key feature is a housing sized and shaped to be mounted directly into a drop ceiling grid "in place of at least one... ceiling tile[]," with a front-facing, sound-permeable screen that is visually similar to the surrounding tiles, thereby integrating seamlessly into the room's architecture (’493 Patent, Abstract; ’493 Patent, col. 6:8-16).
    • Technical Importance: This form factor aimed to resolve the longstanding tension between acoustic performance and aesthetic integration for conference room audio capture systems (Compl. ¶1).
  • Key Claims at a Glance:
    • The complaint asserts independent claim 17 (Compl. ¶29).
    • The essential elements of independent claim 17 are:
      • An array microphone comprising a plurality of microphones;
      • A housing configured to support the array microphone, where the housing is sized and shaped to be mountable in a drop ceiling in place of a ceiling tile;
      • Wherein the housing's front face includes a sound-permeable screen with a size and shape substantially similar to a ceiling tile.
    • The complaint reserves the right to assert claims 18-20 and 23-27, and to supplement its list of asserted claims (Compl. ¶30, fn. 1).

U.S. Patent No. D865,723 - "Array Microphone Assembly"

  • Patent Identification: U.S. Patent No. D865,723, "Array Microphone Assembly," issued November 5, 2019.
  • Technology Synopsis: The patent protects the ornamental design for an array microphone assembly. It addresses the aesthetic challenge of making a piece of professional audio hardware visually unobtrusive and suitable for a modern office environment. The patented design is a low-profile, square-shaped housing with a flat, perforated grille covering the majority of its face, bordered by a simple beveled frame, creating an appearance that mimics a standard ceiling tile (’723 Patent, Figs. 1, 3, 5; Compl. ¶73).
  • Asserted Claims: The patent contains a single claim for the ornamental design as shown in its figures (Compl. ¶73).
  • Accused Features: The complaint alleges that the overall visual appearance of the Defendant's BMA CT product is a "colorable imitation" of, or "substantially the same" as, the design claimed in the ’723 Patent (Compl. ¶¶75, 79).

III. The Accused Instrumentality

  • Product Identification: The accused product is the ClearOne BMA CT (Compl. ¶1).
  • Functionality and Market Context: The BMA CT is described in Defendant's marketing literature as a "2nd-generation Beamforming Microphone Array solution for ceiling-tile installations" (Compl. ¶33). It features "24 microphones" and is promoted as having a "Convenient Ceiling-Tile Form Factor" that "Drops easily into standard ceiling-tile grid systems" (Compl. ¶¶33-35). The complaint alleges this product was released to directly compete with Shure's MXA910 product by adopting its patented features and design (Compl. ¶¶1-2). A photograph in the complaint shows the accused BMA CT product installed in a drop ceiling, flush with adjacent tiles (Compl. p. 14, Exhibit D).

IV. Analysis of Infringement Allegations

'493 Patent Infringement Allegations

Claim Element (from Independent Claim 17) Alleged Infringing Functionality Complaint Citation Patent Citation
an array microphone comprising a plurality of microphones; The accused BMA CT is marketed as a "Beamforming Microphone Array" and its literature confirms it features "24 microphones." The complaint includes a marketing document describing this feature (Compl. p. 11, Exhibit C). ¶¶33-34 col. 4:51-54
a housing configured to support the array microphone, the housing being sized and shaped to be mountable in a drop ceiling in place of at least one of a plurality of ceiling tiles included in the drop ceiling, The BMA CT product is described as a "patented ceiling tile beamforming mic array that blends in perfectly with today's drop ceilings" and is marketed with a feature list stating it "Drops easily into standard ceiling-tile grid systems." ¶35 col. 6:8-16
wherein a front face of the housing includes a sound-permeable screen having a size and shape that is substantially similar to the at least one of the plurality of ceiling tiles. The BMA CT is shown with a perforated front screen and marketed as having a "Ceiling-Tile Form Factor," allegedly making its size and shape substantially similar to a standard ceiling tile. An exploded view in the complaint shows the product's housing components, including the screen (Compl. p. 15, Exhibit C). ¶36 col. 5:17-24

'723 Patent Infringement Allegations

The complaint alleges infringement of the ’723 design patent under the "ordinary observer" test, asserting that an ordinary observer, familiar with the prior art, would be deceived into believing the accused BMA CT product is the same as the patented design (Compl. ¶75). To support this, the complaint provides a series of side-by-side visual comparisons, juxtaposing figures from the ’723 Patent with photographs of the BMA CT product from various perspectives (Compl. ¶¶73-74). For example, the complaint presents a comparison of the front, top, left perspective view of the patented design and the accused product, highlighting their alleged visual similarity (Compl. p. 26, Exhibits C & D).

Identified Points of Contention

  • Scope Questions: A central dispute for the '493 patent will likely concern the scope of the term "substantially similar". The parties may contest the degree of similarity in size and shape required for the accused product's front screen to meet this limitation, and whether it must correspond to specific, standard tile dimensions. The construction of "mountable in a drop ceiling in place of...a...ceiling tile" may also be disputed, questioning whether it is limited to a simple drop-in replacement or could cover other mounting methods.
  • Technical Questions: For the '723 design patent, the infringement analysis raises a factual question: Are the visual differences between the accused BMA CT product and the claimed ornamental design significant enough that an ordinary observer would not confuse the two?

V. Key Claim Terms for Construction

  • The Term: "mountable in a drop ceiling in place of at least one of a plurality of ceiling tiles"

  • Context and Importance: This phrase defines the core functional and physical characteristic of the claimed invention. Its construction will determine whether the patent covers only products that are direct, tool-less replacements for standard ceiling tiles or a broader category of ceiling-integrated microphones.

  • Intrinsic Evidence for Interpretation:

    • Evidence for a Broader Interpretation: The specification discusses alternative mounting options, such as using a VESA mount or hanging the assembly from ceiling cables, which could be argued to support a construction not strictly limited to dropping into a ceiling grid (’493 Patent, col. 7:4-14).
    • Evidence for a Narrower Interpretation: The specification repeatedly emphasizes the advantages of replacing a standard tile in a drop ceiling grid, and Figure 6 explicitly depicts the assembly installed in this manner (’493 Patent, Fig. 6; col. 6:8-16). This could support a narrower construction limited to products functioning as direct tile replacements.

  • The Term: "substantially similar"

  • Context and Importance: This term of degree qualifies the required resemblance between the microphone assembly's front screen and a ceiling tile. Its definition is critical, as it dictates how closely the accused product's dimensions and shape must match those of a standard tile. Practitioners may focus on this term because infringement could turn on whether minor deviations in size or shape are sufficient to escape the claim's scope.

  • Intrinsic Evidence for Interpretation:

    • Evidence for a Broader Interpretation: The use of "substantially" suggests that the patentee did not intend to require exact identity with a ceiling tile, allowing for some variation in size, shape, or appearance while maintaining a generally tile-like form.
    • Evidence for a Narrower Interpretation: The specification explicitly lists standard U.S., European, and Asian ceiling tile dimensions (e.g., "two feet by two feet," "600 millimeters...by 600 mm") (’493 Patent, col. 6:1-7). A party could argue this provides a specific, limited set of benchmarks against which similarity must be judged.

VI. Other Allegations

  • Indirect Infringement: The complaint alleges induced infringement of the ’493 Patent, stating that ClearOne knowingly sells the BMA CT with the intent that its customers directly infringe by installing and using the product in a drop ceiling (Compl. ¶37). This allegation is supported by references to ClearOne's marketing materials and guides that allegedly instruct users on such installation (Compl. ¶35).
  • Willful Infringement: The complaint alleges willful infringement of the ’493 Patent based on pre-suit knowledge. The allegations point to ClearOne having cited the ’493 Patent in an Information Disclosure Statement during its own patent prosecution on July 19, 2017, and having filed an inter partes review petition against the ’493 Patent on February 15, 2019 (Compl. ¶¶18, 39).

VII. Analyst’s Conclusion: Key Questions for the Case

  • A core issue will be one of claim scope: For the ’493 patent, the dispute may hinge on how broadly the court construes the phrases "mountable in a drop ceiling in place of" and "substantially similar." The outcome of this construction will likely determine whether the form factor of the accused BMA CT product falls within the boundaries of the asserted claims.
  • A second central question will be one of visual identity: For the ’723 design patent, the case will turn on the factual determination of whether the overall ornamental appearance of the BMA CT is "substantially the same" as the patented design in the eye of an ordinary observer, or if the visual differences are sufficient to distinguish the two products.
  • Finally, a key evidentiary question will concern willfulness: Given the complaint’s specific allegations of pre-suit knowledge through an IPR filing and an IDS, the court will need to evaluate whether ClearOne's alleged infringement, if any is found, was accompanied by the egregious conduct necessary to support an enhancement of damages.