DCT

1:19-cv-07285

ClearOne Inc v. Shure Inc

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I. Executive Summary and Procedural Information

  • Parties & Counsel:
  • Case Identification: 1:19-cv-07285, N.D. Ill., 11/04/2019
  • Venue Allegations: Venue is alleged to be proper in the Northern District of Illinois because both Defendant entities are incorporated in that judicial district.
  • Core Dispute: Plaintiff seeks a judicial declaration that its ceiling microphone array product does not infringe Defendant's design patent covering an ornamental design for a similar product.
  • Technical Context: The dispute concerns the ornamental design of array microphone assemblies, which are professional audio components typically installed in ceilings for teleconferencing and sound reinforcement.
  • Key Procedural History: The parties have been engaged in multi-forum patent litigation since 2017 over related beamforming microphone technology. This declaratory judgment action was filed in response to letters from Shure, sent prior to the issuance of its design patent, accusing ClearOne of infringement. The complaint was filed on the day before the patent-in-suit formally issued, raising a potential question regarding the existence of subject matter jurisdiction at the time of filing.

Case Timeline

Date Event
2015-04-30 D'865,723 Patent Priority Date
2019-10-17 Shure first accuses ClearOne of infringement of the then-pending design application
2019-10-22 Shure reiterates accusation, specifically naming the "BMA CT" product
2019-11-04 Complaint Filing Date
2019-11-05 D'865,723 Patent Issue Date

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

U.S. Design Patent No. D865,723 - "ARRAY MICROPHONE ASSEMBLY"

  • Patent Identification: U.S. Design Patent No. D865,723, "ARRAY MICROPHONE ASSEMBLY", issued November 5, 2019.

The Invention Explained

  • Problem Addressed: As a design patent, the D'865,723 Patent does not describe or solve a technical problem. Instead, it protects the novel, non-functional, ornamental appearance of an article of manufacture—in this case, an array microphone assembly.
  • The Patented Solution: The patented design is for a low-profile, square-shaped microphone assembly intended for ceiling installation (D’723 Patent, Figs. 1-6). Its primary visual features are a flat top surface with a uniform perforated grille pattern, surrounded by a continuous, inwardly beveled frame (D’723 Patent, Fig. 1, 3, 5). The claim covers the ornamental design as depicted in solid lines in the patent's drawings (D’723 Patent, Claim; Description).
  • Technical Importance: The existence of litigation over the ornamental appearance of these devices suggests that as beamforming microphone arrays become more common in corporate and professional environments, their aesthetic design and ability to blend into an architectural space are points of market differentiation (Compl. ¶¶12, 16).

Key Claims at a Glance

  • The patent contains a single claim for "The ornamental design for an array microphone assembly, as shown and described" (D’723 Patent, Claim).
  • The scope of this claim is defined by the visual characteristics depicted in the patent's figures, including:
    • A square, tile-like overall configuration.
    • A continuous, inwardly beveled frame surrounding the top surface.
    • A flat top surface with a uniform, perforated grille pattern.
    • A low-profile side aspect.

III. The Accused Instrumentality

Product Identification

  • ClearOne's "BMA CT" product (Compl. ¶16).

Functionality and Market Context

  • The complaint identifies the BMA CT as a product related to "beamforming microphone array technology" (Compl. ¶12). Shure has accused this specific product of infringing the D'865,723 Patent's design (Compl. ¶16). The complaint itself does not provide any images, marketing materials, or technical descriptions of the BMA CT product's appearance.

IV. Analysis of Infringement Allegations

As a complaint for a declaratory judgment of non-infringement, this pleading does not set forth an infringement theory. Rather, it seeks a judicial declaration that ClearOne's product does not infringe. ClearOne broadly alleges that its BMA CT product does not embody the patented design or "any colorable imitation thereof" and thus does not infringe the single claim of the '723 Patent (Compl. ¶¶21, 22).

No probative visual evidence provided in complaint.

  • Identified Points of Contention:
    • The central issue for the court will be to apply the "ordinary observer" test for design patent infringement. This involves determining whether an ordinary observer, familiar with the prior art in array microphone designs, would be deceived into believing that ClearOne's BMA CT product is the same as Shure's patented design.
    • Scope Questions: The dispute will not center on claim term definitions but on a visual, side-by-side comparison of the accused product and the patent drawings. The analysis will focus on the similarity of the overall visual impression created by the two designs, paying attention to specific features like the profile, the frame's bevel, and the top surface pattern.
    • Technical Questions: The key question is not one of technical operation but of visual comparison: do the specific ornamental features of the BMA CT product create the same overall visual impression as the design claimed in the '723 Patent?

V. Key Claim Terms for Construction

In design patent litigation, claim construction is generally limited to describing the claimed ornamental design as shown in the patent's drawings and identifying which features are claimed (solid lines) versus disclaimed (broken lines). Formal construction of written terms is typically not required. The dispute will therefore center on the application of the "ordinary observer" test to the design as a whole, rather than the construction of a specific term.

  • The Term: "ornamental design for an array microphone assembly, as shown and described" (D’723 Patent, Claim).
  • Context and Importance: This phrase defines the entire scope of the patent right. Its interpretation is not a matter of defining words, but of understanding that the "claim" is the visual design depicted in Figures 1-6.
  • Intrinsic Evidence for Interpretation:
    • Evidence for a Broader Interpretation: A party arguing for broader scope might emphasize the overall impression of a sleek, square, beveled-edge ceiling microphone, arguing that minor differences in the grille or bevel angle do not change the fundamental aesthetic.
    • Evidence for a Narrower Interpretation: A party arguing for narrower scope would point to the specific details shown in the drawings—such as the precise angle and width of the bevel, the specific pattern of the perforations, and the flushness of the surfaces—as essential elements of the "as shown" design, arguing that any deviation is significant (D’723 Patent, Figs. 1, 3, 5).

VI. Other Allegations

  • Indirect Infringement: The complaint seeks a declaration of non-infringement for all forms of infringement, including "indirectly, contributorily, or by inducement," but alleges no specific facts related to these theories, as its purpose is denial (Compl. ¶24).
  • Willful Infringement: The complaint does not allege willfulness. However, it does request that the court declare the action an "exceptional case" and award attorney's fees pursuant to 35 U.S.C. § 284 (Compl., Prayer for Relief ¶C). The basis for this request appears to be the allegation that Shure's pre-issuance threats of litigation created the "actual controversy" and forced ClearOne to file the declaratory judgment action (Compl. ¶¶16, 23).

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

  • A threshold issue will be one of subject matter jurisdiction: did Shure’s pre-issuance letters accusing ClearOne of infringement create an "actual controversy" sufficient to support a declaratory judgment action filed the day before the D'865,723 patent formally issued?
  • The central substantive question will be one of ornamental design infringement: would an ordinary observer, taking into account the prior art, be deceived into thinking ClearOne’s BMA CT product is the same as the design claimed in the '723 Patent? The outcome will depend entirely on a visual comparison of the products' overall appearances.
  • A key remedial question will be whether Shure’s conduct in accusing ClearOne of infringement before the patent had issued makes this an "exceptional case" under 35 U.S.C. § 284, potentially entitling ClearOne to attorney’s fees if it prevails on its non-infringement claim.