Shure Inc v. ClearOne Inc

1. Case Identification

• Case #: PGR2020-00079
• Patent #: 10,728,653
• Filed: July 28, 2020
• Petitioner(s): Shure Incorporated
• Patent Owner(s): ClearOne, Inc.
• Challenged Claims: 1-24

2. Patent Overview

• Title: Beamforming Microphone Array Systems
• Brief Description: The ’653 patent relates to beamforming microphone array systems integrated with ceiling tiles for use in conference rooms. The technology aims to provide audio pickup while being aesthetically integrated into interior design elements like drop ceilings.

3. Grounds for Unpatentability

Ground 1: Indefiniteness - Claims 1-24 are indefinite under 35 U.S.C. §112(b).

• Prior Art Relied Upon: None.
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner argued that the claim term "adaptive acoustic processing that automatically adjusts to a room configuration" is fatally indefinite. The specification was alleged to provide no objective standard for what this processing entails, what constitutes a "room configuration," or how the system automatically adjusts.
  • Key Aspects: Petitioner asserted that a person of ordinary skill in the art (POSITA) would recognize numerous plausible but distinct meanings for the term—including noise reduction, echo cancellation, signal mixing, and de-reverberation—with no guidance in the patent to select among them. This ambiguity was argued to render the scope of the claims unascertainable.

Ground 2: Obviousness over Graham and Levit - Claims 1-24 are obvious over Graham in view of Levit.

• Prior Art Relied Upon: Graham (Application # 2015/0078582) and Levit (Application # 2009/0173570).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner asserted that Graham, the publication of the parent application to the ’653 patent, disclosed a beamforming microphone array integrated into a ceiling tile for a drop ceiling. Levit was cited for its disclosure of acoustically absorbent ceiling tiles that feature an "acoustically transparent" nonwoven facing designed to protect the tile's core material without impeding sound absorption.
  • Motivation to Combine: A POSITA would combine Graham's microphone-in-tile system with Levit's acoustically transparent facing for two primary reasons. First, to improve overall room acoustics by reducing noise and reverberation using the absorbent core taught by Levit. Second, to protect the sensitive microphone components within the tile from dust, moisture, and damage during installation and maintenance, a known benefit of such facings.
  • Expectation of Success: Petitioner argued success would be predictable, as Levit's facing was specifically designed not to detract from acoustic performance, and Graham teaches embedding microphones within the tile, making the combination a straightforward integration of known elements for their intended purposes.

Ground 3: Obviousness over the CTG System and Levit - Claims 1-24 are obvious over the CTG System in view of Levit.

• Prior Art Relied Upon: The CTG System (a publicly sold system including CM-01 Ceiling Microphones and FS-400/800 mixers) and Levit (Application # 2009/0173570).

• Core Argument for this Ground:

  • Prior Art Mapping: Petitioner contended the CTG System, which was commercially available before the patent's effective filing date, taught nearly every limitation of the claims. The system included ceiling-mounted microphones connected to mixers that performed beamforming, acoustic echo cancellation, noise cancellation, and de-reverberation (a form of adaptive acoustic processing). Levit again provided the teaching of an acoustically transparent facing for ceiling tiles.
  • Motivation to Combine: A POSITA would have been motivated to use the known CTG System in a room with acoustically absorbent ceiling tiles, like those taught by Levit, to improve audio quality. Furthermore, because installing the CTG microphones involved drilling a hole in a ceiling tile, a POSITA would have found it advantageous to use a tile with Levit’s protective facing to prevent damage to the tile core during installation and protect the electronics, without degrading audio pickup.
  • Expectation of Success: The combination was presented as a predictable application of known technologies to achieve improved audio quality and durability, well within the ordinary skill of a POSITA.

• Additional Grounds: Petitioner asserted additional challenges, including lack of enablement and written description support under §112 for the "adaptive acoustic processing" limitation. An additional obviousness ground was asserted over the CTG System in view of Levit and Beaucoup (Application # 2003/0118200), which taught a compact, steerable microphone array.

4. Key Claim Construction Positions

• "a ceiling tile": Petitioner proposed this term be construed as "one or more ceiling tiles," arguing that the specification and figures illustrate embodiments where the microphone array is installed across multiple tiles, and nothing in the intrinsic record evinced a clear intent to limit the term to a single tile.
• "beamforming microphone array": Proposed construction was "a plurality of microphones and hardware or a combination of hardware and software in communication with the plurality of microphones." Petitioner argued this was necessary because the claims require the "array" itself to perform complex functions (beamforming, echo cancellation, adaptive processing), which requires processing hardware/software beyond just the microphone transducers.
• "an outer surface of the ceiling tile": Proposed construction was "a portion of the ceiling tile that is distinct from a core of the ceiling tile and faces into a room." This was based on dependent claims reciting acoustic damping material, implying the outer surface and core are distinct components.
• "adaptive acoustic processing...": Petitioner contended this term is indefinite and cannot be construed. For the purposes of its §103 arguments, it was argued that the term is broad enough to cover known techniques like the noise cancellation and de-reverberation disclosed in the CTG System.

5. Key Technical Contentions (Beyond Claim Construction)

• Invalid Priority Claim and PGR Eligibility: A central contention was that the ’653 patent is not entitled to its claimed priority date. Petitioner argued that key claim limitations, specifically "an outer surface of the ceiling tile is acoustically transparent" and "adaptive acoustic processing," were not disclosed in the priority applications. It was alleged this language constituted new matter added years after the original filings, breaking the priority chain and making the patent eligible for Post-Grant Review.

6. Arguments Regarding Discretionary Denial

• Petitioner argued that discretionary denial under §325(d) would be inappropriate. The core argument was that the CTG System, a key prior art reference, was not substantively considered by the Examiner during prosecution. Although the system's marketing materials were cited in an Information Disclosure Statement (IDS), Petitioner contended the Examiner's stated reasons for allowance demonstrated a failure to appreciate that the CTG System expressly teaches a microphone array integrated into a ceiling tile. Therefore, the Examiner did not have the benefit of the arguments presented in the petition regarding this key commercial prior art system.

7. Relief Requested

• Petitioner requests institution of a post-grant review and cancellation of claims 1-24 of Patent 10,728,653 as unpatentable under 35 U.S.C. §§ 112 and 103.