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Shure, Inc. v. Clearone, Inc.

United States District Court, N.D. Illinois, Eastern Division

August 25, 2019

SHURE, INC., Plaintiff / Counter-Defendant,
v.
CLEARONE, INC., Defendant / Counter-Plaintiff.

          MEMORANDUM OPINION AND ORDER

          Honorable Edmond E. Chang, United States District Judge.

         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. The Court denied ClearOne's motion. R. 278, '186 Patent Prelim. Inj. Op. During the pendency of the first preliminary-injunction motion, 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 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. The Court eventually granted that preliminary injunction motion. R. 551, '806 Patent Prelim. Inj. Order.

         Meanwhile, the parties finished fact discovery and briefed their claim construction arguments on both the '186 and '806 Patents. See R. 508, Shure Br.; R. 520, ClearOne Resp.; R. 535, Shure Reply. The Court heard oral argument on claim construction on July 12, 2019. See R. 540, Minute Entry. The Court made final claim construction decisions on some terms from the '806 Patent in its preliminary injunction order, including “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.” '806 Patent Prelim. Inj. Order. This order decides the parties' remaining claim construction disputes on the '806 Patent, as well as on the '186 Patent.

         I. Background

         A. The '186 Patent

         The core contribution of the U.S. Patent No. 9, 635, 186 (the '186 Patent) is a method of efficiently combining beamforming (a technology that combines signals from multiple microphones to generate a combined audio signal that picks up sounds from a particular location) with acoustic echo cancellation (known in the industry as AEC), a technology that removes far-end echo from an audio-conferencing system. '186 Patent Prelim. Inj. Op. at 3. Figuring out how to combine beamforming and acoustic echo cancellation in a cost-efficient way-while still preserving audio quality-has been a longstanding challenge in the audio industry. See, e.g., R. 158, Kellerman Decl. Exh. 2 at 281 (“[S]traightforward combinations of the two techniques either multiply the considerable computational cost of AEC by the number of array microphones or sacrifice algorithmic performance if the beamforming is time-varying.”); R. 83, 8/6/17 Schonfeld Decl. ¶ 23.

         The illustrative claim of the '186 patent (Claim 7) discloses an efficient method of combining a beamforming microphone with AEC. R. 57-1, '186 Patent Col. 19:48-20:8. The claimed method reduces AEC processing costs by providing a beamformer capable of picking up a number of audio signals, which are then combined into a smaller number of “fixed” beams. Id. Col. 2:3-16. AEC is then performed on only the smaller number of fixed beams. Id. Col. 19:65-67. Performing AEC on fixed (as opposed to adjustable) beams reduces the amount of work for the acoustic echo cancellers, which would otherwise need to constantly adjust to track the changing beams. Id. Col. 2:3-16. After AEC is performed, a “signal selection module” selects one or more of the echo-cancelled signals to transmit to the far end. Id. Col. 20:1-3 (Limitation 5). The signal selection module also uses the far-end signal as information to inhibit the change of the near-end signal selection while only the far-end signal is “active.” Id. Col. 20:3-8 (Limitation 6).

         B. The '806 Patent

         The '806 Patent builds on the '186 Patent and claims an invention that combines a beamforming microphone array (BFMA) with a ceiling tile so that the BFMA can pick up sound throughout a conference room while remaining somewhat hidden from view. 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, the typical conference set-up involves multiple speakers in one room, all communicating with speakers in another location. R. 372, 9/24/18 Schonfeld Decl. ¶ 26. The “conventional wisdom” was that microphones should be as close to the attendees as possible. Id.; R. 360, Graham Decl. ¶ 8. The development of beamforming microphones did not immediately disrupt that view, 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. Graham Decl. ¶ 9. Their beamforming technology made the audio quality better than the quality that a non-beaming microphone would achieve when mounted on the ceiling. R. 477, Prelim. Inj. Hrg. Tr. at 76:1-9.

         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, '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 states that the integrated tile-BFMA is “used 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.

         II. Claim Construction

         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) (en banc). 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.

         III. Analysis

         A. The '186 Patent

         The Court previously interpreted several terms in the context of ClearOne's motion for a preliminary injunction on the '186 Patent. See '186 Patent Prelim. Inj. Op. at 7-16. This Opinion assumes familiarity with that preliminary injunction decision, R. 278.

         1. “each of the plurality of combined signals corresponding to a ...


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