Clearone, Inc. v. Shure Acquisition Holdings

Case: 21-1517 Document: 55 Page: 1 Filed: 06/01/2022
United States Court of Appeals
for the Federal Circuit
______________________
CLEARONE, INC.,
Appellant
v.
SHURE ACQUISITION HOLDINGS, INC.,
Appellee
______________________
2021-1517
______________________
Appeal from the United States Patent and Trademark
Office, Patent Trial and Appeal Board in No. IPR2019-
00683.
______________________
Decided: June 1, 2022
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MATTHEW C. PHILLIPS, Laurence & Phillips IP Law,
Washington, DC, argued for appellant. Also represented
by KEVIN BRENT LAURENCE, DEREK MEEKER; XINLIN LI
MORROW, The Morrow Firm, Los Angeles, CA; CHRISTINA
MARIE RAYBURN, Hueston Hennigan LLP, Newport Beach,
CA.
JOSEPH MICHAEL SCHAFFNER, Finnegan Henderson
Farabow Garrett & Dunner, LLP, Reston, VA, argued for
appellee. Also represented by ALEXANDER MICHAEL BOYER,
ELLIOT COOK, J. DEREK MCCORQUINDALE; ERIKA ARNER,
Case: 21-1517 Document: 55 Page: 2 Filed: 06/01/2022
2 CLEARONE, INC. v. SHURE ACQUISITION HOLDINGS
Washington, DC; VLADIMIR AREZINA, VIA Legal, LLC, Chi-
cago, IL.
______________________
Before MOORE, Chief Judge, NEWMAN and HUGHES, Cir-
cuit Judges.
MOORE, Chief Judge.
ClearOne, Inc. appeals from an inter partes review fi-
nal written decision holding the self-similar configuration
term in substitute claim 57 of U.S. Patent No. 9,565,493not indefinite. ClearOne also appeals the Patent Trial and
Appeal Board’s separate written decision denying its re-
quest to file a motion for sanctions against Shure Acquisi-
tion Holdings, LLC. For the reasons discussed below, we
affirm.
BACKGROUND
Shure owns the ’493 patent, which relates to arrays of
microphones and housings for the arrays so that the arrays
and housings may be fitted into a drop ceiling grid. ’493
patent at Abstract, 1:6–9. The array is configured, in one
embodiment, to “include[] a plurality of microphone trans-
ducers selectively positioned in a self-similar or fractal-like
configuration, or constellation.” Id. at 3:66–4:1. For exam-
ple, “this physical configuration can be achieved by arrang-
ing the microphones in concentric rings, which allows the
array microphone to have equivalent beamwidth perfor-
mance at any given look angle in a three-dimensional (e.g.,
Case: 21-1517 Document: 55 Page: 3 Filed: 06/01/2022
CLEARONE, INC. v. SHURE ACQUISITION HOLDINGS 3
X-Y-Z) space.” Id. at 4:3–7. An example array of micro-
phones 106b is shown in ’493 patent Figure 5:
During inter partes review (IPR), Shure moved to
amend the claims of the ’493 patent and added independ-
ent claim 57, which recites in relevant part:
A microphone assembly comprising:
an array microphone comprising a plural-
ity of microphones arranged in a self-simi-
lar configuration . . . .
J.A. 1040 (emphasis added).
The Board granted Shure’s motion to amend and con-
cluded that a skilled artisan would understand “self-simi-
lar” to have had a well-known meaning and include the
specification’s disclosure of “fractal-like[] configurations or
constellations,” which does not create an ambiguity.
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4 CLEARONE, INC. v. SHURE ACQUISITION HOLDINGS
ClearOne, Inc. v. Shure Acquisition Holdings, Inc., No.
IPR2019-00683, 2020 WL 4742525, at *45 (P.T.A.B.
Aug. 14, 2020) (FWD).
ClearOne then requested rehearing and leave to file a
sanctions motion against Shure, arguing Shure violated its
duty to disclose material prior art. ClearOne explained
that three weeks before the Board issued its FWD, Shure
petitioned for post-grant review of U.S. Patent
No. 10,728,653, which also relates to drop ceiling micro-
phone arrays. ’653 patent at Abstract; see generally Shure
Inc. v. ClearOne, Inc., No. PGR2020-00079, 2020 WL
4361034 (P.T.A.B. July 28, 2020) (PGR Petition). Shure as-
serted that all claims of the ’653 patent would have been
obvious over, inter alia, U.S. Patent Publication
No. 2009/0173570 (Levit) and disclosed U.S. Patent Publi-
cation No. 2009/0173030 (Gulbrandsen) for background in-
formation purposes. See generally PGR Petition, 2020 WL
4361034. Shure did not disclose Levit or Gulbrandsen in
the IPR of the ’493 patent, including in its motion to
amend. According to ClearOne, this was a violation of
Shure’s duty of disclosure warranting rehearing and sanc-
tions. See J.A. 1565–72, 12010–18.
After ClearOne served its proposed sanctions motion
on Shure and the parties participated in an oral hearing
before the Board, the Board denied rehearing and did not
authorize ClearOne to file a sanctions motion. ClearOne,
Inc. v. Shure Acquisition Holding, Inc., No. IPR2019-
00683, 2020 WL 6434969, at *4 (P.T.A.B. Nov. 2, 2020)
(Sanctions Decision); Clearone, Inc. v. Shure Acquisition
Holdings, Inc., No. IPR2019-00683, 2020 WL 6479365,
at *2 (P.T.A.B. Nov. 3, 2020) (Rehearing Denial). The
Board concluded that Shure did not violate its duty to dis-
close because, inter alia, Levit and Gulbrandsen were cu-
mulative of references asserted by ClearOne in its IPR
petition. Sanctions Decision, 2020 WL 6434969, at *3. The
Board reasoned that allowing ClearOne to file its sanctions
motion would be little more than a second opportunity at
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CLEARONE, INC. v. SHURE ACQUISITION HOLDINGS 5
its IPR with the hindsight benefit of knowing the Board’s
views of the deficiencies in its invalidity contentions. Id.ClearOne appeals. We have jurisdiction under
28 U.S.C. § 1295(a)(4)(A).
DISCUSSION
Definiteness is a matter of claim construction, which is
a legal determination we review de novo. Noah Sys., Inc.
v. Intuit Inc., 675 F.3d 1302, 1311 (Fed. Cir. 2012); HTC
Corp. v. Cellular Commc’ns Equip., LLC, 877 F.3d 1361,
1367 (Fed. Cir. 2017). Claim construction may be based on
factual determinations by the Board, which we review for
substantial evidence. HTC Corp., 877 F.3d at 1367. Under
35 U.S.C. § 112(b), patent claims must “particularly point[]
out and distinctly claim[] the subject matter” regarded as
the invention. This requires that claims, “viewed in light
of the specification and prosecution history, inform those
skilled in the art about the scope of the invention with rea-
sonable certainty.” Nautilus, Inc. v. Biosig Instruments,
Inc., 572 U.S. 898, 910 (2014). Extrinsic evidence may help
identify the scope of the claims. Guangdong Alison Hi-
Tech Co. v. Int’l Trade Comm’n, 936 F.3d 1353, 1359–60
(Fed. Cir. 2019). Failure to meet this standard renders a
claim invalid as indefinite. Nautilus, 572 U.S. at 901.
The Board determined that claim 57’s self-similar con-
figuration limitation is not indefinite. It reasoned that it
has a well-known meaning and that a skilled artisan would
understand the term to include the specification’s example
patterns, including “fractal-like[] configurations or constel-
lations.” FWD, 2020 WL 4742525, at *45. It also concluded
that the specification’s disclosure of a self-similar or frac-
tal-like configuration does not create an ambiguity as to
whether the patent “equates or contrasts the term ‘self-
similar’ with the term ‘fractal-like.’” Id. The Board found,
based on extrinsic dictionary definitions and expert testi-
mony, that the specification does not deviate from the
term’s well-known meaning. Id.Case: 21-1517 Document: 55 Page: 6 Filed: 06/01/2022
6 CLEARONE, INC. v. SHURE ACQUISITION HOLDINGS
Based on the intrinsic record alone, we conclude that
the written description provides, with reasonable cer-
tainty, the scope of the term self-similar. It discloses an
embodiment having “a plurality of MEMS microphones . . .
arranged in a self-similar or repeating configuration com-
prising concentric, nested rings of microphones (e.g., the
rings 910–922) surrounding a central microphone.” ’493
patent at 15:8–13 (emphasis added); see id. at Figs. 5, 9. It
also refers to the microphones being arranged “in a fractal,
or self-similar, configuration surrounding the central mi-
crophone.” Id. at 9:8–10. “[T]he microphones . . . can be
arranged in concentric, circular rings of varying sizes” and
at different “radial distances from the central microphone.”
Id. at 9:25–34. The microphones may also be arranged in
other repeating shapes, “such as . . . ovals, squares, rectan-
gles, triangles, pentagons, or other polygons.” Id. at 12:19–
21. Figure 9, reproduced below, illustrates an example of
a self-similar arrangement of nested concentric circles.
These disclosures show that self-similar configuration re-
fers to repeating or fractal-like configurations, such as con-
centric rings, ovals, or other shapes. Accordingly, read in
light of the specification, the term self-similar informs
skilled artisans, with reasonable certainty, about the scope
of the invention.
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CLEARONE, INC. v. SHURE ACQUISITION HOLDINGS 7
ClearOne argues that the written description’s disclo-
sure of fractals, concentric circles, and repeating patterns
confuses, rather than clarifies, what arrangements are
self-similar because those examples must be understood as
distinct from self-similar configurations. Appellant’s
Opening Br. 41–47. We do not agree. In context, all those
disclosed patterns are examples of self-similar configura-
tions, not of distinct embodiments. The phrases “self-sim-
ilar or fractal-like” and “self-similar or repeating” are not
juxtapositions; they equate self-similar to fractal-like or re-
peating patterns. And even if self-similar is broader than
these examples, that does not make the term indefinite.
BASF Corp. v. Johnson Matthey Inc., 875 F.3d 1360, 1367
(Fed. Cir. 2017). We reject ClearOne’s argument that the
specification creates any ambiguity.
Moreover, substantial evidence supports the Board’s
finding that self-similar has a well-known meaning and
confirms the scope of the invention in the written
Case: 21-1517 Document: 55 Page: 8 Filed: 06/01/2022
8 CLEARONE, INC. v. SHURE ACQUISITION HOLDINGS
description. One dictionary of record defines self-similar
as “the quality or state of having an appearance that is in-
variant upon being scaled larger or smaller.” FWD, 2020
WL 4742525, at *45 (quoting Merriam-Webster’s Colle-
giate Dictionary 1128 (11th ed. 2003)). And Dr. Begault,
ClearOne’s own expert, testified that the term “refers to an
object that is exactly or approximately similar to a part of
itself (i.e., the whole has the same shape as one or more of
the parts, which is also a characteristic of a fractal).” J.A.
3835 ¶ 157 (emphasis in original). Further, his ability to
determine that prior art disclosed a self-similar micro-
phone configuration, J.A. 3853 ¶ 187, “further supports the
conclusion that a skilled artisan did understand the term
with reasonable certainty.” Sonix Tech. Co. v. Publ’ns Int’l,
Ltd., 844 F.3d 1370, 1380 (Fed. Cir. 2017). Based on this
extrinsic evidence, a reasonable person could find that the
term self-similar has a definite meaning. See Guangdong,
936 F.3d at 1361–62 (relying on dictionaries and expert tes-
timony to confirm “objective boundaries” of claim term).
ClearOne’s arguments focus on self and similar sepa-
rately as terms of degree and by posing a series of rhetori-
cal questions to show its varying interpretations of the self-
similar term. Appellant’s Opening Br. 39–47; Appellant’s
Reply Br. 34–35. However, claim 57 does not use the term
similar in isolation as a term of degree but in the context of
a self-referential or self-repeating geometric pattern for
configuring microphones in an array, as confirmed by claim
57’s limiting language that the configuration (i.e., the form
or combination) is what must be self-similar.
ClearOne’s arguments for indefiniteness merely iden-
tify different ways one could interpret self-similar. Just
because a term is susceptible to more than one meaning
does not render it indefinite. “Such a test would render
nearly every claim term indefinite so long as a party could
manufacture a plausible construction.” Nevro Corp. v. Bos.
Sci. Corp., 955 F.3d 35, 41 (Fed. Cir. 2020). Because the
intrinsic evidence informs, with reasonable certainty,
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CLEARONE, INC. v. SHURE ACQUISITION HOLDINGS 9
skilled artisans about the scope of the invention, and be-
cause substantial evidence supports that scope, we affirm
the Board’s holding that claim 57 is not indefinite.
We next address the Board’s decision denying
ClearOne’s request for authorization to file a sanctions mo-
tion. We review questions of compliance with the Board’s
procedures for an abuse of discretion. Intelligent BioSys.,
Inc. v. Illumina Cambridge Ltd., 821 F.3d 1359, 1367 (Fed.
Cir. 2016). The Board abuses its discretion if its decision
“(1) is clearly unreasonable, arbitrary, or fanciful; (2) is
based on an erroneous conclusion of law; (3) rests on clearly
erroneous fact finding; or (4) involves a record that contains
no evidence on which the Board could rationally base its
decision.” Id. We conclude the Board did not abuse its dis-
cretion in denying ClearOne’s request.
Sanctions are not awarded automatically; the Board
has discretion to impose them. See 37 C.F.R. § 42.12(a)
(“The Board may impose a sanction against a party for mis-
conduct[.]” (emphasis added)); see also 37
C.F.R. § 42.11(d)(1) (“[T]he Board may impose an appropri-
ate sanction on any attorney[.]”). The Board also has dis-
cretion to determine whether a party may file a sanctions
motion in the first place. See 37 C.F.R. § 42.20(b). The
Board’s regulations do not obligate it to allow the filing of
a sanctions motion, let alone sanction a party.
The Board did not abuse its discretion in denying
ClearOne’s request to file its sanctions motion. After hold-
ing a hearing on the merits of the sanctions motion, the
Board issued an order explaining that several considera-
tions weighed against allowing ClearOne to file the motion.
See Sanctions Decision, 2020 WL 6434969. The Board
found the arguments ClearOne raised in its sanctions mo-
tion were “essentially the same as the arguments pre-
sented and developed in its Request for Rehearing” and,
thus, “amount[ed] to nothing more than a thinly veiled at-
tempt at a second bite at the apple.” Id. at *2. On appeal,
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10 CLEARONE, INC. v. SHURE ACQUISITION HOLDINGS
ClearOne concedes that the arguments in its sanctions mo-
tion were “identical to the arguments [it] had raised” in its
request for rehearing. Oral Arg. at 2:38–57. 1 The Board
also found that allowing ClearOne a second attempt at the
IPR after the FWD would result in an inefficient proceed-
ing. Sanctions Decision, 2020 WL 6434969, at *2 (citing 37
C.F.R. § 42.1(b)). Finally, it found that Shure did not in-
tend to breach its duty to disclose references. Id. at *3.
These findings establish that the Board did not abuse its
discretion. We need not reach the Board’s many additional
reasons for denying ClearOne’s request to file its sanctions
motion, including that Levit and Gulbrandsen are cumula-
tive to references in the instituted grounds. See id.ClearOne also argues that the Board violated its due
process rights. All that due process requires is notice and
opportunity to be heard by a “disinterested decision-
maker.” Abbott Labs. v. Cordis Corp., 710 F.3d 1318, 1328
(Fed. Cir. 2013). The Board’s procedures here met this re-
quirement.
CONCLUSION
There is no error in the Board’s determination that the
self-similar term is not indefinite, and substantial evidence
supports the Board’s subsidiary fact findings based on ex-
trinsic evidence. The Board did not abuse its discretion in
denying authorization to file a sanctions motion. Accord-
ingly, we affirm.
AFFIRMED
COSTS
ClearOne shall bear costs.
1 Available at https://oralarguments.cafc.uscourts.go
v/default.aspx?fl=21-1517_04072022.mp3.