IP Law Daily, PATENT—Fed. Cir.: Validity of patent for microphone array affirmed over indefiniteness challenge, (Jun 1, 2022)

By Brian Craig, J.D.

The written description informs skilled artisans with reasonable certainty about the scope of the invention for a microphone array.

In a challenge over the validity of a patent for a microphone array, the U.S. Court of Appeals for the Federal Circuit has held the Patent Trial and Board correctly ruled that the patent claims are not indefinite. The Federal Circuit agreed with the Board that the patent’s “self-similar” configuration limitation is not indefinite because a skilled artisan would understand the term to include the specification’s example patterns, including fractal-like configurations. The Federal Circuit held that just because a term is susceptible to more than one meaning does not render it indefinite and that substantial evidence supports the Board’s holding (ClearOne, Inc. v. Shure Acquisition Holdings, Inc., June 1, 2022, Moore, K.).

Shure Acquisition Holdings, Inc. owns U.S. Patent No. 9,565,493 (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. Claim 57 of the ’493 patent recites a microphone assembly comprising “an array microphone comprising a plurality of microphones arranged in a self-similar configuration.” ClearOne, Inc. filed an inter partes review proceeding to challenge the validity of the ’493 patent arguing that the “self-similar” configuration term is indefinite. ClearOne also requested to file a motion for sanctions. The Board ruled that the patents claims are not indefinite and denied the request to file a motion to sanctions. ClearOne appealed the Board’s decision.

Definiteness. The Federal Circuit first concluded that the patent claims are not indefinite. 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 reasonable certainty.

Here, the Federal Circuit concluded on the intrinsic record alone that the written description provides, with reasonable certainty, the scope of the term “self-similar.” The written description discloses an embodiment having a plurality of microphones “arranged in a self-similar or repeating configuration comprising concentric, nested rings of microphones” surrounding a central microphone.” The Federal Circuit found the phrases “self-similar or fractal-like” and “self-similar or repeating” are not juxtapositions; they equate self-similar to fractal-like or repeating patterns. And even if the term “self-similar” is broader than these examples, that does not make the term indefinite.

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 description. Based on extrinsic evidence from a dictionary definition and expert testimony, a reasonable person could find that the term “self-similar” has a definite meaning. One dictionary of record defines self-similar as “the quality or state of having an appearance that is invariant upon being scaled larger or smaller.” The Federal Circuit held that 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. Because the intrinsic evidence informs, with reasonable certainty, skilled artisans about the scope of the invention, and because substantial evidence supports that scope, the Federal Circuit affirmed the Board’s holding that the patent claim is not indefinite.

Motion for sanctions. The Federal Circuit also concluded that the Board did not abuse its discretion in denying ClearOne’s request to file its motion for sanctions. The Board found the arguments ClearOne raised in its sanctions motion were essentially the same as the arguments presented and developed in its request for rehearing and, thus, amounted to nothing more than a thinly veiled attempt at a second bite at the apple. ClearOne conceded that the arguments in its sanctions motion were identical to the arguments it had raised in its request for rehearing. The Federal Circuit agreed with the Board that the patent owner did not violate its duty to disclose.

Due process. Lastly, the Federal Circuit rejected ClearOne’s argument that the Board violated due process rights. All that due process requires is notice and opportunity to be heard by a disinterested decisionmaker. The Board’s procedures here met this requirement.

Accordingly, the Federal Circuit affirmed the Board’s holding in favor of the patent owner.

The Case is No 21-1517.

Attorneys: Matthew C. Phillips (Laurence & Phillips IP Law) for ClearOne, Inc. Joseph Michael Schaffner (Finnegan Henderson Farabow Garrett & Dunner, LLP) for Shure Acquisition Holdings, Inc.

Companies: ClearOne, Inc.; Shure Acquisition Holdings, Inc.

Cases: Patent FedCirNews USPTO