Trials@uspto.gov
`571-272-7822
`
`Paper 59
`Date: February 14, 2022
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________________
`
`SHURE INCORPORATED,
`Petitioner,
`v.
`CLEARONE, INC.,
`Patent Owner.
`____________________
`
`PGR2020-00079
`Patent 10,728,653 B2
`____________
`
`Before JONI Y. CHANG, KALYAN K. DESHPANDE,
`and DAVID C. MCKONE, Administrative Patent Judges.
`
`MCKONE, Administrative Patent Judge.
`
`JUDGMENT
`Final Written Decision
`Determining No Challenged Claims Unpatentable
`35 U.S.C. § 328(a)
`Dismissing Patent Owner’s Revised Contingent Motion to Amend
`37 U.S.C. § 326(d)
`Dismissing Patent Owner’s Motion to Exclude
`37 C.F.R. § 42.64(c)
`
`
`
`
`
`
`571-272-7822
`
`Paper 59
`Date: February 14, 2022
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________________
`
`SHURE INCORPORATED,
`Petitioner,
`v.
`CLEARONE, INC.,
`Patent Owner.
`____________________
`
`PGR2020-00079
`Patent 10,728,653 B2
`____________
`
`Before JONI Y. CHANG, KALYAN K. DESHPANDE,
`and DAVID C. MCKONE, Administrative Patent Judges.
`
`MCKONE, Administrative Patent Judge.
`
`JUDGMENT
`Final Written Decision
`Determining No Challenged Claims Unpatentable
`35 U.S.C. § 328(a)
`Dismissing Patent Owner’s Revised Contingent Motion to Amend
`37 U.S.C. § 326(d)
`Dismissing Patent Owner’s Motion to Exclude
`37 C.F.R. § 42.64(c)
`
`
`
`
`
`
`
`PGR2020-00079
`Patent 10,728,653 B2
`
`I.
`INTRODUCTION
`A. Background and Summary
`Shure Inc. (“Petitioner”) filed a Petition (Paper 1, “Pet.”) requesting
`post-grant review (“PGR”) of claims 1–24 of U.S. Patent No. 10,728,653 B2
`(Ex. 1001, “the ’653 patent”). Pet. 1. ClearOne, Inc. (“Patent Owner”) filed
`a Preliminary Response (Paper 10, “Prelim. Resp.”). Pursuant to 35 U.S.C.
`§ 324, we instituted this proceeding. Paper 14 (“Dec.”).
`Patent Owner filed a Patent Owner’s Response (Paper 27,
`“PO Resp.”), Petitioner filed a Reply to the Patent Owner’s Response
`(Paper 30, “Reply”), and Patent Owner filed a Sur-reply to the Reply
`(Paper 39, “Sur-reply”).
`Additionally, Patent Owner filed a Contingent Motion to Amend
`(Paper 25) and sought preliminary guidance; Petitioner responded to the
`Motion to Amend (Paper 31); we issued Preliminary Guidance (Paper 35);
`Patent Owner filed a Revised Contingent Motion to Amend (Paper 37);
`Petitioner responded to the Revised Contingent Motion to Amend
`(Paper 42); and Patent Owner replied to Petitioner’s response (Paper 49).
`Additionally, Patent Owner filed a Motion to Exclude (Paper 50,
`“Mot. to Exclude”); Petitioner responded to the Motion to Exclude
`(Paper 51); and Patent Owner replied to Petitioner’s response (Paper 52).
`An oral argument was held in this proceeding on December 14, 2021.
`Paper 58 (“Tr.”).
`We have jurisdiction under 35 U.S.C. § 6. This Decision is a final
`written decision under 35 U.S.C. § 328(a) as to the patentability of claims 1–
`24. Based on the record before us, Petitioner not has proved, by a
`preponderance of the evidence, that claims 1–24 are unpatentable. We
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`PGR2020-00079
`Patent 10,728,653 B2
`dismiss as moot Patent Owner’s Revised Contingent Motion to Amend and
`Motion to Exclude.
`
`B. Related Matters
`The parties state that the patent to which the ’653 patent claims
`priority (U.S. Pat. No. 9,813,806 (“the ’806 patent”)) is asserted in Shure
`Inc. v. ClearOne, Inc., No. 1:17-cv-03078 (N.D. Ill.) (“the Illinois case”).
`Pet. 101; Paper 4, 2. Patent Owner identifies ClearOne, Inc. v. Shure
`Acquisition Holdings, Inc., IPR2019-00683, challenging Petitioner’s U.S.
`Patent No. 9,565,493, as relevant to this proceeding. Paper 4, 2–3.
`
`C. The ’653 Patent
`The ’653 patent, which issued from U.S. Patent Application
`No. 15/218,297 (“the ’297 application”), relates to “beamforming
`microphone array systems with support for interior design elements,” and
`describes embodiments “in the form of a ceiling tile (with or without sound
`absorbing material), light fixtures, or wall panels (with or without sound
`absorbing materials), and acoustic wall panels.” Ex. 1001, 1:27–30, 1:66–
`2:2. According to the Specification, “[a] ‘beamforming microphone’ . . .
`may refer to one or more omnidirectional microphones coupled together that
`are used with a digital signal processing algorithm to form a directional
`pickup pattern that could be different from the directional pickup pattern of
`any individual omnidirectional microphone in the array.” Id. at 4:60–67.
`Figure 1A, reproduced below, illustrates an example:
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`Figure 1A is a schematic of an environment for implementing a
`beamforming microphone array. Id. at 3:10–13, 5:12–15.
`First environment 100 includes first location 102, with first set of
`users 104, communicating with second location 106, with second set of users
`108, over network 114 via communication devices 110, 112. Id. at 5:19–25.
`First environment 100 includes beamforming microphone array 116, which
`“may include multiple microphones for converting ambient sounds (such as
`voices or other sounds) from various sound sources (such as the first set of
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`PGR2020-00079
`Patent 10,728,653 B2
`users 104) at the first location 102 into audio input signals.” Id. at 5:61–64.
`Array 116 may include acoustic echo cancellation (AEC), id. at 6:5–6,
`adjustable noise cancellation, id. at 6:18–22, and other signal processing
`technology. According to the Specification, “another embodiment of Array
`116 may include adaptive acoustic processing that automatically adjusts to
`the room configuration for the best possible audio pickup.” Id. at 6:13–16.
`The Specification states that “[t]he Array 116 may be configured and
`arranged into various usage configurations, such as ceiling mounted, drop-
`ceiling mounted, wall mounted, etc.” Id. at 7:51–54, Figs. 2A–2J. For
`example, “the Array 116 with BFMs [beamforming microphones] 212 and
`the NBFMs [non-beamforming microphones] may be combined to a ceiling
`tile for a drop ceiling mounting configuration 260.” Id. at 9:38–40,
`Figs. 2F–2I. Figure 2F, reproduced below, is illustrative:
`
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`PGR2020-00079
`Patent 10,728,653 B2
`Fig. 2F is a picture of drop-ceiling tiles with microphones. Id.
`“The drop ceiling 262 may be created using multiple drop ceiling
`tiles, such as a ceiling tile 264, each arranged in a pattern based on (1) a grid
`design created by multiple support beams 266-1, 266-2, 266-3, 266-4
`(collectively, support beams 266) connected together in a predefined manner
`and (2) the frame configuration of the support beams 266.” Id. at 9:43–49.
`“[C]eiling tile 264 may be made of a variety of materials or combinations of
`materials including, but not limited to, metals, alloys, ceramic, fiberboards,
`fiberglass, plastics, polyurethane, vinyl, or any suitable acoustically neutral
`or transparent material known in the art, related art, or developed later.”
`Id. at 9:60–66.
`Claim 1, reproduced below, is illustrative of the invention:
`1. A ceiling tile microphone, comprising:
`a beamforming microphone array that includes
`beamforming and acoustic echo cancellation, a
`plurality of microphones of the beamforming
`microphone array are positioned at predetermined
`locations, the beamforming microphone array
`picks up audio input signals, the beamforming
`microphone array includes adaptive acoustic
`processing that automatically adjusts to a room
`configuration;
`a ceiling tile combined with the beamforming
`microphone array, the ceiling tile being sized and
`shaped to be mountable in a drop ceiling in place
`of at least one of a plurality of ceiling tiles
`included in the drop ceiling;
`where an outer surface of the ceiling tile is acoustically
`transparent.
`
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`PGR2020-00079
`Patent 10,728,653 B2
`D. Evidence
`Petitioner relies on the references listed below.
`Reference(s)
`Date
`
`Exhibit
`No.
`1010
`
`Mar. 19,
`2015
`July 9, 2009 1016
`
`Graham
`
`US 2015/0078582 A1
`
`Levit
`
`US 2009/0173570 A1
`
`Beaucoup US 2003/0118200 A1
`
`CTG
`System1
`
`Declaration of David Newman
`
`CTG Audio Installation &
`Operation Manual (“CTG
`Manual”)
`Fullsound Ceiling Microphone
`CTG CM-01 (“CM-01 Sell
`Sheet”)
`Fullsound CTG FS-400 and FS-
`800 with “Beamforming”
`Technology (“FS-400/800 Sell
`Sheet”)
`CTG Audio White Paper,
`Meeting the Demand for Ceiling
`Mics in the Enterprise, 5 Best
`Practices (“CTG White Paper”)
`CTG Audio Frequently Asked
`Questions, available at
`https://web.archive.org/web/
`20110123043003/
`http://www.ctgaudio.com/faq.htm
`(“CTG FAQ”)
`
`1017
`
`June 26,
`2003
`July 23,
`2020
`May 6, 2009 1011
`
`1009
`
`
`
`
`
`1012
`
`1013
`
`2012
`
`1014
`
`Jan. 23,
`2011
`
`1015
`
`
`1 In its statement of grounds, Petitioner contends that Exhibits 1009, 1011–
`1015, and 1025–1028 describe CTG System. Pet. 17. For completeness, we
`list all of Petitioner’s identified documents here. Nevertheless, Petitioner’s
`detailed analysis discusses only Exhibits 1009 and 1011–1015. Id. at 65–86,
`88–100.
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`Patent 10,728,653 B2
`Reference(s)
`
`Date
`
`
`
`
`
`2008
`
`Exhibit
`No.
`1025
`
`1026
`
`1027
`
`June 2009
`
`1028
`
`CTG Audio Brochure, CTG
`Conferencing Systems, as
`discreet as they are exceptional
`Soundman SM-02 Installation
`Manual and User Guidelines
`CTG Audio, Introducing the
`CTG FS-400 and FS-800 With
`“Beamforming” Technology
`Scanlines webpage, Vol. 7, Issue
`2, available at
`http://www.enrightcompany.com/
`SCANLINESARCHIVES/2009-
`06/ScanlinesJun09.htm
`
`
`Petitioner also relies on the Declaration of Jeffrey S. Vipperman,
`Ph.D. (Ex. 1002), the Second Declaration of Dr. Vipperman (Ex. 1029), and
`the Third Declaration of Dr. Vipperman in support of the Opposition to the
`Revised Contingent Motion to Amend (Ex. 1039).
` Patent Owner relies on the Declaration of Durand R. Begault, Ph.D.
`(Ex. 2013), the Second Declaration of Dr. Begault in support of the Motion
`to Amend (Ex. 2014), and the Third Declaration of Dr. Begault in support of
`the Motion to Amend Reply (Ex. 2038).
`
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`PGR2020-00079
`Patent 10,728,653 B2
`E. Asserted Grounds
`We instituted on the following grounds of unpatentability (Dec. 8):
`Ground Claims Challenged 35 U.S.C. §
`Reference(s)/Basis
`1
`1–24
`112(b)2
`Indefiniteness
`2
`1–24
`112(a)
`Enablement
`3
`1–24
`112(a)
`Written Description
`4
`112(a),
`Written Description, New
`1–24
`132(a)
`Matter
`1–24
`103
`Graham, Levit
`1–24
`103
`CTG System, Levit
`CTG System, Beacoup,
`1–24
`103
`Levit
`
`5
`6
`7
`
`
`
`II. ANALYSIS
`A. Level of Ordinary Skill in the Art
`Petitioner contends that a skilled artisan “would have possessed at
`least: (i) a bachelor’s degree in mechanical engineering, electrical
`engineering, physics, or acoustical engineering that included coursework on
`the design of acoustic and/or antenna arrays, phased arrays, and/or
`beamforming; or (ii) at least three years of work experience in the field of
`directional microphone arrays.” Pet. 18 (citing Ex. 1002 ¶¶ 18–20).
`Patent Owner argues that Petitioner’s inclusion of “at least”
`introduces vagueness. PO Resp. 15–16. Patent Owner further argues that a
`skilled artisan would have had experience with digital signal processing.
`
`
`2 The Leahy-Smith America Invents Act (“AIA”), Pub. L. No. 112-29, 125
`Stat. 284, 287–88, 296–97 (2011), amended 35 U.S.C. §§ 103 and 112. In
`the Institution Decision, we determined that the challenged claims of the
`’653 patent do not have effective filing dates earlier than September 16,
`2012, or March 16, 2013, the effective dates of the relevant amendments.
`Dec. 9–11. Thus, the post-AIA versions of §§ 103 and 112 apply.
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`Id. at 16 (citing Ex. 2008 (Preliminary Injunction Order in the Illinois case),
`11). Although Patent Owner does not explain the relevance here of a district
`court decision relating to a different patent, Petitioner does not contest this
`proposed addition. Patent Owner does not contest any other aspects of
`Petitioner’s proposal. Neither party contends that the differences in their
`respective proposals impacts any issues the parties ask us to resolve.
`As we stated in the Institution Decision (at 30), Petitioner’s proposal
`is reasonable in light of the descriptions in the ’653 patent and prior art, and
`is supported by expert testimony. We further find that Patent Owner’s
`proposed addition, that a skilled artisan would have had experience with
`digital signal processing, is consistent with the descriptions in the ’653
`patent and prior art. Because the parties do not contend that their
`disagreement over “at least” has any bearing on this proceeding, we need not
`evaluate whether a skilled artisan might have had more than three years of
`work experience or whether that would lead to vagueness. Instead, we adopt
`Petitioner’s proposal, with Patent Owner’s addition, and omit “at least”: A
`skilled artisan would have possessed: (i) a bachelor’s degree in mechanical
`engineering, electrical engineering, physics, or acoustical engineering that
`included coursework on the design of acoustic and/or antenna arrays, phased
`arrays, and/or beamforming; or (ii) three years of work experience in the
`field of directional microphone arrays; and the skilled artisan would have
`had experience with digital signal processing.
`
`B. Claim Construction
`We construe a claim
`using the same claim construction standard that would be used
`to construe the claim in a civil action under 35 U.S.C. 282(b),
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`including construing the claim in accordance with the ordinary
`and customary meaning of such claim as understood by one of
`ordinary skill in the art and the prosecution history pertaining to
`the patent.
`37 C.F.R. § 42.200(b) (2019); see also Phillips v. AWH Corp., 415 F.3d
`1303 (Fed. Cir. 2005) (en banc).
`At the institution stage of the proceeding, the parties disputed the
`constructions of “a ceiling tile,” “beamforming microphone array,” “an outer
`surface of the ceiling tile is acoustically transparent,” and “adaptive acoustic
`processing that automatically adjusts to a room configuration,” as recited in
`claim 1.
`We preliminarily construed “an outer surface of the ceiling tile is
`acoustically transparent” to have its ordinary meaning, in accordance with
`Patent Owner’s proposal and, specifically, we rejected Petitioner’s
`arguments that the outer surface of a ceiling tile must be distinct from the
`core of the ceiling tile. Dec. 35–37. Patent Owner argues in favor of our
`preliminary construction. PO Resp. 19–23. Petitioner does not dispute the
`construction of this limitation further in the Reply, and we maintain our
`construction for the reasons given in the Institution Decision.
`We preliminarily construed “a ceiling tile” to mean “one or more
`ceiling tiles.” Dec. 31–35. The parties continue to dispute the construction
`of this term, and we address it below.
`We did not find it necessary to construe “beamforming microphone
`array.” Id. at 31. The parties continue to dispute the construction of this
`term, however, and we address it below.
`We addressed the parties’ construction of “adaptive acoustic
`processing that automatically adjusts to a room configuration” in our
`analysis of Petitioner’s indefiniteness allegations. Id. at 31, 38–44. We
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`Patent 10,728,653 B2
`further consider the parties’ claim construction arguments as to this term in
`addressing Petitioner’s indefiniteness ground below.
`Based on the record before us, we do not find it necessary to provide
`express claim constructions for any other terms. See Nidec Motor Corp. v.
`Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017)
`(noting that “we need only construe terms ‘that are in controversy, and only
`to the extent necessary to resolve the controversy’”) (quoting Vivid Techs.,
`Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999)).
`
`1. “a ceiling tile”
`Claim 1 recites “a ceiling tile combined with the beamforming
`microphone array, the ceiling tile being sized and shaped to be mountable in
`a drop ceiling in place of at least one of a plurality of ceiling tiles included in
`the drop ceiling.” Claims 9 and 17 include similar recitations. Petitioner
`contends that “a ceiling tile” should be construed as “one or more ceiling
`tiles.” Pet. 19. Patent Owner argues that it “should be construed to mean a
`single ceiling tile.” PO Resp. 24. In the Institution Decision, we followed
`the “general rule” that “a” or “an” in a patent claim means “one or more.”
`Dec. 31–32 (quoting 01 Communique Lab., Inc. v. LogMeIn, Inc., 687 F.3d
`1292, 1297 (Fed. Cir. 2012) (“‘The exceptions to this rule are extremely
`limited: a patentee must evince a clear intent to limit ‘a’ or ‘an’ to ‘one.’’ . . .
`An exception to the general rule arises only ‘where the language of the
`claims themselves, the specification, or the prosecution history necessitate a
`departure from the rule.’” (quoting Baldwin Graphic Sys., Inc. v. Siebert,
`Inc., 512 F.3d 1338, 1342 (Fed. Cir. 2008))).
`Patent Owner argues that this rule “potentially applies only when the
`article ‘a’ (or ‘an’) precedes an item in an open-ended list” and “derives
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`from the open-ended transition phrase (e.g., comprising).” PO Resp. 25
`(citing Scanner Techs. Corp. v. ICOS Vision Sys. Corp., 365 F.3d 1299,
`1305–06 (Fed. Cir. 2004)). In contrast, Patent Owner continues, “if the
`claim recites ‘a widget with properties A, B, and C’ then it may not make
`sense to construe that as ‘one or more widgets collectively having properties
`A, B, and C.’” Id. at 26. Patent Owner contends that a textual substitution
`of “one or more” for “a” is inappropriate here because “the claim language
`itself emphasizes the singular nature of ‘a ceiling tile’ by specifying a
`particular combination of a ceiling tile and the [beamforming microphone
`array (BMA)]: ‘a ceiling tile combined with the beamforming microphone
`array.’” Id. at 27.
`Petitioner argues that nothing in claim 1 suggests that the
`beamforming microphone array must be physically installed in the ceiling
`tile to be considered “combined with” the ceiling tile. Reply 5. In one
`example (Fig. 2D), a panel containing a beamforming microphone array is
`suspended from a drop ceiling using hanger wires or cables. Id. (citing
`Ex. 1001, 8:9–18, Figs. 2B–2E). In another example, Petitioner argues,
`Figure 2H shows a ceiling tile embodiment in which a microphone array is
`installed in a different structure which, in turn, is attached to the ceiling tile
`using hooks. Id. at 5–6 (citing Ex. 1001, 10:20–23, Fig. 2H). According to
`Petitioner, “[t]here is no reason to differentiate between the hooks that attach
`the structure containing the microphones to the ceiling tile in Figure 2H and
`the cables that do the same for multiple ceiling tiles in Figures 2B–2E.”
`Id. at 6.
`We disagree with Patent Owner that the claim limitation at issue here
`specifies a single device that has multiple properties. Rather, claim 1
`broadly recites “a ceiling tile combined with the beamforming microphone
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`array.” We agree with Petitioner that the plain language of claim 1 does not
`require that the entire beamforming microphone array is physically
`integrated into a single ceiling tile, as combining a ceiling tile and a
`microphone array is broader than physically installing the microphone array
`in the ceiling tile. Nor can the language of claim 1 reasonably be read to
`exclude combining more than one ceiling tile with the microphone array.
`Where claim 1 assigns specific properties to a ceiling tile, it does so
`expressly, reciting “the ceiling tile being sized and shaped to be mountable
`in a drop ceiling in place of at least one of a plurality of ceiling tiles included
`in the drop ceiling.” Thus, the plain language of claim 1 requires at least one
`ceiling tile combined in some way with a beamforming microphone array,
`and each ceiling tile (if there is more than one) is a particular size and shape.
`Both Petitioner and Patent Owner argue that the Specification
`supports their respective constructions. The Specification describes several
`“exemplary embodiments,” or “usage configurations of the beamforming
`microphone array,” corresponding to Figures 2A–2J. Ex. 1001, 3:14–16.
`Patent Owner points to the embodiments of Figures 2F–2I as
`supporting its construction. PO Resp. 28–29 (citing Ex. 1001, 9:38–11:18).
`Patent Owner (id. at 29) focuses specifically on the Specification’s statement
`that “[i]n a third example (FIGS. 2F to 2I), the Array 116 with BFMs 212
`and the NBFMs may be combined to a ceiling tile for a drop ceiling
`mounting configuration 260.” Ex. 1001, 9:38–40. According to Patent
`Owner, pointing to other instances where the Specification uses the term
`“combined,” “[w]hen the array 116 is ‘combined’ with other entities, that
`entity is a singular entity, such as a single wall tile or a single lighting
`fixture.” PO Resp. 29 (citing Ex. 1001, 9:38–11:18).
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`Petitioner contends that the Specification describes several
`embodiments showing a beamforming microphone array combined with
`multiple ceiling tiles, referring to the examples in Figures 2B–2E
`specifically. Reply 4–5 (citing Ex. 1001, 8:9–18, Figs. 2B–2E). Petitioner
`(id. at 5) focuses on Figure 2D, reproduced below (with Petitioner’s
`annotations):
`
`
`
`Annotated Figure 2D illustrates a usage configuration of a beamforming
`microphone array, with blue color and a label added to two ceiling tiles and
`labels added to two cables. Reply 5. In Figure 2D, beamforming
`microphone array 116 is “combined with one or more utility devices such as
`lighting fixtures 210, 230, 240, 250,” and “[a]ny of the lighting fixtures 210,
`230, 240, 250 may include a panel 214 being appropriately suspended from
`the ceiling 206 (or a drop ceiling) using hanger wires or cables such as 218-1
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`and 218-2 over the first set of users 104 at an appropriate height from the
`ground.” Ex. 1001, 8:9–18.
`Patent Owner argues that these embodiments “are not ceiling-tile-
`[beamforming microphone array] combinations. Those are inapposite
`suspended ‘chandelier’ embodiments.” PO Resp. 29. Dr. Begault repeats
`this argument in his testimony without adding to it materially. Ex. 2013
`¶ 24. We disagree. Figure 2D clearly depicts a combination of a
`beamforming microphone array (116), a lighting fixture (220), and two
`ceiling tiles, attached together with cables. Ex. 1001, 8:9–18.
`Patent Owner argues
`When referring to Figures 2B–2E, the array 116 is combined
`with a lighting fixture, not ceiling tiles. The specification does
`not use the term “combined” when referring to the ceiling tiles
`in Figures 2B–2E. In contrast, when referring to Figures 2F–2I,
`the array 116 is combined with ceiling tiles. The term
`“combined” is explicitly used to refer to the lighting fixtures of
`Figures 2B–2E and the ceiling tiles of Figures 2F–2I.
`Sur-reply 4 (internal citations omitted). We are not persuaded. We do not
`read the Specification’s examples to define or limit “combined” to a physical
`integration of microphones into a single other entity.
`Moreover, as we observed in the Institution Decision (at 33–34), the
`Specification also states that “the Array 116 may be configured for being
`combined with various room elements such as lighting fixtures 210, 230,
`240, 250, ceiling tiles 264, and wall panels 294, a separate cost of installing
`the Array 116 in addition to the room elements may be significantly reduced,
`or completely eliminated.” Ex. 1001, 12:17–22. We determined that this
`passage expressly states that a beamforming microphone array can be
`combined with “ceiling tiles,” plural, which supports Petitioner’s
`construction. Dec. 34. Patent Owner attempts to distinguish this passage by
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`arguing that “the cited passage merely uses the plural form of ceiling tiles
`264 to match the plural form of ‘various room elements,’” and that the
`description “a separate cost of installing the Array 116 in addition to the
`room elements may be significantly reduced, or completely eliminated”
`makes clear that the array is installed in a single room element, such as a
`single ceiling tile. PO Resp. 31–32 (citing Ex. 1001, 12:20–22). We do not
`read this passage as limiting the disclosure to installing a beamforming
`microphone array in a single ceiling tile. Rather, this passage expressly
`states that the array may be combined with more than one ceiling tile,
`supporting Petitioner’s proposed construction.
`In sum, the Specification supports Petitioner’s proposed construction.
`Patent Owner further argues that the prosecution history supports its
`proposed construction. Specifically, Patent Owner argues that, during
`prosecution of the ’297 application, Patent Owner described its invention to
`the Examiners as “a ceiling tile microphone that can replace a typical ceiling
`tile in a drop ceiling and provide the room with a beamforming microphone
`array that includes acoustic echo cancellation.” PO Resp. 32 (quoting
`Ex. 1003, 930 (emphasis Patent Owner’s)). We do not see this statement as
`a clear disavowal, disclaimer, or definition, such that we should depart from
`the plain language of the claims and the examples in the Specification.
`We also do not find persuasive Dr. Begualt’s testimony on combining
`beamforming arrays with ceiling tiles, or the District Court’s findings
`regarding a different patent, when considered in the context of the intrinsic
`evidence. PO Resp. 32–33; Phillips, 415 F.3d at 1317–19.
`Patent Owner argues that we should follow the nonprecedential
`decision in Wonderland NurseryGoods Co. v. Baby Trend, Inc., 727
`Fed. App’x 1017 (Fed. Cir. 2018). PO Resp. 34–36. In Wonderland
`
`17
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`PGR2020-00079
`Patent 10,728,653 B2
`NurseryGoods, the ordinary language of the claims indicated that “a fabric
`member” was “a single fabric member” and the specification supported that
`construction. 727 Fed. App’x at 1019. As explained above, however, the
`ordinary meaning of “a ceiling tile combined with the beamforming
`microphone array” is consistent with “one or more ceiling tiles” and the
`Specification supports that meaning. Thus, as we noted in the Institution
`Decision, 01 Communique Laboratory is applicable here and we follow it.
`Dec. 34–35. On the complete record, we maintain our construction that “a
`ceiling tile” means “one or more ceiling tiles.”
`
`2. “beamforming microphone array”
`Petitioner contends that “beamforming microphone array” means “a
`plurality of microphones and hardware or a combination of hardware and
`software in communication with the plurality of microphones.” Pet. 22.
`Petitioner argues that “the claimed ‘beamforming microphone array’
`encompasses more than just the ‘plurality of microphones of the
`beamforming microphone array.’ It also must include hardware or a
`combination of hardware and software in communication with the
`microphones to perform these functions.” Id. at 23 (citing Ex. 1001, 7:10–
`29).
`
`Patent Owner argues that Petitioner’s proposal is incorrect in two
`respects. First, Patent Owner argues that a beamforming microphone array
`need not include a separate digital signal processor (DSP), in light of
`arguments that Petitioner made in the Illinois case involving the related, but
`different ’806 patent. PO Resp. 16–18. Petitioner argues that Patent Owner
`has mischaracterized its proposed construction. Reply 2–3. This appears to
`
`18
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`PGR2020-00079
`Patent 10,728,653 B2
`be a dispute relevant to the Illinois case, rather than this proceeding.
`Accordingly, we need not address it here.
`Second, Patent Owner argues that our construction “should reflect the
`fact the microphones of a [beamforming microphone array] are located in
`positions relative to each other, by design, to establish constructive
`interference in one or more preferred beam directions.” PO Resp. 18–19
`(citing Ex. 2013 ¶¶ 31–37, 48). Petitioner responds that claim 1 recites
`“beamforming” broadly and that Patent Owner attempts to limit
`“beamforming” to one technique out of several, including techniques that
`determine time delay between microphones rather than knowing the
`distances between the microphones. Reply 3 (citing Ex. 1029 ¶¶ 11–21).
`The parties’ competing proposals here are directed to Petitioner’s allegations
`that CTG System and Levit render the challenged claims obvious. However,
`as explained below, Petitioner has not established whether CTG System
`performs beamforming under either proposed construction. Thus, we need
`not resolve the parties’ claim construction dispute. See Nidec, 868 F.3d at
`1017; Vivid Techs., 200 F.3d at 803.
`
`C. Petitioner’s Asserted Grounds
`Petitioner contends that claims 1–24 are unpatentable based on
`(1) indefiniteness (as to the term “adaptive acoustic processing” in claims 1,
`9 and 17); (2) lack of enablement (as to the term “adaptive acoustic
`processing”); (3) lack of written description (as to the term “adaptive
`acoustic processing”); (4) new matter and lack of written description (as to
`the term “an outer surface of the ceiling tile is acoustically transparent” in
`claims 1, 9 and 17); (5) obviousness over Graham and Levit; (6) obviousness
`
`19
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`PGR2020-00079
`Patent 10,728,653 B2
`over CTG System and Levit; and (7) obviousness over CTG System,
`Beaucoup, and Levit. Pet. 18.
`
`1. Ground 1: Indefiniteness of “adaptive acoustic processing that
`automatically adjusts to a room configuration”
`Petitioner contends that the claim language “the beamforming
`microphone array includes adaptive acoustic processing that automatically
`adjusts to a room configuration,” recited in claim 1 (and similarly recited in
`claims 9 and 17), is indefinite. Pet. 29–30. As explained below, Petitioner
`has not made a sufficient showing.
`35 U.S.C. § 112(b) requires that “[t]he specification shall conclude
`with one or more claims particularly pointing out and distinctly claiming the
`subject matter which the inventor or a joint inventor regards as the
`invention.” When evaluating the “definiteness” requirement of § 112(b),
`“the Board shall follow Nautilus [Inc. v. Biosig Instruments, Inc., 572 U.S.
`898 (2014)] in AIA post-grant proceedings.” USPTO Memorandum on the
`Approach to Indefiniteness Under 35 U.S.C. § 112 in AIA Post-Grant
`Proceedings (Jan. 6, 2021),3 5 (“Because the office’s claim construction
`standard in AIA post-grant proceedings now aligns with that used by courts
`in a civil action, and because indefiniteness questions are generally
`considered as part of the claim construction process, the office’s approach to
`indefiniteness in AIA post-grant proceedings should likewise align with that
`used by the courts following the Supreme Court’s decision in Nautilus. As
`with the claim construction standard, aligning the indefiniteness approach in
`AIA post-grant proceedings will promote consistency and efficient decision
`
`
`3 Available at https://go.usa.gov/xAzHB.
`
`20
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`PGR2020-00079
`Patent 10,728,653 B2
`making among coordinate branches of government that decide similar issues
`in co-pending proceedings.”). Section 112(b) “require[s] that a patent’s
`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.” Nautilus, 572 U.S. at 910. According to the Supreme Court,
`“[t]he definiteness requirement, so understood, mandates clarity, while
`recognizing that absolute precision is unattainable.” Id. Under Nautilus, “a
`patent is invalid for indefiniteness if its claims, read in light of the
`specification delineating the patent, and the prosecution history, fail to
`inform, with reasonable certainty, those skilled in the art about the scope of
`the invention.” Id. at 901.
`Petitioner argues that
`the ’653 Patent does not explain what this “adaptive”
`processing entails, how to achieve any form of adaptive
`acoustic processing in the disclosed beamforming microphone
`array, what qualifies as adaptive acoustic processing such that a
`[person of ordinary skill in the art] could ascertain the limits of
`the claim, or even what a “room configuration” means.
`Pet. 30. Petitioner’s argument is based primarily on the testimony of
`Dr. Vipperman. Pet. 32–36 (citing Ex. 1002 ¶¶ 81–101). Relying on this
`testimony, Petitioner argues that a skilled artisan “would have recognized
`that adaptive acoustic processing could mean at least processing relating to
`(1) noise reduction; (2) signal amplitude control and mixing; (3) echo
`cancellation; (4) de-reverberation; or (5) frequency modification and
`shaping.” Id. at 32. Dr. Vipperman testifies that a skilled artisan “would
`appreciate that ‘adaptive acoustic processing’ does not only potentially cover
`many different techniques, but
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