Trials@uspto.gov
`571-272-7822
`
`
`Paper 35
`Date: August 27, 2021
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`
`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 KALYAN K. DESHPANDE, JONI Y. CHANG, and
`DAVID C. MCKONE, Administrative Patent Judges.
`
`MCKONE, Administrative Patent Judge.
`
`
`PRELIMINARY GUIDANCE
`PATENT OWNER’S MOTION TO AMEND
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`PGR2020-00079
`Patent 10,728,653 B2
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`I. INTRODUCTION
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`On February 16, 2021, we instituted trial as to claims 1–24 of U.S. Patent
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`No. 10,728,653 B2 (Ex. 1001, “the ’653 patent”). Paper 14 (“Decision”). After
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`institution of trial, Patent Owner filed a Contingent Motion to Amend and Request
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`for Preliminary Guidance. Paper 25 (“Motion” or “Mot.”). Specifically, Patent
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`Owner submitted a contingent motion to amend that proposed substitute claims
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`25–48 to respectively replace original claims 1–24 of the ’653 patent, where Patent
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`Owner asked that each substitute claim be considered only if the Board finds its
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`corresponding original claim unpatentable. Mot. 1. Petitioner filed an Opposition
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`to the Motion. Paper 31 (“Opposition” or “Opp.”).
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`In the Motion, Patent Owner requests that we provide preliminary guidance
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`concerning the Motion in accordance with the Board’s pilot program concerning
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`motion to amend practice and procedures. Mot. 1; see also Notice Regarding a
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`New Pilot Program Concerning Motion to Amend Practice and Procedures in Trial
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`Proceedings under the America Invents Act before the Patent Trial and Appeal
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`Board, 84 Fed. Reg. 9,497 (Mar. 15, 2019) (providing a patent owner with the
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`option to receive preliminary guidance from the Board on its motion to amend)
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`(“Notice”). We have considered Patent Owner’s Motion and Petitioner’s
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`Opposition.
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`In this Preliminary Guidance, we provide information indicating our initial,
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`preliminary, non-binding views on whether Patent Owner has shown a reasonable
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`likelihood that it has satisfied the statutory and regulatory requirements associated
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`with filing a motion to amend in a post-grant review and whether Petitioner (or the
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`record) establishes a reasonable likelihood that the substitute claims are
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`unpatentable. See 35 U.S.C. § 326(d); 37 C.F.R. § 42.221; cf. Lectrosonics, Inc. v
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`Zaxcom, Inc., IPR2018-01129, 01130, Paper 15 (PTAB February 25, 2019)
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`(precedential); see also Notice, 84 Fed. Reg. at 9,497 (“The preliminary
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`guidance . . . provides preliminary, non-binding guidance from the Board to the
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`parties about the [motion to amend].”).
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`For purposes of this Preliminary Guidance, we focus on the proposed
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`substitute claims, and specifically on the amendments proposed in the Motion. See
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`Notice, 84 Fed. Reg. at 9,497. We do not address the patentability of the
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`originally challenged claims. Id. Moreover, in formulating our preliminary views
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`on the Motion and Opposition, we have not considered the parties’ other
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`substantive papers on the underlying merits of Petitioner’s challenges. We
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`emphasize that the views expressed in this Preliminary Guidance are subject to
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`change upon consideration of the complete record, including any revision to the
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`Motion filed by Patent Owner. Thus, this Preliminary Guidance is not binding on
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`the Board when rendering a final written decision. See id. at 9,500.
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`II. PRELIMINARY GUIDANCE
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`A. Statutory and Regulatory Requirements
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`For the reasons discussed below, at this stage of the proceeding, and based
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`on the current record, it appears that Patent Owner has shown a reasonable
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`likelihood that it has satisfied the statutory and regulatory requirements associated
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`with filing a motion to amend as to proposed substitute claims 25–40, but not as to
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`proposed substitute claims 41–48.
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`1. Reasonable Number of Substitute Claims
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`Does Patent Owner propose a reasonable number of substitute claims?
`(35 U.S.C. § 326(d)(1)(B))
`
`Yes. Patent Owner proposes no more than one substitute claim for each
`challenged claim, and each substitute claim appears to be traceable to an
`original challenged claim. Mot. 1. Petitioner does not argue otherwise.
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`See generally Opp. Thus, Patent Owner proposes a reasonable number of
`substitute claims.
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`2. Respond to Ground of Unpatentability
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`Does the Motion respond to a ground of unpatentability involved in the
`trial? (37 C.F.R. § 42.221(a)(2)(i))
`
`Yes. Patent Owner responds to at least one ground of unpatentability from
`the Decision. Mot. 14. Petitioner does not argue otherwise. See generally
`Opp. Thus, the Motion responds to a ground of unpatentability.
`
`3. Scope of Amended Claims
`
`Does the amendment seek to enlarge the scope of the claims? (35 U.S.C.
`§ 326(d)(3); 37 C.F.R. § 42.221(a)(2)(ii))
`
`No. Proposed substitute claims 25–48 retain all the features of the
`corresponding original claims while only adding additional limitations.
`Mot. 2–4. Petitioner does not argue otherwise. See generally Opp. Thus,
`the amendment does not seek to enlarge the scope of the claims.
`
`4. New Matter
`
`Does the amendment seek to add new subject matter? (35 U.S.C.
`§ 326(d)(3); 37 C.F.R. § 42.221(a)(2)(ii))
`
`No and Yes. On this record, Patent Owner appears to have identified
`adequate written description support for proposed substitute claims 25–40,
`but not for claims 41–48. Mot. 5–13.
`
`Patent Owner argues that support for the substitute claims is found in both:
`(1) the as-filed application (U.S. Application No. 15/218,297, “the ’297
`application”) that issued as the ’653 patent; and (2) a priority application
`(U.S. Application No. 14/475,849, “the ’849 application”) that issued as
`U.S. Patent No. 9,813,806. Mot. 5–13 (citing Ex. 1003, 1–13; Ex. 1004,
`8–64). Patent Owner further cites declarations by its expert, Dr. Durand
`Begault, in support of its contentions. Mot. 1, 8, 11–12 (citing Ex. 2013,
`“Begault Decl.”, Ex. 2014, “Begault MTA Decl.”). Patent Owner does not
`cite any of the other priority applications. Thus, the earliest priority date
`of the substitute claims is September 3, 2014 (i.e., the priority date of the
`’849 application). Further, Patent Owner only cites the ’849 application
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`and further contends the ’297 application incorporates the ’849 application
`by reference. However, Patent Owner is also required to cite the ’297
`application. See Lectrosonics, IPR2018-01129, 01130, Paper 15 at 7.
`Nevertheless, because the ’849 application appears to be substantially
`identical to the ’297 application, and to provide further guidance to the
`parties, we address Patent Owner’s citations to the ’849 application as if
`Patent Owner similarly cited the ’297 application. In the event that Patent
`Owner either files a reply to Petitioner’s Opposition or a revised motion,
`we advise Patent Owner to cite the ’297 application as well as the ’849
`application.
`
`Petitioner does not contend that Patent Owner failed to show adequate
`written description support for substitute claims 25–40, and we see no lack
`of support for those claims. Opp. 1–4 (arguing a lack of written
`description support for substitute claims 41–48, but not for substitute
`claims 25–40).
`
`Regarding the other claims, Petitioner contends that Patent Owner has not
`shown that the ’849 application adequately supports “the beamforming
`microphone array is configured . . . to transmit said audio signal from the
`housing via the ethernet connector,” as recited in substitute claim 41.
`Opp. 1–2. Specifically, Petitioner contends that paragraphs 41–43 of the
`’849 application do not expressly or inherently disclose “transmitting said
`audio signal from the housing via the ethernet connector,” because the
`paragraphs merely describe transmitting captured audio input signals to a
`communication device and do not say anything about an Ethernet
`connector or how audio signals are transmitted. Opp. 2 (emphasis
`Petitioner’s; citing Ex. 1004, 40–41, ¶¶ 41–43). Petitioner further
`contends that written description support is lacking for the aforementioned
`limitation because the ’849 application merely describes that a power-over
`Ethernet (“POE”) connector 408 is used for power, not to transmit audio
`signals, and that a different connector (i.e., a link-in expansion bus (“E-
`bus”) connection 402) is used to connect the array to a first
`communication device 110. Opp. 2–3 (citing Ex. 1004, 53–55, ¶¶ 69, 71;
`Ex. 1029 ¶¶ 23–24).
`
`Patent Owner argues that “[t]he beamforming microphone array includes
`an ethernet connector on the exterior of the housing and is configured to
`receive power for the beamforming microphone array through the ethernet
`connector.” Mot. 12 (citing Ex. 1004 ¶¶ 69–71). Patent Owner then
`argues that “[t]he beamforming microphone array is configured to
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`generate, within the housing, an audio signal from a beam formed by a
`plurality of microphones in the beamforming microphone array and to
`transmit said audio signal from the housing via the ethernet connector.”
`Id. (citing Ex. 1004 ¶¶ 41–43). Patent Owner provides no further
`explanation and does not introduce expert testimony to support either of
`these arguments.
`
`At this stage of the proceeding, Patent Owner’s contention is not
`persuasive. Substitute claim 41 recites “the beamforming microphone
`array is configured . . . to transmit said audio signal from the housing via
`the ethernet connector.” Although neither party provides a construction of
`“the ethernet connector,” the term appears to derive its antecedent basis
`from the claim’s earlier recitation that “the beamforming microphone
`array includes an ethernet connector on the exterior of the housing and is
`configured to receive power for the beamforming microphone array
`through the ethernet connector.” On the current record, we read “the
`ethernet connector” that transmits the audio signal to refer to the same
`Ethernet connector that delivers power to the beamforming microphone
`array. Paragraph 41 of the ’849 application discloses that a band-limited
`microphone array 116 (i.e., band-limited array 116) transmits captured
`audio signals to a first communication device 110. Ex. 1004, 40, ¶ 41.
`Paragraph 69 of the ’849 application identifies connector 408 as a power-
`over-Ethernet (POE) connector. Ex. 1004, 54, ¶ 69. Presumably, Patent
`Owner identifies connector 408 as providing written description support
`for “the beamforming microphone array includes an ethernet connector on
`the exterior of the housing and is configured to receive power for the
`beamforming microphone array through the ethernet connector,” as recited
`in substitute claim 41. Connector 408 also is depicted on the left side of
`Figure 4A. Paragraph 69 of the ’849 application discloses that the band-
`limited array 116 is connected to the first communication device 110
`through a suitable E-bus, such as a CAT5-24AWG solid conductor RJ45
`cable, via the link-in E-bus connection 402. Ex. 1004, 54, ¶ 69. On this
`record, it appears that connection 402 transmits the audio signal from the
`housing. E-bus connection 402 is depicted as a separate connector on the
`right side of Figure 4A. Even if we assume that E-bus connection 402 is
`an Ethernet connection by virtue of the ’849 application’s description of a
`CAT5 connection as an example, Patent Owner does not explain why E-
`bus connection 402, the connector configured to transmit an audio signal,
`is the same connector 408 that delivers power for the beamforming
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`microphone array. For that reason, claim 41 and its dependents (claims
`42–48) appear to add new subject matter.
`
`Petitioner also contends that Patent Owner has not shown that the ’849
`application adequately supports “the number of microphones in the
`beamforming microphone array is at least 24,” as recited in substitute
`claim 41. Opp. 3. Specifically, Petitioner contends that paragraph 58 of
`the ’849 application discloses “an array of twenty four BFMs.” Opp. 3–4
`(citing Ex. 1004, 49, ¶ 58). As contended by Petitioner, “[n]othing in this
`paragraph or elsewhere in the [’849 application] discloses or suggests that
`the beamforming microphone array can have more than 24 microphones,
`including up to an infinite number of microphones.” Opp. 4 (citing
`Ex. 1029 ¶¶ 25–26).
`
`This contention is not persuasive at this stage of the proceeding.
`Paragraph 58 of the ’849 application describes “having multiple BFMs
`212 arranged in a linear fashion . . . or non-linear fashion . . . on the ceiling
`tile 264.” Ex. 1004, 49, ¶ 58. While paragraph 58 further describes “an
`array of twenty four BFMs,” the paragraph describes this configuration as
`an example of the “multiple BFMs.” Id. Thus, at this stage of the
`proceeding, we determine the aforementioned paragraph of the ’849
`application adequately supports “the number of microphones in the
`beamforming microphone array is at least 24,” as recited in substitute
`claim 41.
`
`Therefore, at this stage of the proceeding, on the record before us, Patent
`Owner has shown a reasonable likelihood that there is adequate written
`description support in the ’849 application for proposed substitute claims
`25–40, but not for proposed substitute claims 41–48.
`
`B. Patentability
`
`For the reasons discussed below, at this stage of the proceeding, and based
`
`on the current record,1 it appears that Petitioner (or the record) has shown a
`
`reasonable likelihood that proposed substitute claims 25–48 are unpatentable.
`
`
`1 We express no view on the patentability of original claims 1–24 in this
`Preliminary Guidance. Instead, we focus on limitations added to those claims in
`the patent owner’s Motion to Amend.
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`Does the record establish a reasonable likelihood that the proposed
`substitute claims are unpatentable?
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`35 U.S.C. § 112(b) – Indefiniteness
`
`No. On the current record, it appears that Petitioner has not established a
`reasonable likelihood that substitute claims 25–48 are indefinite under 35
`U.S.C. § 112(b). In contending that substitute claims 25–48 are indefinite,
`Petitioner merely references its indefiniteness arguments regarding the
`limitation “the beamforming microphone array includes adaptive acoustic
`processing that automatically adjusts to a room configuration” in its
`Petition. Opp. 4–5; see also Pet. 29–36. In the Institution Decision, we
`did not find these arguments persuasive. Dec. 38–44. As Petitioner does
`not provide any new arguments as to why the aforementioned limitation is
`indefinite, Petitioner has not shown, at this stage of the proceeding, a
`reasonable likelihood that substitute claims 25–48 are indefinite.
`
`35 U.S.C. § 112(a) – Enablement
`
`No. On the current record, it appears that Petitioner has not established
`that it is more likely than not that substitute claims 25–48 fail to comply
`with the enablement requirement of 35 U.S.C. § 112(a). Similar to
`Petitioner’s argument regarding indefiniteness, Petitioner merely
`references its enablement arguments regarding the limitation “the
`beamforming microphone array includes adaptive acoustic processing that
`automatically adjusts to a room configuration” in its Petition. Opp. 4–5;
`see also Pet. 37–44. In the Institution Decision, we did not find these
`arguments persuasive. Dec. 44–47. As Petitioner does not provide any
`new arguments as to why the aforementioned limitation is not enabled,
`Petitioner has not shown, at this stage of the proceeding, a reasonable
`likelihood that substitute claims 25–48 are not enabled.
`
`35 U.S.C. § 112(a) – Written Description
`
`No. On the current record, it appears that Petitioner has not established a
`reasonable likelihood that substitute claims 25–48 fail to comply with the
`written description requirement of 35 U.S.C. § 112(a).2 Similar to
`
`2 Petitioner raises its written description argument separate from the new matter
`argument discussed above. We address only Petitioner’s written description
`argument here. See Opp. 4–5.
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`Petitioner’s arguments regarding indefiniteness and enablement, Petitioner
`merely references its written description arguments regarding the
`limitation “the beamforming microphone array includes adaptive acoustic
`processing that automatically adjusts to a room configuration” in its
`Petition. Opp. 4–5; see also Pet. 44–47. In the Institution Decision, we
`did not find these arguments persuasive. Dec. 47–49. As Petitioner does
`not provide any new arguments as to why the aforementioned limitation
`lacks adequate written description support, Petitioner has not shown, at
`this stage of the proceeding, a reasonable likelihood that substitute claims
`25–48 lack adequate written description support.
`
`35 U.S.C. § 103 – Obviousness
`
`Yes. On the current record, it appears that Petitioner has established a
`reasonable likelihood that substitute claims 25–48 are unpatentable under
`35 U.S.C. §103 as obvious.
`
`A. Claims 25–48 (CTG System, Levit, and Beaucoup)
`
`1. Patent Owner’s Contentions Regarding Claims 25–40
`
`Patent Owner contends that substitute claims 25–40 are not unpatentable
`over CTG System, Levit, and Beaucoup. Mot. 14. Specifically, Patent
`Owner contends that the combination of CTG System, Levit, and
`Beaucoup fails to teach or suggest “the microphones of the beamforming
`microphone array are disposed within a perimeter of the single ceiling tile
`in plan view,” as recited in substitute independent claim 25. Id. As
`contended by Patent Owner, CTG System discloses that its microphones
`are dispersed among multiple separated ceiling tiles. Id. at 14–15 (citing
`Ex. 1012, 1). According to Patent Owner, it would not have been obvious
`to modify the placement of the microphones in CTG System, even in light
`of the disclosures of Levit and Beaucoup, because the spacing of the
`microphones is at or near the critical distance of the adjacent microphones,
`and CTG System is designed to use this critical distance to place the
`microphones. Mot. 15 (citing Ex. 2014 ¶ 18; Ex. 1014, 9). Further,
`according to Patent Owner, a person of ordinary skill in the art would not
`have changed the principle of operation of CTG System to modify it to use
`a beamforming microphone array, even in light of the disclosures of Levit
`and Beaucoup, as the microphones disclosed in CTG System are gated on
`and off to follow a speaker around a room, where, in contrast, signals from
`a beamforming microphone array are combined together to form a
`directional beam. Mot. 15–16 (citing Ex. 2013 ¶¶ 31–34). Patent Owner
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`additionally contends that substitute claims 26–32 are patentable over the
`prior art at least in part due to their dependence from substitute claim 25.
`Mot. 19.
`
`Patent Owner further contends that the combination of CTG System,
`Levit, and Beaucoup fails to teach or suggest “a largest distance between
`any two of the microphones of the beamforming array is less than 3 feet,”
`as recited in substitute independent claim 33. Mot. 16. As contended by
`Patent Owner, the largest distance between any two microphones disclosed
`in CTG System is 6 feet or greater. Id. (citing Ex. 2013 ¶ 58). Further,
`according to Patent Owner, a person of ordinary skill in the art would not
`modify CTG System to include a beamforming microphone array for the
`same reasons previously described with respect to substitute claim 25.
`Mot. 16. Patent Owner additionally contends substitute claims 34–40 are
`patentable over the prior art at least in part due to their dependence from
`substitute claim 33. Id. at 19.
`
`2. Petitioner’s Contentions Regarding Claims 25–40
`
`Petitioner contends that substitute claims 25–40 are obvious over CTG
`System, Levit, and Beaucoup. Opp. 5. In its Opposition, referencing its
`obviousness ground for original claims 1–24 explained in its Petition,
`Petitioner focuses on substitute claims 25–27, 29, 33–35, and 37, which,
`as characterized by Petitioner, “are amended to add one or more
`limitations to the claims for which they substitute.” Id. Petitioner
`characterizes substitute claims 28, 30–32, 36, and 38–40 as “identical to
`the claim for which they substitute, save changing their dependency,” and
`relies on “the obviousness analysis discussed in Ground 7 in the Petition
`for [original] claims 4, 6–8, 12, and 14–16.” Id. Further, regarding
`substitute claims 25–27, 29, 33–35, and 37, Petitioner “focuses on the
`limitations added in the Claim Listing Appendix to the Motion.” Id.
`
`Petitioner further contends that a person of ordinary skill in the art would
`have been motivated to combine CTG System with Levit and Beaucoup
`for reasons stated in its Petition. Opp. 6 (citing Paper 1 (“Pet.”), 66–68,
`88–90). Specifically, Petitioner contends that a person of ordinary skill in
`the art would have been motivated to modify CTG System with Beaucoup
`to improve the beamforming because Beaucoup discloses that its
`microphones used for beamforming are all included within the body of a
`conference unit, thereby reducing or eliminating any alleged problem
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`associated with undesirable sidelobes at certain frequencies. Opp. 6–7
`(citing Ex. 1017 ¶¶ 41–42, 44; Ex. 1029 ¶¶ 29–31).
`
`Regarding substitute independent claim 25, Petitioner contends that the
`claim is identical to original claim 1, except substitute claim 25 recites that
`the claimed “ceiling tile” is a “single ceiling tile,” and recites “the
`microphones of the beamforming microphone array are disposed within a
`perimeter of the single ceiling tile in plan view.” Opp. 7–8. As contended
`by Petitioner, CTG System discloses a microphone combined with a single
`ceiling tile, where the microphone, as installed, is disposed within a
`perimeter of a single ceiling tile in plan view.” Id. at 8 (citing Ex. 1011, 7;
`Ex. 1021, 1; Pet. 75–76; Ex. 1029 ¶ 33). As further contended by
`Petitioner, it would have been obvious to modify CTG System to
`substitute the CM-01 microphone in a single ceiling tile with a
`beamforming microphone array, as disclosed in Beaucoup. Opp. 8 (citing
`Ex. 1017 ¶¶ 41–42, 44; Ex. 1002 ¶¶ 206–208; Ex. 1029 ¶ 34). As
`additionally contended by Petitioner, it would have been obvious for the
`single ceiling tile to have an acoustically transparent outer surface, as
`disclosed in Levit, for reasons explained in the Petition. Opp. 9 (citing
`Pet. 55–56, 95; Ex. 1016 ¶¶ 5, 21, 23).
`
`With respect to substitute claim 26, Petitioner contends that the claim is
`identical to original claim 2, except substitute claim 26 recites “the single
`ceiling tile goes in place of exactly one of the plurality of ceiling tiles
`included in the drop ceiling.” Opp. 9. As contended by Petitioner, CTG
`System discloses that a CM-01 microphone is installed in a single ceiling
`tile that goes in place of exactly one of the plurality of ceiling tiles
`included in the drop ceiling. Id. (citing Pet. 81; Ex. 1012, 1; Ex. 1029
`¶ 37). Petitioner further contends that it would have been obvious to
`modify CTG System to include Beaucoup’s beamforming microphone
`array in place of each CM-01 microphone, such that Beaucoup’s
`beamforming array is combined with a ceiling tile that goes in place of
`exactly one of the ceiling tiles included in the drop ceiling for the reasons
`provided with respect to substitute claim 25. Opp. 9 (citing Ex. 1029
`¶ 37).
`
`Regarding substitute claim 27, Petitioner contends that the claim is
`identical to original claim 3, except substitute claim 27 recites “the single
`ceiling tile is sized and shaped to replace more than one contiguous tiles of
`the plurality of ceiling tiles.” Opp. 9. As contended by Petitioner, ceiling
`tiles were commonly sold in a 2’x2’ size and 2’x4’ size, and a person of
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`ordinary skill in the art would have known that a 2’x4’ ceiling tile could be
`used for installing the array and could replace multiple tiles in a grid of
`2’x2’ tiles. Opp. 9–10 (citing Ex. 1019, 53–58; Ex. 1002 ¶ 200; Ex. 1009
`¶ 13; Ex. 1029 ¶ 39). As further contended by Petitioner, substitute
`claim 29 would have been obvious for the reasons stated with respect to
`substitute claim 25. Opp. 10.
`
`With respect to substitute independent claim 33, Petitioner contends that
`the claim is identical to original claim 9, except that it recites “wherein a
`largest distance between any two of the microphones of the beamforming
`microphone array is less than 3 feet.” Opp. 10. As contended by
`Petitioner, a person of ordinary skill in the art would have understood that
`“a standard ceiling tile is 2’x2’,” where “[t]he longest dimension would be
`the diagonal, which is about 2.82 feet.” Id. (citing Ex. 2014 ¶ 15;
`Ex. 1029 ¶ 42). Thus, according to Petitioner, for the reasons contended
`regarding substitute claim 25, modifying CTG System to include
`Beaucoup’s beamforming microphone array in place of each CM-01
`microphone combined with a single ceiling tile renders obvious that a
`largest distance between any two of the microphones of Beaucoup’s
`beamforming microphone array is less than 3 feet because the longest
`dimension in a standard ceiling tile is less than 3 feet. Opp. 10–11 (citing
`Ex. 1029 ¶ 42; Ex. 2014 ¶ 15).
`
`Regarding substitute claims 34 and 37, Petitioner contends the claims are
`identical to original claims 10 and 13, respectively, except that they both
`recite “wherein the ceiling tile is a single ceiling tile, the microphones of
`the beamforming microphone array are disposed within a perimeter of the
`single ceiling tile in plan view.” Opp. 11. For the reasons stated with
`respect to substitute claim 25, Petitioner contends that modifying CTG
`System to substitute the CM-01 microphone combined with a single
`ceiling tile for Beaucoup’s beamforming microphone array renders
`obvious the aforementioned limitation. Id.
`
`Regarding substitute claim 35, Petitioner contends that the claim is
`identical to original claim 11, except it recites “wherein the ceiling tile is a
`single ceiling tile, the microphones of the beamforming microphone array
`are disposed within a perimeter of the single ceiling tile in plan view,” and
`“the single ceiling tile is sized and shaped to replace more than one
`contiguous tiles of the plurality of ceiling tiles.” Opp. 11. For the reasons
`stated with respect to substitute claims 25 and 27, Petitioner contends that
`modifying CTG System to substitute the CM-01 microphone combined
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`with a single ceiling tile for Beaucoup’s beamforming microphone array
`renders obvious the aforementioned limitation. Id. at 11–12 (citing
`Ex. 1029 ¶ 46).
`
`3. Claims 25–32
`
`Regarding substitute claim 25, at this stage of the proceeding, Petitioner
`has shown sufficiently that: CTG System discloses a microphone
`combined with a single ceiling tile, where the microphone, as installed, is
`disposed within a perimeter of a single ceiling tile in plan view; Beaucoup
`teaches a beamforming microphone array; and Levit teaches an
`acoustically transparent outer surface. Further, Petitioner’s reasons to
`modify CTG System to substitute the CM-01 microphone in a single
`ceiling tile with a beamforming microphone array, as disclosed in
`Beaucoup, and to modify the single ceiling tile to have an acoustically
`transparent outer surface, as disclosed in Levit, have rational underpinning
`and are supported by expert testimony. Ex. 1029 ¶¶ 29–34. We have
`considered Patent Owner’s contention that a person of ordinary skill in the
`art would not modify the placement of microphones in CTG System or
`replace the microphones with a beamforming microphone array, but, on
`this record, it does not appear that CTG System requires either a specific
`placement or arrangement of microphones. Patent Owner’s arguments and
`expert testimony are conclusory and do not appear to be supported by the
`teachings in CTG System. Mot. 14–16; Ex. 2013 ¶¶ 31–34; Ex. 2014
`¶ 18.
`
`With respect to substitute claim 26, at this stage of the proceeding,
`Petitioner has shown sufficiently that CTG System discloses that a CM-01
`microphone is installed in a single ceiling tile that goes in place of exactly
`one of the plurality of ceiling tiles included in the drop ceiling. Further, as
`described above, Petitioner’s reasons to combine CTG System, Levit, and
`Beaucoup have rational underpinning and are supported by expert
`testimony.
`
`Regarding substitute claim 27, at this stage of the proceeding, Petitioner
`has shown sufficiently that CTG System discloses that a CM-01
`microphone is installed in a single ceiling tile that goes in place of exactly
`one of the plurality of ceiling tiles included in the drop ceiling. Further,
`Petitioner’s reasons to modify CTG System to place a single ceiling tile in
`place of multiple contiguous tiles included in the drop ceiling have rational
`underpinning and are supported by expert testimony.
`
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`With respect to substitute claims 28–32, at this stage of the proceeding,
`Petitioner has established a reasonable likelihood that the substitute claims
`are obvious for reasons similar to substitute claim 25. Accordingly, on the
`current record, Petitioner has established a reasonable likelihood that
`substitute claims 25–32 are unpatentable as obvious over CTG System,
`Levit, and Beaucoup.
`
`4. Claims 33–40
`
`With respect to substitute claim 33, at this stage of the proceeding,
`Petitioner’s contention that a person of ordinary skill in the art would have
`understood that “a standard ceiling tile is 2’x2’,” where “[t]he longest
`dimension would be the diagonal, which is about 2.82 feet” has rational
`underpinning and is supported by expert testimony. Ex. 1029 ¶ 42. Thus,
`at this stage of the proceeding, Petitioner has shown sufficiently, for the
`reasons contended regarding substitute claim 25, that modifying CTG
`System to include Beaucoup’s beamforming microphone array in place of
`each CM-01 microphone combined with a single ceiling tile renders
`obvious that a largest distance between any two of the microphones of
`Beaucoup’s beamforming microphone array is less than 3 feet, as the
`longest dimension in a standard ceiling tile is less than 3 feet. We have
`considered Patent Owner’s contentions, but, on this record, they are not
`persuasive for similar reasons as to why they are not persuasive with
`respect to substitute claim 25.
`
`Regarding substitute claims 34–40, at this stage of the proceeding,
`Petitioner has established a reasonable likelihood that the substitute claims
`are obvious for reasons similar to substitute claim 33. Accordingly, on the
`current record, Petitioner has established a reasonable likelihood that
`substitute claims 34–40 are unpatentable as obvious over CTG System,
`Levit, and Beaucoup.
`
`4. Claims 41–48
`
`Patent Owner further contends that substitute claims 41–48 are also not
`unpatentable over CTG System, Levit, and Beaucoup. Mot. 17–19.
`Petitioner does not contend that substitute claims 41–48 are unpatentable
`over CTG System, Levit, and Beaucoup. See generally Opp.
`Accordingly, on the current record, Petitioner has not established a
`reasonable likelihood that substitute claims 41–48 are unpatentable as
`obvious over CTG System, Levit, and Beaucoup. However, as described
`below in greater detail, on the current record, Petitioner has established a
`
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`reasonable likelihood that substitute claims 41–48 are unpatentable as
`obvious over Zhu, Mason, Marton, Penning, and Beaucoup.
`
`B. Claims 25–48 (Zhu, Mason, Marton, Penning, Beaucoup)
`
`1. Petitioner’s Contentions
`
`Petitioner contends that claims 25–27, 29–35, 37–43, and 45–48 are
`obvious over Zhu, Mason, Marton, and Penning. Opp. 12. Petitioner
`further contends claims 28, 36, and 44 are obvious over Zhu, Mason,
`Marton, Penning, and Beaucoup. Opp. 24.
`
`Regarding substitute independent claim