CLEARONE, INC. v. SHURE ACQUISITION HOLDINGS

Shure owns U.S. Patent No. 9,565,493 relating to arrays of microphones and housings for the arrays so that the arrays and housings may be fitted into a drop ceiling grid.  During inter partes review (IPR), the Board granted Shure’s motion to amend the claims of the ’493 patent and add independent claim 57 that included a “self-similar” limitation that the Board concluded would be understood by a skilled artisan and does not create an ambiguity. ClearOne served a proposed sanctions motion, arguing that Shure’s failure to cite art it relied on in a petition for post-grant review of a different patent which also relates to drop ceiling microphone arrays, violated its duty to disclose material prior art. The Board concluded that Shure did not violate its duty to disclose because, inter alia, the prior art references were cumulative of references asserted by ClearOne in its IPR petition. ClearOne appeals from the final written decision holding the self-similar configuration term in substitute claim 57 not indefinite, and from the Board’s decision denying its request to file a motion for sanctions against Shure.  With respect to definiteness, the CAFGC notes that just because a term is susceptible to more than one meaning does not render it indefinite, and concludes that based on the intrinsic record alone, the written description provides, with reasonable certainty, the scope of the term self-similar and that read in light of the specification, the term self-similar informs skilled artisans, with reasonable certainty, about the scope of the invention. In addition, the CAFC finds that the Board did not abuse its discretion in denying ClearOne’s request to file its sanctions motion, pointing out that after holding a hearing on the merits of the sanctions motion, the Board explained that the arguments ClearOne raised in its sanctions motion amounted to nothing more than a thinly veiled attempt at a second bite at the apple. In summary, because the CAFC finds that 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 extrinsic evidence, they affirm. 

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