Shure, Inc. v. ClearOne, Inc., No. 17 C 3078, Slip Op. (N.D. Ill. Aug. 25, 2018) (Chang, J.).

Judge Chang denied declaratory judgment defendant ClearOne’s motion for reconsideration of the Court’s denial of a preliminary injunction (PI) in this patent case involving audio-conferencing equipment utilizing beam microphones.

As an initial matter, the Court held that the parties were both incorrect regarding the Federal Rule that ClearOne’s motion was properly considered under. Rule 59(e) was inapplicable because the motion was filed more than twenty eight days after the PI decision. Rule 60(b) was inapplicable because a PI cannot be considered a final judgment. The motion was properly considered pursuant to Rule 54(b) giving the Court authority to reconsider a decision on less than all the merits at any time before a final judgment.

In its original denial of the PI, the Court noted that the PTAB’s institution decision was persuading authority, but not controlling. Similarly, the PTAB’s final decision – which reversed course finding the challenged claims were not invalidated – was persuasive, but not binding. This was especially true based upon the “high bar” for preliminary injunctive relief.

The PTAB determined that petition had not met its burden of proving that the prior art disclosed fixed beams under the construction of fixed beam shared by the district court and the PTAB – “defined by parameters determined before a conference.” As a side note, this is an excellent example of the value of the Patent Office’s decision to normalize its claim construction standard with that of the federal courts.

The Court’s review of the prior art reference identified that the relevant section discussed adaptive – as opposed to fixed – beamforming at length, as noted by the PTAB. But the PTAB did not acknowledge that the section warned against adapting the beams too frequently during a call. That raised a significant question regarding whether the reference taught the claimed fixed beams.

The Court also was not persuaded to reverse its decision regarding the likelihood of infringement. The Court’s analysis was not based upon a claim that the accused device could not use adaptive beams, rather it was based upon the default fixed beam setting in the accused device. Nothing about the PTAB decision changed those facts or the analysis.