Posted on

Shure Infringement Claims Against ClearOne Survive Motion to Dismiss Based on Civil Procedure Rules

In the latest development in extensive litigation between Shure and ClearOne over audio and conferencing equipment, the District of Delaware rejected a motion to dismiss Shure’s claims over multiple civil procedure grounds, including as compulsory counterclaims to an earlier suit and as failing to be the first to file. The conflict between Shure and ClearOne began not in the District of Delaware but in the Northern District of Illinois. In 2017, Shure filed a declaratory judgment of noninfringement of ClearOne’s U.S. Patent No. 9,635,186, and ClearOne responded with counterclaims for infringement of the ’186 patent and of U.S. Patent No. 9,813,806. Both patents relate to beamforming microphones in ceiling arrays, an area in which the parties compete. ClearOne got a preliminary injunction for the ’806 patent (but not the ’186 patent), specifically against Shure’s MXA910 product “in its drop-ceiling mounting configuration.” In 2019, ClearOne filed a second infringement suit against…

Read more

Posted on

Federal Circuit Uses Claim Construction to Overturn Lack of Enablement: McRO v. Bandai Namco

In its second time considering a patent, the Federal Circuit upheld the district court’s ruling on noninfringement but overturned its ruling of lack of enablement in McRO v. Bandai Namco. The decision rested on the claim construction of one term, “vector.” That construction excluded the accused products from the scope of the patent, but it likewise excluded examples that the defendants had offered of embodiments that were not enabled by the patent. McRO owns the sole patent at issue, U.S. Patent No. 6,611,278, which covers a “method for automatically animating lip synchronization and facial expression of animated characters.” The patent describes automating the modeling of an animated character’s mouth according the phoneme being spoken by the character. A phoneme is the smallest unit of spoken speech, i.e., a single sound. For each phoneme, a “morph target” is applied to a model of the neutral position of the character’s mouth. Each…

Read more

Posted on

Claim Preclusion Does Not Apply to Ineligible Subject Matter: VideoShare, LLC v. Google LLC (W.D. Tx.)

The sins of the parent patent will not be visited on the child patent, at least in the Western District of Texas. An earlier determination of ineligible subject matter does not trigger claim preclusion against an infringement suit asserting a patent issued from a continuation application from the earlier patent. VideoShare, LLC v. Google LLC, Civ. No. 6-19-CV-00663-ADA (W.D. Tx. May 4, 2020). Because this case involves claim preclusion (or res judicata, if you like Latin), the conflict necessarily started in an earlier case. Back in 2013, VideoShare sued Google in the District of Delaware for infringing U.S. Patent No. 8,464,302, “Method and System for Sharing Video with Advertisements over a Network.” The accused product was YouTube. The court invalidated the ’302 patent as ineligible subject matter under § 101, and the Federal Circuit confirmed the result. The current case features the same parties and the same accused product, with…

Read more

Posted on

When Are Preambles Limiting?

In his recent article Without Preamble, Stanford professor Mark Lemley surveys the morass of law on determining when patent claim preambles are limiting, and he predicts that it will be swept away if the Supreme Court ever faces the issue. Given that possibility, how should practitioners think about drafting preambles when applying for a patent? Much of legal academic literature provides little use for practitioners, instead proposing grand constitutional theories, doing social science on legal institutions, or setting out policy arguments for changing the law. Professor Lemley’s article falls under the more useful category of doctrinal analysis: surveying a field of law and offering some original points that practitioners would do well to think about. The field of law in this article is claim construction when applied to the preamble of the claim. The preamble is the introduction to a patent claim, typically followed by a transition term like “comprising”…

Read more

Posted on

EDTx Hands Down Indefiniteness Ruling in Semcon v. TCT Mobile

The Eastern District of Texas recently issued a claim construction ruling with a couple interesting rulings on indefiniteness in the case of Semcon IP v. Louis Vuitton and TCT Mobile (April 29, 2020). TCT Mobile is a mobile communication company whose brands include Alcatel, Blackberry, and TCL Communications. Semcon IP is a patent assertion entity whose patents cover “fundamental technology for adjusting the processor clock and voltage to save power based on the operating characteristics of the processor.” The patents include Nos. 7,100,061; 7,596,708; 8,566,627; and 8,806,247, all part of the same family. Semcon sued TCT Mobile, along with fashion brand Louis Vuitton, for infringement as part of an assertion campaign against multiple companies in the Eastern District of Texas. While the court construed twelve terms in its 64-page ruling, the most interesting rulings were on indefiniteness of two terms appearing in dependent claims of the asserted patents. The court…

Read more