ClearOne earned another victory in its lengthy court battle with Shure over its line of ceiling tile beamforming microphone array products when a federal court judge denied Shure’s temporary restraining order asking to end the sale of products in that ClearOne line. [related]
The Report and Recommendation issued this week by the Honorable Christopher J. Burke of the U.S. District Court of Delaware denied Shure’s emergency motion for a temporary restraining order.
“Shure strategically filed this lawsuit in Delaware federal court as a reaction to the mounting defeats it has suffered in the legal proceedings Shure initiated against ClearOne in Illinois federal court and before the Patent Trial and Appeal Board,” said ClearOne chairwoman and CEO Zee Hakimoglu in a statement.
“It hasn’t worked. The first patent Shure asserted against ClearOne in Delaware federal court is now the subject of inter partes review before the PTAB, and all proceedings regarding that patent in Delaware federal court have been stayed,” she said in the ClearOne statement.
“Shure then asserted another patent, the ’723 patent, against ClearOne and asked the Delaware federal court to grant a temporary restraining order prohibiting the continued sale of the BMA CTH included in the new Versa Lite and Versa Room products. That, too failed,” said Hakimoglu.
“We are pleased that the court saw through Shure’s attempt to prevent the entry of our innovative and disruptive new products and thereby block our growth. ClearOne will continue…ensuring that competitors like Shure are held to account when they do not respect our intellectual property rights,” she said.
Shure’s motion for a preliminary injunction relating to the BMA CT and BMA CTH is still pending before the court. Burke’s ruling, which Shure can appeal until May 8, only addressed Shure’s request for the temporary restraining order.
A Shure spokesperson says in a statement sent to CI that ClearOne officials are “attempting to confuse the market.”
“ClearOne continues to publicize every play by play of this litigation, like this recent decision, no matter how inconsequential,” the spokesperson said in the emailed statement. “Of importance here is Shure’s track record of innovation and market leadership, and ClearOne’s efforts to unlawfully imitate Shure’s products.
“Shure’s request for a preliminary injunction against ClearOne’s BMA CT and BMA CTH products remains pending and will be decided later this year. We also look forward to presenting our underlying case in Court of ClearOne’s infringement of Shure’s valuable intellectual property,” the statement says.
ClearOne vs. Shure in Court
In November 2019, ClearOne announced its COLLABORATE Versa Pro CT product offering, which combines the BMA CTH with the CONVERGE Huddle audio DSP for small- to medium-sized rooms. ClearOne began selling this product offering in December 2019.
In February 2020, ClearOne announced the COLLABORATE Versa Room CT and Versa Lite CT product offerings, which also include the BMA CTH and require no external DSP. ClearOne anticipates sales of these product offerings to begin later this quarter.
On April 14, Shure filed an emergency motion to stop sales of ClearOne’s BMA CTH products. Shure’s motion asserted design patent infringement claims against ClearOne’s BMA CTH products and argued that Shure will be irreparably harmed by having to compete with those products.
Burke rejected Shure’s motion, holding that Shure had failed to show that it would suffer irreparable harm in the absence of injunctive relief and that ClearOne had raised a “substantial question” as to the validity of the patent Shure asserts against ClearOne, D865,723 (the so-called ’723 patent).
In August 2019, Judge Edmond E. Chang of the U.S. District Court of the Northern District of Illinois granted ClearOne’s request for a preliminarily injunction, preventing Shure from “manufacturing, marketing, and selling” the original MXA910 for use “in its drop-ceiling mounting configuration.”
In February 2020, ClearOne filed a motion for contempt against Shure for selling its MXA910W-A, which infringes ClearOne’s U.S. Patent No. 9,813,806 and violates the patent infringement order.
Separately, the Federal Circuit in March 2020 confirmed the patentability of all claims of ClearOne’s U.S. Patent No. 9,264,553 over Shure’s appeal, and ClearOne’s claim against Shure for infringement of that patent remains pending.
