Judge Edmond E. Chang of the U.S. District Court of the Northern District of Illinois ruled yesterday that Shure “has violated a preliminary injunction order” in a patent infringement case with ClearOne “because it designed the MXA910-A in such a way that allows it to be easily installed flush in most ceiling grids.”
The preliminary injunction order from August 2019 prevented Shure from, among other things, “manufacturing, marketing, and selling the MXA910 in a way that encourages or allows integrators to install it in a drop-ceiling mounting configuration” in a way that infringes ClearOne’s U.S. Patent No. 9,813,806, more commonly referred to as the ’806 Patent.
In response to that order, Shure released the MXA910-A, claiming publicly that “the Court ruled on November 3, 2019, that the new MXA910W-A is not included under the preliminary injunction.”
Related: ClearOne and Shure: History of Their Legal Dispute
In Chang’s contempt order issued yesterday, he noted “the record is clear and convincing that Shure—through its design choices—violated the injunction order by allowing integrators to install the MXA910-A in the enjoined flush configuration.”
Chang ordered that “Shure shall no longer manufacture, market, or sell the MXA910-A.”
In addition, the Court held that “[t]he record is also clear as to the MXA910-60CM, but in an abundance of caution, the Court will refrain from granting that aspect of the contempt motion to allow for additional discovery” on that and the “possibility that Shure also violated the preliminary injunction order” by “pushing” sales of the MXA910 immediately after the issuance of the PI Order—discovery to which ClearOne would not have otherwise been entitled.
“We believe that this contempt order finally puts to bed Shure’s claim that the MXA910-A is not subject to the PI Order,” said ClearOne CEO and chairwoman Zee Hakimoglu in a company statement today.
The order “described Shure’s efforts with the MXA910-A as “not fully in the spirit of a good-faith design” and concluded that Shure ‘either gave dishonest information to [its own] counsel or was negligent in the extreme in providing that information.”
“ClearOne is pleased that the Court continues to hold Shure responsible for its unlawful conduct and we will continue to vigorously pursue all available legal remedies to defend our strategic patents from infringement,” said Hakimoglu concluded.
ClearOne’s motion to accuse Shure’s MXA910-US of infringing the ’806 Patent is still pending with the Court. The case number in the U.S. District Court of the Northern District of Illinois is 17-cv-3078.
Shure Responds to MXA910-A Court Ruling
Shure officials say they are “disappointed by and disagree with the Court’s ruling regarding our previously discontinued MXA910-A product in the United States.
“Shure specifically designed the MXA910-A in an earnest effort to comply with the Court’s orders and provided clear instructions to facilitate proper installation,” according to the company statement this morning.
The court’s ruling “reflects its concern about the possibility that some professionals may have improperly installed the MXA910-A in a flush-mounted configuration rather than on the product’s flanges as intended by Shure’s design,” the company statement says.
The Shure statement notes “customers can continue to use the MXA910-A in accordance with its intended design consistent with the instructions in the user manual.”
Shure officials believe Chang’s order “also provides clarification of ClearOne’s patent rights and verifies that Shure’s current MXA910-US product cannot be improperly mounted and thereby cannot infringe ClearOne’s patent.”
“To be clear, the Court’s ruling is not a finding that the MXA910A infringes ClearOne’s ‘806 patent,” the Shure statement says. “Rather, the Court ruling addresses compliance with the Court’s previous preliminary injunction order.
“Shure continues to believe it has not violated any ClearOne patents and that ClearOne’s patents underlying this litigation are invalid. We look forward to presenting our case before a jury early next year and putting this matter to rest,” Shure officials say in the statement.
