One-E-Way, Inc. v. International Trade Commission
123 U.S.P.Q. 2d (BNA) 1090, 859 F.3d 1059, 2017 U.S. App. LEXIS 10341 (2017)
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Rule of Law:
Patent claims containing terms of degree, such as "virtually free from interference," are not indefinite under 35 U.S.C. § 112 if, when viewed in light of the specification and prosecution history, they inform a person of ordinary skill in the art about the scope of the invention with reasonable certainty.
Facts:
- One-E-Way owned U.S. Patent Nos. 7,865,258 and 8,131,391, which disclose a wireless digital audio system.
- The system is designed to allow individuals to use wireless headphones privately, without interference, even when multiple people are using wireless headphones in the same space.
- The patent specification explains that previous wireless digital audio systems did not provide "private listening without interference where multiple users occupying the same space are operating wireless transmission devices."
- The patents purport to solve these problems by proposing a digital wireless audio system that sends a digitally encoded signal and processes it with a fuzzy logic detection subsystem to enhance signal clarity.
- This system enables a user to listen privately to high fidelity audio without wires and "without interference from any other receiver headphone ... user, even when operated within a shared space."
- Claim 8 of the ’258 patent, which One-E-Way asserted, includes the limitation that the audio must be "virtually free from interference from device transmitted signals operating in the portable wireless digital audio system spectrum."
- One-E-Way contended that "virtually free from interference" requires that users of the invention do not hear each other’s transmissions, meaning "eavesdropping" cannot occur.
Procedural Posture:
- One-E-Way filed a complaint with the International Trade Commission (ITC) accusing various respondents, including Sony Corporation and Creative Technology Ltd., of infringing its patents.
- At the ITC, Respondents and the Commission’s Office of Unfair Import Investigation asserted that the claim term “virtually free from interference” was indefinite.
- The Administrative Law Judge (ALJ) conducted a claim construction hearing and, finding the term indefinite, granted Respondents' motion for summary determination.
- One-E-Way petitioned the Commission to review the ALJ’s summary-determination order.
- The Commission affirmed the ALJ's order, concluding that “virtually free from interference” was indefinite.
- One-E-Way appealed the Commission's determination to the United States Court of Appeals for the Federal Circuit.
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Issue:
Is the claim term "virtually free from interference," when viewed in light of the specification and prosecution history, indefinite under 35 U.S.C. § 112 for failing to inform a person of ordinary skill in the art about the scope of the invention with reasonable certainty?
Opinions:
Majority - Stoll, Circuit Judge
No, the claim term “virtually free from interference” is not indefinite because, when properly interpreted in light of the specification and prosecution history, it informs a person of ordinary skill in the art about the scope of the invention with reasonable certainty. The court applied the "reasonable certainty" test from Nautilus, Inc. v. Biosig Instruments, Inc., which acknowledges that absolute precision is unattainable and allows for terms of degree if sufficiently defined. The claims require the headphone's audio output to be "virtually free from interference" from other wireless audio transmission devices, a requirement consistent with the specification's repeated emphasis on enabling "private listening without interference" from other users. This context indicates that "private listening without interference" means preventing one user from hearing another user's wireless transmissions, or eavesdropping. The prosecution history of a related patent explicitly supported this interpretation, stating that "interference is virtually eliminated (e.g. where eavesdropping cannot occur)," directly linking "virtually eliminated" interference to the inability to eavesdrop. The court found this statement instructive, noting that other "virtually free from interference" claims were pending. While the term isn't given a precise technical measure of interference, the court held that defining it as preventing "eavesdropping" provides a clear line for those skilled in the art. The term "virtually" expands the scope of "free from interference" slightly but still fundamentally requires that eavesdropping cannot occur.
Dissenting - Prost, Chief Judge
Yes, the claim limitation "virtually free from interference" is indefinite because the intrinsic evidence, including the specification and prosecution history, fails to provide a person of ordinary skill in the art with reasonable certainty about the scope of the invention, especially concerning the degree of broadening implied by "virtually." Chief Judge Prost argued that the majority relied too heavily on a single, non-definitional "e.g." remark from the prosecution history, which only provided an example rather than a clear definition. She emphasized that for terms of degree, the written description is "key" (Sonix Tech. Co. v. Publ’ns Int’l, Ltd.), but here it lacks any explicit or implicit explanation of "virtually free from interference." While the specification discusses "private listening without interference," this absolute term maps better to "free from interference" (without "virtually") and does not clarify the broader scope intended by the modifier "virtually." The dissent also highlighted how another examiner's statement in a related patent, linking "virtually free from interference" to "separating transmissions" rather than "no eavesdropping," injected further ambiguity. This lack of clear, objective boundaries, particularly for the meaning of "virtually," fails the Nautilus "reasonable certainty" test and undermines the public-notice function of patent claims.
Analysis:
This case clarifies the Federal Circuit's application of the Nautilus "reasonable certainty" test for indefiniteness, particularly concerning patent claims that include terms of degree. It demonstrates that the court will uphold such terms if the specification and prosecution history, when read together, provide a functional definition or a clear objective boundary for a person of ordinary skill in the art, even without precise numerical or technical metrics. The majority's reliance on a single "e.g." example from the prosecution history, bolstered by consistency with the specification's stated purpose, highlights the importance of the entire intrinsic record. However, the strong dissent underscores the ongoing debate over the sufficiency of such evidence to define terms of degree with "reasonable certainty," particularly when distinguishing between similar but qualitatively different claim terms (e.g., "free from interference" vs. "virtually free from interference"). This decision may provide patentees with some flexibility in claim drafting, but also serves as a reminder to ensure all claim terms, especially modifiers, are well-supported and explained within the intrinsic evidence.
