One-E-Way, Inc. v. ITC - 859 F.3d 1059 (Fed. Cir. 2017)

Rule:

The Patent Act requires inventors to claim their invention in full, clear, concise, and exact terms. 35 U.S.C.S. § 112. The issue of indefiniteness is part of the delicate balance the law attempts to maintain between inventors, who rely on the promise of the law to bring an invention forth, and the public, which should be encouraged to pursue innovations, creations, and new ideas beyond an inventor's exclusive rights. That balance recognizes that all claims suffer from the inherent limitations of language, but also that claims must be precise enough to afford clear notice of what is claimed. This balance permits some modicum of uncertainty to ensure appropriate incentives for innovation, but it also provides a meaningful definiteness check to prevent patent applicants from injecting ambiguity into their claims. Recognizing that balance, the United States Supreme Court articulated the test for indefiniteness in Nautilus, Inc. v. Biosig Instruments, Inc., as requiring that a patent's claims, viewed in light of the patent's specification and prosecution history, inform those skilled in the art about the scope of the invention with reasonable certainty. The Supreme Court's test mandates clarity, while recognizing that absolute precision is unattainable.

Facts:

One-E-Way filed a complaint with the International Trade Commission (“ITC”) accusing, among others, Respondents Sony Corporation; Sony Corporation of America; Sony Electronics, Inc.; BlueAnt Wireless Pty, Ltd.; BlueAnt Wireless, Inc.; Creative Technology Ltd.; Creative Labs, Inc.; and GN Netcom A/S (collectively, "Respondents") of infringing two of its related patents, U.S. Patent Nos. 7,865,258 and 8,131,391. One-E-Way asserted, inter alia, claim 8 of the '258 patent and claims 1, 3-6, and 10 of the '391 patent. Both patents disclose a wireless digital audio system designed to let people use wireless headphones privately, without interference, even when multiple people are using wireless headphones in the same space. '258 patent, Abstract. The specification explains that previous wireless digital audio systems did not, among other things, provide "private listening without interference where multiple users occupying the same space are operating wireless transmission devices."  The specification further explains that the prior art "audio systems made use of electrical wire connections between the audio source and the headphones to accomplish private listening to multiple users." The patents purport to solve these problems in the prior art by disclosing a digital wireless audio system that ensures private listening. Specifically, the patent specification proposes changing the way prior art systems sent and processed the wireless signal. It suggests sending a digitally encoded signal to ensure each user can independently access his or her transmission. It further suggests processing the signal with a fuzzy logic detection subsystem to enhance signal clarity. These and other improvements enable a user "to listen (privately) to high fidelity audio music, using any of the audio devices listed previously, without the use of wires, and without interference from any other receiver headphone…user, even when operated within a shared space." At the Commission, the parties disputed whether the claim term "virtually free from interference" was indefinite. Respondents and the Commission's Office of Unfair Import Investigation ("the Staff") both asserted that "virtually free from interference" was indefinite. One-E-Way, to the contrary, proposed that the term meant "free from interference such that eavesdropping on device transmitted signals operating in the…wireless digital audio system spectrum cannot occur." As the administrative law judge explained, One-E-Way contended that "the specifications of the asserted patents provide 'abundant guidance' to one of ordinary skill in the art" to understand that "virtually free from interference" requires "that users of the invention do not hear each other's transmissions." Respondents filed a motion for summary determination that the term "virtually free from interference" is indefinite, which the ALJ granted. The ALJ concluded that the "term 'virtually free from interference' is not defined in the Asserted Patents or their history" and does not "have an understood meaning in the relevant art." The ALJ explained that he found "virtually free from interference" to be indefinite because one of ordinary skill in the art had "no guidepost in the intrinsic or extrinsic evidence from which [she] could discern the scope of the limitation." One-E-Way petitioned the Commission to review the ALJ's summary-determination order. The Commission agreed with the ALJ that "virtually free from interference" was indefinite.  The Commission thus affirmed the ALJ's order. One-E-Way appealed.

Issue:

Did the ITC err in its determination that the claims in question were indefinite?

Answer:

Yes

Conclusion:

The court held that ITC erred when it found that claims in U.S. Patent Nos. 7,865,258 and 8,131,391, which disclosed a wireless digital audio system designed to let people use wireless headphones privately, without interference, even when multiple people were using wireless headphones in the same space, were invalid under 35 U.S.C.S. § 112 because language that was used in those claims, which stated that the patentee's system would allow users to receive signals that were "virtually free from interference," was indefinite. The patents were not invalid because they did not provide a technical measure of the amount of interference, and the term in question, as properly interpreted in light of the patents' specifications and prosecution history, informed a person of ordinary skill in the art about the scope of the invention with reasonable certainty.