On June 12, 2017, the U.S. Court of Appeals for the Federal Circuit issued its precedential opinion in One-E-Way, Inc. v. ITC (2016-2105). This was an appeal from the International Trade Commission’s (“the Commission”) determination finding no violation of Section 337 in Certain Wireless Headsets (Inv. No. 337-TA-943).

By way of background, this investigation is based on a December 8, 2014 complaint filed by One-E-Way, Inc. (“OEW”) alleging violation of Section 337 in the importation into the U.S. and sale of certain wireless headsets that infringe one or more claims of U.S. Patent Nos. 7,865,258 and 8,131,391. See our January 8, 2015 and January 14, 2015 posts for more details on the complaint and notice of investigation, respectively.

Respondents filed a motion for summary determination that the term “virtually free from interference” is indefinite. This motion was granted by ALJ Pender, who noted that the term was not defined in the patents or prosecution history, and thus, a person of skill in the art had “no guidepost” from which he or she could discern the scope of the limitation. OEW petitioned the Commission for review, and the Commission affirmed. OEW appealed to the Federal Circuit.

The Federal Circuit reversed the Commission’s determination, holding that “virtually free from interference” prevents one user from eavesdropping on another, as proffered by OEW. In the opinion, the Court noted that the specification repeatedly highlights the private-listening feature of the claimed invention, and in each repetition, states that the private listening is without interference. As such, the Federal Circuit concluded that “the specification makes clear that private listing is listening without interference from other uses.” And, the Court held that the prosecution history confirmed OEW’s interpretation of “virtually free from interference,” noting that the claims were rejected over a reference that is neither totally free nor virtually free from interference.

In response to Respondents’ argument that the term does not inform those skilled in the art as to any particular level of interference or how much interference is permitted, the Court held that the lack of technical definition was not problematic because it comported with the non-technical manner this phrase was used in the specification to simply mean that the wireless headphone user is able to listen without eavesdropping.

As such, the Federal Circuit reversed the case, finding that “virtually free from interference” satisfies the definiteness requirements of 35 U.S.C. § 112, and remanded the case for further proceedings consistent with the opinion.

Chief Judge Prost issued a dissenting opinion. In the dissent, the Judge noted that the written description lacks any reference to the phrase “virtually free from interference” and that OEW admitted that the phrase has no ordinary meaning to a skilled artisan. Judge Prost considered the statement in the prosecution history relied upon by the majority to be “cherry-picked” and in contradiction to the established principle that the written description is key to determining whether a term of degree is definite. Overall, Judge Prost concluded that nothing in the intrinsic evidence clarifies the degree of broadening associated with “virtually” or provides a skilled artisan with reasonable certainty about the objective boundaries of the disputed limitation. Accordingly, Judge Prost would affirm the Commission’s determination that the phrase “virtually free from interference” is indefinite.