One-E-Way, Inc. v. International Trade Commission
859 F.3d 1059
| Fed. Cir. | 2017Background
- One-E-Way sued multiple manufacturers at the ITC, asserting claims of U.S. Pat. Nos. 7,865,258 and 8,131,391 for a wireless digital audio system designed to permit private listening without interference among multiple users.
- The asserted claims include the phrase “virtually free from interference from device transmitted signals operating in the ... spectrum.” Claim 8 of the ’258 patent was illustrative.
- The ALJ and the ITC found the term “virtually free from interference” indefinite under 35 U.S.C. § 112 because the patents and prosecution history lacked objective guidance on what level of interference the term permits.
- One-E-Way argued the term means preventing eavesdropping (i.e., users cannot hear others’ transmissions), supported by specification language about "private listening" and a prosecution remark referencing "virtually eliminated (e.g. where eavesdropping cannot occur)."
- The Federal Circuit majority reversed, holding that read in view of the specification and prosecution history the term informs a skilled artisan with reasonable certainty: "virtually free from interference" prevents eavesdropping and thus is not indefinite.
- Chief Judge Prost dissented, arguing the majority relied improperly on a single prosecution remark, that the written description lacks a definition or embodiments showing the scope of the modifier "virtually," and that the intrinsic record leaves objective boundaries uncertain.
Issues
| Issue | Plaintiff's Argument | Defendant's Argument | Held |
|---|---|---|---|
| Whether the claim term "virtually free from interference" is indefinite under § 112 | One-E-Way: term means audio is protected from eavesdropping (users cannot hear others); specification + prosecution history provide guidance | Respondents/Commission: term lacks objective boundaries or technical measure; no guidance as to permissible interference levels | Reversed: term definite — in context it means preventing eavesdropping and provides reasonable certainty to skilled artisans |
| Whether reliance on prosecution statements and specification suffices to construe the modifier "virtually" | One-E-Way: prosecution remark and specification’s "private listening" disclose that "virtually" means no eavesdropping; exact technical metrics unnecessary | Respondents/Commission: prosecution remark is insufficient, specification doesn’t define or exemplify degree of "virtually", so public notice fails | Held: Prosecution history remark plus specification sufficed here; "virtually" broadens "free from interference" but does not render term indefinite |
Key Cases Cited
- Amgen, Inc. v. Int’l Trade Comm’n, 565 F.3d 846 (Fed. Cir. 2009) (standard of review for ITC summary determination)
- Akzo Nobel Coatings, Inc. v. Dow Chem. Co., 811 F.3d 1334 (Fed. Cir. 2016) (indefiniteness is a legal question reviewed de novo with underlying factual findings)
- Cox Commc’ns, Inc. v. Sprint Commc’n Co. LP, 838 F.3d 1224 (Fed. Cir. 2016) (patent validity presumed; challenger must prove indefiniteness by clear and convincing evidence)
- Intel Corp. v. VIA Techs., Inc., 319 F.3d 1357 (Fed. Cir. 2003) (evidence burden principles in indefiniteness context)
- Festo Corp. v. Shoketsu Kinzoku Kogyo Kabushiki Co., 535 U.S. 722 (2002) (patent notice function and claim scope principles)
- Nautilus, Inc. v. Biosig Instruments, Inc., 134 S. Ct. 2120 (2014) (claims must inform skilled artisans of scope with reasonable certainty)
- Interval Licensing LLC v. AOL, Inc., 766 F.3d 1364 (Fed. Cir. 2014) (terms of degree do not inherently render claims indefinite)
- Apple Inc. v. Samsung Elecs. Co., 786 F.3d 983 (Fed. Cir. 2015) (upholding a relative term where specification and expert testimony supplied clarity)
- Eibel Process Co. v. Minn. & Ont. Paper Co., 261 U.S. 45 (1923) (historical acceptance of relative terms when skilled artisans understand the required degree)
- Teva Pharm. USA, Inc. v. Sandoz, Inc., 789 F.3d 1335 (Fed. Cir. 2015) (prosecution of related patents may inform claim construction)
- Sonix Tech. Co. v. Publ’ns Int’l, Ltd., 844 F.3d 1370 (Fed. Cir. 2017) (written description is key to indefiniteness inquiries)