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One-E-Way, Inc. v. International Trade Commission

Claim Using Term in “Non-Technical Manner” Survives Indefiniteness Challenge

One-E-Way, Inc. v. International Trade Commission, (Fed. Cir. June 12, 2017) (Prost (dissenting), Wallach, STOLL) (USITC) (3 of 5 stars)

Fed Cir reverses summary determination of invalidity for indefiniteness. One-E-Way’s patents related to wireless headphones that would not interfere with one another, even in crowded spaces. The term “virtually free from interference” was not indefinite; read in the context of the file history and specification it means that One-E-Way’s system would prevent one user from eavesdropping on another. The opinion recites support from the specification, and notes that in the file history the applicant had specifically written that an example of “virtually eliminating” interference was that eavesdropping could not occur. The opinion rejects argument from Sony (with the other parties that were respondents in the ITC investigation) that the claim failed to teach how much interference was permitted, reasoning that the use of the term “interference” was “in a non-technical manner to simply mean” secure from eavesdropping. The opinion also rejects the argument that One-E-Way failed to establish how “virtually free from interference” differed from “free from interference,” which was in other, unasserted claims. The opinion reasons, “Audio ‘free from interference’ will be a be a bit better than audio ‘virtually free from interference,’” and so audio “free from interference” would be “at a minimum, free from eavesdropping as well.” Op. at 15.

Dissent: Chief Judge Prost would have affirmed the Commission’s indefiniteness term, and criticizes the majority for relying entirely on “a single, non-definitional remark from the prosecution history and ignor[ing] intrinsic evidence that injects ambiguity.” Concur. at 1.

KEYWORDS: INDEFINITENESS (NO); ONE-E-WAY, INC.; INTERNATIONAL TRADE COMMISSION