One-E-Way, Inc. v. International Trade Commission, 859 F.3d 1059 (2017)
`123 U.S.P.Q.2d 1090
`
`859 F.3d 1059
`United States Court of Appeals,
`Federal Circuit.
`
`ONE-E-WAY, INC., Appellant
`v.
`INTERNATIONAL TRADE COMMISSION, Appellee
`Sony Corporation, Sony Corporation of America,
`Sony Electronics, Inc., BlueAnt Wireless Pty, Ltd.,
`BlueAnt Wireless, Inc., Creative Technology Ltd.,
`Creative Labs, Inc., GN Netcom A/S, Intervenors
`
`2016-2105
`|
`Decided: June 12, 2017
`
`Synopsis
`Background: Patentee brought proceeding against
`competitors for infringement of patents for wireless
`digital audio system designed to allow private use of
`wireless headphones without interference. The United
`States International Trade Commission, No. 337-TA-943,
`2015 WL 13172716, construed patents and ruled them
`invalid. Patentee appealed.
`
`[Holding:] The Court of Appeals, Stoll, Circuit Judge, held
`that “virtually free from interference” was not indefinite,
`but rather meant that the claimed invention did not allow
`for eavesdropping.
`
`Reversed.
`
`Prost, Chief Judge, filed dissenting opinion.
`
`[2]
`
`[3]
`
`[4]
`
`[5]
`
`West Headnotes (8)
`
`[1]
`
`Customs Duties
`Mode of review
`Court of Appeals reviews de novo the
`International Trade Commission's grant
`of summary determination
`in a patent
`infringement proceeding.
`
`Cases that cite this headnote
`
`Patents
`Patentability and Validity
`Patent claim's indefiniteness is a question of
`law that Court of Appeals reviews de novo,
`subject to a determination of underlying facts.
`35 U.S.C.A. § 112.
`
`Cases that cite this headnote
`
`Patents
`Presumption of correctness in general
`Patents
`Degree of proof
`Court presumes that patents are valid, so any
`fact critical to a holding on indefiniteness
`must be proven by the challenger by clear and
`convincing evidence. 35 U.S.C.A. §§ 112, 282.
`
`1 Cases that cite this headnote
`
`Patents
`Ambiguity, Uncertainty, or
`Indefiniteness
`All patent claims suffer from the inherent
`limitations of language but must be precise
`enough to afford clear notice of what is
`claimed. 35 U.S.C.A. § 112.
`
`Cases that cite this headnote
`
`Patents
`Ambiguity, Uncertainty, or
`Indefiniteness
`As long as claim terms satisfy the test for
`indefiniteness, relative terms and words of
`degree do not render patent claims invalid. 35
`U.S.C.A. § 112.
`
`Cases that cite this headnote
`
`[6]
`
`Patents
`Ambiguity, Uncertainty, or
`Indefiniteness
`
` © 2017 Thomson Reuters. No claim to original U.S. Government Works.
`
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`One-E-Way, Inc. v. International Trade Commission, 859 F.3d 1059 (2017)
`123 U.S.P.Q.2d 1090
`
`[7]
`
`To determine whether a particular term is
`indefinite, one must bear in mind that patents
`are not addressed to lawyers, or even to the
`public generally, but rather to those skilled in
`the relevant art. 35 U.S.C.A. § 112.
`
`Cases that cite this headnote
`
`Patents
`Particular products or processes
`Patents
`Radio and telecommunications
`equipment
`“Virtually free from interference,” in patents
`for wireless digital audio system designed
`to allow private use of wireless headphones
`without interference, was not indefinite, but
`rather meant that the claimed invention did
`not allow for eavesdropping; claims named
`source of interference as signals transmitted
`by other wireless audio transmission devices,
`specification
`further stated
`that private
`listening was without
`interference
`from
`other users' wireless devices, and prosecution
`history of related patent
`indicated that
`“virtually free from interference” referred to
`ability to listen without eavesdropping. 35
`U.S.C.A. § 112.
`
`Cases that cite this headnote
`
`[8]
`
`Patents
`In general; utility
`US Patent 7,865,258, US Patent 8,131,391.
`Construed and Patentable.
`
`JAHANSOUZ, ALAN GRAYSON LAQUER,
`PAYSON J. LEMEILLEUR.
`
`MEGAN MICHELE VALENTINE, Office of the
`General Counsel, United States International Trade
`Commission, Washington, DC, argued for appellee. Also
`represented by DOMINIC L. BIANCHI, WAYNE W.
`HERRINGTON.
`
`JOHN FLOCK, Andrews Kurth Kenyon LLP, New
`York, NY, argued for all intervenors. Intervenors
`Sony Corporation, Sony Corporation of America,
`Sony Electronics, Inc., also represented by KSENIA
`TAKHISTOVA; PAUL T. QUALEY, AIMEE
`NOELLE SOUCIE, Washington, DC.
`
`DUANE H. MATHIOWETZ, LeClair Ryan, San
`Francisco, CA, for intervenors BlueAnt Wireless Pty,
`Ltd., BlueAnt Wireless, Inc. Also represented by
`PATRICIA LYNN PEDEN.
`
`JONATHAN DANIEL BAKER, Farney Daniels PC,
`San Mateo, CA, for intervenors Creative Technology
`Ltd., Creative Labs, Inc. Also represented by MICHAEL
`D. SAUNDERS, GURTEJ SINGH.
`
`WILLIAM B. NASH, Haynes and Boone LLP, San
`Antonio, TX, for intervenor GN Netcom A/S. Also
`represented by JASON WAYNE WHITNEY; GLENN
`WESTREICH, San Jose, CA.
`
`Before Prost, Chief Judge, Wallach, and Stoll, Circuit
`Judges.
`
`Opinion
`
`Dissenting opinion filed by Chief Judge Prost.
`
`Cases that cite this headnote
`
`Stoll, Circuit Judge.
`
`*1060 Appeal from the United States International
`Trade Commission in Investigation No. 337-TA-943.
`
`Attorneys and Law Firms
`
`DOUGLAS GLEN MUEHLHAUSER, Knobbe,
`Martens, Olson & Bear, LLP, Irvine, CA, argued
`for appellant. Also
`represented by CAMERON
`
`The International Trade Commission found the claim
`term “virtually free from interference” indefinite and
`invalidated the asserted claims of One-E-Way's patents.
`Because we conclude that the term “virtually free from
`interference,” as properly interpreted in light of the
`specification and prosecution history, would inform a
`person of ordinary skill in the art about the scope of the
`invention with reasonable certainty, we reverse.
`
` © 2017 Thomson Reuters. No claim to original U.S. Government Works.
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`One-E-Way, Inc. v. International Trade Commission, 859 F.3d 1059 (2017)
`123 U.S.P.Q.2d 1090
`
`BACKGROUND
`
`I.
`
`One-E-Way filed a complaint with the International
`Trade Commission 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.
`
`II.
`
`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. 1 The specification *1061 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.” Id. at
`col. 1 ll. 15–49. The specification further explains that
`the prior art “audio systems ma[de] use of electrical wire
`connections between the audio source and the headphones
`to accomplish private listening to multiple users.” Id. at
`col. 1 ll. 40–42.
`
`1
`
`Because the '258 and '391 patents share the same
`specification, we cite only to the '258 patent, with the
`understanding that these citations also refer to the
`corresponding sections of the '391 patent.
`
`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. Id. at col.
`3 ll. 16–18. It further suggests processing the signal
`with a fuzzy logic detection subsystem to enhance signal
`clarity. Id. at col. 3 ll. 40–43, 56–59. 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.” Id. at col. 3
`ll. 28–32.
`
`III.
`
`At the Commission, the parties disputed whether the claim
`term “virtually free from interference” was indefinite.
`While the term is present in all the asserted claims, we
`reproduce claim 8 of the '258 patent below as illustrative:
`
`8. A portable wireless digital audio system for digital
`transmission of an original audio signal representation
`from a portable audio source to a digital audio
`headphone, said portable wireless digital audio system
`comprising:
`
`a portable digital audio transmitter configured to
`couple to said portable audio source and transmitting
`a unique user code bit sequence with said original
`audio signal representation in packet format, said
`digital audio transmitter comprising:
`
`an encoder operative to encode said original
`audio signal representation to reduce intersymbol
`interference; and
`
`a digital modulator configured for independent code
`division multiple access (CDMA) communication
`operation; and said portable digital audio transmitter
`configured for direct digital wireless communication
`with said digital audio headphone, said digital audio
`headphone comprising:
`
`a direct conversion module configured to capture
`packets embedded in the received spread spectrum
`signal, the captured packets corresponding to the
`unique user code bit sequence;
`
`a digital demodulator configured for independent
`CDMA communication operation;
`
`a decoder operative to decode the applied reduced
`intersymbol interference coding of said original audio
`signal representation;
`
` © 2017 Thomson Reuters. No claim to original U.S. Government Works.
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`One-E-Way, Inc. v. International Trade Commission, 859 F.3d 1059 (2017)
`123 U.S.P.Q.2d 1090
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`a digital-to-analog converter (DAC) generating
`an audio output of said original audio signal
`representation; and
`
`a module adapted to reproduce said generated
`audio output, said audio having been wirelessly
`transmitted from said portable audio source virtually
`free from interference from device transmitted signals
`operating in the portable wireless digital audio system
`spectrum.
`
`Id. at col. 7 l. 62 – col. 8 l. 27 (emphasis added).
`
`*1062 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.” J.A. 11454.
`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.” J.A. 12927. The ALJ conducted a
`claim construction hearing and issued a decision finding
`“virtually free from interference” indefinite under 35
`U.S.C. § 112. J.A. 12921–30.
`
`Respondents filed a motion for summary determination
`that the term “virtually free from interference” is
`indefinite, which the ALJ granted. J.A. 6–93. 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.” J.A. 87. 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.” J.A. 88.
`
`to review
`the Commission
`One-E-Way petitioned
`the ALJ's summary-determination order. J.A. 2. The
`Commission agreed with the ALJ that “virtually free from
`interference” was indefinite. Id. The Commission thus
`affirmed the ALJ's order.
`
`One-E-Way appealed. We have jurisdiction under 28
`U.S.C. § 1295(a)(6).
`
`DISCUSSION
`
`[3] We review the Commission's grant of
`[2]
`[1]
`
`
`summary determination de novo. Amgen, Inc. v. Int'l
`Trade Comm'n, 565 F.3d 846, 849 (Fed. Cir. 2009).
`“Indefiniteness is a question of law that we review de
`novo, subject to a determination of underlying facts.”
`Akzo Nobel Coatings, Inc. v. Dow Chem. Co., 811 F.3d
`1334, 1343 (Fed. Cir. 2016) (internal citation omitted).
`We presume that patents are valid, so “[a]ny fact critical
`to a holding on indefiniteness ... must be proven by
`the challenger by clear and convincing evidence.” Cox
`Commc'ns, Inc. v. Sprint Commc'n Co. LP, 838 F.3d 1224,
`1228 (Fed. Cir. 2016) (alteration in original) (quoting Intel
`Corp. v. VIA Techs., Inc., 319 F.3d 1357, 1366 (Fed. Cir.
`2003)); see also 35 U.S.C. § 282.
`
`I.
`
`[4] The Patent Act requires inventors to claim their
`invention in “full, clear, concise, and exact terms.” 35
`U.S.C. § 112. This indefiniteness requirement is “part
`of the delicate balance the law attempts to maintain
`between inventors, who rely on the promise of the law to
`bring the invention forth, and the public, which should
`be encouraged to pursue innovations, creations, and
`new ideas beyond the inventor's exclusive rights.” Festo
`Corp. v. Shoketsu Kinzoku Kogyo Kabushiki Co., 535
`U.S. 722, 731, 122 S.Ct. 1831, 152 L.Ed.2d 944 (2002).
`This 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.” Nautilus, Inc. v. Biosig Instruments, Inc., –––
`U.S. ––––, 134 S.Ct. 2120, 2128–29, 189 L.Ed.2d 37 (2014).
`This balance permits “[s]ome modicum of uncertainty”
`to “ensur[e] the appropriate incentives for innovation,”
`but it also provides a “meaningful definiteness check”
`to prevent patent applicants from *1063 “inject[ing]
`ambiguity into their claims.” Id. (internal quotations
`omitted). Recognizing this balance, the Supreme Court
`articulated the test for indefiniteness as “requir[ing] that
`a patent's claims, viewed in light of the specification and
`prosecution history, inform those skilled in the art about
`the scope of the invention with reasonable certainty.” Id.
`
` © 2017 Thomson Reuters. No claim to original U.S. Government Works.
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`
`at 2129. This test “man-dates clarity, while recognizing
`that absolute precision is unattainable.” Id.
`
`disclosures, the court concluded that “substantially
`centered” was not indefinite. Id.
`
` [6] As long as claim terms satisfy this test, relative
`[5]
`terms and words of degree do not render patent claims
`invalid. Interval Licensing LLC v. AOL, Inc., 766 F.3d
`1364, 1370 (Fed. Cir. 2014). To determine whether a
`particular term is indefinite, “[o]ne must bear in mind ...
`that patents are ‘not addressed to lawyers, or even to the
`public generally,’ but rather to those skilled in the relevant
`art.” Nautilus, 134 S.Ct. at 2128–29 & n.5 (quoting
`Carnegie Steel Co. v. Cambria Iron Co., 185 U.S. 403,
`437, 22 S.Ct. 698, 46 L.Ed. 968 (1902), and citing Eibel
`Process Co. v. Minn. & Ont. Paper Co., 261 U.S. 45, 58,
`65–66, 43 S.Ct. 322, 67 L.Ed. 523 (1923)). For example,
`in 1923, the Supreme Court “uph[eld] as definite a patent
`for an improvement to a paper-making machine, which
`provided that a wire be placed at a ‘high’ or ‘substantial
`elevation.’ ” Nautilus, 134 S.Ct. at 2129 n.5 (citing Eibel
`Process, 261 U.S. at 58, 43 S.Ct. 322). The Court explained
`that these relative terms—“substantial” and “high”—were
`sufficiently definite because “ ‘readers ... skilled in the
`art of paper making and versed in the use of the ...
`machine’ would have ‘no difficulty ... in determining ... the
`substantial [elevation] needed’ for the machine to operate
`as specified.” Id. (quoting Eibel Process, 261 U.S. at 65–
`66, 43 S.Ct. 322).
`
`This historical practice continues today. In one of our
`post-Nautilus decisions, we upheld as definite a claim
`that employed the relative term “substantially centered.”
`Apple Inc. v. Samsung Elecs. Co., 786 F.3d 983, 1002
`(Fed. Cir. 2015), rev'd and remanded on other grounds, –––
`U.S. ––––, 137 S.Ct. 429, 196 L.Ed.2d 363 (2016). The
`claim term, used in a patent relating to a user-interface
`feature, required that a selected portion of an electronic
`display be enlarged and “substantially centered” on the
`display. Id. (quoting U.S. Patent No. 7,864,163 (Claim
`50)). The patent challenger had failed to adduce any
`evidence showing that the person of ordinary skill would
`lack reasonable certainty in the claim's scope, while the
`patent owner had presented expert testimony that skilled
`artisans would interpret “substantially centered” in the
`patent “to mean essentially centered except for a marginal
`spacing to accommodate ancillary graphical user interface
`elements.” Id. at 1003. Moreover, the expert's suggested
`interpretation of “substantially centered” paralleled the
`patent specification's disclosure. Id. Relying on these
`
`II.
`
`[7] Here, we must determine whether the term “virtually
`free from interference” is indefinite. 2 The Commission
`determined that the term is indefinite, and both the
`Government and Respondents urge affirmance of that
`conclusion on appeal. One-E-Way proposes that the
`claim term, viewed in light of the specification and
`prosecution *1064 history, should be interpreted to
`mean “free from interference such that eavesdropping
`on device transmitted signals operating in the ... wireless
`digital audio system spectrum cannot occur.” J.A. 11454;
`Appellant Br. 13. Put simply, One-E-Way proposes that
`“virtually free from interference” prevents one user from
`eavesdropping on another. We agree.
`
`2
`
`While the parties both focus their argument on
`whether the term “virtually free from interference”
`is indefinite, the entire disputed claim term differs
`slightly in each of the asserted claims, but it takes
`the following general form: “virtually free from
`interference from device transmitted signals operating
`in the [wireless digital audio system] spectrum.” J.A.
`11454.
`
`A.
`
`First, the claims require that the system user's audio is
`“virtually free from interference” from signals transmitted
`by other users' wireless audio transmission devices.
`For example, claim 8 of the '258 patent requires a
`“digital audio system comprising ... a module adapted
`to reproduce ... generated audio output, said audio
`having been wirelessly transmitted from said portable
`audio source virtually free from interference from device
`transmitted signals operating in the portable wireless
`digital audio system spectrum.” '258 patent col. 7 l. 62—
`col. 8 l. 47 (Claim 8) (emphasis added). This claim requires
`that the headphone's audio output be “virtually free from
`interference.” And the claim names the source of this
`interference: signals transmitted by other wireless audio
`transmission devices.
`
`That the claims require a listener's audio enjoyment to
`be “virtually free from interference” from other wireless-
`
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`headphone listeners is not surprising, particularly in light
`of the specification's disclosure. As explained above,
`the specification discloses a system that enables wireless
`headphone users to enjoy their audio privately, without
`interference.
`
`The specification repeatedly highlights this private-
`listening feature of the claimed invention. And in each
`repetition, the specification states that private listening is
`“without interference” from other users' wireless audio
`transmission devices. For instance, the background of
`the invention emphasizes that the prior art needs a
`system like the one disclosed in the '258 patent capable
`of “private listening without interference where multiple
`users occupying the same space are operating wireless
`transmission devices.” Id. at col. 1 ll. 38–40. The
`summary of the invention touts the claimed invention as
`being capable of “private listening without interference
`from other users or wireless devices.” Id. at col. 1
`ll. 64–67. The detailed description additionally features
`an embodiment capable of private listening “without
`interference from any other receiver headphone ... user,
`even when operated within a shared space.” Id. at col.
`3 ll. 30–32. And the abstract underscores the patented
`system's ability to deliver “private audio enjoyment
`without interference from other users of independent
`wireless digital transmitters and receivers sharing the same
`space.” Id. at Abstract.
`
`Taken together, the specification makes clear that private
`listening is listening without interference from other users.
`In other words, the interference would cause one user
`to hear another user's wireless transmissions, potentially
`interfering with the utility of a device. The patented
`invention sought to prevent such interference, making it
`possible for wireless-headphone users to listen in private.
`Id. at col. 1 ll. 43–49.
`
`B.
`
`confirms One-E-Way's
`The prosecution history
`interpretation of “virtually free from
`interference.”
`During prosecution of the related parent patent, 3 the
`applicant *1065 explained that the term “virtually free
`from interference” results in the ability to listen without
`eavesdropping:
`
`As is agreed to by the Applicant and
`Examiner, most recently discussed
`during the teleconference with the
`Examiner on June 3, 2009, Lavelle
`[prior art] does not teach, disclose,
`or suggest such a relationship where
`interference is virtually eliminated
`(e.g. where eavesdropping cannot
`occur) where multiple receivers
`and transmitters occupy the same
`environment.
`
`J.A. 15271 (emphasis added).
`
`3
`
`We have often held that the meaning of claim terms
`in one patent can be informed by statements made
`during prosecution of other patents in the same
`family. We have explained, for example, that “past
`and future prosecution of related patents may be
`relevant to the construction of a given claim term.”
`Teva Pharm. USA, Inc. v. Sandoz, Inc., 789 F.3d 1335,
`1343 n.5 (Fed. Cir. 2015).
`
`The parties dispute, however, the relevance of this
`statement in the prosecution history. The Government
`and Respondents assert that this prosecution history
`statement is irrelevant to the meaning of “virtually
`free from interference” because it was made by the
`applicant regarding claims reciting the term “free
`from interference,” rather than “virtually free from
`interference.” J.A. 15271 (discussing amendments to
`claims 24–27 in parent patent application 12/144,729).
`Because the prosecution history statement referred to
`“virtually free from interference” and the claims referred
`to “free from interference,” the ALJ found “it impossible
`to agree with Complainant that one of ordinary skill in
`the art would conclude that the applicant was providing
`guidance as to the meaning and scope of a different
`limitation (i.e., ‘virtually free from interference’).” J.A. 10.
`
`We conclude, however, that the person of ordinary skill
`would have found this statement in the prosecution
`history instructive. First, the “free from interference”
`claims were not the only ones pending at the time
`applicants filed the response. Rather, there were other
`pending claims reciting “virtually free from interference,”
`namely already-allowed claims 12 and 16. J.A. 15296,
`15329–31.
`
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`One-E-Way, Inc. v. International Trade Commission, 859 F.3d 1059 (2017)
`123 U.S.P.Q.2d 1090
`
`Moreover, the very language of the prosecution history
`statement employs the term “virtually.” The applicant
`stated that Lavelle does not teach that “interference is
`virtually eliminated (e.g. where eavesdropping cannot
`occur).” J.A. 15271. On
`its face, this statement
`suggests that interference, virtually eliminated, results in
`listening without eavesdropping. As noted above, this
`understanding is entirely consistent with the specification,
`which suggests that “free from interference” provides
`private listening. See '258 patent col. 1 ll. 64–67. This
`understanding is also consistent with the testimony of
`One-E-Way's technical expert, who explained that “[t]he
`concept of a user not being able to eavesdrop on the
`device transmissions of another user is consistent with
`the purpose (‘private listening’) and the mechanisms
`(separation of users by recognizing other transmissions as
`‘noise’) disclosed in the patents.” J.A. 12922 (alteration
`in original) (ALJ's order construing terms of the asserted
`patents and acknowledging expert testimony).
`
`The context of the prosecution history does not man-date
`a different reading. The examiner had rejected the claims
`over Lavelle. Lavelle, according to the applicant, did not
`disclose the claimed audio “free from interference.” That
`might have been enough for the applicant's amendment to
`succeed, but the applicant appears to have made an even
`bolder claim, namely that Lavelle is not even “virtually
`free from interference,” let alone totally free. In other
`words, Lavelle does not meet the “free from interference”
`claim term because it *1066 does not disclose listening
`that is even virtually free.
`
`C.
`
`have no relevant figures relating to levels of interference.”
`J.A. 12923 (ALJ's summary of Respondents' position).
`
`While One-E-Way did not define the scope of the term
`“virtually free from interference” in a technical sense as
`both the ALJ and Respondents would seemingly require,
`the lack of a technical definition does not render the
`term indefinite. As demonstrated by the specification and
`prosecution history discussed above, the applicant used
`the term “interference” in a non-technical manner to
`simply mean that the wireless headphone user is able
`to listen without eavesdropping. This interpretation is
`consistent with the specification and prosecution history
`and provides a clear line such that it informs those skilled
`in the art about the scope of the invention with reasonable
`certainty. For the purposes of definiteness, the term is not
`required to have a technical measure of the amount of
`interference.
`
`D.
`
`Finally, we consider the Government and Respondent's
`claim that “virtually free from interference” must be
`indefinite because One-E-Way fails to identify how it
`differs in scope from claims that recite the term “free from
`interference.”
`
`At the outset, we note that One-E-Way has not asserted
`claims that recite the term “free from interference” here.
`The asserted claims recite only “virtually free from
`interference.” We are aware of no precedent requiring us
`to construe the “free from interference” term where, as
`here, the term is absent from any asserted claim.
`
`Respondents further argue that the term “virtually free
`from interference” does not “inform one of ordinary skill
`in the art as to any particular level of interference or as
`to how much interference is permitted.” Intervenors' Br.
`13. The ALJ similarly found that the term “is indefinite ...
`because one of ordinary skill in the art would not be
`able to discern with reasonable certainty what amount
`or level of interference constitutes ‘virtually free from
`interference.’ ” J.A. 12925 (ALJ's order construing terms
`of the asserted patents). This finding was based in part
`on Respondents' assertion “that there are known ways to
`define levels of interference in the ISM band, such as signal
`to noise ratios, packet errors and bit rate errors, but that
`the specifications give no examples or descriptions and
`
`Nevertheless, without deciding the meaning of the term
`“free from interference,” an understanding of the relative
`meaning of these terms is readily apparent. Both terms
`relate, of course, to the ultimate aim of the patented
`invention: providing private listening without interference
`from signals transmitted by other users' wireless audio
`transmission devices. E.g., '258 patent, Abstract. As we
`have explained, the claims, specification, and prosecution
`history show that “virtually free from interference” means
`the ability to listen without eavesdropping such that a
`user is not able to listen to another user's transmissions
`in the wireless digital audio system spectrum. When the
`patented system works, the listener will, for example,
`hear only their music, but not that of others. The
`
` © 2017 Thomson Reuters. No claim to original U.S. Government Works.
`
`7
`
`SONY Exhibit - 1005 - 0007
`
`

`

`One-E-Way, Inc. v. International Trade Commission, 859 F.3d 1059 (2017)
`123 U.S.P.Q.2d 1090
`
`claims recite this listening-without-eavesdropping feature
`as audio “virtually free from interference.”
`
`Audio “free from interference” will be a bit better than
`audio “virtually free from interference,” in the same way
`something “free from defects” will be a bit better than
`something “substantially” or “virtually *1067 free from
`defects.” It follows that one of ordinary skill might expect
`that because audio “virtually free from interference” is
`free from eavesdropping, audio “free from interference”
`will be, at a minimum, free from eavesdropping as well.
`
`CONCLUSION
`
`We conclude that a person of ordinary skill in the art,
`viewing the claim term “virtually free from interference”
`in light of the specification and prosecution history, would
`be informed of the scope of the invention with reasonable
`certainty. While we note that “virtually” is a term of
`degree, one that slightly expands the scope of the term
`“free from interference,” the inclusion of “virtually” in
`these claims does not render them indefinite. See Eibel
`Process, 261 U.S. at 58, 43 S.Ct. 322. The term “virtually”
`does not expand “free from interference” without end: it
`simply requires that the claimed invention does not allow
`for eavesdropping. A system that permits eavesdropping
`is no longer “free” or “virtually free from interference”;
`that system is no longer captured by the asserted patents'
`claims. Thus, the term “virtually free from interference”
`satisfies the requirements of § 112 ¶ 2.
`
`We reverse the Commission's determination that the
`asserted claims are
`indefinite and remand to the
`Commission for further proceedings consistent with this
`opinion.
`
`REVERSED AND REMANDED
`
`COSTS
`
`Costs to Appellant.
`
`Prost, Chief Judge, dissenting.
`In finding that the claim limitation-at-issue—“virtually
`free
`from
`interference”—meets
`the
`definiteness
`
`if not
`requirement, the majority relies primarily,
`exclusively, on a single, non-definitional remark from
`the prosecution history and ignores intrinsic evidence
`that injects ambiguity. The written description lacks any
`reference to the disputed limitation. And One-E-Way does
`not submit that the limitation-at-issue has any ordinary
`meaning to a skilled artisan.
`
`By relying so heavily on the cherry-picked prosecution
`remark, the majority's decision significantly relaxes
`the
`law on
`indefiniteness against the tide of the
`Supreme Court's recent decision in Nautilus, Inc. v.
`Biosig Instruments, Inc., ––– U.S. ––––, 134 S.Ct.
`2120, 189 L.Ed.2d 37 (2014). It also flouts the well-
`established principle that “the written description is key
`to determining whether a term of degree is indefinite.”
`Sonix Tech. Co. v. Publ'ns Int'l, Ltd., 844 F.3d 1370, 1378
`(Fed. Cir. 2017). Even if it may be possible to “ascribe
`some meaning” to the disputed limitation, the Supreme
`Court has held that more is required. Nautilus, 134 S.Ct.
`at 2130. Here, the intrinsic evidence falls well short of
`providing a skilled artisan “reasonable certainty” about
`the metes and bounds of the disputed limitation, especially
`as distinguished from the narrower limitation “free from
`interference” (without the modifier “virtually”). Id. at
`2124.
`
`I therefore respectfully dissent from the majority's
`conclusion reversing the Commission's indefiniteness
`determination.
`
`I
`
`Under the definiteness requirement, a patent applicant
`must conclude the specification with “one or more claims
`particularly pointing out and distinctly claiming the
`subject matter which the applicant regards *1068 as his
`invention.” 1 35 U.S.C. § 112, ¶ 2. The Supreme Court
`has explained that this requirement serves an important
`notice function, ensuring that a patent “appris[es] the
`public of what is still open to them.” Nautilus, 134 S.Ct.
`at 2129 (quoting Markman v. Westview Instruments, Inc.,
`517 U.S. 370, 373, 116 S.Ct. 1384, 134 L.Ed.2d 577
`(1996)). It should also serve as a “meaningful ... check”
`against “foster[ing] [an] innovation-discouraging ‘zone of
`uncertainty.’ ” Id. at 2129–30 (quoting United Carbon Co.
`v. Binney & Smith Co., 317 U.S. 228, 236, 63 S.Ct. 165,
`87 L.Ed. 232 (1942)). In resolving the level of precision
`
` © 2017 Thomson Reuters. No claim to original U.S