Patent Law: Challenging the Patent Claim Definiteness Requirement

Introduction

On June 12, 2017, the United States Court of Appeals for the Federal Circuit (“Federal Circuit”) has issued a decision regarding the dispute between One E-Way, Inc. and the International Trade Commission (“ITC”). The case was triggered by One E-Way, Inc.’s initial accusation against 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 (“Respondents”) of two incidents of patent infringement, among other accusations. Previously, at the ITC level, the patent law case concluded with the International Trade Commission’s ruling that in the asserted patent the claim language “virtually free from interference” was indefinite. One E-Way, Inc. appealed the ITC decision in this case, One E-Way, Inc. v. International Trade Commission.

Background

One E-Way, Inc. v. Respondents addressed the patent claims outlining One E-Way’s design of “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.” The following is an excerpt from a representative One E-Way’s patent claim:

“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”

Both parties argued over whether or not “virtually free from interference” meets the definiteness requirement. The ITC’s final decision deemed the phrase as indefinite. In turn, One E-Way appealed the Commission’s decision, relaying the case to the Federal Circuit as One E-Way, Inc. v. International Trade Commission.

The Decision

Intrinsic evidence heavily served as the basis for the Federal Circuit’s decision in this patent case. Throughout the patent, it is repeatedly reported that private listening is “without interference.” The Federal Circuit held that, “[t]aken together, the specification makes clear that private listening is listening without interference from other users…the interference would cause one use to hear another user’s wireless transmissions, potentially interfering with the utility of a device.” Referring to a parent patent, “the applicant explained that the term ‘virtually free from interference’ results in the ability to listen without eavesdropping,” implying that that eavesdropping “is consistent with the purpose (‘private listening’) and mechanisms (separation of users by recognizing other transmissions as ‘noise’) disclosed in the patents.” Applicant also argues that interference is used as a non-technical term, dodging the requirement of defining concise boundaries. Lastly, “free from interference”—virtually eliminated—simply signifies that the functionality is “a little bit better than ‘virtually free from interference,’” but both straightforwardly imply private listening. Therefore, the Federal Circuit ruled in One E-Way’s favor: “virtually free from interference” satisfies the patent claim definiteness requirement, reversing the International Trade Commission’s previous decision. However, Chief Judge Prost dissented, expressing that intrinsic evidence alone should not have sufficed in demonstrating definiteness. Furthermore, Prost adds that the majority’s argument provided no clarification on the necessity of virtually—it neither broadens nor adds certainty to the patent claim scope.

Conclusion

The One E-Way, Inc. v. International Trade Commission case demonstrates again the importance of language terms used in crafting patent claims. It also shows once again that the effort of choosing the right patent claim terms is more an art than a science. Reasonable minds can differ when construing the meaning of patent claim terms. While virtually or similar terms may be used to for example attempt to make the patent claim scope broader (i.e., positive), their use may also expose the patent claim to a claim indefiniteness challenge (i.e., negative).

Full One E-Way, Inc. v. International Trade Commission decision can be read here: http://www.cafc.uscourts.gov/sites/default/files/opinions-orders/16-2105.Opinion.6-8-2017.1.PDF