CAFC reverses ITC by 2-1 vote in One-E-Way case; lengthy dissent by CJ Prost

A finding of indefiniteness by the ITC was reversed:


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.


The ALJ and the ITC had found indefiniteness:


One-E-Way petitioned the Commission to review 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.



Festo AND Nautilus were cited:


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 (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., 134 S. Ct. 2120, 2128–29 (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 “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. at 2129. This test “mandates
clarity, while recognizing that absolute precision is
unattainable.” Id.



The CAFC noted:


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.



CJ Prost dissented:


In finding that the claim limitation-at-issue—
“virtually free from interference”—meets the definiteness
requirement, the majority relies primarily, if not 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., 134 S. Ct. 2120 (2014). It also flouts the wellestablished
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.



The CAFC Teva case is cited:



The parties agree that “virtually free from interference”
is a “term of degree.” Appellant’s Opening Br. 11;
Government’s Br. 19; Respondents’ Br. 13.2 Terms of
degree are not “inherently indefinite,” and “absolute or
mathematical precision is not required.” Interval Licensing
LLC v. AOL, Inc., 766 F.3d 1364, 1370 (Fed. Cir.
2014). Nevertheless, the claims, read in context “must
provide objective boundaries for those of skill in the art.”
Id. at 1371 (citing Nautilus, 134 S. Ct. at 2130 & n.8).
“[P]ast 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). But as noted above, the written description
is “key” to the indefiniteness inquiry for a term of
degree. Sonix, 844 F.3d at 1378;


The point of the dissent:


For the reasons explained by the majority (and contrary
to the Commission’s decision), I agree that the
prosecution history statement, read in context, is relevant
to the meaning of “virtually free from interference.” But I
disagree that it, alone or with the rest of the intrinsic
evidence, informs with the reasonable certainty needed to
satisfy the definiteness requirement.