In One-E-Way v. ITC, the Federal Circuit reversed the ITC's determination that the claim language "virtually free from interference" is indefinite, and remanded the case.
One-E-Way owns U.S. Patent Nos. 7,865,258 and 8,131,391, which are directed to a wireless digital audio system designed to let people use wireless headphones privately without interference, even when they are using wireless headphones in the same space. The patents share the same specification.
At the ITC, the parties disputed whether the term "virtually free from interference" was indefinite, and the ITC confirmed the administrative law judge's summary determination, reasoning that 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.’
On appeal, One-E-Way did not submit any extrinsic evidence to argue that “virtually free from interference” has any ordinary meaning to a person of ordinary skill in the art, so the indefiniteness inquiry therefore rests on the intrinsic evidence. One-E-Way argues that the term is definite as meaning 'free from eavesdropping,' in view of the specification and the prosecution history.
Reviewing the intrinsic evidence, the court directed its attention to the specification describing that "private listening" feature of the invention is listening without interference from other user's wireless audio transmission devices. The court also relied on a statement made by One-E-Way during prosecution of '885 patent that virtually eliminating interference could mean that eavesdropping cannot occur.
As a result, the majority decided that "virtually free from interference" is definite as meaning 'free from eavesdropping,' explaining that the term "virtually" does not expand the scope of the term "free from interference" without end because a system that permits eavesdropping is no longer captured by the asserted claims.