Virtually Free from Interference Adequately Defines the Scope of Patent Claims, Not Indefinite

The Court of Appeals for the Federal Circuit reversed a decision from the International Trade Commission (ITC) and found that claim language ”virtually free from interference” was adequately described in the patent specification to such a degree that a person skilled in the art would be informed about the scope of the invention with reasonable certainty.  One-E-Way, Inc. v. International Trade Commission (ITC), Case No. 2016-2105 (Fed. Cir. June 12, 2017).  (Available Here).

The ITC found the claim term ”virtually free from interference” was indefinite under 35 U.S. C.  sec. 112, and invalidated the asserted claims of One-E-Way’s patent.  The patent disclosed 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 patented improvement enabled 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.”
Relevant portions of the claim were: “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 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.” 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 (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.

Per the Federal Circuit: “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). 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).
As another example, the Court pointed to Apple Inc. v. Samsung Elecs. Co., 786 F.3d 983, 1002 (Fed. Cir. 2015), rev’d and remanded on other grounds, 137 S. Ct. 429 (2016), wherein the disputed 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.  The patent “to mean essentially centered except for a marginal spacing to accommodate ancillary graphical user interface elements.”  The Court in that case found that the “substantially centered” was adequately described such that a person of ordinary skill in the art would understand the scope of the claim.

One-E-Way argued that the claim term, viewed in light of the specification and prosecutionhistory, 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.”  The Court stated: “Put simply, One-E-Way proposes that ‘virtually free from interference’ prevents one user from eavesdropping on another.”  This claim limitation – virtually free from interference – did clearly define the scope of the invention.

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