from the United States International Trade Commission in
Investigation No. 337-TA-943.
Douglas Glen Muehlhauser, Knobbe, Martens, Olson & Bear,
LLP, Irvine, CA, argued for appellant. Also represented by
Cameron Jahansouz, Alan Grayson Laquer, Payson J. Lemeilleur.
Michele Valentine, Office of the General Counsel, United
States International Trade Commission, Washington, DC, argued
for appellee. Also represented by Dominic L. Bianchi, Wayne
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,
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.
Prost, Chief Judge, Wallach, and Stoll, Circuit Judges.
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.
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
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. The specification 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.
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.
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
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
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
a decoder operative to decode the applied reduced intersymbol
interference coding of said original audio signal
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).
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.
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.
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.
appealed. We have jurisdiction under 28 U.S.C. ...