ITC Re-Opens Investigation in Response to Federal Circuit Reversal, ITC Blog

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In response to the Federal Circuit’s reversal of the ITC’s indefiniteness and invalidity finding, the Commission remanded the investigation to ALJ with instructions to issue an ID within 30 days.


Two years ago in Certain Wireless Headsets, Inv. No. 337-TA-943 the ALJ found the asserted claims of U.S. Patent Nos. 7,865,258 and 8,131,391 invalid as indefinite under 35 U.S.C. § 112, ¶2. Id., Order No. 17 (Sep. 21, 2015). On review, the Commission agreed with the ALJ that the limitation “virtually free from interference” was indefinite and, therefore, affirmed the ID. The Complainant One-E-Way appealed this decision to the U.S. Court of Appeals for the Federal Circuit (Appeal No. 2016-2105). The Federal Circuit reversed. One-E-Way, Inc. v. Int’l Trade Comm’n, 859 F.3d 1059 (Fed. Cir. 2017). The court held that the term “virtually free from interference” was not indefinite and could be construed, in light of the specification and prosecution history, as not allowing eavesdropping. See id. Therefore, the court reversed the Commission’s determination that the asserted claims are indefinite and remanded the matter to the Commission for further proceedings consistent with its opinion. Id. at 1067.

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