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.

In response to the Federal Circuit’s decision, the Commission remanded the investigation to the presiding ALJ with instructions to (1) apply the Federal Circuit’s precedent; and (2) issue a final initial remand determination on violation.  Certain Wireless Headsets, Inv. No. 337-TA-943, Order (Oct. 13, 2017).  The Commission gave the ALJ 30 days to issue an ID “setting a target date as he deems necessary to accommodate the remand proceedings, allowing four months for Commission review.”  Id.


The Federal Circuit has exclusive jurisdiction over appeals of ITC Section 337 decisions pursuant to 28 U.S.C. § 1295(a)(6).  When compared to district courts, the Federal Circuit rarely reverses the ITC’s claim interpretations.  In this case, however, the court disagreed with the Commission’s finding of indefiniteness.  The Commission has now re-opened the investigation, and will determine if Section 337 has been violated under the claim construction guidance from the court.  The remand may result in an exclusion order entered over three years after the investigation was first instituted in January of 2015—about double the length of the average investigation in 2017.[1]


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Blaney Harper, who co-chairs the Firms intellectual property ITC practice, focuses on strategic patent litigation representing electronics, software, and information technology companies in matters such as patent enforcement in United States District Courts and the International Trade Commission (ITC). Blaney also represents and counsels clients concerning patent portfolio development and patent prosecution and appeal, including Inter Partes Review, in the USPTO. Blaney co-chairs the Firm's ITC practice and is the IP Practice Coordinator for the Washington Office.