Douglas G. Muehlhauser

Last June, Muehlhauser scored a comeback win at the U.S. Court of Appeals for the Federal Circuit in a case involving major players in the wireless audio industry for client One-E-Way Inc.

“The company is a small tech outfit in Pasadena that makes wireless headphones,” Muehlhauser said. “The founder is a USC electrical engineer who came up with a way to eliminate interference even when several people are using the phones in the same space.”

The invention became a big deal when Bluetooth adopted the founder’s technology without realizing he had patented the invention, Muehlhauser said, and then joined with others including Sony Corp., Jabra Corp., Jawbone and Sennheiser electronic GmbH & Co. KG to ask the U.S. International Trade Commission to declare the patents invalid.

Their argument: The patents failed due to indefiniteness under a 2014 U.S. Supreme Court standard that barred ambiguous, indefinite patent claims because One-E-Way’s claim language used the phrase “virtually free from interference” and “virtually” is ambiguous and indefinite.

“They hung their hats on that phrase to try to strike down the patents,” Muehlhauser said, “and the ITC judge granted summary judgment of indefiniteness against One-E-Way, rendering all of the asserted patents invalid.”

He explained that following the high court’s opinion in Nautilus Inc. v. Biosig Instruments Inc., there had been few cases interpreting the language of indefiniteness, meaning little guidance for courts. Muehlhauser sought review and the ITC affirmed.

“That made things pretty tough, but we found one piece of touchstone guidance so we could pursue an appeal before the Federal Circuit,” he said.

The key came in the history of the patent, in which patent examiners compared the invention to prior art and used the disputed phrase on the record. “That was extremely important to us,” Muehlhauser said. “The headphones eliminate interference so that eavesdropping cannot occur. We argued that an audio engineer would know what this means.”

Muehlhauser argued the appeal before a circuit panel and waited two years for a precedential reversal in favor of his client. One-E-Way Inc. v. International Trade Commission, 859 F.3rd 1059 (Fed. Cir., filed Sept. 4, 2015).

“It was the most intense oral argument I’ve ever been involved in,” Muehlhauser said. “There was one question after another. They really explored how someone skilled in the audio field would understand the phrase. I’ve never had 15 minutes go by so fast.”

— John Roemer