Nintendo in patent win at Federal Circuit over Mii characters
The US Court of Appeals for the Federal Circuit affirmed the invalidation of a patent under the Alice standard, resulting in a win for Nintendo of America, the US subsidiary of games maker Nintendo.
The patent, US number 8,005,303, is called “Method and apparatus for encoding/decoding image data” and is owned by Texas-based RecogniCorp.
It teaches a method and apparatus for building a composite facial image using constituent parts.
In 2011, RecogniCorp sued Nintendo at the US District Court for the District of Oregon, Portland Division, alleging infringement through software included on the Nintendo Wii to create and customise a feature of a Mii character, avatars on Nintendo games.
The case was stayed in 2013, pending a re-examination by the US Patent and Trademark Office.
The re-examination focused on obviousness and resulted in several amended claims, including claim 1, said the Federal Circuit.
Upon completion of the re-examination in 2014, the district court lifted the stay and in March 2015 Nintendo filed a motion for judgment on the pleadings, asserting that the claims were ineligible under 35 USC, section 101.
In December that year, the district court granted Nintendo’s motion without issuing a claim construction ruling.
The district court followed the two steps of the Alice ruling, finding that the asserted claims were “directed to the abstract idea of encoding and decoding composite facial images using a mathematical formula”.
At Alice step two, the district court found that the ‘303 patent contains no inventive concept.
RecogniCorp appealed.
“We find that claim 1 is directed to the abstract idea of encoding and decoding image data,” said the Federal Circuit.
It then moved on to step two of Alice, searching for an “‘inventive concept’ sufficient to ‘transform the nature of the claim into a patent-eligible application’”.
RecogniCorp argued that the combination of claim elements, ie, the “particular encoding process using the specific algorithm disclosed” in the patent, “transforms” the abstract idea into a patentable invention.
But the Federal Circuit said that the claim elements don’t transform the nature of the patent claims into a patent-eligible application.
Ajay Singh, Nintendo of America’s director of litigation and compliance, said: “The decision marks another case in which Nintendo’s unique ideas overcame unjustified threats of patent infringement.”
He added: “Nintendo has a long history of developing innovative products and we will continue to vigorously defend all our products from meritless patent lawsuits.”
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