Nintendo controller lawsuit revived by Fed Circ
Videogame giant Nintendo must once again face claims that its Switch, Wii, and Wii controllers infringe a patent following a US Court of Appeals for the Federal Circuit's precedential decision to resurrect the case.
The circuit overturned a Washington state court’s granting of a summary judgment in favour of Nintendo, ruling that it wrongfully interpreted claims in Genuine Enabling Technology’s US patent 6,219,730—which Genuine said covered technology found in Nintendo’s controllers.
The patent covers “Method and apparatus for producing a combined data stream and recovering therefrom the respective user input stream and at least one additional input signal”.
The circuit panel agreed that the lower court placed too much importance on the inventor’s testimony of Genuine Enabling Technology’s patent claims during prosecution at the US Patent and Trademark Office (USPTO).
In its de novo review of the district court’s decision, the Federal Circuit said that for a statement made during prosecution to qualify as a disavowal of claim scope, the claim must be “so clear as to show reasonable clarity and deliberateness” and therefore be “so unmistakable as to be unambiguous evidence of disclaimer”.
The Federal Circuit held that the court had wrongfully construed the term “input signal” in the patent claims and reversed and remanded the lower court's decision.
Claim construction
Nintendo had asked the US District Court for the Western District of Washington to grant it a summary judgment of non-infringement predicated on claim construction of the term “input signal”.
Specifically, Nintendo argued its controllers used a specific type of “slow-varying signals” that the patent’s inventor, Nghi Nho Nguyen, had distinguished from his invention during earlier patent prosecution.
Genuine held that Nguyen had only made this distinction in relation to a prior patent, referred to as “Yollin”, purely on the grounds that the signals were “slow-varying” rather than “fast-varying” as described in the prior art.
The parties disagreed on whether Nguyen “disavowed claim scope beyond signals below the audio frequency spectrum”.
Genuine contended that the prosecution history clearly shows that Nguyen disclaimed “slow-varying” signals from the full scope of the term “input signal.”
The district court rejected Genuine’s argument that Nguyen had only distinguished Yollin on these grounds, and held that the patent only disclaimed “slow-varying signals below the audio frequency spectrum”, clearing Nintendo of its infringement charges.
On appeal, the Federal Circuit ruled that the district court erred in its construction of the term as a “ signal having an audio of higher frequency” and reversed the granting of a summary judgment and remanded the case for further proceedings.
The Appellate court said: “We conclude that the only disavowal of claim scope that is clear and unmistakable in the record before us is Nguyen’s disavowal of signals below the audio frequency spectrum.
“Nguyen repeatedly distinguished his inventions from Yollin on the grounds that Yollin taught ‘slow-varying signals’ whereas his inventions involved ‘audio or higher frequency signals. The examiner’s acceptance of that distinction and resulting decision to allow the claims suggest that Nguyen and the examiner reached an understanding on that point.”
Case history
Genuine Enabling Technology sued Nintendo and its US arm Nintendo of America in 2017 alleging that its Wii Remote, Nunchuck controller, WiiU gamepad, Switch Joy-Con and Switch Pro Controller contained functionality that infringe several claims of the ‘730 patent.
The case was later transferred to the US District Court for the Western District of Washington in March 2019.
Nintendo moved for summary judgment of non-infringement, which the court granted, holding that Nintendo’s analysis of the term “input signal” was consistent.
Genuine Technologies appealed the case to the Federal Circuit, claiming that the district court erred in construing the patent claims, and asked the appellate court to reverse the summary judgment ruling.
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