Federal Circuit hands down mixed Nintendo ruling
The US Court of Appeals for the Federal Circuit handed a partial win to Nintendo last week, in the game maker’s dispute with technology company iLife Technologies.
On Wednesday, December 27, the Federal Circuit reversed and remanded part of the Patent Trial and Appeal Board’s (PTAB) ruling on a patent covering a movement sensor.
The patent, US number 6,864,796, claims a system for sensing and evaluating a person’s movement, and is owned by iLife Technologies.
The court’s decision is the latest development in the bout between the parties.
In September, a jury at the US District Court for the Northern District of Texas ruled in favour of iLife over the technology used in the Nintendo Wii (a games console), ordering Nintendo to pay more than $10 million in damages.
The following month, iLife asked the district court to award an extra $15 million in interest to the $10 million it won against Nintendo for patent infringement.
Nintendo had petitioned for inter partes review, alleging that claims 1–3, 9–12, and 18–20 of the patent were unpatentable in light of Japanese patent publication number H10-295649 (Yasushi), which was published in August 1998.
iLife had argued that Yasushi was not prior art, and the PTAB agreed, finding that the challenged claims of the patent were adequately supported by the written description of its “grandparent” application.
It also found that the inventors of the iLife patent produced a working prototype by August 1998— when Yasushi was published—that fell within the scope of all of the challenged claims.
According to the Federal Circuit, substantial evidence supports the board’s finding that the grandparent application provides sufficient disclosure of the subject matter of the challenged claims, so the court affirmed that finding.
“However, only for some, but not all, of the challenged claims is there substantial evidence supporting the board’s finding that the inventors’ 1998 working prototype reduced the claims to practice,” the court said.
Because of this, the court reversed and remanded for the board to consider Yasushi as a prior art reference for the claims reciting elements that weren’t contained in the working prototype.
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