IP Law Daily, PATENT—Fed. Cir.: Suit accusing Nintendo game controllers of infringing user interface device reinstated, (Apr 1, 2022)

By Thomas K. Lauletta, J.D.

For purposes of deciding the impact of prior art, the district court erred in interpreting a key claim term and concluding that statements made by the patent owner during claim construction had limited the scope of the claim term.

The U.S. Court of Appeals for the Federal District overruled a U.S. district court decision granting summary judgment to Nintendo, which Genuine Enabling Technology alleged had infringed its registered patent for controlling data streams. In a dispute assessing the impact of prior art on the patent, the appellate court held that the lower court had improperly relied on extrinsic evidence to construe the meaning of the claim term “input signal,” and to determine that the patent holder had disclaimed the claim scope during patent prosecution. The decision of the district court was reversed and remanded (Genuine Enabling Technology LLC v. Nintendo Co., Ltd., April 1, 2022, Reyna, J.).

Inventor Nghi Nho Nguyen owns U.S. Patent No. 6,219,730 (the ’730 patent), which involves a user interface device (UID) intended to solve a "collision problem" that occurs when slow-varying and fast-varying user input signals are transmitted to a computer together and collide, resulting in data corruption. The patent describes a user interface and novel framer to synchronize the slow and fast streams and encodes them into a combined stream before transmission, and the computer receives uncorrupted data; as a result, the computer can receive inputs from multiple sources.

During prosecution of the patent, the USPTO initially had rejected the inventor's patent based upon prior art. The examining attorney found that U.S. Patent No. 5,990,866 ("Yollin") taught that "the controller generates a composite control signal" and disclosed a "framer receiving the user-input stream and the input stream to produce a combined data stream." The inventor distinguished his invention from Yollin on the ground that Yollin did not address the collision problem; according to the inventor, Yollin only uses its system to "receive the slow varying signal" and does not address its use for receiving audio or high frequency signals.

On February 8, 2017, Genuine Enabling Technology LLC (“Genuine”) filed an action against Nintendo Co., Ltd., and Nintendo of America. Genuine alleged that five Nintendo products infringed the ’730 patent: (1) the Wii Remote and Wii Remote Plus; (2) the Nunchuk; (3) the WiiU Game Pad; (4) the Switch Joy-Con Controller; and (5) the Nintendo Switch Pro Controller. Nintendo moved for summary judgment based on its allegation that during the patent prosecution the inventor had disavowed the scope of “input signal” by distinguishing the fast-varying frequencies described in the patent from the slow-varying frequencies described in Yollin. Genuine argued that a person of ordinary skill in the art would construe “input signal” to mean only “audio or higher frequencies,” meaning those frequencies that humans can hear (20 Hz to 20,000 Hz). The district court accepted Nintendo’s construction of “input signal” and granted summary judgment of noninfringement to Nintendo.

Inventor’s disavowal of claim scope. The appellate court held that the inventor’s disavowal relating to the term “input signal” only clearly disavowed signals below the audio frequency. Nintendo’s arguments to the contrary were based on the expert testimony of Dr. Chizeck, which had no support in the intrinsic record, but rather was based solely on other extrinsic evidence purporting to describe various signals’ frequency ranges. The court noted that expert testimony in claim construction is not properly used where it diverges significantly from the intrinsic record, which it did here.

The Federal Circuit held that the district court erred in construing the term “input signal,” particularly in its finding that the inventor, during the patent prosecution, had disclaimed subject matter other than signals below the audio frequency spectrum. The district court further erred in relying on extrinsic evidence of an expert witness that clearly contradicted the intrinsic record. Further, the appellate court ruled that the proper construction of “input signal” is “a signal having an audio or higher frequency.” Accordingly, the appellate court reversed and remanded the district court’s grant of summary judgment of non-infringement to Nintendo.

The case in No. 2020-2167.

Companies: Genuine Enabling Technology LLC; Nintendo Co., Ltd.; Nintendo of America

Cases: Patent FedCirNews GCNNews