Wheee! Nintendo Prevails at the Federal Circuit.

Anascape sued Nintendo* in the Eastern District of Texas in 2006, alleging that Nintendo’s Wii Remote, Wii Classic, Wii Nunchuk and Game Cube controllers infringe certain claims of U.S. Patent No. 6,906,700 (‘700 patent).  The Eastern District contrued the relevant claims, and a jury found the asserted claims valid and infringed.  Nintendo appealed to the Federal Circuit, which today reversed.

The ‘700 patent, entitled “3D Controller with Vibration,” was filed November 16, 2000 as a continuation-in-part (CIP) of the application that became U.S. Patent 6,222,525 (the ’525 patent).  The two patents are directed generally to video game controllers offering control of on-screen objects with 6-degrees-of-freedom movement (forward/backward, left, right, yaw, pitch, roll), with the ‘525 patent focusing on controllers with single input members and the ‘700 patent focusing on controllers with multiple input members.

A complicating factor for Anascape was that there existed invalidating prior art that was disclosed between the filing dates of the ‘525 and ‘700 patents.  Thus, because it was filed as a CIP of an earlier patent, the validity of the claims of the ’700 patent (and, consequently, the claim for infringement) depended upon whether those claims, as construed by the Eastern District, were entitled to the filing date of the ’525 patent (July 5, 1996).  If not entitled to the earlier date, Anascape had conceded that the asserted claims were invalid under 35 U.S.C. Sec. 102 as being anticipated by prior art consisting of a Sony “DualShock” controller sold in the United States in 1998 (described in a patent application of Goto published in 1998) and a Sony “DualShock 2” controller sold in the United States in October 2000.

The Federal Circuit laid out the controlling law and issue:

To obtain the benefit of the filing date of a parent application, the claims of the later-filed application must be supported by the written description in the parent “in sufficient detail that one skilled in the art can clearly conclude that the inventor invented the claimed invention as of the filing date sought.” Lockwood v. American Airlines, Inc., 107 F.3d 1565, 1572 (Fed. Cir. 1997). See generally Ariad Pharmaceuticals, Inc. v. Eli Lilly & Co., No. 2008-1248, 2010 WL 1007369 (Fed. Cir. Mar. 22, 2010).

The issue turns on whether the specification of the ’525 patent supports not only controllers having a single input member that operates in six degrees of freedom, as described and claimed in the ’525 patent, but also controllers having multiple input members that together operate in six degrees of freedom, as described and claimed in the ’700 patent.

The parties’ contentions on this point boiled down to the following assertions:

• Anascape argued, for the purpose of establishing the ’525 filing date for the ’700 claims, that the ’525 specification also supports the ’700 claims that are not limited to a single input member operable in six degrees of freedom.
• Nintendo disputed that position, arguing that the ’525 specification is directed to only a single input member. 

Anascape tried to argue that a number of the ‘525 patent’s figures described multiple input members operating in fewer than six degrees of freedom, thus supporting the ‘700 patents later claims.  The Federal Circuit noted, however, that “[t]his statement does not match the description in the patent.”  In fact, Nintendo had compiled over 20 statements in the ‘525 patent’s specification to the effect that “the invention is directed to a single input member that is operable in six degrees of freedom.”**

Anascape tried to avoid these problems by noting that some of the claims of the earlier ‘525 patent recited input members “moveable on at least two axes,” arguing that this adequately described, for priority purposes, use of more than a single input member for 6-degree-of-freedom control.  The Federal Circuit rightly ignored this argument, noting that the claim language at issue was added to the ‘525 patent in 2000 (i.e. too late to help the ‘700 patent overcome the prior art).

Anascape also tried to argue that extensive changes it made to the ‘700 patent’s specification, all supposedly supporting claims to multiple-input-member controllers, were not new matter relative to the ‘525 patent (which, if it was true, would defeat the claim that such material was present in the earlier application).  The Court was rightly skeptical, stating:

This is classical new matter. See, e.g., Baldwin Graphic Systems, Inc. v. Siebert, Inc., 512 F.3d 1338, 1344 (Fed. Cir. 2008) (“the examiner rightly refused to allow the applicants to amend the specification to remove references to ‘heat’ as the way of sealing the sleeve,” for the change “would have broadened the patent and introduced impermissible new matter” and rendered the reissue claims “invalid for lack of support in the initial disclosure”).

Anascape tried also to assert that the ‘525 patent was only describing a preferred (single input) embodiment of a 6-degree-of-freedom controller, and was not intended to disclaim other (multiple input) embodiments.  The Federal Circuit did not chase this red herring:

However, the question is not whether the patentee in the ’525 specification “disclaimed” the scope of the ’700 patent; the question is whether the ’525 specification sufficiently describes the later-claimed subject matter, as to entitle the ’700 claims to the filing date of the ’525 application. See Lucent Technologies, Inc. v. Gateway, Inc., 543 F.3d 710, 718-19 (Fed. Cir. 2008) (to claim priority based on the filing date of an earlier application, the earlier application must support the claims of the later-filed application).

A patentee is not deemed to disclaim every variant that it does not mention. However, neither is a patentee presumed to support variants that are not described. See Amgen Inc. v. Hoechst Marion Roussel, Inc., 314 F.3d 1313, 1330 (Fed. Cir. 2003) (“The purpose of the written description requirement is to prevent an applicant from later asserting that he invented that which he did not; the applicant for a patent is therefore required to ‘recount his invention in such detail that his future claims can be determined to be encompassed within his original creation.’” (quoting Vas-Cath Inc. v. Mahurkar, 935 F.2d 1555, 1561 (Fed. Cir. 1991))).

Anascape tried various arguments directed to the testimony of experts, but neither of those was availing, being either unsupported by evidence (that’s bad), or misstatements of testimony (also bad).

Concluding, the Federal Circuit found that the later, asserted, ‘700 patent was not entitled to claim the earlier filing date of the ‘525 patent, was thus invalid.  Judgment, and $21 million damages award, reversed. 

Thus, the description in the ’525 specification is not reasonably read as describing a larger invention, of which the single input was only a preferred embodiment. See Honeywell Int’l, Inc. v. ITT Industries, Inc., 452 F.3d 1312, 1318 (Fed. Cir. 2006) (“Here, the written description uses language that leads us to the conclusion that a fuel filter is the only ‘fuel injection system component’ that the claims cover, and that a fuel filter was not merely discussed as a preferred embodiment.”). Whether or not the inventor could have described the ’525 invention more broadly, “[i]t is not sufficient for purposes of the written description requirement of §112 that the disclosure, when combined with the knowledge in the art, would lead one to speculate as to modifications that the inventor might have envisioned, but failed to disclose.” Lockwood, 107 F.3d at 1572.

We conclude that the only reasonable reading of the ’525 specification is that it is directed to and describes only a controller having a single input member operable in six degrees of freedom. In contrast, the ’700 specification and claims were enlarged to cover more than single input members operable in six degrees of freedom. The district court erred in ruling that this subject matter is adequately described in the ’525 specification, for the statutory requirements are not met, on any reading of the ’525 specification.

As an aside, Judge Gajarsa concurred in the result and reiterated his point (made in the Eli Lilly v. Ariad en banc opinion) that the written description requirement of Sec. 112 is best used (as here) to determine priority claims and not enablement:

While I agree with the majority’s result, I write separately to highlight the majority’s best use of the written description requirement as a priority-policing mechanism in contradistinction to an independent basis for invalidity. [Ariad Pharm., Inc. v. Eli Lilly & Co., No. 2008-1248, 2010 WL 1007369 (Fed. Cir. March 22, 2010)]

***

While the statutory language has been interpreted by this court to require a written description for patentability, it is not the ideal vehicle for invalidating claims. Such a vehicle is better provided by the enablement requirement of § 112.

*N.B. Anascape also sued Microsoft, which settled just before trial, and licensed its patents to Sony.  Neither Microsoft’s nor Sony’s decisions look good in hindsight (which, of course, is at least 20/20).

**Practice tip: try not to write “the invention is directed to…” in your specifications.  Especially 20 times.