Nintendo Does Not Infringe IR Pointer Patent and Functional Language Does Not Invalidate

In this split decision by the patent appeals court, Nintendo’s Wii game system was found not to infringe UltimatePointer’s patent for a handheld pointing device that can be used to control a cursor on a projected computer screen but the appeals court reversed the lower court’s decision that the patentee’s claims were invalid due to indefiniteness (the functional language in patentee’s apparatus – structural claim as understood by persons of ordinary skill in the art).  The Court of Appeals for the Federal Circuit’s decision, UltimatePointer LLC v Nintendo Co Ltd, case no.  2015-1297 (Fed.  Cir.  March 1, 2016) (Available Here).

The lower court had found, on summary judgment, that Nintendo’s Wii game system did not infringe patentee’s handheld pointing device because, in a patent claim construction order, the handheld pointing device was construed as being a direct pointing device and the Wii system had an indirect pointing device.  Additionally, the lower court had found that certain patent claims were invalid as being indefinite under the patent act 35 U.S.C. sec. 112, para.  2.

The appeals court agreed with the lower court regarding noninfringement but reversed the invalidity decision finding that the patent claims were definite and the claim terms could be understood by a person of ordinary skill in the art.

Although the patent claims for the handheld device did not discuss whether the device was a direct or indirect pointer, due to the numerous statements in the patent specification, the claim construction decision on direct pointing devices as compared with indirect pointing devices resulted in a finding of noninfringement.  Direct pointing devices operate in a line of sight manner between the handheld device and the projection screen where the curser or displayed element is shown to the viewer.  Indirect pointing devices do not utilize this line of sight theory and, as an example which was pointed out in the patent specification, in prior art, preexisting presentation systems, the cursor on the display or projection screen was often controlled by a computer mouse in an indirect manner.

The Wii console uses a sensor bar which emits infrared light.  The sensor bar is typically located above or below the television (a computer-type display screen) but may be located at different positions vis-a-vis the television screen.  When located at different positions, the handheld Wii remote must be pointed to the sensor bar, not the television screen.  The sensor bar emits IR light which is received by the Wii remote in the Wii remote transmits information back to the Wii console which is a separate device, separate and apart from the sensor bar.

The patentee argued that the claimed “handheld device” was not limited to a direct pointing device and the claim term should be construed to include both direct pointing devices and indirect pointing devices.  Nintendo argued that the Wii’s remote interaction was with the Wii sensor bar, not the display screen.

The appeals court stated that in order to construe disputed terms in a patent claim, intrinsic evidence is the primary source for guidance.  Intrinsic evidence includes other patent claims (dependent claims), and the specification, drawings and the patent’s prosecution history. Teva Pharm.  USA, Inc.  v.  Sandoz, Inc.  135 S.Ct.  831, 841 (2015).  Words in the claims are generally given their ordinary and customary meaning and “the meaning that the term would have to a person of ordinary skill in the art at the time of the invention.  Phillps v.  AWH Corp., 415 F.3d 1303, 1313 (Fed.  Cir.  2005).  The specification is always highly relevant to claim construction analysis. Usually, it is dispositive.  It is the single best guide to the meaning of a disputed term.  Vitronics Corp., v.  Conceptronic, Inc., 90 F.3d 1576, 1582 (Fed.  Cir.  1996).  The appeals court then looked at the patent specification and noted that it several locations, a direct pointing device was discussed.  Further, the appeals court said that adopting the patentee’s argument for ordinary meaning, would incorrectly require the court to divorce the claim language from the repeated “direct pointing” descriptions and the criticism of “indirect pointing” systems in the specification.  See Decisioning.com Inc.  v.  Federated Dept.  Stores, Inc.

Once the appeals court determined the claim construction issue, the court then addressed the lower court’s decision regarding noninfringement.  The instructions which accompanied the Wii system told the user where to position the Wii sensor bar.  Even though the Wii system was an indirect system, it gave the impression to the user of a direct pointing system.  Patentee argued that just because a system can be arranged in a noninfringing manner does not avoid infringement.  Imperfect practice of invention does not avoid infringement.  Paper Converting Mach.  Co.  v.  Magna-Graphics Corp., 745 F.2d 11, 20 (Fed.  Cir.  1984).  The appeals court disagreed and upheld noninfringement finding by the District Court.  

Regarding indefiniteness, the lower court had found that the patent claim contained functional language and since the claim was an “apparatus” or “structural” claim, that claim was indefinite.  The appeals court recognized that the claim language should be viewed in light of the specification and the prosecution history and must inform those skilled in the art about the scope of the invention with reasonable certainty.  Nautilus v.  Biosig Instruments, Inc., 134 S.Ct.  2120, 2129 (2014).  Further, “apparatus claims are not necessarily indefinite for using functional language.” Microprocessor Enhancement Corp.  v.  Texas Instruments Inc., 520 F.3d 1367, 1375 (Fed.  Cir.  2008(“MEC”).

The claims in this case stated that the image sensor generates data.  Patentee argued that there was sufficient structure described in the patent specification to recite that capability of generating data.  The court found that the phrase “generating data” reflects a capability of the sensor structure rather than the activities of a user.

The District Court also found that the patent claims were indefinite for being directed to two statutory classes.  In re Katz Interactive Call Processing Patent Litigation, 639 F.3d 1303, 1318 (Fed.  Cir.  2011).  The appellate court reversed stating that under the MEC case, a claim that is clearly limited to a processor processing the recited structure is “capable of performing” the recited functions.  As such, that patentee’s claim was not indefinite.

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