12
Oct
By Eric Schweibenz
On September 26, 2012, Chief ALJ Charles E. Bullock issued the public version (dated August 31, 2012) of the Initial Determination (“ID”) finding no Section 337 violation in Certain Video Game Systems and Wireless Controllers and Components Thereof (337-TA-770).  Due to its size, we have split the ID in three parts here:  part 1, part 2, and part 3.

By way of background, the Complainants in this matter are Creative Kingdoms, LLC and New Kingdoms, LLC (collectively, “CK”) and the Respondents are Nintendo of America, Inc. and Nintendo Co., Ltd. (collectively, “Nintendo”).  CK alleged that Nintendo violated Section 337 with respect to U.S. Patent Nos. 7,850,527 (the ‘527 patent), 7,500,917 (the ‘917 patent), and 7,896,742 (the ‘742 patent) (collectively, “the patents-at-issue”).  The subject matter of these patents is video game systems, wireless controllers, and components thereof.

As summarized in our September 4, 2012 post, ALJ Bullock determined that there is no violation of Section 337 by Nintendo in this investigation with respect to the patents-at-issue. Specifically, ALJ Bullock determined that: (i) Nintendo did not infringe the ‘527 patent or the ‘917 patent, (ii) all of the asserted claims from the patents-at-issue are invalid, and (iii) the domestic industry requirement is not met with respect to the patents-at-issue.  We now provide additional details.

The ‘527 Patent

Infringement: 

ALJ Bullock held that Nintendo’s accused products do not infringe the asserted claims of the ‘527 patent because the accused products failed to meet the following claim term: “a second transceiver operably coupled to the elongated body, the second transceiver configured to wirelessly transmit at least one of the plurality of RF signals to the first transceiver of the electronic control module based at least in part on one or more particular motions of the elongated body.” 

In finding no direct infringement, ALJ Bullock agreed with Nintendo, holding that the “based at least in part on” clause modified “configured to wirelessly transmit.” CK alleged that the “based at least in part on” clause modified the “RF signal.”  ALJ Bullock rejected CK’s argument, finding that the ‘527 patent’s specification disclosed an RF signal that contained only user information and not motion information.  Based on this finding, ALJ Bullock determined that none of Nintendo’s accused products directly infringed the ‘527 patent’s asserted claims.

Regarding indirect infringement, ALJ Bullock held that “because CK has not proven direct infringement, it cannot prove indirect infringement.”  Accordingly, ALJ Bullock found that Nintendo’s accused products did not infringe the ‘527 patent’s asserted claims.

Validity:

ALJ Bullock held that the asserted claims of the ‘527 patent are invalid for lack of enablement and lack of written description.  Specifically, ALJ Bullock determined that the specification failed to enable or describe a device that could be operated by “pointing, waving, shaking, stroking, and/or tapping.”  Regarding enablement, ALJ Bullock held that the disclosure was “sparse and vague,” requiring a person skilled in the art to engage in significant, undue experimentation.  In reference to written description, ALJ Bullock found that the one sentence disclosure on “position sensors” failed to adequately describe and teach how to implement the claimed motion-sensor technology.  “At best, this is merely a vague description and an invitation for further research.”

Based on the above mentioned finding of invalidity, and in the interest of judicial economy, ALJ Bullock declined to address the parties’ arguments on anticipation and obviousness.

The ‘917 Patent

Infringement:

ALJ Bullock held that Nintendo’s accused products do not infringe the asserted claims of the ‘917 patent because the accused products do not practice the “wand” limitation.  As construed during claim construction, ALJ Bullock adopted the plain and ordinary meaning of the word “wand,” i.e., “an elongated hollow pipe or tube consistent with a wand associated with magic or illusion.”

In finding no direct infringement, ALJ Bullock agreed with Nintendo, holding that the accused product, a Wii remote, “is not a pipe or tube nor is it associated with magic or illusion.”  Rather, ALJ Bullock equated the accused product to a television remote, not a “wand.”  CK had argued that the Wii remote is longer than it is wide or deep and hollow.  Additionally, CK argued that the movement of the Wii remote to make things happen on the television was an “illusion.”  ALJ Bullock reject both these arguments and, accordingly, found that the accused products did not directly infringe the asserted claims of the ‘917 patent.

Regarding indirect infringement, ALJ Bullock held that “because CK has not proven direct infringement, it cannot prove indirect infringement.” Accordingly, ALJ Bullock found that Nintendo’s accused products did not infringe the ‘917 patent’s asserted claims.

Validity:

ALJ Bullock held that the asserted claims of the ‘917 patent are invalid for lack of enablement and lack of written description.  Specifically, ALJ Bullock determined that the ‘917 patent’s
disclosure failed to enable or describe the use of all “motion sensors,” as broadly claimed.  The ‘917 patent disclosed the use of tilt switches, a narrow and simple subset of all “motion sensors.” In reference to enablement, ALJ Bullock found that undue experimentation would be necessary to make and use the claimed invention with more complex sensors, such as accelerometers.  Regarding written description, ALJ Bullock held that the laundry list of sensors in the specification was merely a “bare reference” to the broadly claimed sensors and, therefore, failed to convey to a person of skill in the art that the patentee possessed all that was claimed.

Based on the above mentioned finding of invalidity, and in the interest of judicial economy, ALJ Bullock declined to address the parties’ arguments on anticipation and obviousness.

The ‘742 Patent

Infringement:

ALJ Bullock held that Nintendo’s accused products infringe the asserted claim of the ‘742 patent.  Following a systematic analysis of the numerous and lengthy claim elements, ALJ Bullock ultimately agreed with CK, finding that the Nintendo Wii system met every limitation of the asserted claim.  

Based on the above mentioned finding of direct infringement, and in the interest of judicial economy, ALJ Bullock declined to address the parties’ arguments on indirect infringement.

Validity:

ALJ Bullock held that the asserted claim of the ‘742 patent is invalid for lack of enablement and lack of written description.  Regarding enablement, ALJ Bullock held that the asserted claim of the ‘742 is not enabled for the same reasons asserted in holding that the asserted claims of the ‘917 patent are not enabled.  ALJ Bullock based his holding on the fact that the ‘742 patent is a continuation of the ‘917 patent and the determination that the relevant portions of the specification of both patents are exactly the same.  Likewise, ALJ Bullock held that the asserted claim of the ‘742 is invalid for lack of written description based on the same arguments set forth in finding the asserted claims of the ‘917 patent invalid for lack of written description.

Based on the above mentioned finding of invalidity, and in the interest of judicial economy, ALJ Bullock declined to address the parties’ argument on obviousness.

Domestic Industry

ALJ Bullock held that CK did not satisfy the domestic industry requirement with respect to the patents-at-issue.  Specifically, ALJ Bullock found that CK failed to show a “substantial investment in its exploitation, including engineering, research and development, or licensing, of the ‘527, ‘742, and ‘917 patents.”  Additionally, regarding the ‘742 and ‘917 patents, ALJ Bullock found that CK had neither a significant employment of labor and capital, nor a significant investment in plants and equipment.  Therefore, based on the above mentioned findings, ALJ Bullock held that CK failed to satisfy the domestic industry requirement with respect to the patents-at-issue.

Remedy and Bond

In the event that the ITC finds a violation of Section 337, ALJ Bullock recommended that the ITC issue a limited exclusion order and a cease and desist order.  Additionally, ALJ Bullock recommended that no bond be set.
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