On April 30, 2009, Chief ALJ Paul J. Luckern issued the public version of Order No. 33 (dated April 9, 2009) in Certain Video Game Machines and Related Three-Dimensional Pointing Devices (337-TA-658).  In the Order, ALJ Luckern denied Respondents Nintendo Co., Ltd. and Nintendo of America, Inc.’s (“Nintendo”) Motion for Summary Determination of Invalidity of U.S. Patent No. 7,139,983 (“the ‘983 patent”) Under 35 U.S.C. §§ 102 and 103.

According to the Order, the ‘983 patent is directed to a method for providing a user interface on a television comprising the steps of displaying media objects, receiving inputs, zooming, and displaying selections.  In its motion, Nintendo argued that under Hillcrest’s proposed claim construction, certain claims of the ‘983 patent are invalid under §§ 102 and 103, in light of (1) U.S. Patent No. 6,577,350 (“the ‘350 patent”); (2) a Pad++ system developed at New York University and the University of New Mexico (“Pad++”); and (3) Nintendo’s N64 Extreme-G video game (“Extreme-G”).

With regard to the ‘350 patent, Nintendo argued, and the Commission Investigative Staff (“Staff”) agreed, that the ‘350 patent anticipates the asserted claims of the ‘983 patent because it discloses a method for providing a user interface for television with an interactive program guide system that includes displays and zoom transitions.

Nintendo also argued that Pad++ contains a set of software tools that allow a designer to create a user interface that would anticipate the asserted claims of the ‘983 patent, and that Pad++ discloses a tangible device containing readable instructions that satisfy the limitations of the asserted claims of the ‘983 patent including the interface, display, and zooming functions.  Regarding Extreme-G, Nintendo argued that it discloses an interface used in connection with television systems that anticipates the asserted claims of the ‘983 patent in that it permits a user to make selections of graphical features, which trigger the display and zooming functions.  Alternatively, Nintendo argued that the ‘350 patent, Pad++, and Extreme-G render the asserted claims of the ‘983 patent obvious under 35 U.S.C. § 103.  According to the Order, the Staff did not analyze the Pad++ or  Extreme-G references, or Nintendo’s argument that the asserted claims of the ‘983 patent are obvious.

In response, Hillcrest argued that Nintendo failed to prove that the asserted claims of the ‘983 patent are anticipated or made obvious by the ‘350 patent, Pad++, and/or Extreme-G.  With respect to the ‘350 patent, Hillcrest noted that the ‘350 patent was considered by the Examiner during prosecution of the ‘983 patent, and argued that the ‘350 patent does not anticipate the ‘983 patent claims because it fails to disclose each object having selectable media items and the claimed detail of the display and zooming functions.  Regarding Pad++ and Extreme-G, Hillcrest argued against anticipation of the ‘983 patent claims on the basis that Pad++ is a set of tools and not in and of itself a graphical user interface as set forth in the ‘983 disclosure, and that Extreme-G fails to disclose actual objects or the selectable media items of the ‘983 patent.  Hillcrest also argued that Nintendo failed to prove obviousness of the ‘983 patent by neglecting to properly analyze any of the factual issues that inform an obviousness inquiry, and failed to demonstrate any general motivation to combine the references to produce the claimed subject matter.

Hillcrest also argued that Nintendo’s adoption of Hillcrest’s proposed claim construction only for the purposes of Nintendo’s motion was improper.  Specifically, Hillcrest cited the Federal Circuit’s decision in Dana Corp. v. Am. Axle & Mfg., Inc., for the proposition that it was legal error to grant summary judgment of invalidity based on a claim construction that the movant merely stipulates to for the purposes of the motion only. 

Addressing anticipation under § 102, ALJ Luckern cited Federal Circuit precedent holding that “before the factual question of anticipation may be addressed, a court must first properly construe the claims before it.”  ALJ Luckern noted that other than adopting Hillcrest’s claim construction, neither Nintendo nor the Staff provided any claim construction analysis in the briefing supporting Nintendo’s motion.  According to the Order, however, Nintendo and the Staff had previously disputed various claim constructions proposed by Hillcrest for the ‘983 patent.  Given that the parties disagree as to at least some of the limitations of the asserted claims of the ‘983 patent, ALJ Luckern found it inappropriate to grant Nintendo’s motion.  Moreover, ALJ Luckern noted that Hillcrest’s opposition to Nintendo’s motion demonstrated genuine disputes as to material facts that prevent a finding of invalidity on summary determination under § 102.

Addressing obviousness under § 103, ALJ Luckern found that Nintendo failed to provide a full obviousness analysis.  Further, ALJ Luckern noted that the factual disputes that plague Nintendo’s anticipation arguments equally apply to Nintendo’s obviousness arguments.  As such, ALJ Luckern found that Nintendo failed to prove that it is entitled to summary determination of invalidity under § 103.