By John Presper and Alec Royka
On July 28, 2021, ALJ David P. Shaw released the public version (see Part I, Part II, Part III, Part IV) of his initial determination (“ID”) in Certain Portable Gaming Console Systems with Attachable Handheld Controllers and Components Thereof II (Inv. No. 337-TA-1197) finding no violation of section 337.

By way of background, this investigation was instituted on May 4, 2020 based on a March 27, 2020 complaint filed by Gamevice, Inc. of Simi Valley, California (“Gamevice”) alleging violations of section 337 by Respondents Nintendo Co., Ltd. of Kyoto, Japan and Nintendo of America, Inc. of Redmond, Washington (collectively, “Nintendo”) through the importation and/or sale of certain portable gaming console systems with attachable handheld controller and components thereof that infringed one or more claims of U.S. Patent No. 10,391,393 (“the ’393 patent”).

According to the ID, ALJ Shaw determined that there was no violation of section 337 with respect to the ’393 patent based on the following conclusions of law:

  • Nintendo’s accused products do not infringe asserted claims 1-4, 6-8, 12, and 17-18 of the ’393 patent;

  • The domestic industry requirement is satisfied as to the ’393 patent;

  • Nintendo has shown that asserted claims 16, 18, 20 and 22 are indefinite;

  • Nintendo has shown, through clear and convincing evidence, that MOGA in view of iPhone renders obvious claim 8;

  • Nintendo has shown, through clear and convincing evidence, that Schoenith in view of Kessler render obvious claims 1-4, 6-7, and 17;

  • Nintendo has not shown, through clear and convincing evidence, that the asserted claims are invalid under 35 U.S.C. § 112(a);

  • Nintendo has not shown that any asserted claims of the ’393 patent are unenforceable, or barred under the Kessler doctrine or issue preclusion.

ALJ Shaw recommended that the Commission issue a limited exclusion order and cease-and-desist order directed to Nintendo.