Anascape, Ltd. v. Nintendo of America, Inc.

• Decision Date: 13 April 2010
• Docket Number: No. 2008-1500.,2008-1500.
• Parties: ANASCAPE, LTD., Plaintiff-Appellee, v. NINTENDO OF AMERICA, INC., Defendant-Appellant.
• Court: U.S. Court of Appeals — Federal Circuit

601 F.3d 1333

ANASCAPE, LTD., Plaintiff-Appellee,
v.
NINTENDO OF AMERICA, INC., Defendant-Appellant.

No. 2008-1500.

United States Court of Appeals, Federal Circuit.

April 13, 2010.

601 F.3d 1334

Douglas A. Cawley, McKool Smith, P.C., of Dallas, TX, argued for plaintiff-appellee. With him on the brief were David Sochia, Steven C. Callahan, and Anthony M. Garza.

William F. Lee, Wilmer Cutler Pickering Hale and Dorr LLP, of Boston, MA, argued for defendant-appellant. With him on the brief were Lauren B. Fletcher; Robert J. Gunther, Jr., Alexandra McTague, and Sadaf R. Abdullah, of New York, NY. Of counsel on the brief were Robert W. Faris, Joseph S. Presta, and Gordon P. Klancnik, Nixon & Vanderhye P.C., of Arlington, VA; and James S. Blank, Kay Scholer LLP, of New York, NY.

Before NEWMAN, GAJARSA, and DYK, Circuit Judges.

Opinion for the court filed by Circuit Judge NEWMAN. Concurring Opinion filed by Circuit Judge GAJARSA.

NEWMAN, Circuit Judge.

Nintendo of America Inc. appeals the judgment of the United States District Court for the Eastern District of Texas, holding that certain Nintendo video game controllers infringed certain claims of U.S. Patent 6,906,700 (the '700 patent) owned by Anascape, Ltd., and awarding damages.¹ After trial to a jury the district court denied duly made post-trial motions, enjoined further infringement, and stayed the injunction pending appeal. On Nintendo's appeal (Microsoft settled in the district court), the judgment is reversed.

DISCUSSION

The field of invention is hand-operated controllers for the movement of images on a computer screen or television display, particularly as used in video games. The controller is the tool by which human hands manipulate a graphic image, a procedure called "hand inputs." The hand inputs are implemented through handles such as joysticks or trackballs, whereby the hand actions of the human operator are sensed and translated electronically into corresponding linear and rotational movements that are shown in graphic display. As discussed in the patents in suit, hand inputs move images in six general directions that are called "degrees of freedom" (DOF) in the lexicon of this technology. Thus, the hand inputs may produce linear movement along three axes (forward/backward, left/right, or up/down), and rotational movement about the three linear axes (roll, pitch, or yaw).

The '700 patent was filed on November 16, 2000 as a continuation-in-part of the application that became U.S. Patent 6,222,525 (the '525 patent). The validity of the '700 patent claims in suit depends on whether these claims, as construed by the district court, are entitled to the filing date of the '525 patent, July 5, 1996. See 35 U.S.C. § 120 ("An application for patent for an invention disclosed in the manner provided by the first paragraph of section 112 of this title in an application previously filed in the United States ... shall have

601 F.3d 1335

the same effect, as to such invention, as though filed on the date of the prior application...."). In Reiffin v. Microsoft Corp., 214 F.3d 1342, 1345-46 (Fed.Cir.2000), the court explained the need "to ensure that the scope of the right to exclude, as set forth in the claims, does not overreach the scope of the inventor's contribution to the field of art as described in the patent specification." This rationale applies to a specification whose filing date is needed to antedate prior art. See Moba, B.V. v. Diamond Automation, Inc., 325 F.3d 1306, 1319-20 (Fed.Cir.2003); Ralston Purina Co. v. Far-Mar-Co, Inc., 772 F.2d 1570, 1575 (Fed.Cir.1985). Anascape has conceded that if not so entitled, the '700 patent claims are subject to invalidation based on the intervening prior art of a Sony "DualShock" controller sold in the United States in 1998 and described in a patent application of Goto published in 1998, and a Sony "DualShock 2" controller sold in the United States in October 2000. Anascape's response to this prior art is that the '700 patent claims are entitled to the July 5, 1996 filing date. The district court so found; this is the principal issue on this appeal

I

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 district court observed in its claim construction ruling that in the '525 patent "the patentee clearly expected the inventions to be used with a single input member (such as a joystick) that moved in 6 DOF to control an image appearing to move in three dimensions." Anascape, 2008 WL 160546, at *4. We agree that the '525 specification describes controllers having a single input member that is operable in six degrees of freedom. As originally filed, all of the claims of the '525 patent recited such a single input member.

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. Many passages in the '525 specification are to this effect. For example, the "Background of the Invention" states:

In the prior art there exist 6 DOF controllers of a type having a hand operable, single input member moveable in six degrees of freedom for axes control relative to a reference member of the controller. This type of controller having the 6 DOF operable input member outputs a signal(s) for each degree of freedom input, and it is this type of 6 DOF controller which is believed to be by far the most easily used for 3-D graphics control, and it is with this type of 6 DOF controller that the present invention is primarily concerned.

'525 patent col.1 l.61—col.2 l.2. The "Summary of the Invention" section of the '525 specification states:

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The controllers provide structuring for converting full six degrees of freedom physical input provided by a human hand on a hand operable single input member into representative outputs or signals useful either directly or indirectly for controlling or assisting in controlling graphic image displays.

Id. col.4 II.50-55. The specification also states:

A primary object of the invention is to provide a 6DOF image controller (physical-to-electrical converter), which includes a single input member being hand operable relative to a reference member of the controller....

Id. col.7 II.50-54; id. col.7 II.59-62 (6DOF controller "includes a single input member being hand operable relative to a reference member of the controller"). The Abstract states that the invention concerns "multiple-axes controllers comprised of a single input member operable in 6 DOF relative to a reference member." See also id. col.5 II.8-9 ("the input member accepts 6 DOF of hand input relative to the reference member"); id. col.8 l.4 ("6 DOF controller, which includes a single input member"); id. col.8 l.12 ("single input member"); id. col.8 l.19 ("single input member").

Similarly, the drawings all show a single input member, in the form of a trackball or a joystick, capable of operating in six degrees of freedom. Id. col.7 II.47-49 ("A 6DOF trackball-type embodiment is illustrated in FIGS. 1-10, and 6DOF joystick type embodiments are illustrated in FIGS. 13-36.").

Anascape argues that Figures 1-6 of the '525 patent describe multiple input members operating in fewer than six degrees of freedom. This statement does not match the description in the patent. Figures 1-4 are described as a "trackball-type embodiment" of the hand operable 6DOF controller in which trackball 12 is "the hand operable single input member operable in full six degrees of freedom." Id. col. 11 II.19-25. Several figures show a rotatable collet surrounding the trackball, and the specification states that the collet provides the user with "the option of rotating about yaw via the trackball or the rotatable collet." Id. col. 17 II.18-19. The specification also states that the collet "does not bar" the control of yaw by the trackball, which is capable of operating in six degrees of freedom. See id. col.17 II.14-19 ("When a rotatable collet is used, a sensor is used to detect rotation of collet 16 as described above, but this does not bar still having a sensor (encoder) in communication with trackball 12 for detecting rotation of the trackball about the yaw axis, and this would give the user the option of rotating about yaw via the trackball or the rotatable collet."). The specification does not state that the collet replaces any of the six degrees of freedom of the trackball.

In Figure 20 the controller includes a handle as well as signal input elements in the form of buttons. The inventor testified that the handle of Figure 20 operates as a single input member movable in six degrees of freedom. The inventor testified that the embodiments of Figures 4 and 6, which depict a trackball/collet combination, and Figure 9, which depicts a handle/button combination, all include a single input member operable in six degrees of freedom.

Nintendo counts over twenty explicit statements that the invention is directed to a single input member that is...