IA Labs CA, LLC v. Nintendo Co.

• Decision Date: 29 February 2012
• Docket Number: Civil No. PJM 10–833.
• Citation: 863 F.Supp.2d 430
• Parties: IA LABS CA, LLC, Plaintiff v. NINTENDO CO., LTD. and Nintendo of America, Inc., Defendants.
• Court: U.S. District Court — District of Maryland

863 F.Supp.2d 430

IA LABS CA, LLC, Plaintiff

v.NINTENDO CO., LTD. and Nintendo of America, Inc., Defendants.

Civil No. PJM 10–833.

United States District Court,

D. Maryland.

Feb. 29, 2012.

Robert Scott Brennen, Miles and Stockbridge PC, Katherine B. Hill, Miles and Stockbridge PC, Baltimore, MD, Adam G. Price, Andrew G. DiNovo, Jay David Ellwanger, Raymond W. Mort, III, Stefanie T. Scott, William M. Parrish, DiNovo Price Ellwanger and Hardy LLP, Austin, TX, for Plaintiff.

Marie Celeste Bruce, Rifkin Livingston Levitan and Silver LLC, Bethesda, MD, Terrance Jay Wikberg, Perkins Coie LLP, Washington, DC, C. Mark Kittredge, Perkins Coie LLP, Phoenix, AZ, Jerry A. Riedinger, Jessica Lynn Rossman, Stevan R. Stark, Tyler C. Peterson, Perkins Coie LLP, Seattle, WA, Joseph A. Rhoa, Nixon and Vanderhye PC, Arlington, VA, for Defendant.

Robert N. Levin, Law Offices of Robert N. Levin PC, Rockville, MD, for Movant.

OPINION

PETER J. MESSITTE, District Judge.

IA Labs CA, LLC (“IA Labs”) has sued Nintendo Co., Ltd. and Nintendo of America, Inc. (collectively, “Nintendo”), alleging infringement of U.S. Patent No. 7,121,982, “Computer Interactive Isometric Exercise System and Method for Operatively Interconnecting the Exercise System to a Computer System for use as a Peripheral” (the “ '982 patent”).¹

Nintendo develops, manufactures, and sells interactive entertainment products, including video game consoles, controllers, and software. IA Labs contends that Nintendo's Wii gaming system infringes various claims of the '982 patent.² Specifically, IA Labs argues that (1) the Wii Balance Board (the “Balance Board”), which is used to control games on the Wii Fit and Wii Fit Plus software played through the Wii Console, satisfies each element of Claims 1, 2, 4, 8, 9, 13, 16, 20, 21, 23, 25, 27, and 28 of the ' 982 patent, (2) the Balance Board and the Wii Remote together satisfy each element of Claims 6, 7, 14, and 15 of the ' 982 patent, and (3) the Balance Board, when used in conjunction with a television set or computer monitor, satisfies each element of Claim 5 of the ' 982 patent.

The Court considers Nintendo's Motion for Summary Judgment of Non–Infringement [Docket No. 204], Nintendo's Motion for Partial Summary Judgment of No Willful Infringement [Docket No. 219], Nintendo's Motion to Bifurcate [Docket No. 152], IA Labs' Motion in Limine [Docket No. 283], Nintendo's Omnibus Motion in Limine [Docket No. 288], Nintendo's Motion to Exclude the Expert Testimony of Gregory Lewis Merril [Docket No. 333], and IA Labs' Motion to Exclude the Testimony of Defendant Witnesses Rodrigo, Li, and Berme [Docket No. 335].³ The Court has heard oral argument on the two Motions for Summary Judgment and the Motion to Bifurcate and has conducted a Markman hearing, during which it construed certain disputed claim terms and deferred construction of others.

For the reasons that follow, Nintendo's Motion for Summary Judgment of Non–Infringement [Docket No. 204] is GRANTED. Because the Court finds no infringement as a matter of law, it need not reach the merits of Nintendo's Motion for Partial Summary Judgment [Docket No. 219] nor any of the Motions pertaining to the trial of the claims [Docket Nos. 152, 283, 288, 333, and 335], all of which are deemed MOOT.

I. BackgroundA. The '982 Patent

On October 17, 2006, the United States Patent and Trademark Office issued the '982 patent to PowerGrid Fitness, Inc. The patent covers “an isometric exercise system that serves as a computer system peripheral and facilitates user interaction with a host computer system while the user performs isometric exercise.” ('982 patent, col. 1 ll. 11–14.) The patent includes 28 distinct claims, each of which constitutes various permutations of the same core invention described in Claims 1 and 9.⁴

1. Purpose and Scope of the '982 Patent

The background section of the '982 patent distinguishes prior art isometric exercise devices from the “vast majority” of exercise devices, which utilize only isokinetic and/or isotonic exercise. ( Id. col. 1 ll. 20–23.) According to the patent, “[i]sometric exercise involves the exertion of force by a user against an object that significantly resists movement as a result of the exerted force such that there is substantially minimal or no movement of the user's muscles during the force exertion.” ( Id. col. 1 ll. 29–34.) The background section provides examples of isometric exercise, including a person pushing against a stationary surface, attempting to pull apart tightly gripped hands, or attempting to bend or flex a rigid steel bar. ( Id. col. 1 ll. 34–37.) It goes on to explain that isometric exercise can be “very useful for rehabilitation, fitness and/or training,” but that due to its “inherently tedious nature, isometric exercise devices are less popular” than their isotonic and isokinetic counterparts. ( Id. col. 1 ll. 25–26,37–41.)

The background section of the '982 patent identifies the drawbacks of the existing related art. Though a “particularly important feature in many isometric exercise devices is the ability to measure forces applied to a resistive object by one or more muscle groups” ( id. col. 1 ll. 42–45), the existing isometric exercise devices are said to be “tedious” and “provide limited feedback.” ( Id. col. 2 ll. 45–46.) The patent identifies one item of existing related art that attempts to combine virtual reality with an isometric exercise device, but notes that this existing invention is limited to specific forms of isometric knee and ankle exercise. ( Id. col. 3 ll. 50–60.)

Given the “tedium” associated with the existing art, the '982 patent sought to create a device that would interact with a host computer system so as to “enhance the level of interest and enjoyment associated with performing isometric exercises.” ( Id. col. 3 l. 65–col. 4 l. 2.) More particularly, the invention would facilitate user participation in a virtual reality simulation based on the performance of isometric exercise. ( Id. col. 4 ll. 7–12.) Other objectives of the invention were to determine the type, amount, or degree of force applied by the user, to create a system that was adaptable for use with a variety of computer systems, and to allow customization for a desired purpose or application. ( Id. col. 4 ll. 3–7, 12–20.) The '982 patent, however, does not require that two or more of these objects be combined, if not otherwise required by the claims. ( Id. col. 4 ll. 21–25.)

2. Specification and Claims of the '982 Patent

The '982 patent discloses two preferred embodiments. The first preferred embodiment is depicted in Figure 1, below.⁵

Image 1 (6.47" X 2.69") Available for Offline Print

Figure 1⁶

Central to the invention is what the Applicant called an “effector,” against which the user exerts herself in performing an isometric exercise. In Figure 1, the effector includes “an elongated and generally cylindrical bar or rod constructed of any suitably rigid material (e.g. a metal alloy) that is capable of being slightly deformed within its elastic limit.” ( Id. col. 5 ll. 38–41.) Two sensors “are affixed on the effector” and are offset so as to measure “bending deflections” in different directions. ( Id. col. 6 ll. 6–27.) The sensors are connected to a processor within the control circuitry, which receives electrical signals from the sensors resulting from an application of force to the effector bar and “converts” the signals into information that is, preferably, “indistinguishable from the inputs of any standard peripheral device.” ( Id. col. 6 ll. 28–39.)

The second preferred embodiment of the '982 patent is depicted in Figure 2, below. This embodiment uses a “cockpit” configuration, described as useful for flying and driving type games. ( Id. col. 11 ll. 43–46.)

Image 2 (6.45" X 3.75") Available for Offline Print

The second embodiment “includes a ent “includes a set of elongated and generally cylindrical effector bars” that form an unmovable “T-type handle-bar configuration for manipulation by a user.” ( Id. col. 8 ll. 10–13.) The bars are made of “a suitably rigid material (e.g., a metal alloy) that is capable of being slightly deflected within its elastic limit in response to any combination of bending, twisting, tension and compression forces applied by the user to the bars.” ( Id. col. 8 ll. 24–29.) The sensor and processor work much the same way as in the first embodiment. ( Id. col. 8 ll. 34–62.)

In both embodiments, the user connects the system to a host computer system and “engages in a combined isometric exercise and interaction with the software program by gripping at least one effector bar and applying a force to exert a strain on the bar.” ( Id. col. 10 ll. 47–55; id. col. 11 ll. 21–25.) The sensor measures microscopic bending resulting from the force applied by the user to the effector bars, and the resulting data then feeds into a software application, such as a game, running on the host computer. ( Id. col. 10 l. 55–col. 11 l. 20; id. col. 11 ll. 25–40.)

After describing the preferred embodiments, the '982 patent sets forth the patent claims. Claim 1, an independent system claim, reads as follows:

1. An isometric exercise system serving as a peripheral to manipulate a virtual reality scenario of a host processing system in accordance with user exercise, comprising:

a frame to support a user;

an effector to provide an isometric exercise for said user, wherein said effector is fixedly secured to said frame and includes an elongated rod;

at least one sensor coupled to said rod and responsive to at least one force applied by said user to said effector to perform said isometric exercise, wherein said applied force effects a measurable deformation of said rod that is measured by said at least one sensor; and

a processor coupled to said at least one sensor and including a data processing module to receive and process data corresponding to applied force information measured by said at least one sensor and to transfer...