On April 9, 2018, the Federal Circuit ruled in favor of defendants Microsoft Corporation, Ubisoft, Inc., Nintendo of America, Inc., Electronic Arts Inc., Harmonix Music Systems, Inc., and Majesco Entertainment in a patent infringement suit brought by Australian individual Richard J. Baker.   The suit relates to Baker’s U.S. Patent No. 5,486,001, which relates to an instructional aid for movements.  The accused products included video games
that incorporated an image capturing device (like a camera) connected to a gaming console or personal computer.

The ’001 Patent reads, in claim 1 and as amended during prosecution:

and storing initial visual image signals representative of a particular
movement at a first location,

preferred image signals representative of a selected preferred movement at a
second location remote from said first location
in a data base of a

said captured and stored visual image signals from said first location to
said computer at said second location

. .

said regenerated signals from said computer at said remote second location to
said first location
and stored in image presentation means which permits
viewing thereof with dialogue relating to said regenerated visual secondary
image signals.

The Federal Circuit affirmed the district court’s finding that “remote,” as used above, requires “more than physical separation at the same location.”  The Federal Circuit found that this amendment prevented infringement by any of the defendants, both literally and under the doctrine of equivalents.

Cases like these emphasize the importance of careful patent prosecution.  Per the Federal Circuit, the “first location” and “second limitation” language used above was added to traverse a reference (U.S. Patent No. 5,184,295 to Mann).  Little changes like these, which invoke the doctrine of prosecution history estoppel, can have significant ramifications during litigation, as demonstrated here.  It’s game over for Mr. Baker in this case.

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