Eleven Engineering et al v. Nintendo et al
Case No. 1:09-cv-009030 (D. Del, Filed Nov. 25, 2009)
Decided: July 11, 2016

Back in 2009 Eleven Engineering sued Nintendo, Sony, and Microsoft alleging they infringed three patents (US patents 6,238,289; 6,684,062; and 6,346,047). Each of the patents pertains to wireless game control devices. Eleven Engineering’s complaint specifically identifies Sony’s DualShock and Sixaxis wireless game controllers, Nintendo’s Wii Remote and Balance Board and Microsoft’s Xbox 360 Wireless Controller and Wireless Racing Wheel as allegedly infringing products.

The ‘289 Patent, a “radio frequency game controller” is directed to adjusting the frequency of a wireless controller when weakness in signal strength is detected. Additionally, the game controller may include an indicator light that conveys signal strength by amount of time it is on (e.g., a constant “on” light would indicate strong signal strength whereas an intermittent light would indicate a weaker signal strength).

The ‘047 Patent is similarly directed to radio frequency communication between a game controller and a game console device. In contrast to the ‘289 Patent, the claims of the ‘047 Patent are directed to the transmission of radio frequency signals from a game controller using time domain multiplexed transmissions.

The ‘062 Patent, a “wireless game control system” refers to a wireless system for video game control that allows one or more wireless controllers to concurrently communicate with a base transceiver. The ‘062 Patent includes 2 independent claims. Independent claim 1 is directed to a combination of features including automatic channel/frequency adjustment and signal transmission using synchronous time domain multiplexing. Independent claim 13, on the other hand, is directed to controller-base transceiver compatibility and suggests a system that offers compatibility amongst multiple types of controllers and base transceiver.

The case was stayed in July 2011 while patent re-examinations were completed. In 2015, the District Court for the District of Delaware granted the order to lift the stay. Eleven Engineering offered not to assert the ‘289 patent provided the stay was lifted for the two remaining patents to get the case moving again. In April 2016, the District Court dismissed all claims between Sony and Eleven Engineering as the parties announced that they agreed to settle. In May 2016, Eleven Engineering and Nintendo agreed to settle as well. Regarding the ‘047 claim against Microsoft, the parties resolved their respective claims for relief on that issue prior to the separate claim construction hearing for the ‘062 patent. For this reason, the District Court did not hear arguments on previously-disputed terms of the ‘047 patent.

On July 11, 2016, after the trial on the ‘062 patent, the District Court entered a final, appealable judgment against Eleven Engineering on its claim that Microsoft infringed the ‘062 parent. It was found during trial that Eleven Engineering was not able to meet its burden of proof of infringement of the ‘062 patent. This was due to the Court’s construction of the claim element, “the controllers [base transceiver] can use the synchronous time domain multiplexing to save power by turning off their [its] radio transceivers when they are [it is] not receiving or transmitting data.” The Court’s construction of “turning off’ in that claim element meant “a state of no power” as set forth in the Court’s June 2016 Opinion. Using this construction, Eleven Engineering was not able to meet the sufficient threshold for the Court to find infringement.

It is no secret that Microsoft, Nintendo and Sony have seen their fair share of gaming technology lawsuits in the past. For example, both Microsoft and Sony were sued by, and ultimately settled with, Immersion Corp. for use of force feedback technology in their controllers, while Nintendo entered into an out-of-court settlement with Hillcrest Laboratories for its motion sensing controllers.

Additional Research By: Rachel Johns
Edited By: Alex Nealon