On Tuesday, April 13, 2010, the U.S. Court of Appeals for the Federal Circuit ruled in favor of Nintendo in Anascape, Ltd. v. Nintendo of America Inc. (Docket No. 2008-1500), a patent infringement case appealed to the Federal Circuit from the U.S. District Court for the Eastern District of Texas (Case No. 9:06-CV-158).

In 2008, the District Court ruled that certain Nintendo video game controllers infringed U.S. Patent No. 6,906,700 (“the ‘700 patent”), which was owned by Anascape. Nintendo subsequently appealed the District Court’s ruling to the Federal Circuit, resulting in this decision.

Writing for a three-judge panel of the Federal Circuit, Judge Newman explained that the controlling issue on appeal was whether the ‘700 patent could claim priority to an earlier Anascape patent, namely, U.S. Patent No. 6,222,525 (“the ‘525 patent”).

In particular, the ‘525 patent had a filing date of July 5, 1996, while the ‘700 patent had a filing date of November 16, 2000. Both patents deal with video game controllers that receive user input in six degrees of freedom (“DOF”), but the ‘525 patent describes a controller with a “single input member” (e.g., a single trackball), while the ‘700 patent concerns itself with a control with multiple input members (e.g., two trackballs).

The question of priority was at the core of the Federal Circuit’s decision in this case, however, because after the filing date of Anascape’s ‘525 patent but before the filing date of Anascape’s ‘700 patent, Sony released its DualShock (and DualShock 2) controller in the U.S. And as Anascape conceded, if the ‘700 patent could not claim priority to the ‘525 patent, then Sony’s DualShock controllers would be prior art to the ‘700 patent and render the ‘700 patent invalid.

Relying on established Federal Circuit precedent and a recent ruling concerning the “written description” requirement that U.S. patents must meet, Judge Newman explained that “[t]o 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.” Slip Op. at 3.

In deciding whether this requirement was met here, the court reviewed the claims, specification, and drawings of the ‘525 patent. In conducting this review, the court observed not only that the claims, specification, and drawings of the ‘525 patent focused solely on “single input member” controllers, but also that the specification of the ‘525 patent asserted that multiple input member controllers had “significant disadvantages.”

After discussing the differences between the ‘700 patent and the ‘525 patent in greater detail, the court ultimately decided that the Anascape’s ‘700 patent could not claim priority to its ‘525 patent. Based on this conclusion, the court ruled that Anascape’s ‘700 patent was invalid (as a result of Sony’s DualShock controllers counting as prior art) and accordingly reversed the lower court’s ruling that Nintendo infringed.

We will keep you posted of any further updates in this case.

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