Gamevice, Inc. v. Nintendo Co., Ltd.

Background

Gamevice alleged that Nintendo infringed claims in three patents: U.S. Patent Nos. 9,808,713, 9,855,498, and 10,391,393. Those patents were preceded by related patents, including U.S. Patent No. 9,126,119, filed on February 2, 2015. The Nintendo Switch, which the parties agreed was the accused product, was first sold in the United States on March 3, 2017. The three asserted patents were filed on July 28, 2017, or December 21, 2018.

Nintendo moved for summary judgment, which is a decision without a trial when there is no genuine dispute over a material fact and the moving party is entitled to judgment as a matter of law. Nintendo argued that the asserted claims were invalid because the Nintendo Switch was prior art that anticipated them. Patent anticipation occurs when one prior-art reference describes every limitation of a patent claim. Nintendo accepted Gamevice’s allegations that the Switch satisfied each limitation of the asserted claims, which the court said established a preliminary showing of invalidity.

The remaining issue was whether the asserted patents could claim the earlier filing date of the ’119 patent. That depended on whether the ’119 patent satisfied the written-description requirement for the terms “computing device” and “structural bridge.” Written description requires an earlier patent application to show that the inventor possessed the claimed invention at the earlier filing date.

“Computing Device”

The claim-construction order defined “computing device” as “electronic equipment controlled by a CPU.” Nintendo argued that the ’119 patent disclosed only a narrower type of device: a complete device with a screen and a back. Gamevice argued that the patent supported the broader category of computing devices, including devices without backs or screens, such as single-board computers.

The court agreed with Nintendo. Claim 1 of the ’119 patent expressly described a computing device with an electronic display screen and a back. The patent’s figures showed only complete devices with screens and backs, and its specification referred to tablet computers, smartphones, notebooks, and other portable computing devices. The court rejected Gamevice’s argument that a skilled person’s knowledge could supply the broader scope, explaining that such knowledge could not add limitations absent from the patent’s specification.

The court held that the ’119 patent did not provide written-description support for the broader “computing device” term used in the asserted patents. The asserted patents therefore could not use the ’119 patent’s February 2, 2015 priority date for claims incorporating that term. Because the Nintendo Switch predated the asserted patents and was treated as satisfying their limitations, those claims were invalid as anticipated.

“Structural Bridge”

The claim-construction order defined “structural bridge” as “a physical apparatus that secures two or more components to each other across a distance.” Nintendo argued that the ’119 patent disclosed only an external structural bridge, while the asserted patents covered a bridge that could be internal or partly internal to a console. Gamevice argued that the ’119 patent did not require any particular position for the bridge.

The court rejected Nintendo’s argument at summary judgment. Unlike the “computing device” language, the ’119 patent’s claims did not require the structural bridge to be external to the computing device. The patent described several types of structural bridge without requiring a specific physical or geometric relationship to the computing device. Although the diagrams showed an external bridge, the court treated that as a preferred embodiment rather than a limitation on the written description. Conflicting views from the parties’ experts also created a factual dispute that prevented summary judgment on this issue.

Disposition

Judge Richard Seeborg granted in part and denied in part Nintendo’s motion for summary judgment. The asserted claims using “computing device” were not entitled to the ’119 patent’s priority date, and all asserted claims except claim 16 of the ’713 patent were held invalid as anticipated by the Nintendo Switch. The motion was otherwise denied. The court also noted that an earlier argument concerning “fastening mechanisms” was moot after claim construction, and that claim 12 of the ’393 patent had already been held indefinite and invalid in the claim-construction order.