Nintendo pioneers new piracy blocking tactics in IP infringement cases
What are the new IP tactics that electronics company Nintendo have used so effectively?
A Dallas federal court has ruled that a United States patent asserted against Nintendo’s Wii remote is not valid, overturning a decision in 2017 by a US jury that awarded damages of $10.1 million against Nintendo.
In proceedings dating back to 2013, Texas based health technology company iLife Technologies Inc. alleged that Nintendo Wii and Wii U devices infringed up to six of their US patents. Whilst five of the patents had previously been found to be invalid, in 2017 US Patent No. 6,864,796 was found to be valid and infringed by a jury who held that Nintendo should pay damages of $10.1 million.
Overturning that finding, Federal Judge Barbara G. Lynn ruled that the primary claim in iLife’s patent, claim 1, is directed to an abstract idea and does not define patent-eligible subject matter under US patent law. In reaching this decision, the Judge applied the test for patentability developed by the United States Supreme Court in Alice Corp. v. CLS Bank International, 573 U.S. 208 (2014). This is a two-part test:
iLife’s patent is directed to technology for monitoring movement which can be used to detect a potentially dangerous event, such as a person falling. The system includes a sensor for detecting static and dynamic accelerative phenomena of a body. A processor evaluates the sensed phenomena as a function of at least one accelerative event to determine whether movement of the body is within “environmental tolerance”. The processor generates tolerance indicia which is transmitted by a communications device. Early versions of Nintendo’s Wii controlers used technology similar to that described in ILife’s patent.
In applying step 1 of the Alice test, Judge Lynn found that “Claim 1, at its core…is directed to the abstract idea of gathering, processing and transmitting…information”. Citing case law developed in the US in recent years, she held this was not patentable. The fact that the information was of a specific type – dynamic and static phenomena – was not sufficient to render the claim any less abstract.
Moving on the step 2, Judge Lynn found no inventive concept in the claim elements. “Overall, claim 1 encompasses a sensor that senses data, a processor that processes data, and a communications device that communicates data, and no further inventive concept is recited to transform the abstract idea into a patent-eligible invention.” Whilst iLife highlighted features discussed in the specification regarding the way in which the processor operates and is programmed as being indicative of an inventive step, Judge Lynn held that “an inventive concept must be apparent in the claim language”.
Judge Lynn notes that a claim disclosing some improvement to the functionality of conventional computer components might be patent-eligible under step 1 and gave some consideration to the types of feature which might have rendered claim 1 patent-eligible, such as:
However, Judge Lynn held that claim 1 was not directed to any particular configuration of the components that results in a technological improvement and so could not be considered patent-eligible.
The decision is open to appeal, though it is not clear whether iLife Technologies Inc. is still in existence.
This case is the subject of US patent law and it should be noted that rules on patentability vary in different territories. Nevertheless, this case will be of interest to anyone looking to patent technology at the boundary of patentability, especially computer implemented inventions, as it demonstrates the potential risk of trying to claim such developments in broad conceptual terms and provides some guidance as to the types of technical improvements in a computer implemented invention that can be the subject of valid patent claims in the US.
If you are interested in patenting inventions on the fringe of patentability, please get in touch to speak to one of our attorneys.