Nintendo of America Inc. v. Ilife Technologies, Inc.
16-2266
Fed. Cir.Dec 27, 2017Background
- iLife Technologies owns U.S. Patent No. 6,864,796, claiming a system that senses and evaluates human movement (e.g., fall detection) using a sensor, processor, and a communications device that transmits "tolerance indicia."
- Nintendo petitioned for inter partes review (IPR) alleging claims 1–3, 9–12, and 18–20 were unpatentable over Japanese patent publication Yasushi (published Nov. 10, 1998).
- The ’796 patent traces to an original (grandparent) U.S. application filed Sept. 15, 1999; the Board examined whether that original application provided written description support and whether iLife had reduced the invention to practice before Yasushi’s publication date.
- The Patent Trial and Appeal Board (PTAB) found the original application disclosed a sensor, processor, and a range of communications devices (including cellular phones and computers) and therefore provided written description support for the challenged claims.
- The Board also found, based on inventor declarations, corroborating witness statements, and contemporaneous records, that iLife had built and tested a working prototype in August–September 1998 that met the limitations of several challenged claims and worked for its intended purpose.
- The Federal Circuit affirmed the Board’s written-description ruling and its reduction-to-practice findings for some claims, but reversed as to other dependent claims where the record lacked evidence the prototype met specific claim limitations (e.g., transmission of state or dynamic indicia, use of computers/wireless Internet devices).
Issues
| Issue | Plaintiff's Argument (iLife) | Defendant's Argument (Nintendo) | Held |
|---|---|---|---|
| Whether the original (grandparent) application provides written-description support for the challenged claims | Original application disclosed sensor, processor, and communications means (including examples like cellular phones/computers); thus it conveys possession | The continuation-in-part added disclosure must be considered and the original disclosure alone didn’t clearly support the full scope of "communications device" | Affirmed: original application provides sufficient written description support |
| Whether Yasushi is prior art given claimed earlier priority | iLife: entitled to grandparent priority; prototype predates Yasushi, so Yasushi is not prior art | Nintendo: even with grandparent date, Yasushi is prior art under pre-AIA §102(b); challenges sufficiency of prototype evidence | Mixed: for some claims Yasushi is not prior art (prototype shown); for others Yasushi is prior art (prototype did not show all claim elements) |
| Whether inventors achieved an actual reduction to practice before Nov. 1998 for independent claims (e.g., claim 1, 10) | Inventor and corroborating testimony plus contemporaneous documents show a working prototype in Aug–Sep 1998 meeting all claim limitations and operable for intended purpose | Nintendo disputed sufficiency/corroboration and that prototype met all claim elements | Affirmed for claims 1, 10 (and related claims 2, 9, 11, 18) — substantial evidence supports reduction to practice |
| Whether dependent claims requiring specific communications devices or indicia (claims 3, 12, 19, 20) were reduced to practice in prototype | iLife: prototype’s communications and measurements satisfy dependent claim limitations | Nintendo: no evidence prototype used handheld/laptop/wireless Internet devices or transmitted state/dynamic indicia | Reversed for claims 3, 12, 19, 20 — insufficient evidence prototype met those limitations; remand for PTAB to treat Yasushi as prior art as to those claims |
Key Cases Cited
- Novartis AG v. Torrent Pharm. Ltd., 853 F.3d 1316 (Fed. Cir.) (APA review standard for PTAB decisions)
- Nike, Inc. v. Adidas AG, 812 F.3d 1326 (Fed. Cir.) (de novo review of legal conclusions; substantial-evidence review of facts)
- PowerOasis, Inc. v. T-Mobile USA, Inc., 522 F.3d 1299 (Fed. Cir.) (written-description requirement—possession as of claimed priority date)
- Vas–Cath Inc. v. Mahurkar, 935 F.2d 1555 (Fed. Cir.) (standard for written-description showing possession)
- In re Steed, 802 F.3d 1311 (Fed. Cir.) (requirements for actual reduction to practice)
- Consol. Edison Co. of New York v. N.L.R.B., 305 U.S. 197 (U.S.) (definition of substantial evidence)
- Cuozzo Speed Techs., LLC v. Lee, 136 S. Ct. 2131 (U.S.) (deference to PTAB claim constructions in IPRs)