By Thomas Long, J.D.
Nintendo successfully argued that it was entitled to judgment as a matter of law because the asserted patent for a body-movement evaluation system claimed ineligible subject matter.
Video game company Nintendo of America, Inc., is off the hook for a $10.1 million jury verdict in a patent infringement suit brought by iLife Technologies, Inc., over Nintendo’s Wii devices. The federal district court in Dallas has granted Nintendo’s motion for judgment as a matter of law, determining that iLife’s asserted patent claimed ineligible subject matter under 35 U.S.C. §101. The patent—which generally disclosed a system for evaluating body movement relative to an environment—was directed to the abstract idea of gathering, processing, and transmitting information. The court also decided that the patent-in-suit—which disclosed the use of conventional computer components—lacked an "inventive concept" that would make it eligible for patent protection (iLife Technologies Inc v. Nintendo of America Inc., January 17, 2020, Lynn, B.).
According to iLife, Nintento’s Wii and Wii U devices, when used with certain video games, infringed claim 1 of U.S. Patent No. 6,864,796 ("the ’796 patent"), titled "Systems within a communication device for evaluating movement of a body and methods of operating the same." The claimed system includes a sensor that detects dynamic and static accelerative phenomena of the body. The sensor "senses one or more absolute values, changes in value, or some combination of the same" and "generates an output signal to [a] processor." The processor then evaluates the signal to determine whether the body is in an acceptable or unacceptable state, that is, whether it is with or beyond "tolerance."
After a jury trial, the jury returned a verdict finding Nintendo liable for infringing claim 1 of the ’796 patent and awarding iLife $10.1 million in damages, as a lump sum reasonable royalty. The jury also found that the ’796 patent was not invalid for lack of an adequate written description or for lack of enablement. Nintendo moved for judgment as a matter of law and, alternatively, for a new trial.
Ineligible subject matter. Among other things, Nintendo argued that claim 1 was directed to ineligible subject matter under Section 101. Because the court agreed with Nintendo as to subject matter ineligibility, it did not address its other arguments. The court applied the familiar two-step Section 101 analysis set forth by the Supreme Court in the Mayo and Alice cases.
Step one—abstract idea. The court first determined that claim 1 was directed to a patent-ineligible abstract idea. In the court’s view, claim 1, "at its core," was directed to the abstract idea of gathering, processing, and transmitting, information. "Claim 1 is not any less abstract because the information is of a specific type—dynamic and static accelerative phenomena," the court said, adding that "Analyzing the information through some mathematical algorithm and generating wholly new information is also ‘essentially [a] mental process within the abstract-idea category.’" Transmitting the results of those abstract processes, without more, was also abstract as an ancillary part of the collection and analysis of the data. Moreover, an abstract idea implemented on conventional computer components was still an abstract idea. Claim 1 was not directed to an improvement in the functionality of sensors and processors, and it was not limited to any particular configuration that resulted in a technological improvement. The sensor and processor were merely tools to carry out the abstract idea.
Step two—inventive concept. Next, the court determined that there was no inventive concept in the claim elements that would render the claim patent-eligible, whether those elements were viewed individually or as an ordered combination. Claim 1 added no meaningful limitations to the routine steps of data collection, analysis, and transmission using conventional computer components. The disclosure of coined variables called "tolerance indicia" did not make the underlying concept inventive, in the court’s view. "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," the court said. Accordingly, the court granted the motion for judgment as a matter of law and entered judgment in favor of Nintendo.
Motion for new trial. The court conditionally ruled on Nintendo’s motion for a new trial and denied it, finding that there were no flaws warranting retrying the case. According to the court, if the grant of judgment as a matter of law were reversed on appeal, and the Federal Circuit held that iLife was entitled to the damages awarded by the jury, the court could not say that the verdict was against the weight of the evidence. The court also stated that, in its view, it did not err in construing claims, did not improperly task the jury with resolving claim construction disputes, and did not provide the jury with incorrect instructions.
This case is No. 3:13-cv-04987-M.
Attorneys: S. Wallace Dunwoody, IV. (Munck Wilson Mandala LLP) for iLife Technologies Inc. Thomas C. Wright (Induction-IP PLLC) and Alex Joseph Whitman (Cunningham Swaim, PLLC) for Nintendo of America Inc.
Companies: iLife Technologies Inc.; Nintendo of America Inc.
MainStory: TopStory Patent TechnologyInternet TexasNews
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