Anascape Ltd v Nintendo of America Inc

Anascape, Ltd. v. Nintendo of America, Inc.
601 F.3d 1333 (2010)

Facts of the case:
Anascape, Ltd. holds U.S. Patent No. 6, 906, 700 (the “’700” patent) filed on November 16, 2000. The ‘700 patents is for a video game controller, with a single input member and capable of receiving user input in six degrees of freedom (6DOF). Anascape also had a priority claim (a provisional application) for the ‘700 patent, the ‘525 patent, filed on July 5, 1996, for a video game controller with multiple input members, also capable of receiving user input in 6DOF. The ‘525 patent described a prior art controller with multiple input members as “functionally and structurally deficient.” In 1998, between the filing of the ‘525 patent and the ‘700 patent, Sony began selling the DualShock controller. Ansacape admitted if its priority claim of ‘525 does not stand, then that the DualShock controller would invalidate the later ‘700 patent. The issue is, whether the specification of the earlier ‘525 patent supports not only controllers with a single input member, as described and claimed in the ‘525 patent, but also controllers with multiple input members, as described and claimed in the ‘700 patent.

Procedural Posture:
Anascape brought suit in the Eastern District of Texas and the case was tried jury 2008. The jury found that two specific Nintendo controllers did not infringe on Anascape’s patent but that the Wii Classic Controller, the WaveBird controller and the Nintendo GameCube controllers infringed on the Anascape patent. Nintendo appealed.
The Federal Circuit Court of Appeals for the Fourth Circuit found that none of Nintendo’s controllers infringe.
(The U.S. Supreme Court denied cert when Anascape appealed.)

The Court of Appeals reversed the Texas district court. The ‘700 claims are not entitled to the ‘525 claim filing date of July 5, 1996, therefore judgment of infringement by Nintendo cannot stand. .

Likely future importance:
Anascape’s ‘700 claim was too narrow and could not later be broadened to accommodate its legal claims. This reinforces to patent applicants to construct the claim as broad as possible without risking denial from the PTO.

Critical Analysis:
Judge Newman stated that in order for Anascape to use the date of the earlier 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.” The court concluded that the ‘525 specification could not reasonably be read by a PHOSITA as describing a broader invention in which the single input is merely the “preferred embodiment.” Rather the only reasonable reading of the ‘525 specification would be as describing a controller having a single input member.

This analysis is consistent with other cases dealing with the written description (Incandescent Lamp) and claim construction (Phillips v. AWH). Arguably, this was probably the right outcome from the consumer’s standpoint considering that a holding for Anascape would have perhaps forced Nintendo to cease selling a very popular product.


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