UltimatePointer v. Nintendo
| March 7, 2016
UltimatePointer v. Nintendo
March 1, 2016
Before Lourie, Dyk and Wallach. Opinion by Lourie.
Summary:
The trial judge issued summary judgment that Nintendo’s Wii console did not infringe the asserted claims and that most of those claims were invalid as indefinite. On appeal, the CAFC agreed with the trial judge’s claim construction and affirmed the non-infringement judgment, but reversed the indefiniteness judgment.
Points of Law:
Claims are usually given their “ordinary and customary meaning,” but the specification is always very relevant to claim construction, i.e., the single best guide to the meaning of a disputed claim term.
Although a court cannot read limitations from the specification into the claims, “repeated derogatory statements” in the specification regarding certain embodiments suggests that those embodiments were not intended to be within the scope of the claims.
Where the specification indicates that the disclosed invention is more limited than the literal wording of the claims, the claims should be construed in that limited manner, and there is no need a clear limiting definition or disclaimer in the specification.
To meet the definiteness requirement, a patent claim must inform those skilled in the art of the scope of the invention with reasonable certainty, when viewed in light of the specification and prosecution history.
A claim should not cover both an apparatus and a method of using that apparatus, and the claim may be indefinite if it is unclear whether infringement occurs when one creates the apparatus or when one uses the apparatus.
This Case:
UltimatePointer’s patent claimed a handheld pointing device for controlling a cursor on a projected computer screen.
Claim 1 recited:
An apparatus for controlling a feature on a computer generated image, the apparatus comprising:
a handheld device including:
an image sensor, said image sensor generating data related to the distance between a first point and a second point, the first point having a predetermined relation to the computer generated image and the second point having a predetermined relation to a handheld enclosure; and
a processor coupled to said handheld device to receive said generated data related to the distance between a first point and a second point and programmed to use the distance between the first point and the second point to control the feature on the image.
The specification disclosed direct-pointing devices – devices in which the physical “point-of-aim” coincides with the object being pointed at (e.g., a laser pointer) – and indirect-pointing devices – devices in which the pointing object has an indirect relationship to the point-of-aim of the pointing device (e.g., a cursor maneuvered by a mouse).
The trial judge construed the claim term “handheld device” to mean “a handheld direct pointing device.” Although the claim literally identifies “handheld devices” in a generic manner, the specification indicates that the disclosed invention is a direct-pointing system which is an improvement over indirect and earlier direct devices: “the invention is aimed at direct pointing.”
Since Nintendo’s accused Wii pointing system employs a cursor that is moved by the user’s interaction with a sensor bar, not with the screen, it is an indirect pointing system and there is no infringement.
On appeal UltimatePointer argued that its specification did not contain a clear definition of “handheld device” or a clear disclaimer of indirect systems, so that the claims should not be limited to their literal wording, as the trial judge had done. The CAFC disagreed, finding that there need not be such a clear definition or disclaimer – it is enough that the specification indicates that the disclosed invention is more limited than the literal wording of the claims.
Here, the CAFC followed the path of the trial judge and seized on the repeated statements in the specification characterizing the direct pointing devices as the invention and disparaging statements for indirect pointing devices. The CAFC also noted that the patent title itself referred to “direct” systems. The CAFC therefore concluded that trial judge’s claim construction and his non-infringement ruling were correct and therefore affirmed his judgment.
On the issue of indefiniteness, the trial judge found that the claims covered both an apparatus and a method of using that apparatus because they recite “a handheld device including: an image sensor, said image sensor generating data” and other similar “generating data” limitations. The trial judge therefore held that the “image sensor generating data” limitation made it unclear whether infringement occurred when an infringing system is created, or when “the apparatus is used to perform the specified function.” Accordingly, the court concluded that the claims were invalid as indefinite.
The CAFC disagreed with the trial judge. It explained that the “data generating” limitations indicate only that the associated structures have that capability. They do not require that any data be generated by the user. The claims do not recite functionality separate from the claimed structural components. Thus, the claims do not claim both an apparatus and a method, but instead claim an apparatus with particular capabilities. The CAFC therefore reversed the trial judge’s ruling that the claims were invalid as indefinite.
Takeaways:
- The practice of limiting the literal meaning of a claim to what is disclosed in the specification is alive and well.
- The patent title can be used to construe a claim.
- Functions in an apparatus or product patent should be recited as capability of structure performing that function, not actually performing that function.
Tags: claim construction > claims limited by title and specification > indefiniteness
