iLife Technologies, Inc. v. Nintendo of America, Inc. (N.D. Tex. 2020)

Author – Prayank Khandelwal, Amit Koshal, Aakash SM

“Nintendo has a long history of developing new and unique products, and we are pleased that, after many years of litigation, the court agreed with Nintendo”. “We will continue to vigorously defend our products against companies seeking to profit off of technology they did not invent.”[1] - Ajay Singh, Nintendo of America’s Deputy General Counsel post their victory over their seven yearlong battle with iLife technologies that included the overturning of a decision which could have costed Nintendo to pay $10 million in damages.

Analysis

Alice Corp. v. CLS Bank, the landmarkcase decided by the US Supreme court stating that adding “on a computer” toan abstract idea does not make it patentable, has created flaming hoops formaintenance of validity of the patent and turned the Supreme Court's cases post-Alice at the Federal Circuit into a gameof whack a mole in which one must guess the level of detail required for aninvention to cross over from "abstract" to "non-abstract."

However, it’s the reliance on the Alice test that ended up securing the victory for Nintendo in theirfeud with iLife Technologies that began back in 2013 where the company claimedthat Nintendo used their patent that detects falls and when babies showsymptoms of sudden infant death syndrome.

The tests as stated in the Alice case by the Supreme Court ofU.S. were as follows;

First, we determine whether the claims at issueare directed to one of those patent-ineligible concepts [i.e.law of nature, natural phenomena, or abstract idea].

If so, we then ask, “[w]hat else is there in the claims before us?” To answer that question, we consider the elements of each claim both individually and “as an ordered combination” to determine whether the additional elements “transform the nature of the claim” into a patent-eligible application. We have described step two of this analysis as a search for an “inventive concept”—i.e., an element or combination of elements that is “sufficient to ensure that the patent in practice amounts to significantly more than a patent upon the [ineligible concept] itself.” The U.S. District court of the Northern District of Texas while overturning the decision passed in 2017 by the Dallas jury (that had awarded iLife $10 million in damages for infringing patent 6864796 for the technology used by “Wii” and “Wii U” motion controllers known as "Wiimotes” and the calculation for the same was done keeping in mind sales of Nintendo’s Wii U games including Wii Sports, Wii Sports Resort, Wii Club Sports and Mario Kart 8) stated that one must further decide whether any element or combination of elements in the claim is sufficient to ensure that the claim amounts to significantly more than the judicial exclusion.  But even elements or combinations of elements isn’t prima facie enough as if it’s routine or conventional then it’s likely to get rejected for the lifting of the claim of infringement under 35 USC 101 - Inventions Patentable.  While this inquiry is generally carried out as a matter of law, factual issues can come into play when determining whether something is well-understood, routine, and conventional.

The court described the patent as a system for evaluatingbody movement relative to an environment.  The system includes a sensorthat detects dynamic and static accelerative phenomena of the body.  Thesensor senses one or more absolute values, changes in value, or somecombination of the same and generates an output signal to processor.  Theprocessor then evaluates the signal to determine whether the body is in anacceptable or unacceptable state.  The patent describes acceptable orunacceptable as within or beyond tolerance.

The claim 1 of infringement being:

A system within a communications device capableof evaluating movement of a body relative to an environment, said systemcomprising:
    a sensor, associable with said body, that sensesdynamic and static accelerative phenomena of said body, and
    a processor, associated with said sensor, thatprocesses said sensed dynamic and static accelerative phenomena as a functionof at least one accelerative event characteristic to thereby determine whethersaid evaluated body movement is within environmental tolerance
    wherein said processor generates tolerance indicia inresponse to said determination; and
    wherein said communication device transmits saidtolerance indicia.

Conclusion

Of course, consideration for improvement on hardware was alsotaken but ultimately, the Court concluded that "the claim does notdisclose any improvement in the sensor's ability to collect information, suchas collecting previously unknown information or collecting information moreaccurately and it does not disclose some improvement in the processor itself,such as faster or more powerful processing."   And that the claim "is not limited to anyparticular configuration of the components that results in a technologicalimprovement . . . instead, the sensor and processor are merely tools to executean abstract idea."

The approach taken by so many patent drafters is to statewhat the patent does instead of stating what is the inventive aspect of thepatent is and how exactly it achieves what it states unconventionally.

Although Nintendo dodged a bullet with the lawsuit they stilldon’t have absolute patents for their technology either and Nintendo of Americastill has quite a few steps into the mud slinging that is the US patent system.