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Prayank Khandelwal

CASE REPORT

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 landmark case decided by the US Supreme court stating that adding “on a computer” to an abstract idea does not make it patentable, has created flaming hoops for maintenance of validity of the patent and turned the Supreme Court’s cases post-Alice at the Federal Circuit into a game of whack a mole in which one must guess the level of detail required for an invention 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 their feud with iLife Technologies that began back in 2013 where the company claimed that Nintendo used their patent that detects falls and when babies show symptoms of sudden infant death syndrome.

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

First, we determine whether the claims at issue are 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 evaluating body movement relative to an environment.  The 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 processor.  The processor then evaluates the signal to determine whether the body is in an acceptable or unacceptable state.  The patent describes acceptable or unacceptable as within or beyond tolerance.

The claim 1 of infringement being:

A system within a communications device capable of evaluating movement of a body relative to an environment, said system comprising:
    a sensor, associable with said body, that senses dynamic and static accelerative phenomena of said body, and
    a processor, associated with said sensor, that processes said sensed dynamic and static accelerative phenomena as a function of at least one accelerative event characteristic to thereby determine whether said evaluated body movement is within environmental tolerance
    wherein said processor generates tolerance indicia in response to said determination; and
    wherein said communication device transmits said tolerance indicia.

Conclusion

Of course, consideration for improvement on hardware was also taken but ultimately, the Court concluded that “the claim does not disclose any improvement in the sensor’s ability to collect information, such as collecting previously unknown information or collecting information more accurately 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 any particular configuration of the components that results in a technological improvement . . . instead, the sensor and processor are merely tools to execute an abstract idea.”

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

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

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