Federal Circuit: Disparagement of Prior Art in the Specification Can Limit Claim Language

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85-3. Disparagement of Prior Art in the Specification Can Limit Claim Language, Even Without Disavowal or Lexicography

UltimatePointer, L.L.C. v. Nintendo Co. (Fed. Cir. Mar. 1, 2016) (Before Lourie, Dyk, and Wallach, J.) (Opinion for the court, Lourie, J.). Click Here for a copy of the opinion.

UltimatePointer sued Nintendo for infringement of a patent on a “direct pointing system.” The specification of the patent described two general ways of making pointing devices: direct and indirect.  Indirect pointing devices are those where the pointing device has an indirect relationship with the location of the pointer, such as a mouse or trackball.  Direct pointing devices are those where physical pointing or aim and the orientation of the pointer are aligned, such as a laser pointer.  The specification explained that direct pointing devices are superior because they are quicker and more intuitive.

The Nintendo Wii includes a wireless remote and sensor bar.  The remote can be used to control an on-screen cursor by pointing the remote at the screen.  The remote has an image sensor on the front which can detect infrared light transmitted by the sensor bar.  By detecting the location of the infrared light, it can calculate its relative position to the screen, and the Wii uses this information to display the cursor. Nintendo moved for summary judgment of non-infringement and validity.  The district court granted both motions, holding that the Wii remote, and its indirect pointer, did not infringe, and that several claims in the patent were invalid as indefinite. UltimatePointer appealed both motions.

First, UltimatePointer argued that the district court improperly construed “handheld device” to require direct pointing, because there was no disavowal or lexicography in the specification to exclude indirect pointing.  Nintendo argued that the specification extols direct pointing and repeatedly criticizes indirect pointing.  The Court agreed, holding that repeated characterization of the invention as a “direct pointing system,” repeated descriptions of the advantages of direct pointing, and repeated disparagement of indirect pointing all indicate that the term “handheld device” should be limited to direct pointing devices.

Second, UltimatePointer argued that, even under this claimed construction, the district court erred in granting summary judgment of non-infringement to Nintendo. UltimatePointer presented various manuals, technical documents, and other materials to show that the Wii remote was intended to be used in a configuration where the aim of the Wii remote would correspond with the location of the pointer on the screen, to provide direct pointing. Nintendo responded that the remote only responds to the sensor bar, and if the sensor bar moved, any approximation of direct pointing vanishes. Further, to actually achieve direct pointing, the remote would need to perform various calculations to account for distance, size of the screen, etc. The Court agreed, holding that the Wii remote was not a direct pointing system.  While the effect of using the remote with the sensor bar can provide the illusion of a direct pointing device, the cursor is placed on the screen based on an indirect relationship.  Therefore, the district court did not err in granting summary judgment.

Third, UltimatePointer challenged the district court’s finding of indefiniteness.  Several claims were held to be indefinite because they combined aspects of methods and systems.  For example, several claims recite “a handheld device including: an image sensor, said image sensor generating data.”  The district court concluded that these limitations made it unclear whether infringement occurred when the system is assembled or when it is operated.  UltimatePointer argued that these claims are not indefinite, because they appropriately recite functions that the system is capable of performing.  The Court agreed with UltimatePointer.  Accordingly, the judgment of the district court regarding indefiniteness was reversed.