Nintendo Dodges $10.1 Million Jury Verdict in Texas Order Invalidating iLife Patent Under Alice

By IPWatchdog
January 22, 2020

“In its analysis overturning the jury verdict, the district court reasoned that ‘[a]t its core, Claim 1 is directed to the abstract idea of ‘gathering, processing and transmitting…information,’ as set forth in Elec. Power Grp., LLC v. Alstom S.A.

https://depositphotos.com/53632347/stock-photo-the-wii-gaming-system-in.htmlThe U.S. District court for the Northern District of Texas, Dallas Division, overturned a $10.1 million jury verdict on January 17 against Japanese gaming giant Nintendo under the Supreme Court’s Alice test, which the High Court recently declined to clarify amidst confusion.

In August of 2017, a Texas jury entered a verdict against Nintendo, finding that the company had infringed upon a patent asserted by Texas-based medical tech firm iLife Technologies Inc. The jury agreed that iLife proved that it was owed $10.1 million in a lump sum royalty for the sales of a series of games for Nintendo’s Wii U console. The jury also found that Nintendo didn’t prove invalidity of the asserted patent.

The patent at issue is U.S. Patent No. 6864796, Systems Within a Communications Device for Evaluating Movement of a Body and Methods of Operating the Same. Claim 1 of the patent, issued in March 2005, is directed to a system within a communications device capable of evaluating movement of a body relative to an environment using a sensor associated with the body sensing dynamic and static accelerative phenomena of the body and a processor that processes sensed phenomena to determine whether an evaluated body movement is within environmental tolerance and generates tolerance indicia which is transmitted by the communications device. The resulting invention results in a device capable of determining the cause of increased or decreased body activity, such as abnormal movement or potentially dangerous events like a fall.

The jury found in 2017 that sales of Nintendo’s Wii U games including Wii Sports, Wii Sports Resort, Wii Club Sports and Mario Kart 8, infringed upon claim 1 of the ‘796 patent and awarded iLife $10.1 million in damages. The jury also held the patent not invalid. Nintendo subsequently moved for judgment as a matter of law, arguing that Claim 1 is invalid because 1) it is directed to patent-ineligible subject matter; 2) it is indefinite under Section 112; and 3) it is invalid under Section 112 for lack of enablement and written description.

District Court Applies Alice Case Law

In its analysis overturning the jury verdict, the district court reasoned that “[a]t its core, Claim 1 is directed to the abstract idea of ‘gathering, processing and transmitting…information,’” as set forth in Elec. Power Grp., LLC v. Alstom S.A., 830 F.3d 1350, 1355 (Fed. Cir. 2016); SAP Am., Inc. v. InvestPic, LLC, 898 F.3d 1161, 1167 (Fed. Cir. 2018), cert. denied, 139 S. Ct. 2747 (2019); and Smartflash LLC v. Apple Inc., 680 F. App’x 977, 983 (Fed. Cir. 2017), cert. denied, 138 S. Ct. 687 (2018). The court wrote:

Claim 1 recites a system comprising conventional computer components performing various operations. ‘796 patent at 13:48–61. A sensor collects data, i.e., “senses dynamic and static accelerative phenomena.” Id. at 13:51–52. A processor analyzes that data, i.e., “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.” Id. at 13:51–57. After analysis, the processor outputs variables, i.e., “tolerance indicia.” Id. at 13:58–69. A communication device then transmits the tolerance indicia. Id. at 13:60–61….. (“[M]erel storing, transmitting, retrieving, and writing data to implement an abstract idea on a computer does not transform the nature of the claim into a patent eligible application.”)

The fact that the information collected is of a specific type—“dynamic and static accelerative phenomena”—does not save the claim, said the court. And an abstract idea implemented on a conventional computer component is still abstract. While a claim “disclosing some improvement to the functionality of conventional computer components” may be patent-eligible under step one, as held in Thales Visionix Inc. v. United States and Enfish, LLC v. Microsoft Corp, here, Claim 1 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,” said the court. Claim 1 is more analogous to claims held ineligible in cases such as TDE Petroleum Data Sols., Inc., v. AKM Enter., Inc; Electric Power; and Prism Techs. LLC v. T-Mobile USA, Inc., added the court.

Inventiveness Must Be Explicit in the Claims

At step two, the court found nothing inventive about the claim. “Overall, claim 1 encompasses a sensor that senses data, a processor that processes data, and a communications device that communicates data, and no further inventive concept is recited to transform the abstract idea into a patent-eligible invention.” iLife had argued that features discussed in the specification, including how the processor distinguishes between normal and abnormal accelerative events, whether the abnormal event is tolerable, and other physical characteristics such as temperature, pressure, force, sound and light, make it inventive. “But an inventive concept must be apparent in the claim language,” wrote the court. “Where ‘[t]he claim language does not provide any specific showing of what is inventive about the [limitation in question] or about the technology used to generate and process it,’ the claim does not satisfy step two.”

According to a Nintendo press release, the ‘796 patent was the last of six patents that iLife Technologies Inc. originally asserted against Nintendo in 2013. The other five were found invalid by the Patent Trial and Appeal Board in 2016.

“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,” said Ajay Singh, Nintendo of America’s Deputy General Counsel. “We will continue to vigorously defend our products against companies seeking to profit off of technology they did not invent.”

Commenting on the case, Ryan Meyer of Dorsey & Whitney said that the decision is another “warning to patentees, particularly with respect to computer hardware-implemented inventions, that overly broad claims are more likely to be found to be patent ineligible” and said that “as a precaution, patentees should identify the most inventive features of their invention and draft at least some claims directed specifically to those features.” Meyer further noted that “iLife’s patent arguably discloses a preferred embodiment with inventive features, but iLife’s asserted claim was found to be invalid because it fails to include any of those features.”

He added that the case is also “procedurally interesting because, although Nintendo teed up the patent ineligibility issue in a motion for summary judgment, the Court waited to decide the issue as a post-trial judgment as a matter of law, without presenting it to the jury. The Court’s decision was partly based on expert and inventor trial testimony which emphasizes how evidence presented to the jury can affect even non-jury issues.”

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Discuss this

There are currently 15 Comments comments. Join the discussion.

  1. Anon January 22, 2020 6:14 pm

    …more rope for the Gordian Knot…

    (… and Nintendo’s comment belies the finding of the jury regardless of the [eventual] eligibility finding and is NOT supported by the case). A GC should understand the patent law issues at hand a bit better than what is reflected in his comment.

  2. angry dude January 22, 2020 6:54 pm

    “warning” to patentees with respect to computer hardware-implemented inventions ???

    US Patent System is as good as DEAD

    Why waste time analyzing if patent is novel, non-obvious and enabled in the specification ?
    Why read specification at all ?
    Read the first claim. Abstract idea. Period.

  3. concerned January 23, 2020 7:48 am

    Here is the claim MUST improve the computer hardware argument at step #1 again. (“[M]ere storing, transmitting, retrieving, and writing data to implement an abstract idea on a computer does not transform the nature of the claim into a patent eligible application.”).

    Suppose the inventive concept has never been used in commence in this field or any field of commence? Still abstract at step #1? For example, a computer tracks households that have a bicycle, eats a hot dog on one Wednesday within the month, and has a red car and that tracking magically is the cure to cancer? Still abstract? Not well understood, routine and conventional in any field.

    And at Step #2…“But an inventive concept must be apparent in the claim language,” wrote the court. “Where ‘[t]he claim language does not provide any specific showing of what is inventive about the [limitation in question] or about the technology used to generate and process it,’ the claim does not satisfy step two.”

    Would that be the practical application at step #2 the lower courts do not follow?

  4. Ternary January 23, 2020 9:03 am

    “The resulting invention results in a device capable of determining the cause of increased or decreased body activity, such as abnormal movement or potentially dangerous events like a fall.” The specification explains that known systems at that time were unable to distinguish between “normal” and “abnormal” acceleration. Or between normal activities of a body or abnormal, like falling. It also can detect that normal activities have ceased. The claimed invention solves that problem. It uses known technology in a clever way.

    There is just no way in hell that the claimed invention is an abstract idea. Processors, sensors, and communication devices are all real “in this world” devices.

    Scientists, engineers and generally educated people, about 75 years ago, would have said it to be technically impossible for the claimed invention to be real. Because all elements in the claims (the processor, the sensors and communication devices) were functional fantasies. Abstract ideas, science fiction.

    It is more than bizarre that nowadays the Court (and their defendant’s henchmen attorneys who shamelessly spout and repeat this nonsense) declares the claimed invention abstract: BECAUSE IT IS REALIZABLE!

    This bifurcation of assessing engineering work needs to be resolved. It cannot be that technology is the driving force of innovation and an abstract idea at the same time. I realize we are a diverse nation where people can proclaim that the earth is 6000 years old. Doesn’t bother me. But it is different when people want that in textbooks.

    In a similar vein, I don’t want to see normal, standard, well established, tangible, and real-life devices and engineered constructs being marked as “abstract ideas” in official documents. It is nonsense, it is idiotic, it is verifiably wrong, and no person of authority should use this in legal documents. It violates the most basic meaning of “abstract” in any dictionary.

    I hope that the Court realized how nutty their decision and reasoning was. Perhaps they have no choice. (Though I think they have. There are sufficient examples of exclusionary decisions by the Courts. A bit of backbone would help. But generally the judicial branch appears to be anti-patent). It is about time that the Courts note in their decisions that the legal opinion violates common sense and engineering practice and should be addressed by Congress.

  5. angry dude January 23, 2020 9:46 am

    One can even call a mechanical drive shaft an abstract unpatentable concept (as the shameless and arrogant US courts already did) … until someone sticks that hard “abstract shaft” up your arse
    Then it becomes painfully real…
    In ANY other area like guns control, health care, welfare etc. what US courts did would already cause some major public unrest or revolution
    But patents – wtf cares other than perhaps 1% of US population ?

    Next thing Chinese master comes with a big whip to punish stupid lemmings
    Don’t want to feed your own inventors ? -You’ll feed all of China then !

  6. TFCFM January 23, 2020 10:18 am

    What I find objectionable about the decision is that — even given the currently-unsettled nature of eligibility law relating to data-handling technologies — the court declined to analyze validity under section 112 (two 112-grounds for invalidity asserted) in addition to analyzing eligibility under section 101.

    It’s hardly unforeseeable that eligibility law may change or be clarified in the near future. Should that happen in a manner fatal to the non-eligibility finding here, then the court will have to re-open the case to reconsider the 112 assertions. Had the court found invalidity on 112 grounds (in addition to non-eligibility), the same change in eligibility would leave the decision intact.

    (As far as the eligibility holding goes, this looks merely like one more case involving a greedy patent applicant trying to claim “anything that works” rather than the invention that they purport to have made, and not having had the wisdom/foresight to include dependent claims directed to what the applicant actually did or made. No tears from me on that account.)

  7. Hans U. Meyer January 23, 2020 10:30 am

    I had a (quick) look at the iLife patent. Effectively, the main claim seems overly broad. Nintendo was probably right in not suing for invalidity, as that would probably have enabled iLife to narrow the claim by integrating subclaims (possible in Europe, I guess in the States too?). Just my impression.

  8. TFCFM January 23, 2020 10:34 am

    Ternary: “There is just no way in hell that the claimed invention is an abstract idea. Processors, sensors, and communication devices are all real “in this world” devices.

    What you appear to overlook is that “the invention” is not merely a processor linked with a sensor in a communication device. (For starters, if this were “the invention,” it would be anticipated by tons of art over half a century old.) “The invention” that is claimed is these (clearly non-abstract) elements operated in cooperation with an algorithm (moreover, one not specified in the claim) that collects, processes, and transmits data in a certain way.

    Nothing remotely “inventive” relates to the non-abstract elements. To the extent there is anything novel and/or inventive about the claimed “system,” it is the algorithm which is — as the name suggests — an algorithm, which is abstract.

    That one might use the output from the system/algorithm for non-abstract purposes is not relevant to eligibility of the claimed system itself.

    Were it otherwise, every algorithm — no matter how inarguably “abstract” — would be patent-eligible, so long as it were claimed in connection with a trivial processor, memory, or storage medium. Although the USPTO was willing to allow some claims of this nature for a while, the courts have not, and Congress has never sanctioned such claims (and even the USPTO cut it out in short order).

  9. Peter Corcoran January 23, 2020 11:18 am

    How pathetic that the court waited so long to make this ruling, costing the parties millions. It’s judicial malpractice.

  10. Concerned January 23, 2020 1:28 pm

    Ternary @4:

    Scientists, engineers and generally educated people, about 75 years ago, would have said it to be technically impossible for the claimed invention to be real.

    The experts in my field have only been trying for 63 years to solve the problem my process solved.

    TFCFM@8:

    That one might use the output from the system/algorithm for non-abstract purposes is not relevant to eligibility of the claimed system itself.

    Both SCOTUS and USPTO have stated abstract ideas toward new and useful ends (practical application) are patentable.

  11. angry dude January 23, 2020 1:32 pm

    TFCFM @8

    “…every algorithm — no matter how inarguably “abstract” — would be patent-eligible, so long as it were claimed in connection with a trivial processor, memory, or storage medium”

    Dude,

    Get a clue, please

    There is nothing abstract about algorithms
    ANY algorithm executing on a processor IS NOT abstract by definition:
    it actually has some physical inputs and physical outputs to achieve a specific goal – it is an apparatus claim, not a method claim – a specialized machine

    However, an algorithm HAS to be useful for something, novel, non-obvious and fully enabled in the description (like detailed flowchart or pseudo code) to be PATENTABLE

    Why is this so difficult for dudes like you to understand ?

  12. Jim Baunach January 23, 2020 1:42 pm

    TCFM: “That one might use the output from the system/algorithm for non-abstract purposes is not relevant to eligibility of the claimed system itself”

    But the claim in fact does use the output for non-abstract purposes (“determine whether said evaluated body movement is within environmental tolerance”).

  13. Anon January 23, 2020 2:29 pm

    angry dude,

    TFCFM has shown a rampant and willful disregard for “getting a clue.”

    He has an extreme confirmation bias in support of ineligibility for certain fields of innovation — to the point of accusing Congress of gross dereliction of duties while admiring the raiments of the Supreme Emperors.

    One should “consider the source” with his posts.

  14. Curious January 23, 2020 4:21 pm

    What I find objectionable about the decision …
    is that the judge didn’t find more ways to kill the patent? At least you are consistent in your anti-patent views.

    one more case involving a greedy patent applicant
    Yes … anybody who asserts a patent is a “greedy patent applicant.” Isn’t that Step 2 of the patent infringer’s basic play book? Step 1 being an assertion that the invention is nothing more than an abstract idea.

    “The invention” that is claimed is these (clearly non-abstract) elements operated in cooperation with an algorithm (moreover, one not specified in the claim) that collects, processes, and transmits data in a certain way.
    Welcome to the world of sensors. Sensors take (sensed) data and transform that data into something useful. However, the claimed invention didn’t simply recite using a sensor relative to a body. Rather, the claimed invention was directed to gathering data and using that sensor data in a way not previously known. For those of us who have actually read Electric Power Group, that fact pattern does not fit the fact pattern of Electric Power Group, which was about using gathering known data, evaluating that data in a known way, and then presenting that data in a known way … albeit on a computer.

    it is the algorithm which is — as the name suggests — an algorithm, which is abstract
    Except an algorithm isn’t recited.

    Were it otherwise, every algorithm — no matter how inarguably “abstract” — would be patent-eligible, so long as it were claimed in connection with a trivial processor, memory, or storage medium
    Nice straw man argument.

    Although the USPTO was willing to allow some claims of this nature for a while, the courts have not, and Congress has never sanctioned such claims (and even the USPTO cut it out in short order).
    LOL USP 10335059, issued on July 2, 2019 recites:
    A fall detection system for use in detecting falls by a user, the fall detection system comprising: a processing unit configured to determine context information about the user and/or an environment in which the user is located, and to increase a detection sensitivity of a fall detection algorithm used to detect falls by the user based on the determined context information indicating that the user is at an increased risk of falling, the increase in detection sensitivity occurring while the increased risk of falling is indicated by the determined context information.

    I found this patent by looking at the patents that referenced USP 6864796. Claims of this nature are easily patentable under 35 USC 101.

  15. Ternary January 23, 2020 4:23 pm

    TFCFM: ” every algorithm — no matter how inarguably “abstract” — would be patent-eligible.” Have you been paying attention to what is actually discussed on this site? Any algorithm ‘per se’ is abstract. There is no level of abstractness there.

    I am not overlooking that the processor is operated “in cooperation with an algorithm.” Because the processor is not operated at all “in cooperation with an algorithm.” That is a nonsense statement, in the sense that there is no verifiable scientific meaning in that sentence. An algorithm is not some independent entity (like the aether) that does something in collaboration with something else. An algorithm is a description. Nothing more.

    The claimed machine is operating in accordance with an algorithm. And a processor performing a switching operation in accordance with or represented by an algorithm is a machine. You don’t really believe that a digital calculator actually calculates? Well, do you?

    To help you out a bit, a Linear Feedback Shift Register (LFSR), may be described as a irreducible polynomial over a finite field. However, the LFSR is clearly not itself an irreducible polynomial, but a machine and it does not calculate an irreducible polynomial over a finite field.

    An LFSR thus is not abstract (but the polynomial is). Once it is known how one can create an LFSR based on an irreducible polynomial, other LFSRs created on this design methodology may no longer be novel or non-obvious. But they are still machines and not abstract ideas. And there are well defined methods to address non-obviousness in patent examination and patent validity. But 101 should not be one of them.

    An output of a processor (even when described by an algorithm, oh my they use math. Call Alice to the rescue) is a signal. In Re: Nuijten it was held that a device that generates a signal is a machine and thus patent eligible.

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