Genuine Enabling Technology LLC v. Nintendo Co. et al.
Docket No. 2021-2167 (https://cafc.uscourts.gov/opinions-orders/20-2167.OPINION.4-1-2022_1930021.pdf)
NEWMAN, REYNA, STOLL
April 1, 2022
Brief Summary: DC grant of summary judgment reversed as FC panel found claim construction errors. Summary: Genuine sued Nintendo for infringement US 6,219,730 directed to combining computer data streams (e.g., a “voice mouse” as a new kind of “user input device” (“UID”)). The apparatus of representative claim 1 includes an “input means for producing the at least one input signal” which the DC construed to mean “a signal having an audio or higher frequency”. During prosecution, the inventor argued a prior art disclosure (“Yollin”), e.g., “does not anticipate its use with signals containing audio or higher frequencies” and “only works for slow varying signals” to obtain allowance. Genuine argued that it is “a signal having an audio or higher frequency” (e.g., “frequencies that humans can hear”) while Nintendo argued for “[a] signal containing audio or higher frequencies” based on its belief that the inventor disclaimed lower frequencies during prosecution (prosecution history estoppel (“PHE”). Nintendo submitted an expert declaration stating that the skilled artisan would have understood Yollin’s sensors “to teach physiological sensor signals having maximum frequencies of at least 500 Hz, and that, therefore, Mr. Nguyen had disclaimed all such signals when he distinguished Yollin from his inventions during prosecution.” Nintendo argued that its “accused controllers produce the types of slow-varying signals that Mr. Nguyen disclaimed during prosecution when he distinguished his inventions from the Yollin reference.” The DC agreed with Nintendo and granted its motion for summary judgment (SJ) of non-infringement, citing Anderson (FC 2007) as standing “for the proposition that ‘an applicant’s argument that a prior art reference is distinguishable on a particular ground can serve as a disclaimer of claim scope even if the applicant distinguishes the reference on other grounds as well’”, and finding Genuine did not adequately rebut Nintendo’s expert testimony. The FC panel reviewed the DC’s claim construction and prosecution history disclaimer de novo and the underlying factual determinations for clear error (Teva, US 2015; Shire, FC 2015). The FC panel explained that it “has long ‘emphasized the importance of the intrinsic evidence in claim construction’” with extrinsic evidence being “generally ‘less reliable’” (Phillips, FC 2005; Markman, US 1996 (“risk that it will be used to change the meaning of claims in derogation of the indisputable public records consisting of the claims, the specification and the prosecution history, thereby undermining the public notice function of patents”); Vitronics, FC 1996; Aqua-Aerobic, FC 2000; Omega Eng’g, FC 2013; U.S. Indus. Chems., US 1942; Mantech, FC 1998 (“the intrinsic record ‘must be considered and where clear must be followed’”)). Regarding PHE, the FC panel explained that a disclaimer must be “clear and unmistakable” (Omega; Tech. Props., FC 2017) and that a disclaimer of “up to 500 Hz” is not “clear and unmistakable” but only dependent on expert testimony. The FC panel therefore construed “input signal’…to mean ‘a signal having an audio or higher frequency’”, and reversed and remanded the DC’s grant of SJ.