Several days ago Nintendo Co., Ltd. announced that Impulse Technology Ltd. voluntarily abandoned a patent-infringement lawsuit brought against Nintendo of America. Impulse voluntarily dismissed the case following what Nintendo characterized as “an unfavorable decision from Judge James Gwin of the U.S. Federal District Court for the Northern District of Ohio (Eastern District) that undermined Impulse’s legal arguments.” In fact, Impulse Technology’s patent infringement lawsuit against all of the defendants is in tatters.
The complaint, which was originally filed on November 18, 2011, alleged that Nintendo, Electronic Arts, Ubisoft, THQ, Konami Digital Entertainment, Majesco Entertainment and Namco Bandai Games America were all infringing U.S. Patent No. 5,524,637.
The allegation in the complaint relative to Nintendo is illustrative of the allegations against all the defendants. The complaint asserted:
Nintendo has made, used, offered to sell, and/or sold within the United States, and/or has imported into the United States, products incorporating technology for measuring physiological exertion including at least the Wii game console (“the Wii”), the Wii Remote, the Wii Balance Board, and Wii Fit Plus. The Defendants’ accused video games, including Nintendo’s Wii Fit Plus, are intended to be used with a Wii, a Wii Remote and/or Wii Balance Board, and a display. The combination of each of Defendants’ accused video games, a Wii, a Wii Remote and/or Wii Balance Board, and a display, forms a system that is covered by at least one claim of the ‘637 patent.
As the litigation progressed, Impluse alleged that the defendants infringed claims 1, 3, 13, 14, 16 and 17 of the ‘637 patent.
Judge Gwin entered his Order construing the claim terms on October 9, 2012, which is the thread that seems to have lead to the unraveling of the Impulse Technology infringement suit. In this decision, Judge Gwin cited as the most important difference between the parties’ offered interpretations as relating to the claim terminology: “correlation means for correlating said signal indicative of said motion of said user with a level of physiological exertion of said user.”
The parties agreed this was a means-plus-function term and should be interpreted consistent with 35 U.S.C. 112 6th paragraph. Agreement ended there, though. The Defendants argued that the patent claim must specifically describe the algorithm used to carry out the correlation, as is now the law of the Federal Circuit, without any doubt, when means-plus-function claims are employed for this type of claimed invention. The Defendants, not surprisingly, went on to argue that the description of the calculation or algorithm to enable a user to utilize the patent was insufficient.
In contrast, Impluse Technology sought an interpretation finding the structure for this term to be a computer implementing a general algorithm to estimate exertion from the acceleration data and pertinent individual information. In other words, Impulse Technology said that the patent only identifies a general approach to identifying the appropriate algorithm. Judge Gwin interpreted this to mean that Impulse Technology was seeking an interpretation where the structure the user would need to reference would come from outside materials extraneous to the patent.
After going through the recent Federal Circuit cases on the issues, what I and others refer to as the “algorithm cases,” Judge Gwin explained: “Because Plaintiff Impulse Technology’s ‘637 patent fails to provide a sufficient description of the structure to be used to correlate the motion of the signal with a level of physiological exertion, the Court rejects Impulse Technology’s initially proposed construction of this term.”
Impulse Technology offered a secondary claim construction, arguing that even if outside information would be necessary for the broadest construction, there was sufficient information in the specification relating to the algorithms associated with certain activities. This led Judge Gwin to construe the seminal term thusly:
The Court therefore construes “correlation means for correlating said signal indicative of said motion of said user with a level of physiological exertion of said user” for walking and running in place to be a structure involving a computer that implements an algorithm that 1) first computes the rate of locomotion or speed by multiplying the step height by a coefficient of 5 to obtain the stride length, and multiplying that stride length by the stepping rate to obtain the effective speed; 2) then multiplies the effective speed times 0.56 to estimate the rate of exertion; 3) then uses height and weight to calculate whether the user is obese and increases the exertion rate by 20% if so; 4) then adjusts for age by adding 1% for every year younger or older than 44, up to 30%; 5) then adjusts for gender and increases the exertion level by 10% if the subject is female; 6) then adjusts for conditioning by decreasing exertion levels by 25% for a user with good training and decreasing exertion levels by 35% for someone in superb training.
However, Judge Gwin rules that the ‘637 patent gave insufficient information for this seminal claim terminology to cover calisthenics, swimming, skiing, or a training program.
“We are very pleased with the court’s ruling, which forced Impulse to walk away from this lawsuit,” said Richard Medway, Nintendo of America’s deputy general counsel. “Nintendo vigorously defends patent lawsuits when we firmly believe that we have not infringed another party’s patent. We will continue our tradition of developing unique and innovative products while respecting the intellectual property rights of others.”
Ultimately, Nintendo’s characterization of Judge Gwin’s ruling as a victory seems correct. Just 10 days later, on October 19, 2012, Impulse Technology filed a stipulated motion for dismissal as to all claims with prejudice. Conversely, Nintendo dismissed its claims against Impulse without prejudice. Quite a victory indeed.