Patent asserted against Wii deemed invalid. ILIFE v. NINTENDO

A patent is a set of exclusive rights granted to the inventor of a new, useful and not obvious invention. In the United States an inventor gains a patent by filing a patent application with the United States Patent and Trademark Office. The patent application is reviewed by a patent examiner at the United States Patent and Trademark Office and if the patent application meets all the requirements, the inventor is granted a patent on the invention. A patent gives its owner the exclusive right to make, use, sell and import the invention in the United States.

After a patent is granted, it can still be invalidated. One of the grounds for invalidating a patent is the subject matter to which the invention relates. A patent can be granted on any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof. This requirement is articulated in 35 U.S.C. § 101 of United States Patent Law. There are also some judicially created exceptions to patent eligible subject matter, namely, laws of nature, physical phenomena, and abstract ideas. Patents that have been granted in the past can be deemed invalid if court precedent changes the definition of these judicially created exceptions.

The United States Supreme Court has held that fundamental economic practices are not patent eligible because they are abstract ideas. Alice Corp. Pty. Ltd. v. CLS Bank Int’l, 573 U.S. 208 (2014) articulates the present test to determine whether a patent which involves an abstract idea is eligible for patent protection. The first step in the Alice test is to determine whether the claims of the patent are directed to a patent-ineligible concept, like an abstract idea. If the first step is true, then each patent claim is reviewed both individually and ‘as an ordered combination’ to determine whether the additional elements ‘transform the nature of the claim’ into a patent-eligible application.

ILIFE TECHNOLOGIES, INC. v. NINTENDO OF AMERICA, INC., 20-1477 (C.A.F.C. 2021) is an example of a case where a patent was invalidated because it was directed to an abstract idea.

Plaintiff in this case owns U.S. Patent No. 6,864,796 (the ’796 patent), which is directed to a motion detection system that evaluates relative movement of a body based on both dynamic acceleration (e.g., vibration, body movement) and static acceleration (i.e., the position of a body relative to earth).

Defendant is a major producer of video games and video game consoles. Some of Defendant’s products such as the Wii and WiiU use a player’s body position and movement to control games.

In 2013 Plaintiff sued Defendant’s products infringed on the ’796 patent. Prior to trial Defendant moved for summary judgment asserting that the ’796 patent was directed to patent ineligible subject matter. The court declined to decide that issue, the parties continued to trial, agreeing not to present eligibility questions to the jury. The jury found for the Plaintiff and awarded a judgment of roughly $10 Million. Defendant then moved for judgment as a matter of law (“JMOL”) on the grounds the patent was directed to ineligible subject matter. The court granted the motion holding that ’796 patent was directed to the abstract idea of “gathering, processing, and transmitting information” and failed to recite an inventive concept. Plaintiff then appealed to the Court of Appeals for the Federal Circuit.

On appeal Plaintiff argued that the ’796 patent is not directed to an abstract idea because it recites a physical system that incorporates sensors and improved techniques for using raw sensor data. The Federal Circuit found that the ’796 patent is not focused on a specific means or method to improve motion sensor systems, nor is it directed to a specific physical configuration of sensors. Therefore the patent was directed to an abstract idea because it contains nothing more than the idea of gathering processing and transmitting data.

With respect to the second step of the Alice test, the Federal Circuit concluded that the ’796 patent’s sensing and processing static and dynamic acceleration information using generic components does not transform the invention into patent eligible subject matter. The patent did not recite any unconventional means or method for configuring or processing that information, therefore it lacked inventive concept. Based on these conclusions the Federal Circuit affirmed the district courts judgment.

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