Anascape v. Nintendo (Fed. Cir. 2010)
A jury found that the Nintendo Wii and GameCube infringe Anascape’s U.S. patent No. 6,906,700. The ‘700 patent claims priority to a parent application and, as it turns out, needed that priority to avoid intervening prior art. On appeal, the Federal Circuit found the asserted claims invalid — holding that parent application could not serve as a priority document because it did not describe the invention as claimed in the ‘700 patent.
In my recent article on antedating prior art, I suggest that the prevalent practice of quickly filing provisional and other patent applications has largely supplanted patentee’s need to prove a prior invention date. In order to claim priority to an earlier-filed patent document, that document “must meet the requirements of 35 U.S.C. 112 p1, as to that claimed subject matter.” These requirements include enablement, written description, and best mode.
Here, the focus was on whether the priority disclosure satisfied written description requirement for the newly added claims of the ‘700 patent. Anascape’s specific problem was that the priority document identified a single “input member” that could measure movement along six degrees of freedom while the ‘700 patent claims were directed toward a controller with multiple input members that each measured fewer than six degrees of freedom.
Written Description of the Invention: The ‘700 patent’s priority document discussed prior art game controllers that were operable with fewer than six-degrees of freedom. In its analysis, the Federal Circuit refused to consider that disclosure as applicable to the written description requirement because that disclosure “is not a description of the [claimed] invention; [rather,] it is a description of prior art joysticks as generally used in video games.”
Writing in Concurrence, Judge Gajarsa writes that this particular use of the written description requirement is “best” and preferred use of the doctrine. Namely, written description should primarily be primarily used to police priority and new matter issues and other questions of inadequate disclosure should be handled by enablement. In my recent study of the written description requirement, I found that the USPTO is largely following Judge Gajarsa’s guidance in asserting written description rejections primarily to police priority and new matter issues.
Notes:
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This decision appears to eliminate what was likely a $100 million total payout for Anascape. The decision also eliminates the permanent injunction that had been stayed pending appeal.
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Anascape appears to be primarily owned by the inventor of the ‘700 patent, Brad Armstrong. Armstrong prosecuted the applications himself. Armstrong has several continuations pending. In addition, Anascape appears to have a still-pending (but stayed) litigation against Nintendo based on several more patents that are currently undergoing reexamination.
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Microsoft was originally a defendant in this case, but settled in a confidential agreement.
