DCT

2:24-cv-01490

Malikie Innovations Ltd v. Nintendo Co Ltd

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I. Executive Summary and Procedural Information

  • Parties & Counsel:
  • Case Identification: Malikie Innovations Ltd. et al. v. Nintendo Co. Ltd. et al., 2:24-cv-01490, W.D. Wash., 09/17/2024
  • Venue Allegations: Venue is alleged to be proper in the Western District of Washington because Defendant Nintendo of America, Inc. has a permanent and established place of business in the district. Venue over Defendant Nintendo Co., Ltd. is asserted based on its status as a foreign corporation.
  • Core Dispute: Plaintiff alleges that Defendant’s Nintendo Switch family of gaming consoles, associated accessories, and software infringe six patents related to parental controls, directional motion input, battery charging, docking station mechanics, and wireless communication methods.
  • Technical Context: The asserted patents cover a range of technologies integral to modern portable electronic devices, a field central to the consumer electronics and interactive entertainment markets.
  • Key Procedural History: The complaint alleges that the patents’ previous owner, BlackBerry, first notified Nintendo of alleged infringement and offered a license on December 3, 2020. Subsequent licensing discussions between Plaintiff and Nintendo allegedly occurred, including a meeting in December 2023, but did not result in an agreement.

Case Timeline

Date Event
2000-10-27 ’305 Patent Priority Date
2001-07-09 ’731 Patent Priority Date
2001-10-17 ’065 Patent Priority Date
2002-12-12 ’571 Patent Priority Date
2004-02-11 ’397 Patent Priority Date
2009-05-05 ’305 Patent Issue Date
2011-06-30 ’247 Patent Priority Date
2012-02-14 ’731 Patent Issue Date
2013-10-01 ’247 Patent Issue Date
2013-12-17 ’397 Patent Issue Date
2016-04-12 ’065 Patent Issue Date
2017-01-10 ’571 Patent Issue Date
2020-12-03 BlackBerry sends letter to Nintendo alleging infringement
2021-01-28 BlackBerry sends follow-up letter to Nintendo
2023-08-14 Malikie sends letter to Nintendo identifying 19 allegedly infringed patents
2023-12-01 Malikie and Nintendo representatives meet for license discussions (approx. date)
2024-08-09 Malikie sends letter identifying additional allegedly infringed patents
2024-09-17 Complaint Filing Date

II. Technology and Patent(s)-in-Suit Analysis

U.S. Patent No. 9,542,571 - "System and Method of Owner Application Control of Electronic Devices"

The Invention Explained

  • Problem Addressed: The patent describes the problem of device owners, particularly in a corporate context, having limited means to control which software applications are installed and used on devices provided to employees, noting that existing schemes could be circumvented by users (’571 Patent, col. 2:56-col. 3:2).
  • The Patented Solution: The invention provides for "owner application control information" to be stored on an electronic device. This information, which can include lists of required, allowed, or excluded applications, is consulted to control the installation and execution of software. If a required application is missing, the system can be configured to disable device operations or download the necessary application automatically (’571 Patent, Abstract; col. 4:1-11). Figure 8 illustrates a flowchart where the device checks if a "required" application is available and, if not, can disable operation or download the application (’571 Patent, Fig. 8).
  • Technical Importance: This technology provided a framework for centralized management and policy enforcement on fleets of electronic devices, a critical function for corporate IT departments managing security and compliance.

Key Claims at a Glance

  • The complaint asserts independent claim 10.
  • The essential elements of claim 10 include:
    • A device comprising a processor and memory.
    • The processor is configured to receive owner control information from a device owner.
    • The owner control information comprises a list of applications permitted for installation and permissions associated with each application.
    • The processor is also configured to store this information in a protected data store to prevent alteration or deletion, in response to authenticating the information using owner information.
    • The processor receives requests from an application to access local memory.
    • The processor then determines if the application is allowed to access the memory by identifying an associated permission in the owner control information.
    • Finally, the processor controls the application's access to local memory based on that determination.
  • The complaint does not explicitly reserve the right to assert dependent claims for this patent.

U.S. Patent No. 8,115,731 - "Method of Operating a Handheld Device for Directional Input"

The Invention Explained

  • Problem Addressed: The patent addresses the trade-off on handheld devices between screen size and the physical space required for directional input controls like trackballs or touchpads. It notes that while side-mounted thumbwheels save space on the device's face, they have limited functionality and ergonomic challenges (’731 Patent, col. 1:50–col. 2:11).
  • The Patented Solution: The invention proposes using the physical orientation of the handheld device itself as a directional input. An embedded sensor detects the device's inclination, and a direction interpreter converts this physical motion into a directional signal that can be used to control a graphical element on the screen, such as moving a cursor (’731 Patent, Abstract; col. 5:44-51). Figure 1 illustrates a sensor that detects the motion of a circuit-closing means (25) in response to the device being tilted, which is then interpreted to generate a directional signal (76) (’731 Patent, Fig. 1).
  • Technical Importance: This technology is a foundational concept for motion-based controls in portable electronics, enabling more intuitive and immersive user interfaces without consuming valuable surface area on the device.

Key Claims at a Glance

  • The complaint asserts independent claim 1.
  • The essential elements of claim 1 include:
    • A handheld computing device with a display.
    • An internally located directional input device providing a first directional signal corresponding to an axis of inclination and indicating an orientation.
    • A second directional input device providing a second directional signal indicating an amount of displacement.
    • A processor coupled to both input devices, operable to receive and process the first signal in conjunction with the second signal.
    • A memory subsystem storing an operating system.
    • The operating system, when executed, displays a graphical user interface with a graphical element.
    • The operating system includes instructions that cause the graphical element to move by the amount of displacement in a direction related to the orientation.
  • The complaint does not explicitly reserve the right to assert dependent claims for this patent.

U.S. Patent No. 8,610,397 - "Battery Charger for Portable Devices and Related Methods"

  • Technology Synopsis: The patent addresses the problem of a single charger being used with multiple devices and batteries that have different charging parameters (e.g., voltage, current limits). The solution is a charger with a controller that identifies the connected device and/or battery type and selects appropriate charging parameters to avoid damage (’397 Patent, Abstract; col. 2:15-38).
  • Asserted Claims: At least independent claim 1 is asserted (Compl. ¶56).
  • Accused Features: The Nintendo Switch with Dock, AC Adapter, Joy-Con Charging Grip, and Pro Controller, all of which use USB Type-C for charging, are accused of infringement (Compl. ¶¶56, 58).

U.S. Patent No. 8,545,247 - "Dock for Portable Electronic Device"

  • Technology Synopsis: This patent describes a dock for a portable electronic device designed to prevent damage during connection. It features a connector mounted in an elastically deformable support, which allows the connector to move or pivot in response to non-axial force, thereby accommodating misalignment when a user inserts the device (’247 Patent, Abstract; col. 1:33-41).
  • Asserted Claims: At least independent claim 1 is asserted (Compl. ¶64).
  • Accused Features: The Nintendo Switch Dock is accused of infringing this patent (Compl. ¶64).

U.S. Patent No. 7,529,305 - "Combination of Space-time Coding and Spatial Multiplexing, and the use of Orthogonal Transformation in Space-time Coding"

  • Technology Synopsis: The patent relates to wireless communication systems with multiple antennas (MIMO). It proposes a method to improve signal reliability and spectral efficiency by combining space-time coding with spatial multiplexing, using orthogonal transformation matrices to ensure each data substream contributes to the signal on each transmit antenna (’305 Patent, Abstract; col. 2:50-54).
  • Asserted Claims: At least independent claim 1 is asserted (Compl. ¶69).
  • Accused Features: The wireless connectivity features of the Nintendo Switch, Switch Lite, and Switch OLED are accused of infringing this patent (Compl. ¶¶69, 71).

U.S. Patent No. 9,313,065 - "Scattered Pilot Pattern and Channel Estimation Method for MIMO-OFDM Systems"

  • Technology Synopsis: This patent addresses channel estimation in MIMO-OFDM wireless systems, which is necessary for reliable data recovery. It describes a method of inserting encoded pilot symbols (known signals) into the data stream in a specific "scattered" or "diamond lattice" pattern, which allows the receiver to estimate the channel conditions more efficiently and with less overhead (’065 Patent, Abstract).
  • Asserted Claims: At least independent claim 1 is asserted (Compl. ¶77).
  • Accused Features: The Wi-Fi functionality of the Nintendo Switch, Switch Lite, and Switch OLED, which use OFDM, are accused of infringing this patent (Compl. ¶¶77, 79).

III. The Accused Instrumentality

Product Identification

  • The accused instrumentalities are the Nintendo Switch, Nintendo Switch OLED, and Nintendo Switch Lite gaming consoles; the Nintendo Parental Controls App; and associated accessories including the Joy-Con Controllers, Nintendo Switch Dock, Nintendo Switch AC Adapter, Nintendo Joy-Con Charging Grip, and Nintendo Switch Pro Controller (collectively, the "Accused Products") (Compl. ¶¶ 40, 48, 56, 64, 69, 77).

Functionality and Market Context

  • The complaint describes the Accused Products as a commercially successful hybrid gaming system that can be used as a home console connected to a television via the Dock or as a portable handheld device (Compl., Ex. H, p. 1). Key technical functionalities cited in the infringement allegations include:
    • A software application, the Nintendo Parental Controls App, that allows a parent or guardian to set restrictions on game content, playtime, and online interactions for the Switch console from a separate smart device (Compl. ¶¶40, 42). A screenshot provided in the complaint shows the user interface for setting restriction levels such as "Teen," "Child," or "Custom" (Compl., Ex. G, p. 12).
    • Motion-based input via the Joy-Con controllers, which contain internal accelerometers and gyroscopes to track physical movement, inclination, and displacement, translating those motions into in-game actions (Compl. ¶50).
    • A charging ecosystem based on the USB Type-C standard, used by the Switch console, Dock, AC Adapter, and certain controllers to manage power delivery for recharging internal batteries (Compl. ¶¶56, 58).
    • A physical docking station (the Nintendo Switch Dock) that mechanically receives and aligns the console to establish connections for charging and video output (Compl. ¶64).
    • Wireless networking capabilities supporting Wi-Fi standards (e.g., 802.11), which utilize multi-antenna (MIMO) and Orthogonal Frequency Division Multiplexing (OFDM) technologies for data transmission (Compl. ¶¶71, 79).

IV. Analysis of Infringement Allegations

’571 Patent Infringement Allegations

Claim Element (from Independent Claim 10) Alleged Infringing Functionality Complaint Citation Patent Citation
a device comprising: a memory; and a processor coupled with the memory and configured by instructions stored in the memory to: The Nintendo Switch family of devices include a processor and memory. ¶40; Ex. G, p. 2-6 col. 4:51-56
receive owner control information from an owner of the device The Nintendo Switch devices receive owner control information (parental control settings) from a parent/guardian via the Nintendo Parental Controls App on a smart device or through a Nintendo Account. ¶40; Ex. G, p. 7-9 col. 4:1-5
wherein the owner control information comprises: a list of applications permitted for installation on the electronic device, and permissions associated with each permitted application... The parental controls system provides a list of permitted applications by allowing restrictions based on age ratings (e.g., ESRB), which implicitly defines permitted software categories, and includes permissions such as restricting playtime or online communication. ¶40; Ex. G, p. 12-16 col. 3:35-51
store the owner control information in a protected data store to prevent alteration or deletion of the owner control information in response to authenticating the owner control information... Parental controls are set and protected by a PIN chosen by the parent/guardian; this PIN is required to adjust or change settings, thus authenticating the owner and protecting the settings from unauthorized alteration. ¶40; Ex. G, p. 17-20 col. 46:14-22
receive, from an application operating on the electronic device, a request to access local memory... A game (application) running on the Switch requests access to system resources, which constitutes a request to access local memory for its operation. ¶40; Ex. G, p. 23 col. 46:22-26
determine whether the application is allowed to access the local memory in response to identifying a permission associated with the application in the owner control information... The system determines if a game is allowed to run based on the established parental controls (e.g., checking if playtime has expired or if the game's rating is permissible). The complaint includes a screenshot showing an on-screen alarm when a play time limit is reached, indicating the system is checking permissions (Compl., Ex. G, p. 23). ¶40; Ex. G, p. 23 col. 46:26-30
and control application access to the local memory based upon the determining. Based on the determination, the system controls the application's access by either allowing it to continue, suspending the software, or notifying the user that the time limit has been reached. ¶40; Ex. G, p. 23 col. 46:30-33
  • Identified Points of Contention:
    • Scope Questions: A central question may be whether Nintendo's system of setting rules based on age ratings, playtime, and features (e.g., social media) meets the claim limitation of "a list of applications permitted for installation." Defendant may argue that restricting categories of software is distinct from the patent's apparent focus on managing an explicit list of specific, named applications for installation in a corporate setting.
    • Technical Questions: The analysis may focus on whether a game's normal operation (e.g., reading/writing save data) constitutes a "request to access local memory" that is then adjudicated against the "permissions" (e.g., playtime limits) in the manner required by the claim.

’731 Patent Infringement Allegations

Claim Element (from Independent Claim 1) Alleged Infringing Functionality Complaint Citation Patent Citation
A handheld computing device, comprising: a display; The Nintendo Switch, Switch Lite, and Switch OLED devices include a display. ¶48; Ex. H, p. 2 col. 1:30-32
an internally located directional input device providing a directional input signal, the directional input signal corresponding to an axis of inclination of the handheld computing device and indicating an orientation; The Joy-Con controllers, which can be attached to the Switch, contain an internal gyroscope that detects inclination and orientation, providing a corresponding directional signal. ¶48; Ex. H, p. 5 col. 5:44-51
a second directional input device providing a second directional input signal, the second directional input signal indicating an amount of displacement; The Joy-Con controllers also contain an internal accelerometer that detects linear movement and provides a signal indicating an amount of displacement. ¶48; Ex. H, p. 6-7 col. 2:22-35
a processor coupled to the internally located directional input device and the second directional input device and operable to receive and process the directional input signal in conjunction with the second directional input signal; The processor in the Nintendo Switch console is coupled to the sensors in the Joy-Con controllers and is operable to receive and process the signals from both the gyroscope and the accelerometer. ¶48; Ex. H, p. 8-9 col. 9:28-34
a memory subsystem, the memory storing an operating system executed by the processor to display on the display a graphical user interface for controlling the operation... The Nintendo Switch devices include a memory subsystem storing an operating system that controls the device and displays a graphical user interface. ¶48; Ex. H, p. 10 col. 9:35-41
wherein the operating system comprises processor-executable instructions that cause the graphical element to move by the amount of displacement in a direction substantially parallel or substantially perpendicular to the orientation. The operating system processes the signals from the gyroscope (orientation) and accelerometer (displacement) to cause graphical elements on the screen to move accordingly. The complaint provides a visual from a Nintendo game showing how a punch motion is detected by the accelerometer to move an on-screen graphical element (Compl., Ex. H, p. 12). ¶48; Ex. H, p. 12 col. 9:41-48
  • Identified Points of Contention:
    • Scope Questions: A primary issue may be the construction of "handheld computing device." The infringement theory appears to rely on the motion of detachable Joy-Con controllers. This raises the question of whether the "inclination of the handheld computing device" requires the entire integrated device (screen and controllers) to be tilted, or if the inclination of a component part satisfies the claim language.
    • Technical Questions: The analysis may examine whether the gyroscope and accelerometer function as two distinct "directional input devices" as claimed, or as a single, integrated motion-sensing system.

V. Key Claim Terms for Construction

For the ’571 Patent (Claim 10)

  • The Term: "a list of applications permitted for installation"
  • Context and Importance: This term is critical because the accused Nintendo Parental Controls system primarily restricts access based on content ratings and usage time, not by managing a discrete list of which specific application executables can be installed. The case may turn on whether Nintendo's category-based ruleset can be construed as the claimed "list."
  • Intrinsic Evidence for Interpretation:
    • Evidence for a Broader Interpretation: The specification states that owner control lists can "address different types of applications," including "Required applications," "Allowable (or authorized) applications," and "Excluded applications," which may suggest the "list" is a logical construct for defining permissions rather than a literal file manifest (’571 Patent, col. 3:35-51).
    • Evidence for a Narrower Interpretation: The patent's exemplary user interface in Figure 9 depicts a literal list of specific, named software applications (e.g., "Browser," "Phone," "MemoPad") with a "Disposition" column set to "Required" or "Optional." This may support an interpretation that the claim requires a list of enumerated software titles (’571 Patent, Fig. 9).

For the ’731 Patent (Claim 1)

  • The Term: "inclination of the handheld computing device"
  • Context and Importance: This term is central to infringement, as the accused functionality often involves moving a detached Joy-Con controller while the main screen unit remains stationary. Whether this scenario meets the claim language will be a key point of dispute. Practitioners may focus on this term because its definition determines whether the patent covers modular or disaggregated device architectures.
  • Intrinsic Evidence for Interpretation:
    • Evidence for a Broader Interpretation: The patent abstract describes the invention as providing input "in response to the inclination of the handheld." One could argue that the "handheld" device is the complete system in use, and inclination of a primary input component (the Joy-Con) constitutes inclination of the device for control purposes.
    • Evidence for a Narrower Interpretation: The background focuses on solving the problem of input mechanisms consuming space "on the face of the device" by using the orientation of the device itself (’731 Patent, col. 1:50-57). The figures consistently depict a unitary, monolithic device, which may support a narrower construction requiring the entire physical unit to be tilted.

VI. Other Allegations

  • Indirect Infringement: The complaint alleges both induced and contributory infringement for all six asserted patents. Induced infringement allegations are based on Defendant’s alleged provision of instructions, advertisements, user manuals, and online support materials that encourage and direct customers to use the Accused Products in an infringing manner (e.g., instructing users on how to use motion controls or set up Wi-Fi) (Compl. ¶¶ 42, 50, 58, 71, 79). Contributory infringement is alleged on the basis that Defendant supplies material parts of the claimed inventions (e.g., the Joy-Con controllers, the Nintendo Parental Controls App) that are not staple articles of commerce and are incapable of substantial non-infringing use (Compl. ¶¶ 43, 51, 59, 72, 80).
  • Willful Infringement: Willfulness is alleged for all asserted patents. The complaint bases this allegation on Defendant’s alleged knowledge of the patents and its infringement since at least specific dates of notice provided by Plaintiff and its predecessor-in-interest, BlackBerry. The dates of notice are alleged to be December 3, 2020 for the ’731, ’397, ’305, and ’065 patents, and August 9, 2024 for the ’247 and ’571 patents (Compl. ¶¶ 47, 55, 63, 68, 76).

VII. Analyst’s Conclusion: Key Questions for the Case

  • A core issue will be one of definitional scope: can the term "list of applications permitted for installation" in the ’571 patent, which originates in a corporate device management context, be construed to cover a consumer parental control system that restricts access based on content ratings and usage rules rather than an enumerated list of software titles?
  • A key technical question will be one of architectural scope: does the ’731 patent’s claim limitation requiring an input signal corresponding to the "inclination of the handheld computing device" read on the accused Nintendo Switch system, where detachable Joy-Con controllers can be moved and inclined independently of the main console and screen unit?
  • A central strategic question will involve the diversity of the asserted portfolio: how will the assertion of six patents spanning disparate technologies—from user interface and hardware mechanics to complex wireless communication protocols—affect the litigation, potentially creating distinct evidentiary and claim construction challenges for each patent that could complicate a unified case narrative for either party?