Nintendo Of America Inc v. iLife Technologies Inc

1. Case Identification

• Case #: IPR2015-00109
• Patent #: 6,864,796
• Filed: October 21, 2014
• Petitioner(s): Nintendo of America Inc., Nintendo Co., Ltd.
• Patent Owner(s): iLife Solutions, Inc.
• Challenged Claims: 1-3, 9-12, 18-20

2. Patent Overview

• Title: Systems Within a Communication Device for Evaluating Movement of a Body and Methods of Operating the Same
• Brief Description: The ’796 patent discloses a system integrated within a communication device for evaluating a body's movement. The system uses a sensor to repeatedly sense both static (e.g., from gravity) and dynamic (e.g., from motion) accelerative phenomena, and a processor to determine if the movement is within a predefined "environmental tolerance," subsequently transmitting an indication of that determination.

3. Grounds for Unpatentability

Ground 1: Obviousness over Yasushi - Claims 1-3, 9-12, and 18-20 are obvious over Yasushi.

• Prior Art Relied Upon: Yasushi (Japanese Unexamined Patent Application Publication No. JP10-295649).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner argued that Yasushi, a portable accident monitoring system for elderly persons, discloses every element of the challenged claims or renders them obvious. Petitioner asserted that Yasushi’s three-axis accelerometer (sensor 11) is shown to measure both dynamic acceleration from motion (e.g., running, walking) and static acceleration from gravity when a body is immobile (e.g., fallen or standing still), directly teaching the key limitation of sensing both phenomena. Yasushi’s "analyzer 13" functions as the claimed processor, analyzing the sensor data to distinguish between various states of motion and to detect abnormal events based on preset criteria, such as a fall lasting for a specified duration or acceleration exceeding a certain value (the "environmental tolerance"). The analyzer's resulting "abnormal signal" constitutes the claimed "tolerance indicia," which is then transmitted wirelessly by "transmitter 14" to a remote receiver. For dependent claims, Petitioner mapped Yasushi’s disclosure of a "personal handy phone system" (PHS) terminal to the claimed cordless phone, handheld computer, and wireless internet access device limitations.
  • Motivation to Combine: The petition asserted that Yasushi explicitly teaches that its monitoring system can be incorporated with a PHS terminal, a mobile communication device, for data transmission and location detection. A POSITA would therefore be motivated to fully integrate Yasushi's monitoring components within such a communication device to create a single, more compact, and convenient portable unit. This integration was presented as a predictable design choice to improve portability and leverage the existing communication capabilities of the PHS terminal.
  • Expectation of Success: Petitioner argued a POSITA would have a high expectation of success. The integration of known sensor technology, like the accelerometer in Yasushi, into a known mobile communication device (the PHS terminal) was a straightforward engineering task using conventional and predictable methods.

4. Key Claim Construction Positions

• "sensor": Petitioner proposed construing this term as "a device that senses one or more absolute values, changes in value, or some combination... of at least the sensed accelerative phenomena." This construction, drawn directly from the specification, was argued to be broad enough to encompass the accelerometer disclosed in Yasushi.
• "static accelerative phenomena" and "dynamic accelerative phenomena": Petitioner proposed construing these terms as "acceleration experienced as a result of gravity" and "acceleration experienced as a result of motion," respectively. These definitions were central to the invalidity argument, as they allowed Petitioner to map Yasushi's disclosure of measuring both constant 1G force when still (static) and fluctuating forces during movement (dynamic) directly onto the claim language.
• "processor": Defined as "any device, system or part thereof that controls at least one operation," a broad definition from the specification that Petitioner argued plainly reads on the "analyzer 13" in Yasushi, which processes sensor data to determine the user's state.

5. Key Technical Contentions (Beyond Claim Construction)

• The petition's central technical contention was that the patent owner overcame prior art during prosecution by incorrectly arguing that systems measuring both static and dynamic acceleration for analyzing body activity were not previously known. Petitioner asserted this representation was factually wrong, presenting Yasushi as direct evidence of a prior art system that clearly and explicitly disclosed using a single three-axis accelerometer to measure and analyze both types of acceleration. Yasushi’s ability to distinguish between walking, running, standing still, and falling based on these combined measurements was highlighted as proof that this supposedly novel feature was, in fact, well-established in the prior art.

6. Relief Requested

• Petitioner requested institution of an inter partes review (IPR) and cancellation of claims 1-3, 9-12, and 18-20 of the ’796 patent as unpatentable under 35 U.S.C. §103.