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. and 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 relates to a system contained within a communication device for evaluating the movement of a body relative to its environment. The system comprises a sensor that repeatedly senses both static (e.g., from gravity) and dynamic (e.g., from motion) accelerative phenomena, and an associated processor that analyzes this data to determine if the body’s movement is within a predefined "environmental tolerance," generating and transmitting indicia based on this determination.

3. Grounds for Unpatentability

Ground 1: 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 1998 publication, discloses every element of the challenged claims. Yasushi describes a portable accident monitoring system for an aged person that uses a three-axis accelerometer (the claimed "sensor") to continuously measure acceleration. Petitioner asserted that Yasushi explicitly teaches the measurement of both dynamic acceleration, shown in figures depicting walking and running, and static acceleration, shown in a figure depicting a constant 1G reading after a fall. Yasushi's "analyzer" (the claimed "processor") processes this data to distinguish between states of motion (walking, running, falling) and determines if an "abnormal" state exists by comparing the data against preset criteria, such as "the state of falling lasting for a given or longer length of time" (the claimed "environmental tolerance"). This determination results in an "abnormal signal" (the claimed "tolerance indicia"), which is then wirelessly transmitted via a "transmitter" (the claimed "communication device").
  • Motivation to Combine (for §103 grounds): Although Petitioner contended that Yasushi anticipates the claims, it argued in the alternative for obviousness. The petition asserted that Yasushi discloses its monitoring system can be incorporated into a PHS ("personal handy phone system") terminal, which is a communication device. A person of ordinary skill in the art (POSA) would thus have been motivated to fully integrate Yasushi's monitoring components within the PHS terminal it already suggests using. This integration would be a predictable combination of known elements to achieve a more compact and convenient device, a known design goal for portable electronics.
  • Expectation of Success: A POSA would have had a clear expectation of success in implementing the system. Yasushi describes all the necessary functional components—the sensor, analyzer, and transmitter (including the PHS terminal)—and their cooperative interaction. Integrating them into a single housing as claimed would be a straightforward engineering task using conventional techniques.
  • Key Aspects: A central pillar of Petitioner's argument was that the ’796 patent was allowed only after the applicant amended the claims to require sensing both "dynamic and static accelerative phenomena" and argued to the Examiner that the prior art was "substantially confined to applications directed to measuring one or the other, but not both." Petitioner argued this representation was inaccurate and that Yasushi, which was not before the Examiner, clearly and explicitly discloses a single sensor system for measuring and analyzing both types of acceleration for the same purpose as the patent.

4. Key Claim Construction Positions

• Petitioner argued that for the purposes of the inter partes review (IPR), claim terms should be given their broadest reasonable interpretation consistent with the specification. Key proposed constructions, drawn directly from definitions in the ’796 patent’s specification, included:
• "sensor": "a device that senses one or more absolute values, changes in value, or some combination of the same, of at least the sensed accelerative phenomena." This broad definition was used to argue that Yasushi's standard accelerometer met the limitation.
• "static accelerative phenomena" and "dynamic accelerative phenomena": Respectively defined as "acceleration experienced as a result of gravity" and "acceleration experienced as a result of motion." Petitioner used these definitions to map the distinct types of acceleration data shown in Yasushi's figures (e.g., the 1G gravitational reading when fallen vs. fluctuating readings when running) directly onto the claim language.
• "processor" / "controller": "any device, system or part thereof that controls at least one operation." This construction allowed Petitioner to argue that Yasushi's "analyzer 13" performed the functions of the claimed processor.

5. Key Technical Contentions (Beyond Claim Construction)

• Petitioner’s primary technical contention, woven throughout the grounds, was that the core inventive concept asserted during prosecution—the use of a single sensor to measure both static and dynamic acceleration to evaluate a body's state—was not novel or non-obvious. The petition contended that this capability was a known and inherent function of accelerometers at the time and was explicitly disclosed for body monitoring in prior art like Yasushi. This argument aimed to directly undermine the Examiner's stated reasons for allowance, which were based on the purported absence of this combination in the prior art of record.

6. Relief Requested

• Petitioner requested the institution of an IPR and the cancellation of claims 1-3, 9-12, and 18-20 of Patent 6,864,796 as unpatentable under 35 U.S.C. §103.