PTAB

IPR2018-00543

Nintendo Co Ltd v. Genuine Enabling Technology LLC

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Key Events
Petition
petition

1. Case Identification

2. Patent Overview

  • Title: User-Input Apparatus and Method for Computer
  • Brief Description: The ’730 patent describes a user-input apparatus, such as a computer mouse, that receives a primary user input stream (e.g., mouse movement) and a secondary input signal (e.g., an audio signal from a microphone). The apparatus includes a "framer" to synchronize, encode, and combine these two inputs into a single data stream for transmission to a computer, purportedly eliminating the need for a separate sound card.

3. Grounds for Unpatentability

Ground 1: Obviousness over Sasai, Kuriyama, and Svancarek - Claims 1-4, 7, and 10-25 are obvious over Sasai in view of Kuriyama and Svancarek.

  • Prior Art Relied Upon: Sasai (Japanese Application # 60-170844), Kuriyama (Japanese Application # 4-308912), and Svancarek (Patent 5,628,686).
  • Core Argument for this Ground:
    • Prior Art Mapping: Petitioner argued that Sasai taught a computer mouse integrated with a microphone that outputs a combined signal, addressing the same problem as the ’730 patent. Kuriyama taught a keyboard that receives mouse input and combines it with keyboard data into a single, modified data packet for transmission to a computer, demonstrating a system for integrating peripheral data. Svancarek disclosed a system for accepting multiple analog and digital signals and dynamically assembling them into a single data frame using a serial clock and a microcontroller with an analog-to-digital converter. The combination of these references allegedly taught all limitations of the challenged claims.
    • Motivation to Combine: A POSITA would combine Sasai’s mouse-microphone with Kuriyama’s keyboard to create a more integrated input system. To manage the data streams, a POSITA would look to known data combination techniques. It would be obvious to use Svancarek's teachings on dynamically configuring data packets and its clock-controlled data selection to efficiently interleave the audio data from Sasai’s mouse with keyboard data from Kuriyama. This combination would predictably solve the known problem of managing multiple peripheral interfaces.
    • Expectation of Success: Combining these known elements using standard engineering techniques like data interleaving and framing would have yielded predictable results.

Ground 2: Obviousness over Borza - Claims 16 and 21 are obvious over Borza.

  • Prior Art Relied Upon: Borza (Patent 5,991,431).
  • Core Argument for this Ground:
    • Prior Art Mapping: Petitioner contended that Borza, which was not considered during prosecution, disclosed a computer mouse with an integrated fingerprint scanner that rendered claims 16 and 21 obvious. Borza’s mouse functioned as the claimed user input device, generating a mouse position data stream. The integrated fingerprint scanner provided an additional input signal. Borza's processor combined the mouse position data with the digitized fingerprint image data by replacing predetermined pixels in the image with mouse data. This processor, which synchronized the inputs and encoded them into a single frame, constituted the claimed "framer." The onboard analog-to-digital converter met the "converter" limitation.

Ground 3: Obviousness over Redford - Claims 16 and 21 are obvious over Redford.

  • Prior Art Relied Upon: Redford (Patent 5,339,095).
  • Core Argument for this Ground:
    • Prior Art Mapping: Petitioner argued that under the Patent Owner's broad claim constructions used in parallel litigation (e.g., against the Nintendo Wii Remote), Redford rendered claims 16 and 21 obvious. Redford disclosed a remote control with motion sensors and command keys. The command keys produced the user input stream, and the motion sensors produced the additional input signal. Digital instrumentation amplifiers in Redford functioned as the "converter" by changing sensor signals into digital signals. Redford’s CPU received both data streams, assembled them into a standard mouse data format, and transmitted a combined data stream, thereby functioning as the claimed "framer." This mapping mirrored the Patent Owner's infringement theories.

4. Key Claim Construction Positions

Petitioner asserted that specific claim terms were limited by prosecution history disclaimer and should be construed narrowly.

  • "input signal" (claims 1, 14, 16, etc.): Petitioner argued this term must be construed as "a high frequency input signal, which comes from a source different from those of motion and selection units." This position was based on the applicant’s arguments during prosecution to distinguish the invention from the Yollin prior art, where the applicant emphasized that his invention handled "audio or higher frequencies" and not the "slow varying" signals of Yollin.
  • Synchronizing, encoding, and combining phrases (e.g., "framer" in claims 16 and 21): Petitioner contended these are means-plus-function limitations under 35 U.S.C. §112, para. 6. Based on the specification and prosecution history where the applicant distinguished his "framer" from a standard multiplexer, Petitioner argued the sole corresponding structure is the specific circuit of Figure 4A of the ’730 patent (and its equivalents). This structure requires a start signal, a clock generator, a data selector for interleaving bits, and a restart signal, which is not present in general-purpose microprocessors that simply assemble data packets.

5. Relief Requested

  • Petitioner requests institution of an inter partes review (IPR) and cancellation of claims 1-4, 7, and 10-25 of the ’730 patent as unpatentable under 35 U.S.C. §103.