PTAB

IPR2018-01521

Nintendo Co Ltd v. Gamevice Inc

Title: Combination Computing Device and Game Controller
Brief Description: The ’119 patent describes a game controller accessory for a portable computing device, such as a smartphone or tablet. The accessory features two control modules positioned on opposing sides of the device, secured together by a structural bridge that connects them behind the device.

Prior Art Relied Upon: Schoenith (Patent 9,539,507) and Kessler (WO 2014/079264).
Core Argument for this Ground:
- Prior Art Mapping: Petitioner argued that Schoenith disclosed the core combination of a game controller with left and right side panels (the “input device”) attachable to a "cradle" that holds a smart device. Petitioner contended this cradle structure taught the claimed "pair of confinement structures" (the cradle’s sides) and the "structural bridge" (the base of the cradle connecting the sides). Kessler was cited for its disclosure of an adjustable bridge connecting two handle controllers, which included an electrical connection passing through it, teaching the claimed "conduit."
- Motivation to Combine: A person of ordinary skill in the art (POSITA) would combine the references to solve a known problem. A POSITA would have been motivated to modify Schoenith’s fixed-size cradle to make it adjustable to accommodate various sizes of smart devices, a clear benefit for marketability. Kessler taught a known and suitable method for creating such an adjustable bridge for a game controller.
- Expectation of Success: A POSITA would have had a high expectation of success because the combination involved simple, predictable mechanical components used for their intended purposes.

Prior Art Relied Upon: Schoenith (Patent 9,539,507) and Park (Korean Patent 10-2011-0116892).
Core Argument for this Ground:
- Prior Art Mapping: As in Ground 1, Schoenith provided the basic controller with detachable side panels and a cradle structure. Petitioner asserted that Park, like Kessler, taught an adjustable bridge to connect two controller bodies. Critically, Park was argued to explicitly disclose a "fastening mechanism" comprising recessed guide grooves and catching holes that lock the sliding panels of its bridge together. This mechanism, when applied to Schoenith’s confinement structures, would secure them to each other.
- Motivation to Combine: The motivation was again to improve Schoenith’s design by making the bridge adjustable, a feature taught by Park. Making the bridge adjustable was a known way to enhance a controller’s utility for consumers. Combining Park’s adjustable bridge and fastening mechanism with Schoenith's detachable controllers represented a combination of known elements to achieve a predictable result.
- Expectation of Success: The combination was a straightforward integration of known features from analogous devices, leading to a high expectation of success.

Prior Art Relied Upon: Michael (Application # 2010/0195279) and Park (Korean Patent 10-2011-0116892).
Core Argument for this Ground:
- Prior Art Mapping: Petitioner argued that Michael disclosed a handheld docking station with a frame and compartment for holding a smartphone, which constituted the claimed "confinement structures" and "structural bridge." Michael also taught interchangeable gaming control modules that attach to the sides of the docking station. Park was then combined with Michael to supply an adjustable bridge and the specific "fastening mechanism" (catching holes and protrusions) that Michael’s fixed-size frame lacked.
- Motivation to Combine: A POSITA would have been motivated to improve Michael’s docking station by making its fixed frame adjustable to accommodate different-sized phones. Park provided a known solution for an adjustable bridge with a suitable fastening mechanism. Further, combining Michael's detachable/interchangeable controllers with Park's design would have been a recognized benefit.
- Expectation of Success: A POSITA would have reasonably expected success in combining Park's adjustable bridge with Michael's docking station, as both were directed to similar controller accessories for mobile devices.

"Confinement Structures" and "Fastening Mechanism": Petitioner argued that these claim terms were recited in purely functional language without sufficient corresponding structure in the specification, and therefore should be construed as means-plus-function limitations under 35 U.S.C. §112, ¶ 6. Under this construction, the terms would be limited to the specific embodiments disclosed in the ’119 patent figures (e.g., the cradle structures of Fig. 16 and the "soft draw latch" of Fig. 24), rather than covering any structure that performs the recited function.
"Structural Bridge": Petitioner asserted this was a "coined term" with no plain and ordinary meaning. Based on the specification, Petitioner proposed it should be construed as "a member separate from, and external to, the computing device that connects the confinement structures one to the other." This construction was argued to be critical for distinguishing the claimed invention from prior art where the computing device itself might form part of the connecting structure.

Petitioner requested the institution of an inter partes review and the cancellation of claims 1-10 and 13-21 of Patent 9,126,119 as unpatentable.