PTAB

IPR2018-01522

Nintendo Co Ltd v. Gamevice Inc

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1. Case Identification

2. Patent Overview

  • Title: Combination Computing Device and Game Controller
  • Brief Description: The ’119 patent discloses a game controller accessory for a portable computing device, such as a smartphone or tablet. The controller features two separate control modules that attach to opposing sides of the computing device and are physically and electronically connected by a structural bridge that extends behind the device.

3. Grounds for Unpatentability

Ground 1: Claims 1-10 and 13-21 are obvious over Willner in view of Park.

  • Prior Art Relied Upon: Willner (Application # 2001/0045938) and Park (Korean Patent # 10-2011-0116892).
  • Core Argument for this Ground:
    • Prior Art Mapping: Petitioner argued that Willner disclosed a game controller system with two hand-grippable housings (control modules) that detachably connect to an adaptor. This adaptor receives and confines a computing device, functioning as the claimed "communication port" and "confinement structures." Willner, however, lacked an adjustable bridge. Park disclosed a gamepad with two controllers connected by an adjustable bridge to accommodate mobile phones of different sizes, including a fastening mechanism of sliding panels with grooves and catching holes to lock the bridge. Petitioner asserted that combining Park’s adjustable bridge and specific fastening mechanism with Willner’s detachable controller system would render all limitations of the challenged claims obvious.
    • Motivation to Combine: A person of ordinary skill in the art (POSITA) would combine the references to solve a known problem. Specifically, a POSITA would have been motivated to modify Willner's fixed-size adaptor with Park’s adjustable bridge to improve its versatility and accommodate the wide variety of smartphones and tablets on the market. This combination was presented as a predictable solution to a common design challenge.
    • Expectation of Success: Petitioner contended there was a high expectation of success, as the combination involved applying a known solution (an adjustable bridge for universal fit) from one device to a similar device to gain its known benefit, constituting a predictable use of prior art elements.

Ground 2: Claims 1-3, 5-6, 9-10, and 13-20 are obvious over Kessler in view of Hirschman.

  • Prior Art Relied Upon: Kessler (WO 2014/079264) and Hirschman (Application # 2015/0134859).

  • Core Argument for this Ground:

    • Prior Art Mapping: Petitioner asserted that Kessler taught a handheld game controller with two handle housings connected by an adjustable bridge that confines a smart device on its two opposing sides. The bridge contained a flexible circuit serving as a "conduit" and "communication link." Hirschman taught a tablet computer with integrated communication ports and rails on its sides, allowing various peripheral game controllers to be detachably connected. Petitioner argued that modifying Kessler's integrated controller with Hirschman's teachings of detachable controllers that attach via sliding rails would have been obvious.
    • Motivation to Combine: A POSITA would have been motivated to improve Kessler’s design by implementing the detachable and modular controller concept from Hirschman. This would offer the known benefit of allowing users to choose and swap different types of control modules for gaming or other applications. The designs were deemed compatible, making the integration straightforward.
    • Expectation of Success: Petitioner argued success would be expected because the modification constituted the use of a known option (detachable controllers via sliding rails) as it was designed to be used, leading to the predictable result of a more modular and customizable controller.

  • Additional Grounds: Petitioner asserted that claim 1 is unpatentable over Hirschman alone. This argument was presented as an alternative, contingent on the Board adopting the allegedly improper and overly broad claim constructions that Patent Owner previously asserted in district court litigation.

4. Key Claim Construction Positions

Petitioner argued that several key claim terms were either means-plus-function limitations or should be narrowly construed based on the specification, contrary to the broad interpretations allegedly used by the Patent Owner in litigation.

  • "pair of confinement structures": Argued to be a means-plus-function term under 35 U.S.C. § 112, para. 6. The claimed function is "confining the computing device on at least two opposing sides," and the only corresponding structure disclosed in the specification is that shown in Figures 16-22 of the ’119 patent.
  • "fastening mechanism": Also argued to be a means-plus-function term. Its function is "cooperating with and securing the pair of confinement structures one to the other," with the corresponding structure being limited to the "soft draw latch" and slip-fit mechanism disclosed in Figures 16 and 24.
  • "structural bridge": Argued to be a "coined term" whose broadest reasonable interpretation is "a member separate from, and external to, the computing device that connects the confinement structures."
  • "conduit": Proposed construction is a "closed tube or duct for confining and protecting wires or cables," based on its limited use in the specification and dictionary definitions.

5. Key Technical Contentions (Beyond Claim Construction)

  • Priority Date Entitlement: Petitioner contended that the ’119 patent is only entitled to its actual filing date of February 2, 2015. It was argued that key limitations central to the challenged claims—including "confinement structures," "communication port," "conduit," and "fastening mechanism"—were introduced in the continuation-in-part application that led to the ’119 patent and lacked written description support in any prior-filed parent application. This assertion is critical as it establishes the prior art status of the asserted references.

6. Relief Requested

  • Petitioner requests that the Board institute an inter partes review (IPR) and cancel claims 1-10 and 13-21 of the ’119 patent as unpatentable under 35 U.S.C. § 103.