Nintendo Of America Inc v. Gamevice Inc

1. Case Identification

• Case #: IPR2020-01179
• Patent #: 10,391,393
• Filed: June 26, 2020
• Petitioner(s): Nintendo Co., Ltd. and Nintendo of America Inc.
• Patent Owner(s): Gamevice, Inc.
• Challenged Claims: 1-8, 12-18

2. Patent Overview

• Title: Combination Computing Device and Game Controller
• Brief Description: The ’393 patent describes a game controller apparatus for a separate computing device, such as a smartphone or tablet. The apparatus features left and right electronic game control modules that attach to opposing sides of the computing device and are connected by a structural bridge that extends behind the device.

3. Grounds for Unpatentability

Ground 1: Claims 1-8 and 16-18 are obvious over Willner in view of Park

• Prior Art Relied Upon: Willner (Application # 2001/0045938) and Park (Korean Patent No. 10-2011-0116892).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner argued that Willner disclosed a base game controller system with left and right control modules that attach to an adaptor. This adaptor, which holds a computing device, taught the claimed "confinement structures" that interact with the device. However, Willner’s adaptor was not adjustable. Park disclosed a similar controller concept but with an adjustable structural bridge connecting its two game pads, allowing it to accommodate mobile phones of different sizes. Petitioner asserted that combining Park’s adjustable bridge with Willner’s controller system would result in the claimed invention. The combination would feature Willner’s control modules and confinement sidewalls connected by Park’s adjustable bridge, which provides a passageway for wiring.
  • Motivation to Combine: A person of ordinary skill in the art (POSITA) would combine Park's adjustable bridge with Willner's controller to achieve Willner’s stated goal of supporting both palm- and tablet-sized devices. This modification would greatly expand the number of compatible devices, a predictable and desirable outcome. Petitioner noted the Board had already found this motivation compelling in a prior inter partes review (IPR) involving a related patent.
  • Expectation of Success: A POSITA would have a high expectation of success, as incorporating an adjustable bridge was a known technique for achieving compatibility with various device sizes, and both references operated in the same field of handheld gaming accessories.

Ground 2: Claims 1-8 and 16-18 are obvious over Schoenith in view of Kessler

• Prior Art Relied Upon: Schoenith (Patent 9,539,507) and Kessler (WO 2014/079264).

• Core Argument for this Ground:

  • Prior Art Mapping: Petitioner contended that Schoenith disclosed a gaming apparatus with detachable control panels (control modules) that attach to a cradle. The cradle’s "raised walls" serve as the "confinement structures" for a smart device. Kessler disclosed a similar device with an adjustable "interconnection device" (structural bridge) that uses a biasing mechanism (e.g., rubber bands) to grip handheld devices of various sizes. Kessler’s bridge also included a conduit (passageway) containing a flexible circuit for communication between the two control modules.
  • Motivation to Combine: A POSITA would be motivated to replace Schoenith’s fixed-size cradle with Kessler’s adjustable bridge. Schoenith’s device was intended for devices of different sizes (e.g., iPhones, iPads), and incorporating Kessler’s adjustability would make the apparatus compatible with a wide range of devices without requiring multiple cradles. This modification would use known components to achieve the predictable benefit of broader device accommodation.
  • Expectation of Success: The combination involved straightforward substitution of a fixed support with a known adjustable one to achieve a predictable improvement in functionality.

• Additional Grounds: Petitioner asserted additional challenges, including that claim 16 is anticipated or rendered obvious by Willner, Park, and Schoenith individually. Petitioner also argued that claims 12-15 are anticipated or rendered obvious by Kessler alone and are obvious over Hirschman (Application # 2012/0271967).

4. Key Claim Construction Positions

• "Confinement structures" (claims 1, 17): Petitioner relied on a finding from a prior IPR on a related patent, where the Board noted the term encompasses both three-sided structures where a device is "fully nested" and cradle-like structures that "securely hold" the device.
• "First means for attaching" (claim 16): Petitioner argued this is a means-plus-function limitation. The recited function is "attaching an input device to a computing device." The petition identified four corresponding structures from the specification, including a nesting structure, control modules that secure to a bridge, and various tensioning or fastening mechanisms.
• "Second means for controlling" (claim 16): Petitioner argued this is also a means-plus-function limitation. The recited function is "controlling a movement of a virtual object displayed on said electronic display screen." The corresponding structures identified were joysticks, buttons, triggers, and other similar user input controls.

5. Arguments Regarding Discretionary Denial

• Against §325(d) Denial (Same Art): Petitioner argued that denial under 35 U.S.C. §325(d) was inappropriate. Although the asserted prior art was submitted to the Examiner during prosecution, Petitioner contended the Examiner never substantively evaluated it. This was allegedly due to the Patent Owner obscuring the art's significance by failing to disclose that the same art was being used in IPRs that successfully invalidated a parent patent (the ’119 patent). Petitioner asserted this lack of substantive review by the Examiner weighs heavily in favor of institution.
• Against §314(a) Denial (Fintiv): Petitioner argued that denial under 35 U.S.C. §314(a) based on a parallel ITC investigation was also inappropriate. While the ITC case might conclude first, Petitioner argued that other Fintiv factors favored institution. Specifically, the scope of the proceedings differed, as the IPR challenges claims not asserted in the ITC. Furthermore, Petitioner argued its invalidity positions were particularly strong, as evidenced by the Board’s prior decisions canceling claims of the parent patent based on the same prior art.

6. Relief Requested

• Petitioner requests institution of IPR and cancellation of claims 1-8 and 12-18 of the ’393 patent as unpatentable.