Nintendo Co Ltd v. American GNC Corp

1. Case Identification

• Case #: IPR2024-00668
• Patent #: Patent 6,671,648
• Filed: March 7, 2024
• Petitioner(s): Nintendo Co., Ltd., and Nintendo of America Inc.
• Patent Owner(s): American GNC Corporation
• Challenged Claims: 1 and 4

2. Patent Overview

• Title: Micro Inertial Measurement Unit
• Brief Description: The ’648 patent relates to a micro-sized inertial measurement unit (IMU) for motion measurement. The disclosed unit uses orthogonally mounted sensors to produce digital angular increments and velocity increments for determining a carrier's position, velocity, and attitude.

3. Grounds for Unpatentability

Ground 1: Claim 1 is obvious over Smith in view of Chan and Bernstein.

• Prior Art Relied Upon: Smith (Patent 4,675,820), Chan (Patent 6,058,778), and Bernstein (Patent 5,203,208).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner argued that Smith’s inertial sensor assembly discloses all elements in the body of claim 1: an "angular rate producer" (a cluster of three ring laser gyros), an "acceleration producer" (an accelerometer triad), and an "angular increment and velocity increment producer" (signal conditioning electronics and a processor that accumulate sensor data into digital counts). Petitioner contended that even if the preamble term "micro" is limiting, the combination with Chan and Bernstein renders it obvious, as they taught the common use of miniaturized MEMS-based accelerometers and gyroscopes.
  • Motivation to Combine: A POSITA would combine Smith's system with the MEMS technology of Chan and Bernstein to obtain known benefits of miniaturization, including reduced size, weight, and cost. This motivation was allegedly reinforced by Smith’s own stated goal of providing an improved system in a "small enclosure" that minimizes expensive components.
  • Expectation of Success: Success was expected because MEMS sensors were commercially available and functionally equivalent to their larger counterparts, making their substitution into Smith’s design a routine implementation.

Ground 2: Claim 4 is obvious over the Ground 1 Prior Art in further view of Irwin and Merhav.

• Prior Art Relied Upon: Smith (Patent 4,675,820), Chan (Patent 6,058,778), Bernstein (Patent 5,203,208), Irwin (an excerpt from Introduction to Electrical Engineering (1995)), and Merhav (an excerpt from Aerospace Sensor Systems and Applications (1996)).
• Core Argument for this Ground:
  • Prior Art Mapping: This ground built upon Ground 1 to address the limitations of dependent claim 4, which requires sensor signals to be "analog... voltage signals directly proportional to" angular rates and accelerations. Petitioner argued that Irwin and Merhav, both technical textbooks, establish as basic knowledge that sensors commonly produce analog voltage signals whose amplitude is proportional to the parameter being measured. Merhav was also cited to show that even digital-output sensors like Smith’s ring laser gyros first generate an intermediate analog signal proportional to the angular rate.
  • Motivation to Combine: A POSITA would be motivated to use directly proportional analog voltage signals to obtain more accurate and useful information, which was a well-understood principle in sensor design.
  • Expectation of Success: The combination was presented as applying basic, well-known engineering principles to the system of Smith, and thus success would be reasonably expected.

Ground 3: Claims 1 and 4 are obvious over Tingleff in view of Chan and Bernstein.

• Prior Art Relied Upon: Tingleff (Patent 4,424,038), Chan (Patent 6,058,778), and Bernstein (Patent 5,203,208).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner asserted Tingleff’s inertial guidance unit discloses the elements of claim 1, including gyros ("angular rate producer"), accelerometers ("acceleration producer"), and integrators with comparator logic that convert analog sensor signals into digital pulse trains representing incremental changes in attitude and velocity ("angular increment and velocity increment producer"). For claim 4, Petitioner argued Tingleff discloses that the electrical signals are analog, and that making them proportional voltage signals was obvious per basic POSITA knowledge. The combination with Chan and Bernstein was argued to supply the "micro" limitation from the preamble.
  • Motivation to Combine: The motivation to incorporate the MEMS technology of Chan and Bernstein into Tingleff's system was to achieve the known benefits of reduced size, weight, power consumption, and cost, consistent with Tingleff’s disclosure of a "relatively small and self-contained" system.
  • Expectation of Success: Success in substituting MEMS components was expected due to their commercial availability and functional equivalence to the sensors used in Tingleff.
• Additional Grounds: Petitioner asserted an additional obviousness challenge to claims 1 and 4 based on Yamawaki (a Japanese patent application) in view of Chan, Bernstein, and Saubolle (Patent 4,820,953). This combination relied on similar arguments for incorporating MEMS technology, with Saubolle providing a motivation to record velocity increments for diver safety.

4. Key Claim Construction Positions

• Petitioner argued the preamble of claim 1, "[a] micro inertial measurement unit," is not limiting because the claim body defines a structurally complete invention.
• In the alternative, Petitioner argued that if the preamble is found to be limiting, the term "micro" is rendered obvious by prior art references Chan and Bernstein, which explicitly teach the use of miniaturized, MEMS-based gyroscopes and accelerometers for inertial measurement.

5. Arguments Regarding Discretionary Denial

• Petitioner argued against discretionary denial under §314(a), asserting that the parallel district court litigation is in its early stages, with a trial date set for May 19, 2025, and no claim construction has occurred. Petitioner also filed a Sotera stipulation to avoid duplicative efforts.
• Petitioner further argued denial under §325(d) is unwarranted because none of the prior art or arguments presented in the petition were previously considered during the patent’s prosecution.

6. Relief Requested

• Petitioner requests institution of IPR and cancellation of claims 1 and 4 as unpatentable.