Nintendo Co Ltd v. Malikie Innovations Ltd

1. Case Identification

• Case #: IPR2026-00004
• Patent #: 8,115,731
• Filed: October 8, 2025
• Petitioner(s): Nintendo Co., Ltd., and Nintendo of America Inc.
• Patent Owner(s): Malikie Innovations Ltd.
• Challenged Claims: 1-3, 11, 13-14

2. Patent Overview

• Title: Method of Operating a Handheld Device for Directional Input
• Brief Description: The ’731 patent discloses a handheld computing device that uses two distinct directional input devices to control a graphical element. The first is an internal sensor that provides a signal corresponding to the device's inclination and orientation, while a second device provides a signal indicating an amount of displacement.

3. Grounds for Unpatentability

Ground 1: Obviousness over Dance, Kuo, and Beuk - Claims 1, 11, 13-14 are obvious over Dance in view of Kuo and Beuk.

• Prior Art Relied Upon: Dance (Patent 6,937,272), Kuo (Patent 6,400,471), and Beuk (Patent 5,910,797).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner argued that Dance, a handheld digital camera, discloses the core components of claim 1. Dance’s internal motion sensor, which controls image scrolling based on device tilt, allegedly met the limitation of a first directional input device for orientation. Petitioner asserted that Dance’s zoom buttons or an accelerometer for z-axis motion met the limitation of a second directional input device for displacement. To the extent Dance did not explicitly disclose certain processor and operating system elements, Petitioner contended that Kuo, which teaches a digital camera with a CPU and a memory storing an operating system for managing a graphical user interface (GUI), supplied these features. Alternatively, Petitioner argued that Beuk taught using tilt controls where scroll velocity is independent of tilt magnitude, which could be combined with Dance's zoom input to satisfy the "amount of displacement" limitation.
  • Motivation to Combine: A Person of Ordinary Skill in the Art (POSITA) would combine Dance with Kuo because both relate to digital cameras with GUIs, and Kuo’s teachings of a flexible operating system would have been a known way to implement the features of Dance’s camera to improve efficiency and lower costs. A POSITA would combine Dance with Beuk to provide users with simpler, more user-friendly tilt controls, a problem both references sought to address.
  • Expectation of Success: A POSITA would have had a reasonable expectation of success in combining the references, as it involved implementing a known operating system (Kuo) in a camera system (Dance) or applying known tilt-control logic (Beuk) using conventional techniques.

Ground 2: Obviousness over Dornbusch, Uragami, Moritome, and Nakano - Claims 1-3, 11, 13-14 are obvious over Dornbusch in view of Uragami, Moritome, and Nakano.

• Prior Art Relied Upon: Dornbusch (Patent 5,232,223), Uragami (Japanese Patent Publication No. H11-188182), Moritome (Patent 6,589,117), and Nakano (Japanese Laid-Open Patent Application No. 2000-148694A).

• Core Argument for this Ground:

  • Prior Art Mapping: Petitioner argued that Dornbusch, a handheld fishing game controller, discloses the core elements of the challenged claims. Dornbusch’s internal mercury switches, which sense the rod's orientation, allegedly met the limitations of the first directional input device. Its hand crank, used to reel in a lure, met the limitations of the second directional input device indicating displacement. Petitioner contended that Uragami, another handheld fishing controller, taught integrating the display directly onto the controller, a feature not explicit in Dornbusch. Moritome was cited for teaching a bidirectional crank, improving upon Dornbusch's crank. Finally, Nakano was cited for teaching a portable electronic device with a memory storing a full operating system, which could execute various programs beyond the single game in Dornbusch.
  • Motivation to Combine: A POSITA would combine Dornbusch with Uragami to create a more realistic, self-contained fishing controller, simplifying Dornbusch’s system which used a separate display. The addition of Moritome's bidirectional crank was argued to be a simple design choice to further enhance realism. A POSITA would incorporate Nakano’s operating system to expand the device’s functionality beyond a single game, a common design goal for handheld electronics.
  • Expectation of Success: The proposed combinations involved integrating well-known components (displays, bidirectional cranks, operating systems) into a controller to improve realism and functionality, all of which would have been straightforward for a POSITA with a high expectation of success.

• Additional Grounds: Petitioner asserted additional obviousness challenges. Dependent claims 11, 13, and 14, which relate to detecting movement patterns like a "flick of the wrist," were challenged over Dance in view of Zwern (WO 00/17848). Dependent claims 2 and 3, which detail the structure of the input device using contacts and "circuit closing means," were challenged over the primary combinations in view of Titus (Patent 5,955,713), which teaches specific tilt-switch array implementations.

4. Key Claim Construction Positions

• Petitioner argued that the term “circuit closing means” in claim 2[c] should be interpreted as a means-plus-function limitation under §112, ¶6.
• The claimed function was identified as moving in response to device inclination between a neutral (open circuit) and active (closed circuit) position.
• The corresponding structure disclosed in the ’731 patent was identified as either a “ball bearing or a mercury contact.” Petitioner asserted its invalidity arguments succeed regardless of this construction.

5. Arguments Regarding Discretionary Denial

• Petitioner argued discretionary denial under §314(a) and §325(d) is not warranted.
• Key reasons included that this is the first and only IPR petition filed against the ’731 patent, and none of the cited prior art references were considered during the original prosecution.
• Petitioner also stated that the co-pending district court litigation is in a relatively early stage and that Petitioner would stipulate not to pursue in district court any grounds that were or reasonably could have been raised in the IPR.

6. Relief Requested

• Petitioner requests institution of an inter partes review and cancellation of claims 1-3, 11, 13-14 of the ’731 patent as unpatentable under 35 U.S.C. §103.