Case 2:19-cv-00351-RSM Document 123 Filed 07/30/20 Page 1 of 29
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`UNITED STATES DISTRICT COURT
`WESTERN DISTRICT OF WASHINGTON
`AT SEATTLE
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`Case No. C19-351RSM
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`ORDER RE: CLAIM CONSTRUCTION
`AND GRANTING DEFENDANT’S
`MOTION FOR SUMMARY JUDGMENT
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`GENUINE ENABLING TECHNOLOGY
`LLC.,
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`
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`Plaintiff,
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`
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`v.
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`NINTENDO CO., LTD. and NINTENDO OF
`AMERICA INC.,
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`
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`Defendants.
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`I.
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`INTRODUCTION
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`This matter comes before the Court on the Defendants Nintendo Co., Ltd. and Nintendo
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`of America, Inc. (“Nintendo”)’s Motion for Summary Judgment on the grounds of
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`noninfringement and invalidity. Dkt. #90. Plaintiff Genuine Enabling Technology (“GET”)
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`opposes Nintendo’s Motion. Dkt. #98. Parties submitted briefs regarding Claim Construction,
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`Dkts. ## 85, 86, 92, 93, and oral argument was held on February 24, 2020 pursuant to Markman
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`v. Westview Instruments, Inc., 52 F.3d 967 (Fed. Cir. 1995). Having reviewed the parties’
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`briefing, the appropriate portions of the records, and the relevant law, and having considered the
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`ORDER RE: CLAIM CONSTRUCTION AND GRANTING DEFENDANT’S MOTION FOR
`SUMMARY JUDGMENT - 1
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`Case 2:19-cv-00351-RSM Document 123 Filed 07/30/20 Page 2 of 29
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`arguments and evidence presented in the Markman Hearing, the Court GRANTS Nintendo’s
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`motion for summary judgment.1
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`A. The ‘730 Patent
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`II.
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`BACKGROUND
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`GET brings this action against Nintendo claiming that five Nintendo products infringe
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`U.S. Patent No. 6,219,730 (the ‘730 patent): (1) the Wii Remote and Wii Remote Plus; (2) the
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`Nunchuk; (3) the WiiU Game Pad; (4) the Switch Joy-Con Controllers’ and (5) the Nintendo
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`Switch Pro Controller. The patent, owned by inventor Nghi Nho Nguyen, is entitled “Method
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`and Apparatus for Producing a Combined Data Stream and Recovering Therefrom the Respective
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`User Input Stream and at Least One Input Signal” and was issued by the United States Patent and
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`Trademark Office on April 17, 2001. Dkt. #86-1. GET claims that Nintendo’s controllers and
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`console systems contain features and/or functionality that infringe claims 10, 14, 15, 16, 17, 18,
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`21, 22, 23, and 25 of the ‘730 patent.
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`The patented technology involves how a user-input device (UID) may communicate
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`remotely with a computer so that different input signals are received and transmitted via the same
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`link. Typical UIDs, as identified in the patent, include a mouse, trackball, or keyboard. Id. at col.
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`1, lines 16-18. Computers also use “various kinds of input/output (“I/O”) cards or devices to
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`handle I/O signals or information.” Id. at col. 1, lines 16-17. Typical I/O cards include a “sound
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`card handling I/O speech signals and the fax/modem device transferring information over the
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`telephone line.” Id. at 19-21. Because the devices and cards share common computer resources,
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`the proliferation of cards and devices that offer new functions creates a problem of how to
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`1 Parties have requested oral argument on the summary judgment motion, see Dkt. #90 at 1; Dkt. #98 at 1,
`but the court finds oral argument unnecessary to its disposition of the motion, see Local Rules LCR
`7(b)(4).
`ORDER RE: CLAIM CONSTRUCTION AND GRANTING DEFENDANT’S MOTION FOR
`SUMMARY JUDGMENT - 2
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`Case 2:19-cv-00351-RSM Document 123 Filed 07/30/20 Page 3 of 29
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`efficiently use limited computer resources shared between them. Id. at 22-23; 33-36 (“As
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`computer technology advances, more types of cards and devices are offered for richer sets of
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`functions; efficient use of computer resources becomes critical.”)
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`In light of this computer resource problem, Mr. Nguyen designed the claimed invention
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`to “offer[] a new kind of UID utilizing the computer resources efficiently and enabling a mode
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`of remote interaction between the computer and its user.” Id. at 42-44. GET explains that Mr.
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`Nguyen devised the ‘730 patent to solve a “collision problem” created by the transmission of
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`slow-varying and fast-varying user input signals to a computer. See Markman Hrg. Tr., 02/24/20,
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`at 6:14-15. Normally, when these slow and fast signals are transmitted together, they collide
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`with one another and corrupt the data. The ‘730 patent purportedly solves this problem through
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`a user interface and novel framer that synchronizes the two data streams and encodes them into
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`a combined data stream for transmission to the computer. Id. at 7:14-15. The computer can then
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`receive the combined data stream uncorrupted, which creates the ability to receive the data from
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`multiple input sources, as depicted below:
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`Dkt. #86-1 at 4. Figure 1B illustrates one embodiment of the invention, wherein a UID (11, Fig.
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`1A) and sound card (15, Fig. 1A) may be substituted with an “inventive apparatus” (18, Fig. 1B)
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`that “singly provides both functions.” Id. at col. 3, lines 30-41. In other words, the user may
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`ORDER RE: CLAIM CONSTRUCTION AND GRANTING DEFENDANT’S MOTION FOR
`SUMMARY JUDGMENT - 3
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`Case 2:19-cv-00351-RSM Document 123 Filed 07/30/20 Page 4 of 29
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`simultaneously use apparatus 18 as a conventional UID while speaking into the microphone
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`without requiring the use of a sound card and its computer resources.
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`B. Rejection over Yollin
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`During prosecution of the ‘730 patent, the U.S. Patent and Trademark Office (“PTO”)
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`Examiner initially rejected Mr. Nguyen’s patent based on prior art, U.S. Patent No. 5,990,866
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`(“Yollin”) titled “Pointing Device With Integrated Physiological Response Detection Facilities,”
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`issued November 23, 1999. Dkt. #86-2 at 54. In rejecting the ‘730 patent, the Examiner cited
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`Yollin’s teaching that “the controller generates a composite control signal” and discloses “a
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`framer receiving the user-input stream and the input stream to produce a combined data stream.”
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`Id. In response, Mr. Nguyen distinguished his patent on the basis that Yollin did not address the
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`collision problem created by combining slow-varying and fast-varying signals. Instead, he
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`explained, while Yollin utilizes various configurations for receiving input from a motion
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`translation unit, user selection unit and physiological response sensor, and for processing their
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`information prior to communication to the host system, “Yollin only uses the configuration to
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`receive the slow varying signal coming from the physiological response sensor(s). Yollin is not
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`motivated and does not anticipate their use for receiving signals containing audio or higher
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`frequencies in place of the physiological response sensor(s).” Id. at 70 (emphases added). Thus,
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`the Yollin patent does not provide a solution to the inevitable collision problem that would occur
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`if such slow-varying signals are combined with a high-frequency signal.
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`Mr. Nguyen asserted that his ‘730 patent, in contrast, addressed high-frequency signals
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`that “come[] from a source different from those of motion and selection units, will run
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`asynchronously relative to, and collide with, the other signals.” Id. at 71. He further explained
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`that “[the] invention describes . . . how to combine the data from a UID (mouse) and . . . a
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`ORDER RE: CLAIM CONSTRUCTION AND GRANTING DEFENDANT’S MOTION FOR
`SUMMARY JUDGMENT - 4
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`Case 2:19-cv-00351-RSM Document 123 Filed 07/30/20 Page 5 of 29
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`high-frequency signal, via a framer, which is unique and novel.” Id. Based on this patent
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`prosecution history, the parties agree that the “fast-varying” input signals covered by the ‘730
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`patent are signals that have “audio or higher frequencies.” See Dkt. 84-1 at 4. However, they
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`dispute whether Mr. Nguyen further disavowed the scope of “input signal” during prosecution
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`when he distinguished “fast-varying” frequencies addressed by his patent from the “slow-
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`varying” frequencies at issue in Yollin.
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`C. The Asserted Claims
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`The parties submitted a Joint Claim Construction and Prehearing Statement that identified
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`the top ten disputed claim terms. Dkt. #84. Claims 1, 14, 16, and 21 are independent claims.
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`Claims 10, 15, 17, 18, 22, 23, and 25 are dependent claims. Claim 10 depends on claim 1, claim
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`15 depends on claim 14, claims 17-18 depend on claim 16, and claims 22-25 depend on claim
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`21. The following are the relevant claims with disputed terms in bold:
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`1: A user input apparatus operatively coupled to a computer via a communication
`means additionally receiving at least one input signal, comprising: user input
`means for producing a user input stream; input means for producing the at least
`one input signal; converting means for receiving the at least one input signal and
`producing therefrom an input stream; and encoding means for synchronizing the
`user input stream with the input stream and encoding the same into a
`combined data stream transferable by the communication means.
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`10: The apparatus of claim 1 wherein the input means is an input transducer.
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`14: A programming method, executed by a computer communicatively coupled via
`a communication link to a user input means having means for synchronizing and
`encoding a user input stream and at least one additional input signal into a
`combined data stream, comprising the steps of: initializing the communication
`link; servicing a single resource service interrupt for receiving the combined data
`stream; and recovering from the combined data stream respective information of
`the user input means and of the at least one additional input signal.
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`15: The programming method of claim 14 further comprises transmitting, via the
`communication link, output information, the output information being received
`and converted by a converter residing in the user input means into at least one
`output signal.
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`ORDER RE: CLAIM CONSTRUCTION AND GRANTING DEFENDANT’S MOTION FOR
`SUMMARY JUDGMENT - 5
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`Case 2:19-cv-00351-RSM Document 123 Filed 07/30/20 Page 6 of 29
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`16: An apparatus linked to a computer by a communication link, functioning as a
`user input device and additionally receiving at least one input signal, comprising:
`a user input device producing a user input stream; an input port receiving at least
`one input signal; a converter receiving the at least one input signal for producing
`an input stream; and a framer synchronizing the user input stream with the
`input stream and encoding the same into a combined data stream transferable
`by the communication link.
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`17: The apparatus of claim 16 further comprises means for receiving an output
`stream from the computer via the communication link and means for
`converting the output stream into at least one output signal.
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`18: The apparatus of claim 16 wherein the converter further comprises an output
`port wherein the framer further receives an output stream from the computer via
`the communication link, the output stream being further received and converted by
`the converter into at least one output signal going to the output port.
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`21: A user input apparatus operatively coupled to a computer via a communication
`link receiving user input signals and additionally at least one digital input
`signal, comprising: a user input device for producing a user input stream; an input
`port for producing the at least one digital input signal; and a framer for keeping
`the user input stream and the at least one digital input signal in synchrony and
`encoding the same into a combined data stream transferable to the computer by
`the communication link.
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`22: The apparatus of claim 21 wherein the framer further receives output
`information from the computer to provide at least one output signal.
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`23: The apparatus of claim 22 further comprises an output transducer converting
`the at least one output signal into output energy.
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`25: The apparatus of claim 21 wherein the input port receives the at least one
`digital input signal from an external device.
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`Dkt. #84 at 2-6; see also Dkt. #84-1.
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`D. Procedural History
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`GET filed its Complaint in the U.S. District Court for the District of Delaware on
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`February 8, 2017. Dkt. #1. On March 11, 2019, the case was transferred to this Court. Dkt. #47.
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`Initial briefing on claim construction was filed by GET and Nintendo on January 21, 2020, Dkts.
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`#85, #86, with responsive briefing on February 3, 2020, Dkts. #92, #93. Oral argument was held
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`ORDER RE: CLAIM CONSTRUCTION AND GRANTING DEFENDANT’S MOTION FOR
`SUMMARY JUDGMENT - 6
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`Case 2:19-cv-00351-RSM Document 123 Filed 07/30/20 Page 7 of 29
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`on February 24, 2020. On January 23, 2020, Nintendo moved for summary judgment dismissal
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`of GET’s infringement claims. Dkt. #90.
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`III. LEGAL STANDARD
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`A. Summary Judgment
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`Summary judgment is appropriate where “the movant shows that there is no genuine
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`dispute as to any material fact and the movant is entitled to judgment as a matter of law.” Fed.
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`R. Civ. P. 56(a); Anderson v. Liberty Lobby, Inc., 477 U.S. 242, 247, (1986). Material facts are
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`those which might affect the outcome of the suit under governing law. Id. at 248. In ruling on
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`summary judgment, a court does not weigh evidence to determine the truth of the matter, but
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`“only determine[s] whether there is a genuine issue for trial.” Crane v. Conoco, Inc., 41 F.3d
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`547, 549 (9th Cir. 1994) (citing Federal Deposit Ins. Corp. v. O’Melveny & Meyers, 969 F.2d
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`744, 747 (9th Cir. 1992)).
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`On a motion for summary judgment, the court views the evidence and draws inferences
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`in the light most favorable to the non-moving party. Anderson, 477 U.S. at 255; Sullivan v. U.S.
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`Dep’t of the Navy, 365 F.3d 827, 832 (9th Cir. 2004). The Court must draw all reasonable
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`inferences in favor of the non-moving party. See O’Melveny & Meyers, 969 F.2d at 747, rev’d
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`on other grounds, 512 U.S. 79 (1994). However, the non-moving party must make a “sufficient
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`showing on an essential element of her case with respect to which she has the burden of proof”
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`to survive summary judgment. Celotex Corp. v. Catrett, 477 U.S. 317, 323 (1986). Where the
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`non-moving party fails to properly support an assertion of fact or fails to properly address the
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`moving party’s assertions of fact, the Court will accept the fact as undisputed. Fed. R. Civ. P.
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`56(e). As such, the Court relies “on the nonmoving party to identify with reasonable particularity
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`the evidence that precludes summary judgment.” Keenan v. Allan, 91 F.3d 1275, 1278–79 (9th
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`ORDER RE: CLAIM CONSTRUCTION AND GRANTING DEFENDANT’S MOTION FOR
`SUMMARY JUDGMENT - 7
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`Case 2:19-cv-00351-RSM Document 123 Filed 07/30/20 Page 8 of 29
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`Cir. 1996) (quotation marks and citations omitted). The Court need not “comb through the record
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`to find some reason to deny a motion for summary judgment.” Carmen v. San Francisco Unified
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`Sch. Dist., 237 F.3d 1026, 1029 (9th Cir. 2001).
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`“A determination of patent infringement consists of two steps: (1) the court must first
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`interpret the claim, and (2) it must then compare the properly construed claims to the allegedly
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`infringing device.” Playtex Prods, Inc. v. Procter & Gamble Co., 400 F.3d 901, 905–06 (Fed.
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`Cir. 2005). “Direct infringement requires proof by preponderant evidence that the defendant
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`performs (if a method claim) or uses (if a product claim) each element of a claim, either literally
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`or under the doctrine of equivalents.” Cheese Sys., Inc. v. Tetra Pak Cheese & Powder Sys., Inc.,
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`725 F.3d 1341, 1348 (Fed. Cir. 2013). Nintendo seeks summary judgment of noninfringement
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`and invalidity. See Dkt. #90 at 1.
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`1. Noninfringement
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`To support a summary judgment of noninfringement, “it must be shown that, on the
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`correct claim construction, no reasonable jury could have found infringement on the undisputed
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`facts or when all reasonable factual inferences are drawn in favor of the patentee.” Netword, LLC
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`v. Centraal Corp., 242 F.3d 1347, 1353 (Fed. Cir. 2001). “Summary judgment of
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`noninfringement under the doctrine of equivalents is appropriate if no reasonable jury could
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`determine two elements to be equivalent.” Goldenberg v. Cytogen, Inc., 373 F.3d 1158, 1164
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`(Fed. Cir. 2004) (internal quotation marks omitted). Infringement, either literal or under the
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`doctrine of equivalents, is a question of fact. See Crown Packaging Tech., Inc. v. Rexam Beverage
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`Can Co., 559 F.3d 1308, 1312 (Fed. Cir. 2009).
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`//
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`//
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`ORDER RE: CLAIM CONSTRUCTION AND GRANTING DEFENDANT’S MOTION FOR
`SUMMARY JUDGMENT - 8
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`Case 2:19-cv-00351-RSM Document 123 Filed 07/30/20 Page 9 of 29
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`2. Invalidity
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`Summary judgment of invalidity is appropriate if the patent claim fails to “particularly
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`point[] out and distinctly claim[] the subject matter which the inventor or a joint inventor regards
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`as the invention.” 35 U.S.C. § 112(b). A claim fails to satisfy this requirement and is invalid if
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`its language, when read in light of the specification and the prosecution history, “fail[s] to inform,
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`with reasonable certainty, those skilled in the art about the scope of the invention.” Nautilus,
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`Inc. v. Biosig Instruments, Inc., 134 S. Ct. 2120, 2124 (2014).
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`Where summary judgment involves issues of patent validity, the party seeking to
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`invalidate the patent must overcome a presumption that the patent is valid. See 35 U.S.C. § 282;
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`Microsoft Corp. v. i4i Ltd. P’ship, 131 S. Ct. 2238, 2243 (2011); U.S. Gypsum Co. v. Nat’l
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`Gypsum Co., 74 F.3d 1209, 1212 (Fed. Cir. 1996). This presumption places the burden on the
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`challenging party to prove the patent is invalid by clear and convincing evidence. Microsoft, 131
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`S. Ct. at 2243; U.S. Gypsum Co., 74 F.3d at 1212. However, “this presumption of validity does
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`not alter the degree of clarity that § 112[] . . . demands from patent applicants; to the contrary, it
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`incorporates that definiteness requirement by reference.” Nautilus, 134 S. Ct. at 2130 n.10
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`(addressing predecessor of §112(b)).
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`B. Claim Construction Principles
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`Patent claim construction is a question of law for the Court, even if the case is designated
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`to go to a jury trial, but it may have underlying factual determinations that are reviewed for clear
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`error. Teva Pharms. USA, Inc. v. Sandoz, Inc., 135 S. Ct. 831, 837, 190 L. Ed. 2d 719 (2015);
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`Markman v. Westview Instruments, Inc., 52 F.3d 967 (Fed. Cir. 1995) (en banc), aff’d, 517 U.S.
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`370, 116 S. Ct. 1384, 134 L. Ed. 2d 577 (1996). After the claims have been properly construed,
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`ORDER RE: CLAIM CONSTRUCTION AND GRANTING DEFENDANT’S MOTION FOR
`SUMMARY JUDGMENT - 9
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`Case 2:19-cv-00351-RSM Document 123 Filed 07/30/20 Page 10 of 29
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`the fact-finder will compare the claims to the allegedly infringing product or process. The
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`comparison is conducted on an element-by-element basis.
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`When interpreting claims, a court’s primary focus is on the intrinsic evidence of record,
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`which consists of the claims, the specification, and the prosecution history. Phillips v. AWH
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`Corp., 415 F.3d 1303, 1314-17 (Fed. Cir. 2005) (en banc). A court begins by examining the
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`claim language, id. at 1312, which should be viewed through the lens of a person of “ordinary
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`skill in the relevant art at the time of the invention.” SanDisk Corp. v. Memorex Prods., Inc.,
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`415 F.3d 1278, 1283 (Fed. Cir. 2005). Generally, a court should give the claim’s words their
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`“ordinary and customary meaning.” Phillips, 415 F.3d at 1312–13 (quotation omitted). In
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`construing a claim term’s ordinary meaning, the context in which a term is used must be
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`considered. ACTV, Inc. v. Walt Disney Co., 346 F.3d 1082, 1088 (Fed. Cir. 2003).
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`However, the claims “must be read in view of the specification, of which they are a part.”
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`Phillips, 415 F.3d at 1315 (quoting Markman, 52 F.3d at 979. Additionally, the doctrine of claim
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`differentiation disfavors reading a limitation from a dependent claim into an independent claim.
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`See InterDigital Commc’ns, LLC v. Int’l Trade Comm’n, 690 F.3d 1318, 1324 (Fed. Cir. 2012).
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`The specification can offer “practically incontrovertible directions about a claim meaning.”
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`Abbott Labs. v. Sandoz, Inc., 566 F.3d 1282, 1288 (Fed. Cir. 2009). “When consulting the
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`specification to clarify the meaning of claim terms, courts must take care not to import limitations
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`into the claims from the specification.” Id. “[A]lthough the specification may well indicate that
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`certain embodiments are preferred, particular embodiments appearing in the specification will
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`not be read into claims when the claim language is broader than such embodiments.” Tate Access
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`Floors, Inc. v. Maxcess Techns., Inc., 222 F.3d 958, 966 (Fed. Cir. 2000) (quotation omitted).
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`“By the same token, the claims cannot enlarge what is patented beyond what the inventor has
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`ORDER RE: CLAIM CONSTRUCTION AND GRANTING DEFENDANT’S MOTION FOR
`SUMMARY JUDGMENT - 10
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`Case 2:19-cv-00351-RSM Document 123 Filed 07/30/20 Page 11 of 29
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`described in the invention.” Abbott Labs., 566 F.3d at 1288 (internal quotation omitted).
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`“Likewise, inventors and applicants may intentionally disclaim, or disavow, subject matter that
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`would otherwise fall within the scope of the claim.” Id. at 1288.
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`In addition to the specification, a court should consider the patent’s prosecution history,
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`which consists of “the complete record of the proceedings before the PTO and includes the prior
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`art cited during the examination of the patent.” Phillips, 415 F.3d at 1317. However, because
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`the prosecution represents an “ongoing negotiation” rather than the “final product” of the
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`negotiation, “it often lacks the clarity of the specification and thus is less useful for claim
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`construction purposes.” Id. Consulting the prosecution history can, however, be helpful in
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`determining whether the patentee disclaimed an interpretation during prosecution. Research
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`Plastics, Inc. v. Federal Packaging Corp., 421 F.3d 1290, 1296 (Fed. Cir. 2005). “Under the
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`doctrine of prosecution disclaimer, a patentee may limit the meaning of a claim term by making
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`a clear and unmistakable disavowal of scope during prosecution.” Purdue Pharma L.P. v. Endo
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`Pharm. Inc., 438 F.3d 1123, 1136 (Fed. Cir. 2006); see also Chimie v. PPG Indus., Inc., 402 F.3d
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`1371, 1384 (Fed. Cir. 2005) (“The purpose of consulting the prosecution history in construing a
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`claim is to ‘exclude any interpretation that was disclaimed during prosecution.’”).
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`Although courts are permitted to consider extrinsic evidence, like expert testimony,
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`dictionaries, and treatises, such evidence is generally of less significance than the intrinsic record.
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`Phillips, 415 F.3d at 1317 (citing C.R. Bard, Inc. v. U.S. Surgical Corp., 388 F.3d 858, 862 (Fed.
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`Cir. 2004)). Extrinsic evidence may not be used “to contradict claim meaning that is
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`unambiguous in light of the intrinsic evidence.” Id. at 1324.
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`Means-plus-function claiming occurs when a claim term is drafted in a manner that
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`invokes 35 U.S.C. § 112(f) (previously § 112, ¶ 6). Williamson v. Citrix Online, LLC, 792 F.3d
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`ORDER RE: CLAIM CONSTRUCTION AND GRANTING DEFENDANT’S MOTION FOR
`SUMMARY JUDGMENT - 11
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`1 2 3 4 5 6 7 8 9
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`10
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`Case 2:19-cv-00351-RSM Document 123 Filed 07/30/20 Page 12 of 29
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`1339, 1347-48 (Fed. Cir. 2015). Under this provision, an inventor may express a claim element
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`“as a means or step for performing a specified function.” 35 U.S.C. § 112(f). Means-plus
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`function claims allow the inventor to claim his invention in terms of the function performed, as
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`long as he discloses in the specification the structure that performs the associated function. See
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`Med. Instrumentation & Diagnostics Corp. v. Elekta AB, 344 F.3d 1205, 1211 (Fed. Cir. 2003).
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`The court must first determine whether each term is a means-plus-function limitation. To
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`guide this inquiry, the Federal Circuit loosely follows a rebuttable presumption: if the claim term
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`“uses the word ‘means,’” it is presumed to be a means-plus-function limitation, but if the claim
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`term does not use “means,” it is presumed not to be. Williamson, 792 F.3d at 1348. The ultimate
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`determination, however, depends upon whether claim would be understood by persons of
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`ordinary skill in the art (“POSITA”) to give a sufficiently definite meaning for structure claimed.
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`Id. Construction of means-plus-function limitations involves two steps. “First, the court must
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`determine the claimed function. Second, the court must identify the corresponding structure in
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`the written description of the patent that performs that function.” Applied Med. Res. Corp. v. U.S.
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`Surgical Corp., 448 F.3d 1324, 1332 (Fed. Cir. 2006) (citation omitted).
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`IV. DISCUSSION
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`At issue in Nintendo’s motion for summary judgment are claims 10, 14, 15, 16, 17, 18,
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`21, 22, 23, and 25. See Dkt. #90. The Court will first resolve the parties’ claim construction
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`disputes and then consider whether Nintendo infringes on the claims at issue.
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`A. ‘730 Patent Terms for Construction
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`The first disputed claim term is “input signal.” Parties agree that based on the patent’s
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`prosecution history, the “fast-varying” input signals covered by the ‘730 patent are signals that
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`have “audio or higher frequencies.” See Dkt. 84-1 at 4. However, they dispute whether Mr.
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`ORDER RE: CLAIM CONSTRUCTION AND GRANTING DEFENDANT’S MOTION FOR
`SUMMARY JUDGMENT - 12
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`Case 2:19-cv-00351-RSM Document 123 Filed 07/30/20 Page 13 of 29
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`Nguyen further disavowed the scope of “input signal” during prosecution.
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`Claims
`
`All Asserted
`Claims (10, 14,
`15, 16, 17, 18,
`21, 22, 23, 25)
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`GET’s Proposed
`Construction
`A signal having an audio
`or higher frequency
`(Dkt. #84-1 at 5)
`
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`Nintendo’s Proposed Construction
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`A signal containing audio or higher
`frequencies. Mr. Nguyen disclaimed
`signals that are 500 Hertz (Hz) or less.
`He also disclaimed signals that are
`generated from positional change
`information, user selection
`information, physiological response
`information, and other slow-varying
`information.
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`Alternatively, indefinite.
`(Dkt. #84-1 at 5)
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`The Court agrees with parties that “audio or higher frequency” is the appropriate
`
`
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`construction of “input signal.” In distinguishing the ‘730 patent from Yollin, the patentee relied
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`on this term to differentiate the “slow-varying” positional change, user selection, and
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`physiological response information covered by Yollin from the “fast-varying” signals that would
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`pose a collision problem if combined with the slow-varying signals. See Dkt. #86-2 at 70-71.
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`Furthermore, the Patent Trial and Appeal Board (“PTAB”) adopted this construction in an inter
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`partes review proceeding. See Dkt. #86-4 at 12. While the PTAB’s construction is not binding,
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`a district court may take it into consideration when its construction is “similar to that of a district
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`court’s review.” See In re Rambus Inc., 694 F.3d 42, 46 (Fed. Cir. 2012).
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`Although parties agree on the construction of “input signal” as “audio or higher
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`frequencies,” they disagree on whether the analysis stops here. GET argues that a POSITA would
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`construe “input signal” solely as “audio or higher frequencies,” thus referring to any frequency
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`within the range of human hearing: 20 Hz to 20,000 Hz. Dkt. #86 at 25. Nintendo, in contrast,
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`argues that Mr. Nguyen expressly disclaimed all “slow-varying” signals addressed by Yollin,
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`including those generated from positional change information, user selection information, and
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`ORDER RE: CLAIM CONSTRUCTION AND GRANTING DEFENDANT’S MOTION FOR
`SUMMARY JUDGMENT - 13
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`Case 2:19-cv-00351-RSM Document 123 Filed 07/30/20 Page 14 of 29
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`other slow-varying information, and therefore disclaimed signals that are 500 Hz or less. Dkt.
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`#85 at 9.
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`Nintendo argues that the patentee triggered prosecution disclaimer when he distinguished
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`Yollin’s “slow-varying” information changes and signals from the “fast-varying” ones that would
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`create the collision problem addressed by the ‘730 patent. Nintendo highlights several statements
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`from Mr. Nguyen’s patent prosecution proceeding, including:
`
`Yollin’s invention utilizes, in column 5 lines 27-34, a controller to receive
`posit[i]onal change information, user selection information and physiological
`change information to generate of a composite control signal but does not anticipate
`its use with audio signals. Using a controller to generate the composite control
`signal out of the information changes, which are slow-varying, is standard and not
`worth mentioned in Yollin’s description. In contrast, my invention handles an audio
`signal which change constantly and fast; it cannot be transformed into control
`signals. My invention describes in details [sic] how to combine data, from the of
`mouse information and from the audio signal, via a framer.
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`Dkt. 85-4 at 36 (emphases added).
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`The Court agrees with Nintendo that the patentee’s statements amount to disclaimer of
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`the slow-varying signals addressed by Yollin. Although Mr. Nguyen used the term “audio or
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`higher frequencies” to characterize the fast-varying signals that would cause a collision problem,
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`he also attempted to rely on the frequency of Yollin’s signals that were too slow to cause a
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`collision problem in order to assert the novelty of the ‘730 patent. Indeed, much of the
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`prosecution history contains entire subsections that Mr. Nguyen devoted to differentiating
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`Yollin’s signals from those addressed by his invention. See, e.g., Dkt. #85-4 at 33-34. The Court
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`finds the following sentences illustrative, wherein Mr. Nguyen stated:
`
`Yollin’s invention utilizes . . . a controller to receive positional change information,
`user selection information and physiological change information to generate . . . a
`composite control signal but does not anticipate its use with signals containing
`audio or higher frequencies. Using a controller to generate the composite control
`signal out of the information changes, which are slow-varying, is standard and not
`worth mentioned [sic] in Yollin’s description. Difficulties will arise when one
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`ORDER RE: CLAIM CONSTRUCTION AND GRANTING DEFENDANT’S MOTION FOR
`SUMMARY JUDGMENT - 14
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`Case 2:19-cv-00351-RSM Document 123 Filed 07/30/20 Page 15 of 29
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`signal runs asynchronously relative to another signal and fast. Yollin’s patent does
`not teach or suggest any method for the controller to receive and recover such
`signals. In contrast, this invention describes, in its representative embodiments,
`how to combine the data from a UID (mouse) and from a high-frequency signal,
`via a framer, which is unique and novel.
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`Dkt. #86-2 at 70-71 (emphases added). Based on these statements in the prosecution history, the
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`PTAB acknowledged the relational nature of the term “input signal” in terms of its exclusion of
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`any slow-varying signals covered by Yollin. See Dkt. #86-6 at 13 (Concluding that while it “need
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`not decide the specific range of frequencies that a skilled artisan would have understood to be
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`covered by the term ‘input signal’ . . . [,] the term ‘input signal’ refers to a signal with significantly
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`higher frequency characteristics than the slow varying signal characteristics of a ‘user input
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`signal[.]’”) (emphasis added).
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`Accordingly, the Court finds these statements to be a clear expression by Mr. Nguyen
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`that if a sensor produces signals at the frequency of those contemplated by Yollin, those
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`frequencies do not pose a collision problem when combined with slow-va