This past weekend I was treated to a special Father Day’s invitation from my daughters to play video games (Nintendo WiiTM) down in our basement.  The game console is connected to a fairly new flat screen that, at the time it was purchased, was primarily intended to air football games at times of MY convenience.  Similarly, the nice, soft sofa in front of the flat screen had been intended to only accommodate me, channel controls, and an occasional bag of Spicy Nacho Doritos.

All of that, of course, was a short-lived dream, which I was again reminded of as I found dad’s Wii RemoteTM  buried beneath some soccer socks, a nest of hair bands and a few magazines highlighting some event known as  “The World Cup,” and a little guy named Messi.  However, as I picked up the remote, something clicked in my memory and I said, “Hey guys, I was just reading a patent case about a Wii RemoteTM.”

SERIOUSLY, dad?” older daughter cut me off, “Please don’t. That stuff is REALLY BORING.”

“It really is, daddy,” agreed younger daughter.  “Do you want to be Luigi?”

Oh well.

In Triton Tech Of Texas, LLC v. Nintendo Of America, Inc.[1] the Federal Circuit affirmed a ruling by the United States District Court for the Western District of Washington that Triton’s U.S. Patent No. 5,181,181 (“’181 Patent”) was invalid for indefiniteness.  The case revolved around the claims of the ‘181 Patent and the use of a Wii RemoteTM with a computer.  The patent had claims reciting an input device that provided information to the computer about cursor movement much like a conventional mouse, except that the information provided by the ‘181 device was related to movement in three dimensions.  The claimed input device included acceleration sensors, rotational rate sensors, an analog-to digital converter, buffer memory, and an “integrator means associated with said input device for integrating said acceleration signals over time to produce velocity signals for linear translation along each of … first, second and third axes.”[2]

The main dispute was over the element, “integrator means.”  The district court had determined that this term caused the claims to be indefinite.  It found that the corresponding structure in the patent for the integrating function was a conventional microprocessor, however, no algorithm was disclosed for the integration function, the patent’s disclosure of “numerical integration” not being sufficient.

The Federal Circuit’s analysis began with an explanation of how § 112, ¶ 6 permits the expression of an element of a claim in the form of a means for performing a particular function.  However, in exchange, the patent specification must sufficiently disclose the structure that corresponds to the function.  In particular, if the function is performed by a general purpose computer or microprocessor, then the specification must also disclose the algorithm used by the computer.  Otherwise, the claim is indefinite.                                                                                                                                                                                                                                                                                                                                                                                                                                                                                                                                                                                                                                                                                                                                                                                                                                                                                                                                                                                                                                                                                                                                                                                                      Triton conceded that the integrator means structure was a conventional computer but argued first that use of the phrase, “numerical integration” was sufficient disclosure of the algorithm because the term was well known to those skilled in the art.  Triton argued second that a two-step algorithm for accomplishing the integrating function was disclosed.

In addressing Triton’s arguments, the Federal Circuit noted that an algorithm can be present in many forms, but maintained that mere use of the term “numerical integration” isn’t a sufficient disclosure of an algorithm (step-by-step procedure for accomplishing a given result).   The Federal Circuit agreed with the district court’s analysis that the term numerical integration does not designate a single algorithm, but instead an entire class of possible algorithms, which makes it impossible to understand the scope of the claims.  The mere fact that an appropriate numerical integration algorithm could be chosen by one skilled in the art and programmed into the computer, does not disclose structure.  There is thus an important difference between an enabled structure and a structure that is adequately disclosed. In a previous case, the Federal Circuit had explained

Enablement of a device requires only the disclosure of sufficient information so that a person of ordinary skill in the art could make and use the device.  A § 112, ¶ 6 disclosure, however, serves the very different purpose of limiting the scope of the claim to the particular structure disclosed, together with equivalents.[3]

Second, the Federal Circuit held that Triton had waived its second argument as to the two-step algorithm since it didn’t make this argument to the district court.  At most, Triton argued to the district court that one skilled in the art would have identified a preferred integration algorithm because various numerical integration methods were known.

The clear take-away from this case is the need to provide sufficient description of structure in the specification so as to meet the requirements of § 112, ¶ 6.  This is particularly important when the function is provided by a general purpose computer or microprocessor, where the algorithm used by the computer must be described with particularity.

……as I write this, my daughters have now turned on the Argentina vs. Bosnia game (more of the Father’s Day experience).  That Messi guy just scored a goal.  He’s not a bad player.

[1] No. 2013-1476 (Fed. Cir. June 13, 2014).

[2] Id at 3.

[3] Aristocrat Tech. Aus. Pty Ltd. V. International Game Tech., 521 F.3d 1328, 86 USPQ2d 1235, 1242 (Fed. Cir. 2008).


– Bill Reid
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