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Claims to a Controller with Multiple Input Members Were Not Supported by Earlier Application That Described a Controller with a Single Input Member

April 13, 2010

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Last Month at the Federal Circuit - May 2010

Judges: Newman (author), Gajarsa (concurring), Dyk

[Appealed from: E.D. Tex., Judge Clark]

In Anascape, Ltd. v. Nintendo of America, Inc., No. 08-1500 (Fed. Cir. Apr. 13, 2010), the Federal Circuit reversed the district court’s ruling that the claims at issue in U.S. Patent No. 6,906,700 (“the ’700 patent”) were entitled to the earlier filing date of U.S. Patent No. 6,222,525 (“the ’525 patent”), from which they claimed priority, and thus reversed a jury’s finding of validity, infringement, and an award of damages.

Anascape, Ltd. (“Anascape”) owns both the ’700 and ’525 patents, which are directed to video game controllers.  An operator’s hand movements are electronically sensed and translated into corresponding linear and rotational movements shown on a graphic display.  The hand inputs are implemented through handles, such as joysticks or trackballs, which move graphic images in six general directions.

The ’700 patent was filed as a CIP of the application that became the ’525 patent.  While the claims and specification of the ’525 patent describe “controllers having a single input member that is operable in six degrees of freedom,” the claims and specification of the ’700 patent describe controllers “having multiple input members that together operate in six degrees of freedom.”  Thus, the issue was whether the written description of the ’525 patent adequately supported the ’700 patent claims.  This priority claim was important because Anascape had conceded that an intervening Sony prior art reference would invalidate the ’700 patent claims if they were not accorded the earlier filing date of the ’525 patent.  At trial, the district court acknowledged that the applicant “clearly expected the inventions to be used with a single input member . . . that moved in [six degrees of freedom].”  Slip op. at 4 (citation omitted).  Nevertheless, the district court held that the ’700 patent was entitled to the filing date of the ’525 patent.

On appeal, the Federal Circuit held that the district court erred in ruling that the claims at issue in the ’700 patent were entitled to the filing date of the ’525 application.  At the outset, the Federal Circuit declared that “[t]he issue turns on whether the specification of the ’525 patent supports . . . controllers having multiple input members that together operate in six degrees of freedom, as described and claimed in the ’700 patent.”  Id. at 3-4.  Addressing this question, the Court agreed with Nintendo that the ’525 specification was directed to only a single input member and described the use of multiple input members as having significant disadvantages.

Anascape pointed to some of the issued claims of the ’525 patent, which recite an “input member moveable on at least two axes,” arguing that this adequately described more than a single input member for priority purposes.  But the Court found that it need not decide the significance of the words “at least two,” since this text was not part of the specification and claims as originally filed, but was later added to the claims by an amendment. 

The Court also found that the applicant’s textual changes in the specification supported the conclusion that the ’525 patent was directed to a single input member.  For instance, in the “Background of the Invention” and “Summary of the Invention” sections of the ’700 application, the court noted that “every occurrence of ‘hand operable single input member’ in the ’525 specification was replaced with ‘hand operable input member(s)’ . . . or ‘at least one hand operable input member.’”  Id. at 9 (citation omitted).  Turning to the remainder of the specification, the Court further observed that the applicant changed sixteen of the seventeen references to a “single input member” to reference “at least one input member.”  While Anascape argued that these changes did not add new matter, the Court found that position untenable.  Indeed, the Court stated that removing the limitation of a single input member capable of movement in six degrees of freedom, and filing new claims with commensurately broadened scope, was “classical new matter.”  Id. at 10.

Anascape also argued that the subject matter described in the ’525 specification was simply a preferred embodiment, and that the inventor did not disclaim the broader scope of the ’700 patent claims.  In this regard, the district court had observed that “nothing in the [’525] specification disclaims other variation.”  Id. (alteration in original) (citation omitted).  But the Federal Circuit noted that “the question is not whether the patentee in the ’525 specification ‘disclaimed’ the scope of the ’700 patent; the question is whether the ’525 specification sufficiently describes the later-claimed subject matter.”  Id.  The Court acknowledged that “[a] patentee is not deemed to disclaim every variant that it does not mention.  However, neither is a patentee presumed to support variants that are not described.”  Id. at 11.

The Court also rejected Anascape’s attempt to rely on the testimony of its expert witness to establish that the ’525 specification adequately described the subject matter of the ’700 patent’s claims.  While Anascape’s expert testified that the ’525 patent was not limited to single input 6-degree-of-freedom controllers, the Court found that this testimony “is not supported by any evidence at all.”  Id.

As a result, the Federal Circuit concluded that “the description in the ’525 specification is not reasonably read as describing a larger invention, of which the single input was only a preferred embodiment.”  Id. at 13.  Instead, “the only reasonable reading of the ’525 specification is that it is directed to and describes only a controller having a single input member operable in six degrees of freedom.”  Id. at 14.  Accordingly, “[t]he district court erred in ruling that this subject matter is adequately described in the ’525 specification, for the statutory requirements are not met, on any reading of the ’525 specification.”  Id.  And because Anascape had admitted that intervening prior art anticipated the asserted claims of the ’700 patent, the Federal Circuit reversed the judgment of validity and award of damages.

Judge Gajarsa concurred with the ruling, but wrote separately “to highlight the majority’s best use of the written description requirement as a priority-policing mechanism in contradistinction to an independent basis for validity.”  Gajarsa Concurrence at 1.  In his view, “[t]he majority’s application of the written description requirement, in my judgment, would be the preferred use of the written description requirement.”  Id. at 2.  In contrast, Judge Gajarsa criticized the recently decided case of Ariad Pharmaceuticals, Inc. v. Eli Lilly & Co., No. 08-1248 (Fed. Cir. Mar. 22, 2010), which used the written description requirement rather than enablement to invalidate claims.  He explained that “[t]hough Ariad makes clear that written description is not confined to the priority policing context, I continue to believe such confinement, while not statutorily mandated, streamlines litigation and arguably reconciles some of our written description and enablement precedent[s].”  Gajarsa Concurrence at 3.


Summary authored by Jared D. Schuettenhelm, Esq.