Nintendo Wii Accused Of Willfully Infringing Patent That Was Applied For After Wii Was Introduced

from the wii-need-an-independent-invention-defense dept

Techcrunch is reporting on yet another patent dispute over the technology found in Nintendo’s Wii video game system. This time the company suing is ThinkOptics, the makers of the Wavit Remote.

The dispute is over the following patents:

  • 7,796,116: Electronic equipment for handheld vision based absolute pointing system
  • 7,852,317: Handheld Device for Handheld Vision Based Absolute Pointing System
  • 7,864,159; Handheld Vision Based Absolute Pointing System.

Notice a trend yet?

What is probably not surprising is that this patent dispute is being filed in the patent troll haven of East Texas. Along with Nintendo, ThinkOptics is suing Nyko, a maker of third party Wii Remotes, Gamestop and Radio Shack, both of whom sell the Wii and accessories, and finally JC Penny, for being over priced and of low quality, I guess. Not sure why other retail outlets aren’t being sued.

ThinkOptics’ primary argument for how Nintendo willfully infringed on their patents is that Nintendo’s own patent applications were rejected.

The rejection of […] applications — assigned to Nintendo Co. Ltd. — based on the ’116 patent is proof that the Nintendo defendants knew or should have known of the objective risk that one or more of their products infringed at least one claim of at least the ’116 Patent.

The dates involved are what makes this suit interesting. Of the three patents behind the dispute two were granted in 2010 and one is 2011. All three, however, were applied for in July of 2005, two months after Nintendo first introduced the Wii to the public at the 2005 E3 conference.

With these dates in mind, how could Nintendo possibly have known they were infringing on a patent when that patent was not even applied for prior to the first public announcement of the technology? What this situation shows is the need for an independent invention defense in the patent system. Here we have two companies developing similar technologies at the same time. There was no public information from either company prior to the patent filing to indicate that someone else was making this technology. Why should one of these companies be punished for treble damage for not finding information that was unavailable at the time of development?

It will be interesting to see what comes of this lawsuit. It will also be interesting to see how many more companies will sue over the Wii.

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Companies: nintendo, thinkoptics

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Comments on “Nintendo Wii Accused Of Willfully Infringing Patent That Was Applied For After Wii Was Introduced”

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87 Comments
Franey says:

IANAL (also not American), but am I right in thinking that under US patent law as it stands, prior art can only invalidate a patent if it was made public at least 12 months before the patent’s application date? And isn’t this one of the things the patent reform bill is supposed to change? (Presumably not retrospectively, so Nintendo could be boned.)

6 says:

Re: Re: Re: Re:

“So, 12 months before application or any time before invention: correct?”

Look dood, there are different portions of 35 USC 102 which can be used to determine if a given disclosure is “prior art”.

A very very very basic breakdown that might appease your appetite for knowledge whilst also appeasing your reluctance to go look into it yourself goes like this.

102(a)- anything PUBLISHED by ANOTHER ENTITY (other than the inventor) prior to the EFFECTIVE filing date of the application (you can use foreign priority to get around this).

102(b)- anything published, offered to be sold, in public use, by ANYONE (including the inventor) ONE YEAR prior to the DOMESTIC FILING date (you can’t use foreign priority to get around this).

102(e)- any PUBLISHED APPLICATION FOR US PATENT (or national stage/other stage of published WIPO patent apps filed in the US with some conditions) OR PATENT by ANOTHER ENTITY (other than the inventor) filed before the EFFECTIVE FILING DATE (you can use foreign priority to get around this kind of art).

That’s a very basic breakdown. It’s all very complicated and it will take you some time to understand if you look into the matter. If you’re interested enough, then be my guest.

Those are the most used sections of 102. You’ll probably need a lawlyer to understand when the rest of them apply or don’t apply.

Anonymous Coward says:

Realistically, there is no way that the Wii actually copied these patents (blatantly infringed). If you have a working article months before another patent was filed, there is no way that you used the patent to develop your tech. They wouldn’t have even known about the patent for another year or so after the filing date as the patent office doesn’t publish the applications immediately.

Willton says:

Re: Re:

Realistically, there is no way that the Wii actually copied these patents (blatantly infringed). If you have a working article months before another patent was filed, there is no way that you used the patent to develop your tech. They wouldn’t have even known about the patent for another year or so after the filing date as the patent office doesn’t publish the applications immediately.

I don’t see the plaintiff alleging this; the plaintiff is merely alleging that Nintendo willfully infringed its patent. Blatant copying is not a prerequisite to willful infringement.

Anonymous Coward says:

“What this situation shows is the need for an independent invention defense in the patent system.”

I cannot imagine for a second how you manage to draw this conclusion. Before someone applies for at patent, the field is open. When they apply, other companies that have prior art either should come forward, or be ready to fight legally if they think they are in the right.

Clearly, Nintendo introduced the product before the patent was applied for, so there is not much more to say. Either the patent doesn’t apply to Nintendo’s equipment and methods for operating, or the patent is invalid because of prior art.

No need to create some convoluted “independent invention” system, that would just add needless complications to hundreds of other situation and likely gridlock the patent system.

Oh wait, that is really what you are trying to propose. If you can’t shut patent down by logic, you are pushing to create such complication as to make them meaningless. WTG MIKE!

freak (profile) says:

Re: Re:

My understanding is that ‘prior art’ would involve a patent application. So unless nintendo also patented this, there would be no prior art.

It, uh, wouldn’t be the first time a site . . . sorry, company or individual was sued for patent infringement for something they implemented well before the plaintiff applied for the patent.

HothMonster says:

Re: Re:

“When they apply, other companies that have prior art either should come forward, or be ready to fight legally if they think they are in the right.”

Thats why I read ever patent that gets submitted in case someone has something similar to my idea and keep a few million lying around to protect myself from patent trolls. If you don’t have enough money to defend yourself from giant corporations why bother trying to new things?

Independent invention clause would be horrible, idc if someone didn’t copy my work, if their idea is vaguely similar to mine and they are making more money than me I want to be able to sue their pants off and idfc if they don’t have millions in reserve to defend themselves.

Franey says:

Re: Re:

Clearly, Nintendo introduced the product before the patent was applied for, so there is not much more to say. Either the patent doesn’t apply to Nintendo’s equipment and methods for operating, or the patent is invalid because of prior art.

Yeah, not so simple.

According to this, prior art only counts if it’s (a) before the date of invention or (b) at least 12 months before the application date.

(b) is out, because Nintendo demo’d the Wii only two months before the patent was applied for.

So that leaves (a), and an argument over what the “date of invention” was, which again is a bit complicated.

Cowardly Anon says:

Re: Re:

I’m trying to understand what your argument here is…other than that Mike doesn’t know anything. I think we can all see your opinion on that quite clearly.

You feel that Nintendo should have to pay millions in legal fees and time to prove that they did not infringe on this companies patents? Why should the company that successfully executed the idea have to pay for the burden of proof?

Perhaps Mike’s suggestion of that clause isn’t what’s needed, but at least he’s suggesting SOMETHING. If you don’t agree that it’s the right something, then offer a suggestion of your own.

Just sayin’….you’d be better received if you joined the conversation instead of personally attacking the person who has the balls to suggest something first.

HothMonster says:

Hmmm, so do you think I can submit a patent for a “patent submission and approval process” and sue the USPTO for infringement?

Someone sent me an email that the patent office has issued patent#8,000,000 and is making a big fuss about it. I was really hoping it was a process for thermally conditioning bread but it actually seems to be legit, I wonder how many the weeded through before they found one innovative enough to make a big deal about.

Andrew D. Todd (user link) says:

Old Art From Another Field.

There is a long-established art of navigating ships, aircraft, and spacecraft. Nintendo’s use of this art in the Wii-Mote controller was substantially conventional, drawing upon two techniques:

1) Inertial Guidance. Nintendo used an off-the-shelf, commercially available “gyroscope on a chip” device.

2) Celestial Navigation/ Pilotage by Light House, plotting the angles to a bank of infrared LEDs mounted on the console unit, and using a camera as a kind of sextant. This last is not novel– plotting angles and dimensions from air photographs is an established tradition going back at least seventy or eighty years.

The combined usage of the two bodies of navigation art goes at least back to the space program. The astronaut Michael Collins, in his _Carrying the Fire_ describes using a combined system during the Apollo XI mission– in 1969.

Nintendo’s only potentially novel act was to use this system to locate a game controller, rather than a spacecraft. However, it is immediately obvious, under KSR v. Teleflex, to take a complete system doing a particular job in one use, and set it to doing that same job in another use.

Nintendo would not have been able to enforce patents successfully against a commercial rival, such as Apple, Sony, or Microsoft, if they had chosen to directly clone the Wii-Mote. The situation did not arise, because these companies simply rejected the idea of the Wii more or less outright.

6 says:

Re: Old Art From Another Field.

“Nintendo’s only potentially novel act was to use this system to locate a game controller, rather than a spacecraft. However, it is immediately obvious, under KSR v. Teleflex, to take a complete system doing a particular job in one use, and set it to doing that same job in another use.”

O rly?

Andrew D. Todd (user link) says:

Re: Re: Old Art From Another Field.

For example, Howard Rheingold, in his _Virtual Reality_ (1991), speaks of the necessity of determining the location of a dataglove, and briefly describes the system used in the Mattel PowerGlove, essentially a sonic version of Loran, with ultrasound transmitters mounted around a television set, and an ultrasound receiver mounted on the glove. Rheingold stresses that this was a cheap and expedient means of achieving a price point.

Willton says:

Re: Re: Re: Old Art From Another Field.

For example, Howard Rheingold, in his _Virtual Reality_ (1991), speaks of the necessity of determining the location of a dataglove, and briefly describes the system used in the Mattel PowerGlove, essentially a sonic version of Loran, with ultrasound transmitters mounted around a television set, and an ultrasound receiver mounted on the glove. Rheingold stresses that this was a cheap and expedient means of achieving a price point.

That’s a nice story, but I don’t see how that is relevant to obviousness.

Anonymous Coward says:

Re: Headline and article is misleading

If Mike actually researched these articles he’d avoid egg on his face like this. But, nope, not Mike. He never lets facts get in the way of his idiotic FUD spreading. The fact that he doesn’t take basic efforts to get the facts right proves how slimy he really is.

The Groove Tiger (profile) says:

Re: Re: Headline and article is misleading

I imagine this troll just skims the comments without bothering about the article, finds the first one saying something like “article is misleading” (whether from one of his fellow tribe or not) or whatever, then writes a generic whiny post from his templates of “Mike IS FUD! Soylent Green is people!” and makes an ass of himself.

Anonymous Coward says:

Re: So what you're saying...

Provisional Patents were applied for on Jan 12, 2005 prior to the wii announcement.

OK, so what you’re saying is that a Nintendo employee was reading patent applications one day, spotted this one, said “this is great, let’s build it!”, wrote up a proposal, submitted it, at which point Nintendo stopped everything they were doing to devote all their resources into designing, prototyping, and building something that they *knew* infringed on a patent. (Which they would have had to do in order for it to be “willful”)

Yeah, that sounds *really* likely.

Willton says:

Re: Re: Re:2 So what you're saying...

Then how is Nintendo supposed to know about the patent?

Exactly how the plaintiff alleged: by having these patents cited against Nintendo’s own patent applications.

Oh, you mean before Nintendo began developing its product? Why does that matter? Blatant copying is no prerequisite for infringement, not even willful infringement.

Jay (profile) says:

Re: Re: Re:3 So what you're saying...

“Exactly how the plaintiff alleged: by having these patents cited against Nintendo’s own patent applications.”

*facepalms*

Meanwhile, they are presumed to be valid, Think Optic decided to file first so they get proceeds from a product that actually went to market and executed successfully…

So the government should just hand over money to those poor starving ThinkOptic guys because Nintendo successfully launched their product while ThinkOptic merely thought about it…

Meanwhile, let’s ignore the fact that Nintendo and ThinkOptical are in two different markets, cater to different customers, and could coexist without the threat of a patent pending lawsuit.

Yeah, this sounds like a GREAT way to promote innovation… Sue everyone through a vague patent. Bravo to Wavit for being so innovative that someone else could come up with similar technology, based on IR and engineering know how to make it run for a game console that TO had no hand in helping to make.

Robert Doyle (profile) says:

Why should the defendant even have to go to court

Something like this should just involve the judge summarily smacking the applicant and then turning them upside down, shaking them until their change falls out and then handing it to the defendant.

Just because you show you have a knack for abusing process doesn’t mean you should be rewarded for it.

And remember… a hitman is about 5k… a lot less than a lawyer. Just saying.

Anonymous Coward says:

“I cannot imagine for a second how you manage to draw this conclusion. Before someone applies for at patent, the field is open. When they apply, other companies that have prior art either should come forward, or be ready to fight legally if they think they are in the right.”

There is no way a system like that can work in practice. It is impossible to police all the patents that are being applied for to know which ones are a problem for you. Even for a small company with limited product, that’s more than a full time job and you’re not even assured that you’d catch everything that could be a problem.

Waiting to litigate is far from a preferred option. Just the threat of legal trouble can sink small businesses. Patent cases frequently go for 5+ years and it is very hard to prove a patent is invalid given the presumption of validity, regardless of how bad the patent is.

6 says:

So Zach, again we meet upon the field of your misunderstanding of the patent law and why it is setup the way it is. This situation clearly shows off one feature of the patent system. It encourages people to document, in a way understandable to those of ordinary skill, the technical parts inside of products.

Here, it appears Nintendo disclosed their Wii remote, but probably did not disclose the inner workings just yet (otherwise there will be prior art and there is no point to your whole paper), and likewise probably did not offer to sell it just yet. Other people in the field disclosed the inside workings of certain types of controllers and got a patent. Turns out, perhaps the inside workings they disclosed and claimed are the ones Nintendo used. Thus, they claim infringement.

Now, precisely how does Nintendo showing off their product at a trade show without disclosing how it works and the parts inside, make for a good reason to recind the standing offer our gov. presents to people to go ahead and make the disclosure in exchange for a patent? Nintendo had the device, it worked, they could have publicly disclosed it, or filed on patents secretly (which would later make good prior art) telling us all about the controllers. Apparently they chose not to. They’re a big boy, they know the consequences of such actions.

There is no need to qq for Nintendo here.

“Headline and article is misleading. Provisional Patents were applied for on Jan 12, 2005 prior to the wii announcement.

Oh and look there, even more reason to believe they filed first.

Willton says:

Re: Re: Re:

Are you suggesting that it isn’t enough to develop “Prior Art”, but you have to apply and disclose it in a patent for it to count?

It does not have to be disclosed in a patent, but it must be disclosed publicly somewhere to count. The public does not benefit by Nintendo keeping their technology secret, and I see nothing from the E3 show explaining how their technology is made and used. The only thing the E3 show disclosed was that Nintendo has a shiny new object for people to buy.

Anonymous Coward says:

Re: Re: Re: Re:

The three patents disclose a plurality of devices and methods associated with remote controllers, and the plaintiff is alleging that all of the named parties, in one way of another (multiple remote control manufacturers, importers, domestic retailers) infringe one or more of the claims of each patent.

What seems to be overlooked by many here is that no one at this time knows just what products associated with the defendants are deemed to infringe. While I realize that under the FRCP notice pleading has been the longstanding rule, recent judicial decisions have opined that mere notice pleading is insufficient if a defendant is unable from the face of the complaint to identify which of its products are the subject of the suit.

In view of the above, it seems quite likely that a Motion to Dismiss the complaint will be filed, will likely be granted with the plaintiff being granted leave to amend, the amended complaint will ultimately be determined sufficient, and the defendants will then be put to the task of filing an answer and any counterclaims they may have.

One of the problems associated with both the article and many of the comments is the apparent assumption that whatever was the remote associated with the defendants is the very same remote now associated with each. Such an assumption is unwarranted at the moment since no one knows if what they had way back when is the same thing the have now. This is where an amended complaint will prove to be quite useful.

6 says:

Re: Re: Re:

“Are you suggesting that it isn’t enough to develop “Prior Art”, but you have to apply and disclose it in a patent for it to count?

Not “apply and “disclose” it. You can “apply for a patent” OR otherwise disclose it for it to become prior art. You can also offer to sell something, and a year later whatever you offered to sell is prior art under 102b. And I’m not just “suggesting” that, I’m telling you that straight to your face. I’m “informing” you of that.

But don’t qq for Nintendo, they knew and know all this.

HothMonster says:

Re: Re:

so despite the fact that Nintendo had already made working controllers using these methods since these other guys applied first and never made any controllers Nintendo should have to pay them? Even though they clearly didn’t infringe since they had working prototypes being demoed by the public before the patent was applied for, since these guys filed they get a cut of Nintendo’s money. Sounds like a fair, just and unbroken system to me.

Anonymous Coward says:

The plaintiffs are probably trying to claim priority back to some prior-filed predecessor patent.

Reminds me of the Anascape lawsuit, where Microsoft settled before trial and Nintendo got hit with a big jury verdict.

http://www.patentarcade.com/2008/05/case-anascape-ltd-v-microsoft-et-al.html

If I recall, several of those patents were filed after the products came out, but claimed priority based on some earlier patent applications.

freak (profile) says:

Re: Re:

Y’know, as much as I’m against IP, I still think that keeping some tiny amount of patents around would be better than none at all.

And yeah, yeah, we’ve had this argument before, and I’ve been unable to argue for patents at all. One of these days I’ll have to dig into a big pile of research and do some thinking.

staff says:

another biased article

?Patent troll?

Call it what you will…patent hoarder, patent troll, non-practicing entity, etc. It all means one thing: ?we?re using your invention and we?re not going to pay?. This is just dissembling by large infringers to kill any inventor support system. It is purely about legalizing theft.

Prior to eBay v Mercexchange, small entities had a viable chance at commercializing their inventions. If the defendant was found guilty, an injunction was most always issued. Then the inventor small entity could enjoy the exclusive use of his invention in commercializing it. Unfortunately, injunctions are often no longer available to small entity inventors because of the Supreme Court decision so we have no fair chance to compete with much larger entities who are now free to use our inventions. Essentially, large infringers now have your gun and all the bullets. Worse yet, inability to commercialize means those same small entities will not be hiring new employees to roll out their products and services. And now some of those same parties who killed injunctions for small entities and thus blocked their chance at commercializing now complain that small entity inventors are not commercializing. They created the problem and now they want to blame small entities for it. What dissembling! If you don?t like this state of affairs (your unemployment is running out), tell your Congress member. Then maybe we can get some sense back in the patent system with injunctions fully enforceable on all infringers by all inventors, large and small.

For the truth about trolls, please see http://truereform.piausa.org/default.html#pt.

Andrew D. Todd (user link) says:

What Is An Invention?

This is a fairly typical micro-electronics “invention.” It isn’t driven by actual systems invention. It is driven essentially by the falling price of chips. Things that the military could afford many years ago are now cheap enough that they can be incorporated into children’s toys.

About thirty years ago, people were experimenting with “cheap guidance systems,” so that they could be built into missiles costing “only” $100,000 (the more advanced and expensive varieties of Sidewinder missile), as opposed to the $20,000,000 of an Air Superiority Fighter such as the F-14 Tomcat or the F-15 Eagle. All the different possibilities were tried out, and such technologies gradually worked their way downwards. Inertial guidance chips, for example, went into automobile anti-skid braking systems. Before the car can steer with its brakes, it needs to know which way it is going. This market created an industry to produce such parts at consumer prices. Once Nintendo disclosed its intention to bring out a controller based on motion, the means of doing so were obvious to the kind of person who habitually reads electronics suppliers’ catalogs. Nintendo built the Wii-Mote with off-the-shelf parts, subject to severe cost constraints. They used the two-dollar part, but they could not afford the ten-dollar part from the same manufacturer. That kind of thing.

I have a sort of indefinite memory of reading an article in Scientific American, sometime in the 1980’s, about the concept of putting “devices” on a chip. I no longer have the copies, and cannot check my memory, but as I recall, the article dealt with the means of etching mechanical structures on a chip, and then suggested a series of devices. Apart from elementary devices such as pressure sensors, there was a discussion of how to make a gas chromatograph. The article also mentioned the beam balance, a weight on the end of a beam, which could be used to make an accelerometer. I don’t recall whether the article raised the additional point that a pair of accelerometers make a differential accelerometer, measuring rotational acceleration, and thus a solid-state gyroscope. It would probably also be worthwhile to look at the journal Machine Design for that period. This was the kind of journal which one had to read in the engineering school library, unless one met the professional requirements for a subscription (*), but I made a few photocopies of articles which especially interested me.

(*) One of the enduring wonders of of the internet is that so much stuff is available for free, without having to prove that one is a potential customer for expensive equipment in the immediate future. You can download spec sheets for electronic parts without having to work for a consumer electronics firm.

What was truly novel about the Wii was not anything to do with invention as defined by the patent law– it was the discovery of a market, a market of mature women who found routine calisthenics unbelievably dull, and wanted to play virtual tennis in their living rooms, and who did not feel the need to pretend that they were Serena Williams or whoever. Since they were concerned with essentials like ball movement, the program could be approximately on the same order as Pac-Man. Most of the game industry was so fixated on the teenage boy market that it could not comprehend the interests of people who did not live like teenage boys.

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