Nintendo Loses Patent Suit In East Texas, Of Course
from the prior-art,-anyone? dept
The latest in a long line of patent lawsuits in every patent hoarders favorite district of East Texas involves the game controllers used by Nintendo. A company holds a patent on a 3D controller and sued Nintendo (and Microsoft) for supposedly violating the patent. Not surprisingly, the jury found in favor of the patent holder. Juries quite often side with the patent holder, no matter how questionable the patent may be. In this case, there would seem to be a ton of prior art raising validity questions. The patent itself was filed in November of 2000, at which point there were already numerous game controllers that seem to meet most of the criteria outlined in the claims. Whatever minor differences there may have been between what was on the market and what's in the claims should be seen as an obvious iteration of game controllers. As for Microsoft's involvement, it paid up to settle last month, once again showing how it's often cheaper to just pay up rather than to fight questionable patents. And, that, of course, is why we will keep seeing more and more questionable patents being filed. It's just so lucrative.
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Filed Under: east texas, game controller, patents, video games
Companies: nintendo
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talk about corruption
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Sad Times
Very sad to read about this, but i am sure we will read more of this type of case in time.
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Is objectivity possible?
I know you are not a fan of patents, but at least try and reports facts sans rhetoric.
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Re: Is objectivity possible?
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Re: Re: Is objectivity possible?
The patent infringement lawsuit was filed in EDT because of a speedy court process there - the fact regularly used not just by patent-holding companies but by many large multinationals like Cisco
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Re: Re: Re: Is objectivity possible?
There's plenty of prior art for vibrating controllers, and it's a natural design progression to move from an external rumble pack like those for the old N64 controllers to an internal one.
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Re: Re: Re: Re: Is objectivity possible?
Does anyone have any idea what claims Nintendo allegedly violated? Certainly Immersion's patent would wipe out some of the claims regarding vibration (like claim 31, for example). I'm sure there are more errors.
And another commentator pointed out a slight conflict of interest, regarding how the son is a lawyer in his father's court.
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Re: Is objectivity possible?
From the guy who insisted that "patent deform" is a good name for the patent reform process?
This blog is a place where we give our opinions and analysis. If you want objective reporting go somewhere else. We state upfront that this is about insight and analysis -- not reporting.
And, yes, the patent cases we talk about here we will often point out the reasons why we think they were decided poorly. But we don't write about all patent cases. We write about the ones where we have something to say -- such as why we think it was a bad decision.
If you think we're wrong, rather than just whining about us being wrong, why not explain *why* we're wrong. Do you honestly think that a game controller like the one described was so innovative that it needed patent protection in 2000? Please, do tell...
You come here every day and complain that we don't cover the subject fairly -- yet you never point out what we get wrong.
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Re: Re: Is objectivity possible?
Venue is defined by federal law, and a federal district in which a defendant has a regularly established place of business is one of several locales for venue. Let's not overlook the fact that many defendants successfully control venue in locations of their choice via a Declaratory Judgement Action.
"A company holds a patent on a 3D controller and sued Nintendo (and Microsoft) for supposedly violating the patent. Not surprisingly, the jury found in favor of the patent holder. Juries quite often side with the patent holder, no matter how questionable the patent may be."
This comment suggests almost a "wild west" dispensing of justice in a federal district court, with juries running amok and judges exercising little if any oversight. The same rules of Federal Civil Procedure and precedential case law are applied in that district as it is in every other district nationally. In point of fact, the primary attractiveness of this particular federal district court is that its judges are not reluctant to hear patent infringement cases, and manage those cases in a manner that forestalls the all to typical delaying actions sought by alleged infringers. This case was decided in just under two years, hardly something I would call rapid. However, it is certainly faster that many similar cases in other districts that drag on for years.
"In this case, there would seem to be a ton of prior art raising validity questions."
Yes, and that "ton of prior art" was cited to the USPTO during the 5 years it took from filing of the application to its grant. The patent examiner who handled consideration of the application is a Primary Examiner, and not one recently retained by the Patent Office. If you are referring to a "ton of prior art" that was not considered by the patent office, you must have an source within the court since only persons with a subscription to the Pacer System have access to all of the documents associated with this case.
"The patent itself was filed in November of 2000, at which point there were already numerous game controllers that seem to meet most of the criteria outlined in the claims."
"Seem to meet"? The tests are new, useful, and non-obvious, and not new, useful, non-obvious, and seems to meet..." You are engaging in speculation. Try analyzing the claim language in detail, and then point to prior art that teaches all of the limitations specified in each of the claims.
"Whatever minor differences there may have been between what was on the market and what's in the claims should be seen as an obvious iteration of game controllers."
"Obvious"? You are making broad, after the fact generalizations to express an opinion without any evidentiary foundation.
Mike, I regret if you consider my comments as disruptive, but I am simply one who does not like to sit idly by while unsubstantiated information is promulgated as undeniable "fact". I know you take great pride in researching material associated with your articles. This article, however, is in my view one where research is lacking.
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Re: Re: Re: Is objectivity possible?
Are you seriously suggesting that venue shopping isn't a problem? There's almost no one who will take that argument seriously.
As for the declaratory judgment, that assumes that the defendants have early warning that they're going to get sued. When you have the patent hoarders filing suit at 12:01am on the day they get the patent, that's kinda difficult, right?
This comment suggests almost a "wild west" dispensing of justice in a federal district court, with juries running amok and judges exercising little if any oversight.
Have you looked at the stats for jury trials on patent lawsuits in Marshall, Texas?
From the NY Times on Marshall, Texas: "patent holders win 78 percent of the time, compared with an average of 59 percent nationwide."
So I stand by my statement, which was correct.
In point of fact, the primary attractiveness of this particular federal district court is that its judges are not reluctant to hear patent infringement cases, and manage those cases in a manner that forestalls the all to typical delaying actions sought by alleged infringers.
That and the fact that it sides with patent holders a lot more often than other courts... I don't deny the speedy trial is part of the appeal of the rocket docket, but it doesn't make my statements false.
Yes, and that "ton of prior art" was cited to the USPTO during the 5 years it took from filing of the application to its grant. The patent examiner who handled consideration of the application is a Primary Examiner, and not one recently retained by the Patent Office.
Ah, yes, and the patent examiners never ever get it wrong... except for the fact that 3 out of 4 re-exams lead to changes in the claims. In other words, examiners *regularly* get it wrong.
And I know you like to focus on the minutiae of how the patent system works when you try to complain about my positions, but the standard for both obviousness and prior art in the USPTO is severely lacking. The KSR case was a step in the right direction, but there's still a long way to go.
"Seem to meet"? The tests are new, useful, and non-obvious, and not new, useful, non-obvious, and seems to meet..." You are engaging in speculation. Try analyzing the claim language in detail, and then point to prior art that teaches all of the limitations specified in each of the claims.
This was a blog post, not a legal brief. I'm sorry, but I don't recall when you were given oversight into whether I could express my opinion on the quality of a patent, and demanding that it meet the same (bogus) requirements the USPTO uses. Yes, it's speculation. Did anyone think it wasn't? But it's pretty well informed speculation. Anyone can read through the patent (I provided the link). Can you point to any claim there that wasn't either already there or a next obvious step from what was out?
"Obvious"? You are making broad, after the fact generalizations to express an opinion without any evidentiary foundation.
Again, this is a blog post, not a legal filing. But, I'll note again that you're focusing on the minutiae rather than anything substantive. Funny how that's always the case.
Mike, I regret if you consider my comments as disruptive, but I am simply one who does not like to sit idly by while unsubstantiated information is promulgated as undeniable "fact". I know you take great pride in researching material associated with your articles. This article, however, is in my view one where research is lacking.
I don't find your comments disruptive. I find them weak. You tend to accuse us of all sorts of things, without backing any of it up. You focus on the minutiae rather than the bigger point. I understand you're a lawyer, so that's what you do.
And no, I don't present my opinions as fact. They are my opinions -- and I back them up as best I can by the facts, and I link to sources to help back it up. And I leave the comments open for folks like you to point out where I was wrong. That's part of the point of having comments.
But don't claim I was wrong if you can't back it up.
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Re: Re: Re: Is objectivity possible?
In theory the rules are uniform in all federal courts. In fact there are substantial differences in how those rules are interpreted and enforced. With national corporations that means venue shopping is an old, well-established practice -- and not just in patent cases, please note.
That's no more a secret that the East Texas district's attitude toward patents. If you were really interested in the facts you could see that with quick Google search.
Why does this patent "apparently" ignore prior art? Because that's a legal decision and we're not the court. It's an attempt to stay honest.
Although frankly I think the effort is wasted in some of the trolls we find here.
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Re: Re: Re: Is objectivity possible?
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Re: Is objectivity possible?
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Re: Is objectivity possible?
That said, this would most likely be a USPTO court and therefore not part of the PACER system. PACER covers Federal Court and Bankruptcy cases, that's it. Not Social Security, not DMV cases, not IRS cases, and also not Patent or Trademark issues. It also costs 8 cents per page (and with 70 page RIAA briefs in other cases, that gets expensive quick) and the only way to get a free copy is to be a party to the case. Lastly, you must have a separate PACER login and account for each district of Federal Court - all 500+ of them. You can only get a login if you are a member of the bar association in the state in question and only if you have a valid law license. Due to this, someone like me A) must have an actual attorney make the account and B) must be in the state in question, which I am not.
Next time, instead of just repeating an acronym that some friend of a friend of a friend's lawyer mentioned to them, learn what PACER is before posting about it.
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Re: Re: Is objectivity possible?
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Make My Day
the most profitable district to file in.
It will blow your bank account clean off the records.
So, ya gotta ask yer self, did he file five lawsuits or was it six ?
In all the excitement I kinda lost count.
Well, do ya feel lucky - Punk ?
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Is MLS a patent troll?
East Texas venue is a well known corrupt judicial environment.
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It gets worse
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MLS makes a funny
You act as if the judical system can never make a mistake. i would like to point out to you "Dred Scott v. Sandford case of 1856." I already know you are going to try to point out the time that this took place, but i want you to understand that the judical system is not perfect and can make mistakes.
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Re: MLS makes a funny
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Re: Re: MLS makes a funny
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Details
It appears that claims 1 and 2 are central here. Specifically, analog buttons with a click (claim 1), and using the analog value to control imagery (claim 2). I think the claims specify that the click should occur when the user has fully depressed the button (i.e. to indicate "all the way on"). This is why only the Classic Controller, GameCube, and WaveBird controllers violate the patent, while the Wiimote and the Nunchuk don't.
I don't see how that could reasonably stand up under scrutiny. To me, as an electrical engineer, the patent claims read like someone describing how to design a common video game controller. Even the concept of an analog input clicking when you reach the end of its range is quite common, as can be seen on any stereo's volume knob for the past few decades. Using analog values to control imagery was also quite common back in 2000.
And if the patent is a minor detail over when the click occurs (max analog value or min analog value), might I add that a volume knob is formally known as an attenuator and the click occurs during maximum attenuation.
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Some real facts on the Nintendo Suit
Here is claim 1:
1. A 3-D graphics controller used with a television based game, comprising:
a game, said game at least in part controlled by circuitry, said circuitry located on at least one sheet, said at least one sheet comprising:
a circuit board sheet connected to a flexible membrane sheet;
a first element structured to activate four unidirectional sensors, said four unidirectional sensors at least in part connected to said at least one sheet, said four unidirectional sensors useful to control said game;
a second element with structure to activate a first two rotary potentiometers, said first two rotary potentiometers at least in part connected to said at least one sheet, said first two rotary potentiometers useful to control said game;
a third element with structure to activate a second two rotary potentiometers, said second two rotary potentiometers at least in part connected to said at least one sheet, said second two rotary potentiometers useful to control said game;
an independent first button structured to activate a first button sensor, said first button depressible by a single finger of a user, said first button sensor at least in part connected to said at least one sheet, said first button sensor creates simple switched On/Off data useful to control said game;
an independent pivotal second button structured to activate a second button sensor, said second button pivots upon depression by a single finger of the user, said second button sensor at least in part connected to said at least one sheet, said second button sensor capable of outputing a proportional signal useful to control said game;
an independent pivotal third button structured to activate a third button sensor, said third button pivotal upon depression by a single finger of the user, said third button sensor at least in part connected to said at least one sheet, said third button sensor capable of outputing a proportional signal useful to control said game;
active tactile feedback vibration detectable by the user of said game.
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A pretty narrow claim, in truth. I would not be surprised to learn that no single prior art controller actually did all of what's specified in the claims, but all of the individual elements were certainly in the prior art. Not many prior art controllers had more than one rotary joystick, for example, but it seems that the combination of elements recited would be fairly obvious. What surprises even more is that the jury awarded $21 million for the alleged infringement. That seems quite excessive given the limited utility of the invention.
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Re: Some real facts on the Nintendo Suit
Like you I would be surprised if a single reference was a "killer" under 102. Of course, 103 may be a different story. The problem here, though, is that other than the patent document itself, no file history is presented to see what arguments were propounded by the applicant and the patent examiner during prosecution. The five year pendency, coupled with a Primary Examiner handling the case, suggests that arguments pro and con were very extensive. Certainly this was not an application that proceeded down an "assembly line" and was granted in a casual manner.
Similar to my 103 observations, it appears that unless one has a PACER subscription (which I do not), depositions, trial transcripts, evidence presented, etc. are unavailable.
Maybe the patent should have been rejected under 103. Then again, maybe is should not. Honestly, I do not know the answer because important information is not available. The only thing I do know is that the case was argued before a jury and that the jury apparently found on the basis of the evidence provided at trial that the plaintiff presented the more compelling case. As for the damages award, once more how it was arrived at is anybody's guess at this point in time, though, obviously, expert testimony was likely presented on this issue. Likewise I have no information if the award included any enhancement of damages or any award of attorney fees. All I know is what has been reported in the news...$21M.
In view of the above the most I can honestly say at this point in time is that the plaintiff prevailed and was awarded $21M. Anything beyond that I consider to be merely speculation, and it is this speculation that seems to underlie the contents of the article and the comments to the article using it as yet another example of why the system is broken. To me speculation is a slender reed upon which to rely when forming opinions. I prefer to rely upon known facts in specific cases before taking a pro/con position.
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Re: Some real facts on the Nintendo Suit
A directional pad or joystick. Has existed since the original Atari joysticks in the 80s.
a second element with structure to activate a first two rotary potentiometers, said first two rotary potentiometers at least in part connected to said at least one sheet, said first two rotary potentiometers useful to control said game;
An analog stick. Again, an Atari controller in the 80s was the first to use potentiometers as analog inputs.
a third element with structure to activate a second two rotary potentiometers, said second two rotary potentiometers at least in part connected to said at least one sheet, said second two rotary potentiometers useful to control said game;
A second analog stick. I suppose you could argue that this is innovative, except that there was a dual-analog-stick (SCPH-1110) controller announced by Sony in 1995. And, well, adding a second of something isn't terribly non-obvious.
an independent first button structured to activate a first button sensor, said first button depressible by a single finger of a user, said first button sensor at least in part connected to said at least one sheet, said first button sensor creates simple switched On/Off data useful to control said game;
A digital button. Again, see the Atari controllers of the 80s.
an independent pivotal second button structured to activate a second button sensor, said second button pivots upon depression by a single finger of the user, said second button sensor at least in part connected to said at least one sheet, said second button sensor capable of outputing a proportional signal useful to control said game;
An analog button. I'm not sure when analog buttons began to be used in the gaming industry. I doubt it would be hard to find evidence of analog buttons in other industries. This leaves two questions: is it novel or non-obvious to patent an analog button from a separate industry, or is it novel or non-obvious to take the idea of analog inputs from the analog stick and patent it with regard to buttons.
an independent pivotal third button structured to activate a third button sensor, said third button pivotal upon depression by a single finger of the user, said third button sensor at least in part connected to said at least one sheet, said third button sensor capable of outputing a proportional signal useful to control said game;
Repeating themselves over a third button.
Actually, many of the claims are highly repetitious. And the bit about clicking isn't in the claims, but farther down, in the section about the best modes for carrying out the invention. I'm not sure claim 1 was central to the lawsuit...I really wish there were more details.
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Re: Re: Some real facts on the Nintendo Suit
By the way, claims do tend to look repetitious. It is the nature of how claims are drafted. I am sure you will note, however, if any two claims are placed side by side for comparison, you will find some differences between the two.
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Re: Re: Some real facts on the Nintendo Suit
It makes no mention of any vibration mechanism for feedback whatsoever. The vibration feedback claim was not added until the continuation patent was filed in 2000, well after controllers with vibrational feedback were on the market. After looking over the original patent, I don't see where the original patent supports the continuation claims.
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Re: Re: Re: Some real facts on the Nintendo Suit
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Re: Re: Some real facts on the Nintendo Suit
Street Fighter 1 the arcade game originally had pressure sensitive buttons - the harder you hit, the harder the attack. But they quickly changed it to the now familiar 6 button configuration.
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Meanwhile back at the ranch
Film at eleven.
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Re: Meanwhile back at the ranch
Two years is about the absolute minimum to bring a case with any degree of complexity to trial and still give both sides a fair chance.
The problem with rocket dockets is that they favor the plaintiff who can take months or years to organize his case in advance and then choose when to start the clock running on the Defendant who has to play catchup under tight time constraints.
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http://www.dallasnews.com/sharedcontent/dws/bus/stories/DN-marshall_26bus.ART0.State. Edition1.3eb99e4.html
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- A continuation patent -
End of story
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More info
A fellow on slashdot suggested that the real issue is the patent 6,344,791. Specifically, pressure-sensitive analog buttons which click when fully pressed. This is why only certain controllers violate the patent, but not others.
Apparently, the patent covers a device with three features. A) More than 2 states (=analog), B) momentary switch, and C) tactile feedback at one extreme.
AB would be a generic analog stick (it would be momentary because it returns to center when released).
AC would be a generic volume knob.
BC would be a generic mouse or keyboard button.
The USPTO apparently feels that adding C to AB, B to AC, or A to BC constitutes a novel, non-obvious invention which no one has the incentive to create without a patent.
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Does the patent stipulate what color the button is or its diameter and thickness ? Can it be made out of plastic ?
What is the depth the button is depressed before it clicks ?
Sounds more like a patent on a button rather than a video game controller.
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