In Anascape LTD., v. Nintendo of America, Inc., 2008-1500 (Fed. Circ., April 13, 2010), the Federal Circuit (“CAFC”) reversed the US District Court for the Eastern District of Texas, which held that certain Wii, Wavebird and GameCube Nintendo video game controllers infringed US Patent 6,906,700 (“the ‘700 patent”). The District Court decision awarded $21 million to Anascape, Ltd., a small Texas-based company.
The ‘700 patent was a continuation-in-part application that claimed priority to US Patent 6,222,525 (“the ‘525 patent”). The ‘700 patent claims multiple input members that operate in six degrees of freedom. The issue was whether the claims in the ‘700 patent were supported by the ‘525 patent. The CAFC found that the ‘525 patent did not provide support for the ‘700 patent because it only disclosed a single input member that operates in six degrees of freedom. The changes provided in the application that issued as the ‘700 patent would have been considered new matter if entered in the application that issued as the ‘525 patent. There were a total of twenty explicit statements that the ‘525 invention is directed to a single input member that is operated in six degrees of freedom [emphasis added].
Intervening prior art, which was sold by Sony before the application that issued as the ‘700 patent did include multiple input members that operate in six degrees of freedom provided the basis for invalidating the ‘700 patent.