Third Time's a Charm for Gamevice?

SUMMARY

Gamevice’s recently filed ITC suit against Nintendo may appear to be an exercise in futility, but because Gamevice continued to prosecute the patent family in suit, it was able to craft new patent claims with the knowledge of Nintendo’s main arguments in previous suits. Ultimately, this allowed Gamevice to file a stronger patent suit with the ITC.

THE SETUP

Gamevice sells controllers that attach to mobile devices to facilitate game play (example shown above). Nintendo sells the Switch, a portable gaming console with two removable controllers known as Joy-Cons (example image below).

In March, Gamevice sued Nintendo for patent infringement for the third time since August 2017. The first suit (Gamevice, Inc. v. Nintendo Co., Ltd. et al, Case No. 2:17-cv-05923) in the Central District of California lasted less than three months before Gamevice voluntarily dismissed the claims. Gamevice filed a second suit on March 29, 2018 in the Northern District of California and one day later filed an International Trade Commission (ITC) complaint (Gamevice, Inc. v. Nintendo Co., Ltd. et al, Case No. 3:18-cv-01942 and ITC Inv. No. 337-TA-1111) alleging that the Nintendo Switch infringed two of Gamevice’s patents. The Gamevice patents belong to a family of patents that stretch back to a provisional filing in December 20, 2011 and relate to game controller devices (example image below).

Gamevice has continued to prosecute this family of patents through the years and during the current litigation. In the 2018 suits, Nintendo recently scored a pair of victories: the first in an October 2019 ITC ruling that the Switch devices did not infringe the Gamevice patents (which Gamevice appealed to the Federal Circuit in December), and the second this past March when the USPTO invalidated a parent patent to the 2018 patents-in-suit, the ‘119 patent, in an inter partes review (IPR).

THE ITC

The ITC has the power to block the importation of products at U.S. ports of entry. After the Supreme Court’s eBay v. MercExchange decision, it is much harder to obtain an injunction for patent infringement, so the threat of a ban on importation from the ITC can drive settlement and for that reason is an attractive forum for certain patent owners.

THE NEW ACTION

Undeterred by its previous losses, Gamevice filed a second ITC action on March 27, 2020 alleging that Nintendo Switch consoles infringe a new patent, U.S. Patent No. 10,391,393 (the ‘393 patent) which is a member of the same family as the patents in issue in the 2018 cases. The ITC instituted an investigation on April 29, 2020 (USITC Inv. No. 337-TA-1197).

CONTINUED PATENT PROSECUTION

At first blush, this would appear to be a case of throwing good money after bad. However, there are advantages that Gamevice enjoys thanks to the fact that it has continued prosecution of the same family of patents throughout the litigation. In the ITC proceeding, the parties filed a list of their disputed terms on July 24, 2018. This was the first view Gamevice had into how Nintendo would attack its patents. In particular, Nintendo argued that a particular term “fastening mechanism” required a very narrow reading, one that would make it so that no Switch device could infringe the patents. On December 7, 2018, the Administrative Law Judge (“ALJ”) issued his Markman ruling, which defines the construction of the terms in dispute, and held in Nintendo’s favor on the “fastening mechanism” term. It would have been clear to Gamevice that if the ALJ’s ruling stood through the various levels of review, they would lose the case. Two weeks later, Gamevice filed the a related patent application that would mature into the ‘393 patent. Notably, “fastening mechanism” does not appear in any of the ‘393 patent’s independent claims.

When filing the ‘393 patent’s application, Gamevice was also dealing with the IPR proceedings in the USPTO, the proceedings that ultimately found the ‘119 patent invalid. Gamevice had useful information from those proceedings as well to help guide the drafting of the application. Nintendo filed the IPR on August 30, 2018, four months before the ‘393 patent’s filing. Nintendo’s filing identified all of the prior art it was relying on to invalidate the ‘119 patent. Nintendo’s primary argument was that the ‘119 patent was obvious over two prior art references, Willner and Park. Willner, the primary reference, covers a device that confines a second device on five sides: two side walls and the bottom, front, and rear sides. The ‘393 contains a new negative limitation “a pair of confinement structures … and adjacent at least two opposing sides of the computing device, but not more than three …” (emphasis added). Negative limitations are often used to avoid a prior art teaching. Presumably, Gamevice will argue that the combination of Willner in light of Park cannot meet this negative limitation. This is just one example of a limitation that was added to the ‘393 to overcome the IPR art, there are most likely others.

Because Gamevice continued to prosecute the patent family in suit, it was able to obtain two unfavorable rulings and turn around and file an infringement suit with a patent tailor-made to avoid the previous patents’ shortcomings just a few months later.