Last week, the U.S. Court of Appeals for the Federal Circuit issued an opinion in Genuine Enabling Technology LLC v. Nintendo Co., Ltd. et al., No. 2020-2167 (Apr. 1, 2022), reversing and remanding the district court’s grant of summary judgment of non-infringement based on its construction of the term “input signal”.
Genuine sued Nintendo alleging five Nintendo controller products infringed U.S. Pat. No. 6,219,730. In their claim construction briefing, the parties disputed the proper construction of the claim term “input signal”, which appears in all the asserted claims. Genuine proposed the construction “a signal having an audio or higher frequency”—a construction that encompassed the full audio spectrum (i.e., 20Hz to 20,000Hz). Nintendo sought a more restricted construction of “input signal”, arguing that the inventor had disclaimed “signals that are 500 Hertz (Hz) or less” and “signals that are generated from positional change information, user selection information, physiological response information, and other slow-varying information.” In support of its construction, Nintendo submitted an expert declaration discussing the features and operation taught by a prior art patent (“Yollin”) and argued that the applicant disclaimed certain signals by its arguments distinguishing Yollin. While Genuine agreed the applicant had disavowed claim scope during prosecution, it urged that no signals within the audio frequency spectrum were disclaimed.
Nintendo moved for summary judgment, arguing that its accused controller products produce only the types of signals that were disclaimed during prosecution. The district court, relying heavily on Nintendo’s expert’s interpretation of the prior art, adopted Nintendo’s construction of “input signal” , stating that the applicant’s arguments regarding the prior art during prosecution amounted to disclaimer of the types of signals addressed by the prior art. Based on its claim construction, the district court granted Nintendo’s motion.
The Federal Circuit reversed. The Court concluded that the only “clear and unmistakable” disclaimer in the record was the applicant’s repeated distinguishing of his inventions from the prior art on grounds that the prior art taught “slow-varying signals” whereas his inventions involved “audio or higher frequency” signals. On that basis, the Court held the district court’s application of a broader disclaimer was improper, as was its reliance on expert testimony to limit the claim scope in a manner not contemplated by the intrinsic record. The Court held the proper construction of “input signal” is “a signal having an audio or higher frequency” and remanded the case for further proceedings.