Specification’s Disparaging Remarks Can Limit Claim Scope, While Functional Language Is Not Indefinite If It Describes System’s Capabilities

Author: Ming Wai Choy
Editor: Kevin D. Rodkey

In UltimatePointer, LLC v. Nintendo Co., Ltd., No. 15-1297 (Fed. Cir. Mar. 1, 2016), the Federal Circuit affirmed the district court’s claim construction and noninfringement findings, but reversed its determination that the asserted claims are indefinite.

UltimatePointer sued Nintendo, alleging infringement of U.S. Patent No. 8,049,729 by Nintendo’s Wii video game system. The district court construed the claim term “handheld device” to require a “direct pointing device” where the cursor shown corresponds to the image on the screen being pointed at. On appeal, the Court affirmed, explaining that “repeated derogatory statements” of indirect pointing devices in the specification indicate that “the criticized technologies were not intended to be within the scope of the claims.” The Court then analyzed the Wii system’s operation and found that, because the pointing correlates to the remote’s position relative to a sensor bar, not the television screen image, the Wii system did not infringe the asserted claims.

The Court, however, reversed the district court’s finding that the claims were indefinite for reciting an “image sensor generating data,” because it was not an improper attempt to claim a method step in an apparatus claim. The Court explained that functional language that reflects the structure’s capabilities does not render an apparatus claim indefinite. The Court found that the language does “not require that any data be actually generated by the user” and, therefore, recites the system’s capability, not a method step.


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