Judge Tosses $500 Million Patent Case Against Sony

A Delaware federal district court has ruled that Sony didn’t infringe a patent held by Genuine Enabling Technology.

Genuine Enabling asserted that video game hardware sold by Sony infringed U.S. Patent No. 6,219,730, entitled “Method and Apparatus for Producing a Combined Data Stream and Recovering Therefrom the Respective User Input Stream and at Least One Input Signal.”

As Games Industry explained,

a central complaint is around the way PlayStation consoles and controllers communicate with each other — specifically submitting a separate signal on a 'slow-varying' frequency for button inputs and another higher frequency for motion control input.

Genuine Enabling sought $500 million in damages.

As the court explained,

The '730 patent claims an apparatus for sending multiple streams of information to a computer over a single communication link. The patent gives the example of a user-input device- such as a computer mouse-that can also receive speech input. ('730 patent, cols. 1-2.) By sending both voice and button presses over a single communication link instead of two, the invention “utilize[es] the computer resources efficiently.

Genuine Enabling asserted that Sony used the patented technology to send multiple streams of information (such as button presses, motion sensor data, and voice) to the game console over a single wireless communication link.

According to Genuine Enabling, Sony's accused products contain a “user input stream” that consists of button presses and various “input streams” that include data from motion sensors (accelerometers) and a microphone.

Genuine Enabling asserted that a Bluetooth module in the accused video game controllers acted as a “framer,” synchronizing the button data stream (i.e., the “user input stream”) with data from the motion sensors or microphone (i.e., the “input stream”) and combining these into a single data stream that may be transmitted to the video game console over a wireless communication link.

Sony argued that Genuine Enabling failed to establish its Bluetooth module was structurally equivalent to a logic diagram disclosed in Genuine Enabling's patent.

Sony asserted that Genuine Enabling couldn’t prove that the Bluetooth modules were equivalent to block 34 of Figure 4A of the Genuine Enabling patent, and thus Genuine Enabling lacked evidence that any accused Sony product contained the “framer” limitation.

The court noted that:

In analyzing infringement, a means-plus-function term encompasses any structure that performs the same function recited in the claim, and that is the same as or equivalent to a structure disclosed in the specification….. “The word ‘equivalent' in section 112 invokes the familiar concept of an insubstantial change which adds nothing of significance.” … “Structural equivalence under [§ 112(f)] is met only if the differences are insubstantial ...; that is if the assertedly equivalent structure performs the claimed function in substantially the same way to achieve substantially the same result as the corresponding structure described in the specification.”…. This is called the “function-way-result test” for structural equivalence.

In applying the function-way-result test, said the court,

[t]he appropriate degree of specificity is provided by the statute itself; the relevant structure is that which ‘corresponds' to the claimed function. ... Further deconstruction or parsing is incorrect.”…. Each “individual component[]” of a disclosed structure is not in itself a “claim limitation[]” required to be present (literally or as an equivalent) in the accused device. …“Rather, the claim limitation is the overall structure corresponding to the claimed function.” …

The court explained that

By limiting the scope of a means-plus-function term to disclosed structures and their equivalents, § 112(f) “prevents an overly broad claim construction by requiring reference to the specification, and at the same time precludes an overly narrow construction that would restrict coverage solely to those means expressly disclosed in the specification.” … A patentee does not obtain ownership of “every conceivable way or means to perform the [claimed] function”-just those ways that are substantially the same as the way the patentee invented and disclosed. … But by the same token, the patentee is not limited to structures that replicate every detail disclosed in the specification, so long as the details that vary are insubstantial.

Sony argued that Genuine Enabling couldn’t prove that the Bluetooth module was equivalent to block 34 of Figure 4A under the function-way-result test.

Sony contended that Genuine Enabling was unable to prove that the accused Bluetooth module synchronized the two data streams in substantially the same “way” as block 34 of Figure 4A of the Genuine Enabling patent: that is, synchronizing and combining the two data streams.

The parties did not dispute that Genuine Enabling could prove that the Bluetooth module achieves substantially the same “result” as block 34 of Figure 4A: a combined data stream.

However, Sony claimed that Genuine Enabling was unable to prove that the Bluetooth module at issue synchronized the two data streams in substantially the same “way” as block 34 of Figure 4A.

The court concluded that Genuine Enabling failed to raise a dispute of fact as to whether the accused Bluetooth module satisfies the “framer” limitation:

As at least one of those limitations is present in every asserted claim, and Genuine Enabling has not advanced an argument under the doctrine of equivalents, Sony is entitled to summary judgment of noninfringement.

Genuine Enabling had filed a similar lawsuit against Nintendo, claiming that Wii, Wii U, and Switch controllers violated its patent.

A Seattle federal court ruled for Nintendo in 2020, construing the patent to cover devices transmitting data signals at higher frequencies than Nintendo's controllers.

The Federal Circuit panel reversed the decision, saying that the district court erred by using an extrinsic expert declaration to contradict the prosecution history’s intrinsic evidence when constructing the patent claim.

The Federal Circuit found that the only unambiguous disclaimer in the intrinsic record was to signals below 20 Hz, stemming from the consistent distinction of the prior art’s “slow-varying signals” from the patent’s “audio or higher frequency” input signals. However, the intrinsic record didn’t support the district court’s finding of a disclaimer of input signals of up to 500 Hz.

Because the prosecution disclaimer doesn’t apply to statements that are “ambiguous or amenable to multiple reasonable interpretations,” and the only unambiguous statement disclaimed signals below the audio spectrum, the Federal Circuit found that the district court erred in construing “input signal.”

The Federal Circuit, therefore, reversed the grant of summary judgment for Nintendo and remanded for further proceedings.