A weekly summary of the precedential patent-related opinions issued by the Court of Appeals for the Federal Circuit and the opinions designated precedential or informative by the Patent Trial and Appeal Board.

Genuine Enabling Technology LLC v. Nintendo Co., et al., No. 2020-2167 (Fed. Cir. (W.D. Wash.) Apr. 1, 2022). Opinion by Reyna, joined by Newman and Stoll.

Genuine sued Nintendo for infringement of a patent relating to a new kind of user input device for computing, such as a “voice mouse.” The district court construed the claim term “input signal” consistent with Nintendo’s proposed construction, and on that basis entered summary judgment of noninfringement.

In construing the term, the district court relied on arguments by the inventor, Mr. Nguyen, during prosecution in distinguishing the “Yollin” reference. The parties agreed that Mr. Nguyen had disavowed claim scope during prosecution, but they disputed whether he disavowed claim scope beyond signals below the audio frequency spectrum.

The district court interpreted the inventor’s prosecution arguments as amounting to a disclaimer of “slow-varying signals.” The district court also determined that skilled artisans “would understand the upper bound of ‘slow-varying signals’ covered by Yollin to set the lower bound of ‘fast-varying signals’ covered by” the patent-in-suit. The district court then credited testimony by Nintendo’s expert identifying “500 Hz as the upper limit of slow-varying signals covered by Yollin.” The court then adopted Nintendo’s proposed construction reflecting these concepts.

The Federal Circuit disagreed with the claim construction and reversed and remanded. The court ruled that “the only disavowal of claim scope that is clear and unmistakable in the record before us is Mr. Nguyen’s disavowal of signals below the audio frequency spectrum.” The Federal Circuit also explained: “To the extent Mr. Nguyen’s statements may implicate other claim scope—such as signals of frequency up to 500 Hz—the record does not rise to the level of establishing a ‘clear and unmistakable’ disavowal.”

The Federal Circuit also noted that the 500 Hz frequency threshold in the district court’s construction “has no basis anywhere in the intrinsic record.” Instead, Nintendo’s expert, whose testimony was extrinsic evidence, had “divine[d] that threshold from another extrinsic reference.” The Federal Circuit thus concluded that “the district court relied on extrinsic evidence upon extrinsic evidence to draw a bright line in claim scope not suggested anywhere in the intrinsic record. Such evidence cannot properly overcome the clarity with which Mr. Nguyen only disavowed signals below the audio frequency spectrum.”

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