Triton Tech of Texas, LLC v. Nintendo of America, Inc. (Fed. Cir. 2014)

by McDonnell Boehnen Hulbert & Berghoff LLP

NintendoA very experienced patent attorney once told me that you should never write means-plus-function claims unless there is a Luger at your temple.  This, the first opinion addressing indefiniteness to come from the Federal Circuit since the Supreme Court weighed in on the subject in Nautilis v. Biosig Instruments, does nothing to make one question the wisdom of that advice.

Triton sued Nintendo in the Western District of Washington, alleging infringement of U.S. Patent No. 5,181,181.  Particularly, Triton contended that Nintendo's Wii Remote, in combination with other aspects of the Wii video game system, infringed several claims of the '181 patent.

The '181 patent is directed to an input device that includes "components for determining its position, attitude, and motion."  These components may be, for instance, "three accelerometers and three rotational rate sensors for measuring linear acceleration along, and rotational velocity about, three orthogonal axes."  Each asserted claim recites "[an] integrator means associated with said input device for integrating said acceleration signals over time to produce velocity signals for linear translation along each of . . . first, second and third axes . . . ."

The specification of the '181 patent discloses that a general-purpose microprocessor and an associated memory would facilitate this function.  With respect to details of the integration, however, the specification was silent.

The District Court held the claims invalid for indefiniteness.  Triton appealed.

Writing for a panel consisting of herself, Judge Reyna, and Judge Hughes, Federal Circuit Judge Moore began by noting that means-plus-function claiming under 35 U.S.C. § 112, paragraph 6 requires that the "specification . . . disclose with sufficient particularity the corresponding structure for performing the claimed function and clearly link that structure to the function."  Further, "[i]f the function is performed by a general purpose computer or microprocessor, then the specification must also disclose the algorithm that the computer performs to accomplish that function . . . failure to disclose the corresponding algorithm for a computer-implemented means-plus-function term renders the claim indefinite."

The trade-off of means-plus-function claims in the computing arts is that the patentee can claim an outcome rather than the steps required to obtain that outcome.  But, to counteract the breadth of such claims, the patentee must disclose at least one algorithm for performing the steps.  The scope of the claims will be limited to the disclosed algorithm(s) and their equivalents.

Without an algorithm for integration in the specification of the '181 patent, Triton found itself in a difficult situation.  First, Triton contended that the phrase "numerical integration" implicitly disclosed an algorithm, because such algorithms are well known to those of skill in the art.  This, of course, is true -- integration is a basic calculus operation, and numerical integration algorithms are undergraduate textbook material.

Judge Moore differed though, and asserted that "merely using the term 'numerical integration' does not disclose an algorithm -- i.e., a step-by-step procedure -- for performing the claimed function."  Instead, she agreed with the District Court that numerical integration "is not an algorithm but is instead an entire class of different possible algorithms used to perform integration."  Thus, the claim was not appropriately limited to the corresponding structure for performing the claimed function.  The fact that one of skill in the art could choose an appropriate well-known algorithm was immaterial because the '181 patent failed to disclose any such algorithm.

Triton made a second argument that the specification did actually disclose an algorithm, though somewhat indirectly.  Judge Moore quickly disposed of this point because Triton had not properly raised it in the District Court proceedings.

This outcome should not be surprising to anyone.  In Aristocrat v. IGT, the Federal Circuit warned against conflating the enablement requirement of 35 U.S.C. § 11, paragraph 1 with the disclosure requirement of 35 U.S.C. § 112, paragraph 6: "Enablement of a device requires only the disclosure of sufficient information so that a person of ordinary skill in the art could make and use the device.  A section 112 paragraph 6 disclosure, however, serves the very different purpose of limiting the scope of the claim to the particular structure disclosed, together with equivalents."

In Nautilus, the Supreme Court held that "[a] patent is invalid for indefiniteness if its claims, read in light of the patent's specification and prosecution history, fail to inform, with reasonable certainty, those skilled in the art about the scope of the invention."  The claims at issue in Nautilus did include some means-plus-function language.  That holding however, apparently does not address the additional disclosure requirement of 35 U.S.C. § 112, paragraph 6.  Thus, a means-plus-function claim can be held invalid even if it passes the Court's "reasonable certainty" test.

Triton Tech of Texas, LLC v. Nintendo of America, Inc. (Fed. Cir. 2014)
Panel: Circuit Judges Moore, Reyna, and Hughes
Opinion by Circuit Judge Moore.



DISCLAIMER: Because of the generality of this update, the information provided herein may not be applicable in all situations and should not be acted upon without specific legal advice based on particular situations.

© McDonnell Boehnen Hulbert & Berghoff LLP | Attorney Advertising

Written by:

McDonnell Boehnen Hulbert & Berghoff LLP

McDonnell Boehnen Hulbert & Berghoff LLP on:

Readers' Choice 2017
Reporters on Deadline

"My best business intelligence, in one easy email…"

Your first step to building a free, personalized, morning email brief covering pertinent authors and topics on JD Supra:
Sign up using*

Already signed up? Log in here

*By using the service, you signify your acceptance of JD Supra's Privacy Policy.
Custom Email Digest
Privacy Policy (Updated: October 8, 2015):

JD Supra provides users with access to its legal industry publishing services (the "Service") through its website (the "Website") as well as through other sources. Our policies with regard to data collection and use of personal information of users of the Service, regardless of the manner in which users access the Service, and visitors to the Website are set forth in this statement ("Policy"). By using the Service, you signify your acceptance of this Policy.

Information Collection and Use by JD Supra

JD Supra collects users' names, companies, titles, e-mail address and industry. JD Supra also tracks the pages that users visit, logs IP addresses and aggregates non-personally identifiable user data and browser type. This data is gathered using cookies and other technologies.

The information and data collected is used to authenticate users and to send notifications relating to the Service, including email alerts to which users have subscribed; to manage the Service and Website, to improve the Service and to customize the user's experience. This information is also provided to the authors of the content to give them insight into their readership and help them to improve their content, so that it is most useful for our users.

JD Supra does not sell, rent or otherwise provide your details to third parties, other than to the authors of the content on JD Supra.

If you prefer not to enable cookies, you may change your browser settings to disable cookies; however, please note that rejecting cookies while visiting the Website may result in certain parts of the Website not operating correctly or as efficiently as if cookies were allowed.

Email Choice/Opt-out

Users who opt in to receive emails may choose to no longer receive e-mail updates and newsletters by selecting the "opt-out of future email" option in the email they receive from JD Supra or in their JD Supra account management screen.


JD Supra takes reasonable precautions to insure that user information is kept private. We restrict access to user information to those individuals who reasonably need access to perform their job functions, such as our third party email service, customer service personnel and technical staff. However, please note that no method of transmitting or storing data is completely secure and we cannot guarantee the security of user information. Unauthorized entry or use, hardware or software failure, and other factors may compromise the security of user information at any time.

If you have reason to believe that your interaction with us is no longer secure, you must immediately notify us of the problem by contacting us at In the unlikely event that we believe that the security of your user information in our possession or control may have been compromised, we may seek to notify you of that development and, if so, will endeavor to do so as promptly as practicable under the circumstances.

Sharing and Disclosure of Information JD Supra Collects

Except as otherwise described in this privacy statement, JD Supra will not disclose personal information to any third party unless we believe that disclosure is necessary to: (1) comply with applicable laws; (2) respond to governmental inquiries or requests; (3) comply with valid legal process; (4) protect the rights, privacy, safety or property of JD Supra, users of the Service, Website visitors or the public; (5) permit us to pursue available remedies or limit the damages that we may sustain; and (6) enforce our Terms & Conditions of Use.

In the event there is a change in the corporate structure of JD Supra such as, but not limited to, merger, consolidation, sale, liquidation or transfer of substantial assets, JD Supra may, in its sole discretion, transfer, sell or assign information collected on and through the Service to one or more affiliated or unaffiliated third parties.

Links to Other Websites

This Website and the Service may contain links to other websites. The operator of such other websites may collect information about you, including through cookies or other technologies. If you are using the Service through the Website and link to another site, you will leave the Website and this Policy will not apply to your use of and activity on those other sites. We encourage you to read the legal notices posted on those sites, including their privacy policies. We shall have no responsibility or liability for your visitation to, and the data collection and use practices of, such other sites. This Policy applies solely to the information collected in connection with your use of this Website and does not apply to any practices conducted offline or in connection with any other websites.

Changes in Our Privacy Policy

We reserve the right to change this Policy at any time. Please refer to the date at the top of this page to determine when this Policy was last revised. Any changes to our privacy policy will become effective upon posting of the revised policy on the Website. By continuing to use the Service or Website following such changes, you will be deemed to have agreed to such changes. If you do not agree with the terms of this Policy, as it may be amended from time to time, in whole or part, please do not continue using the Service or the Website.

Contacting JD Supra

If you have any questions about this privacy statement, the practices of this site, your dealings with this Web site, or if you would like to change any of the information you have provided to us, please contact us at:

- hide
*With LinkedIn, you don't need to create a separate login to manage your free JD Supra account, and we can make suggestions based on your needs and interests. We will not post anything on LinkedIn in your name. Or, sign up using your email address.