(This is an archived case summary.)
GE sued Nintendo, claiming that several of Nintendo's game systems (including the Gameboy) infringed GE's patents. The lower court ruled in favour of Nintendo on summary judgment. GE appealed and lost.
The first patent, the ‘899 patent, describes a switch to toggle between a signal from the television antenna and a signal from a video record player. Nintendo didn't infringe this patent because its systems “bypass” the signal (creating a path of lower resistance), as opposed to system described in the patent which “disrupts” the signal (establishing a high series impedance).
The second patent, the ‘659 patent, describes a synchronization signal generator. In dispute was whether Nintendo's systems produce “drive signals” and whether they contain vertical counters “clocked by a signal which is advanced in phase”. The court found that Nintendo's systems produce “drive signals”, however, they do not literally infringe the vertical counters “clocked by a signal which is advanced in phase” since they do not send a signal to the clock line but instead send a signal through the input line. On the issue of equivalent infringement, the court found that GE failed to meet their burden of presenting sufficient evidence so that a reasonable jury could find that Nintendo's systems infringe the ‘659 patent under the doctrine of equivalents.
The third patent, the ‘125 patent, describes a device for retrieving stored picture information from memory on a computer and displaying the information to a standard television screen or other display device. Nintendo put forward three arguments with respect to the ‘125 patent. First, Nintendo argued that its system does not use a conventional DMA circuit as described in the patent. The court found that since the DMA circuit is not part of a means-plus-function limitation, GE's infringement claims are not limited to the DMA circuit described in the written description and its equivalents. Since Nintendo admited that its systems use dedicated hardware to transfer the data, a reasonable jury could construe this as a DMA request. Second, Nintendo argued that its system omits a specific gating structure required by the patent. The court found that Nintendo's system replaces the “AND” gates that connect the stages of the line counter to the data bus in the patent, with tri-state buffers. The court determined that the “AND” gates and tri-state buffers are interchangeable for this purpose, thus Nintendo's argument failed. Third, Nintendo argued that its systems do not contain a bit map display device as required by the patent. The court found that the only reference to a bit map display in that patent was located in the preamble of Claim 1. However, the court stated that, “it is clear that the inventors were working on the particular problem of displaying binary data on a raster scan display device and not general improvements to all display systems”. Therefore, the invention is restricted to display devices that function by displaying bits. The court found that Nintendo's systems display images by using characters, while the patent describes the display of images bit by bit. Therefore, the systems are significantly different and Nintendo's systems do not literally infringe the patent. In addition, GE could not argue equivalents since the patentee waived coverage of character generating systems during prosecution of the patent, thereby enacting prosecution history estoppel.
The Court of Appeals affirmed the grant of summary judgment of no infringement of each of the three patents. The Court of Appeal also reversed the lower court’s ruling of invalidity for anticipation for the ‘899 patent.
General Electric Co. v. Nintendo Co, Ltd. and Nintendo of America, Inc.
June 2, 1999
US Ct. of Appeals, Fed. Cir.
179 F. 3d 1350
Keywords: patent infringement
Summary by: Chris Bennett
