Ultimatepointer, L.L.C. v. Nintendo Co Ltd , 816 F.3d 816 ( 2016 )

United States Court of Appeals
for the Federal Circuit
______________________
ULTIMATEPOINTER, L.L.C.,
Plaintiff-Appellant
v.
NINTENDO CO., LTD.,
NINTENDO OF AMERICA INC.,
Defendants-Appellees
______________________
2015-1297
______________________
Appeal from the United States District Court for the
Western District of Washington in No. 2:14-cv-00865-
RSL, Judge Robert S. Lasnik.
______________________
Decided: March 1, 2016
______________________
CHARLES JOHN ROGERS, Conley Rose, P.C., Houston,
TX, argued for plaintiff-appellant. Also represented by
GREGORY LOREN MAAG, THOMAS WARDEN, MICHAEL JAMES
GUTHRIE.
JERRY A. RIEDINGER, Perkins Coie, LLP, Seattle, WA,
argued for defendants-appellees. Also represented by
TYLER C. PETERSON; MARK CHRISTOPHER NELSON, STEVEN
M. GEISZLER, RICHARD SALGADO, Dentons US LLP, Dallas,
TX.
______________________
2 ULTIMATEPOINTER, L.L.C. V. NINTENDO CO., LTD.
Before LOURIE, DYK, and WALLACH, Circuit Judges.
LOURIE, Circuit Judge.
UltimatePointer, LLC (“UltimatePointer”) appeals
from a final judgment in favor of Nintendo Co., Ltd. and
Nintendo of America, Inc. (collectively, “Nintendo”) after
the district court granted summary judgment (1) that
Nintendo did not infringe claims 1, 3, 5, 6, and 12 of
UltimatePointer’s U.S. Patent 8,049,729 (the “’729 pa-
tent”), UltimatePointer, LLC v. Nintendo Co, No. 2:14-cv-
00865-RSL, 2014 WL 7340604, at *1–2 (W.D. Wash. Dec.
22, 2014) (“Infringement Opinion”); and (2) that claims 1,
3, 5, and 6 of the ’729 patent are invalid as indefinite,
UltimatePointer, LLC v. Nintendo Co., 73 F. Supp. 3d
1305, 1308–09 (W.D. Wash. 2014) (“Indefiniteness Opin-
ion”). For the reasons that follow, we affirm the judgment
of noninfringement and reverse the determination of
indefiniteness.
BACKGROUND
UltimatePointer is the owner of the ’729 patent, enti-
tled “Easily Deployable Interactive Direct-Pointing Sys-
tem and Presentation Control System and Calibration
Method Therefor.” The ’729 patent describes a handheld
pointing device that can be used to control the cursor on a
projected computer screen, thereby improving a present-
er’s ability to control the cursor while making a presenta-
tion to an audience. See ’729 patent, col. 1 ll. 24–42.
Figure 2 illustrates one configuration of the invention:
ULTIMATEPOINTER, L.L.C. V. NINTENDO CO., LTD. 3
Id. fig. 2. The pointing device (20) can measure its loca-
tion and orientation relative to the projected image (70),
and use that measurement to determine where on the
image to display the cursor. Id. col. 7 ll. 11–17. Claim 1
is exemplary and reads as follows:
1. An apparatus for controlling a feature on a
computer generated image, the apparatus
comprising:
a handheld device including:
an image sensor, said image sensor
generating data related to the distance
between a first point and a second
point, the first point having a prede-
termined relation to the computer
generated image and the second point
having a predetermined relation to a
handheld enclosure; and
a processor coupled to said handheld
device to receive said generated data
4 ULTIMATEPOINTER, L.L.C. V. NINTENDO CO., LTD.
related to the distance between a first
point and a second point and pro-
grammed to use the distance between
the first point and the second point to
control the feature on the image.
Id. col. 33 l. 62–col 34 l. 8.
The specification describes two types of pointing de-
vices: direct-pointing devices and indirect-pointing devic-
es. Id. col. 1 l. 58–col. 2 l. 3. Indirect-pointing devices, for
example, computer mice, are those “where the object of
pointing (e.g., a cursor) bears an indirect relationship to
the physical point-of-aim of the pointing device.” Id. col. 1
ll. 64–67. Direct-pointing devices, in contrast, are devices
“for which the physical point-of-aim coincides with the
item being pointed at, i.e., it lies on the line-of-sight.” Id.
col. 1 ll. 61–63. Examples of direct-pointing devices
“include the so-called ‘laser pointer’ and the human
pointing finger.” Id. col. 1 ll. 63–64. According to the
patentee, direct-pointing systems are “more natural to
humans, allowing faster and more accurate pointing
actions.” Id. col. 2 ll. 2–3. “[I]ndirect-pointing methods
. . . do not provide the speed and intuitiveness afforded by
direct-pointing systems.” Id. col. 2 ll. 42–43. In previous
presentation systems, the cursor was often controlled by a
computer mouse; that is, an indirect-pointing device. See
id. col. 1 ll. 50–57.
Nintendo manufactures and sells the Wii video game
system. The Wii system includes, among other things, a
handheld Wii remote, a Wii console, and a sensor bar, as
shown below:
ULTIMATEPOINTER, L.L.C. V. NINTENDO CO., LTD. 5
Joint App. (“J.A.”) 14970.
The Wii console is a special-purpose computer that
runs games and various other applications; it also pro-
vides audio and video output to a connected television.
Appellees’ Br. 14. The sensor bar sits above or below the
television and, contrary to its name, simply emits infrared
light. J.A. 13667 ¶ 25. The Wii remote is the primary
controller for the Wii system, and allows a user to interact
with and play Wii games. J.A. 13667 ¶ 25.
The Wii remote can be used to control an on-screen
cursor through the interaction of the remote and the
sensor bar. J.A. 6272 ¶¶ 5, 7, 8. The front of the Wii
remote detects the infrared light emitted by the sensor
bar, and transmits information regarding that light to the
Wii console. J.A. 6271 ¶¶ 5, 8. Based on the received
information, the console displays the cursor on the televi-
sion screen. J.A. 6271 ¶¶ 5, 8.
In 2011, UltimatePointer sued Nintendo and retailers
of the Wii system in the United States District Court for
the Eastern District of Texas (the “Texas district court”),
alleging that the Wii system infringed several claims of
the ’729 patent. UltimatePointer originally alleged that
the Wii system infringed another patent as well, but has
since withdrawn those allegations and, accordingly, that
patent is no longer at issue. Because Nintendo Co. is a
Japanese corporation with its headquarters in Kyoto,
Japan, Nintendo of America is a Washington corporation
6 ULTIMATEPOINTER, L.L.C. V. NINTENDO CO., LTD.
with its headquarters in Redmond, Washington, and
UltimatePointer is a Delaware corporation, Nintendo
moved to sever and stay the claims against the retailers
and to transfer the case against Nintendo to the United
States District Court for the Western District of Washing-
ton (the “Washington district court”). In response, Ulti-
matePointer accused new products, sold by the retailers
but not manufactured by Nintendo, of infringement;
accordingly, the motions to sever and transfer were de-
nied. Nintendo then petitioned this court for a writ of
mandamus.
While the petition for mandamus was pending, pro-
ceedings continued in the Texas district court. On May
28, 2013, the district court issued an opinion construing
numerous claim terms, many of which UltimatePointer
contests on appeal. As will be explained infra, review of
only one of those constructions is necessary to resolve this
appeal: “handheld device” in claims 1, 3, 5, 6, and 12.
The parties disputed whether “handheld device”
should be limited to a direct-pointing device, or whether
the term also included indirect-pointing devices. The
district court adopted Nintendo’s proposed construction,
construing the term to mean “handheld direct pointing
device.” UltimatePointer, LLC v. Nintendo Co., No. 6:11-
cv-00496-LED, 2013 WL 2325118, at *2–4 (E.D. Tex. May
28, 2013) (“Claim Construction Opinion”). The court
reasoned that “[t]he specification characterizes the inven-
tion as a whole as a direct-pointing system that improves
upon both indirect-pointing devices and prior direct-
pointing devices,” and that indirect pointing is used only
when direct pointing is impossible or undesirable. Id. at
*3. 1 Even in those situations, the district court noted, the
1 Although the district court explained its reasoning
by referencing the written description of the other assert-
ed patent, the specification of the referenced patent is
ULTIMATEPOINTER, L.L.C. V. NINTENDO CO., LTD. 7
patent indicates that indirect pointing may be used “as
described in the cited prior art.” Id. Thus, the district
court concluded that “although the specification mentions
indirect pointing, it is clear that the invention is aimed at
direct pointing.” Id.
After claim construction, the petition for a writ of
mandamus was granted, In re Nintendo Co., 544 F. App’x
934 (Fed. Cir. 2013), and the action was transferred to the
Washington district court. On December 22, 2014, the
Washington district court then granted summary judg-
ment that Nintendo did not infringe claims 1, 3, 5, 6, and
12 of the ’729 patent. Infringement Opinion, 2014 WL
7340604, at *1.
Although there were several bases for the district
court’s decision, the primary basis was that the Wii
remote was not a “handheld device,” as the term had been
construed by the Texas court. The Washington court
began by noting that, under the Texas court’s construc-
tion, the claims required a “‘direct,’ as opposed to an
‘indirect,’ pointing device,” id., which the court character-
ized as “a product that places the cursor on the screen at
the physical point of aim,” id. at *2. The Washington
court concluded that UltimatePointer had not put forth
sufficient evidence to survive summary judgment because
the Wii remote was an indirect pointing device, not a
direct one. Id. at *1–2. Specifically, the Washington
court determined that although the Wii system can give
the impression that the cursor is placed as a result of the
user’s aim, “in reality it is the remote’s interaction with
the Wii sensor bar, not the screen, that is relevant to the
placement of the cursor.” Id. at *2. Accordingly, “[i]f the
sensor bar is placed elsewhere, such as perpendicular to
identical to the specification of the ’729 patent, in relevant
part, so the court’s reasoning applies with equal force to
the ’729 patent.
8 ULTIMATEPOINTER, L.L.C. V. NINTENDO CO., LTD.
the screen or behind the user, the user must aim the
remote towards the sensor bar . . . in order to have the
cursor appear on the screen.” Id.
In a separate opinion issued on the same day, the
Washington district court concluded that the claim limita-
tion “a handheld device including: an image sensor, said
image sensor generating data . . .” in claims 1, 3, 5, and 6
of the ’729 patent rendered those claims invalid as indefi-
nite. Indefiniteness Opinion, 73 F. Supp. 3d at 1308
(quoting ’729 patent, col. 33 ll. 64–65). The court rea-
soned that although the claims were directed to an appa-
ratus (the handheld device including an image sensor),
the claims also contained a method step (that the image
sensor generates data). The court therefore determined
that it was unclear whether the system claims were
infringed when the apparatus was created, or when the
apparatus was put to the specified use. Id. (citing Rem-
brandt Data Techs., LP v. AOL, LLC, 641 F.3d 1331,
1339–40 (Fed. Cir. 2011)).
The district court entered judgment against Ulti-
matePointer and for Nintendo on December 24, 2014.
J.A. 34. UltimatePointer timely appealed. We have
jurisdiction pursuant to 28 U.S.C. § 1295(a)(1).
DISCUSSION
I. CLAIM CONSTRUCTION
We first address UltimatePointer’s argument that the
Texas district court erred in its construction of the term
“handheld device.”
The ultimate construction of a claim term is a legal
conclusion that is reviewed de novo; similarly, interpreta-
tions of “evidence intrinsic to the patent (the patent
claims and specifications, along with the patent’s prosecu-
tion history),” are legal conclusions, which are also re-
viewed de novo. Teva Pharm. USA, Inc. v. Sandoz, Inc.,
135 S. Ct. 831, 841 (2015). Any “subsidiary factfinding”
ULTIMATEPOINTER, L.L.C. V. NINTENDO CO., LTD. 9
made by the district court based on extrinsic evidence is
reviewed for clear error. Id.
Words in a claim “are generally given their ordinary
and customary meaning”; that is, “the meaning that the
term would have to a person of ordinary skill in the art in
question at the time of the invention.” Phillips v. AWH
Corp., 415 F.3d 1303, 1313 (Fed. Cir. 2005) (en banc).
“Importantly, the person of ordinary skill in the art is
deemed to read the claim term not only in the context of
the particular claim in which the disputed term appears,
but in the context of the entire patent, including the
specification.” Id. “[T]he specification ‘is always highly
relevant to the claim construction analysis. Usually, it is
dispositive; it is the single best guide to the meaning of a
disputed term.’” Id. at 1315 (quoting Vitronics Corp. v.
Conceptronic, Inc., 90 F.3d 1576, 1582 (Fed. Cir. 1996)).
See also Trustees of Columbia Univ. v. Symantec Corp.,
___ F.3d ___, No. 15-1146, 2016 WL 386068, at *2–3 (Fed.
Cir. Feb. 2, 2016).
We have cautioned against importing limitations from
the specification into the claims when performing claim
construction, Innogenetics, N.V. v. Abbott Labs., 512 F.3d
1363, 1370 (Fed. Cir. 2008); however, we have also recog-
nized that “repeated derogatory statements” can indicate
that the criticized technologies were not intended to be
within the scope of the claims, Chicago Bd. Options Exch.
v. Int’l Sec. Exch., 677 F.3d 1361, 1372 (Fed. Cir. 2012).
UltimatePointer argues that the Texas district court
imported the “direct pointing” limitation from the specifi-
cation into claims 1, 3, 5, 6, and 12. Although Ultimate-
Pointer recognizes that “specific embodiments [in the ’729
patent] may be ‘aimed’ at direct pointing,” it argues that
those embodiments do not restrict the broad claim lan-
guage. Appellant’s Br. 26. The correct analysis, Ulti-
matePointer argues, requires determining whether the
patentee explicitly defined the relevant claim term or
10 ULTIMATEPOINTER, L.L.C. V. NINTENDO CO., LTD.
disclaimed claim scope. Because the patentee did not
provide an explicit definition or disclaim subject matter,
UltimatePointer continues, reading “direct pointing” into
the claims was incorrect and the Texas district court’s
construction should be reversed in favor of “a piece of
equipment or system component intended to be held in
the user’s hand.” Id. at 24.
UltimatePointer also argues that, even if the Wash-
ington district court was correct in construing the
“handheld device” to be a direct-pointing device, the court
incorrectly further limited the claim construction in
resolving summary judgment by requiring that the Wii
remote “place[] the cursor on the screen at the physical
point of aim.” Id. at 28–31.
Nintendo responds that direct pointing “is intertwined
with every facet of the ’729 patent.” Appellees’ Br. 33. At
every turn, Nintendo argues, the specification of the ’729
patent extolls direct pointing and disparages indirect
pointing. Because the inventor described his invention as
encompassing direct pointing and repeatedly criticized
indirect pointing, Nintendo continues, UltimatePointer
may not now claim that indirect pointing is within the
claim scope.
We agree with Nintendo that the district court did not
err in construing “handheld device” as “handheld direct
pointing device.” The specification repeatedly emphasizes
that the invention is directed to a direct-pointing system.
The title of the invention explicitly states that the inven-
tion is an “Easily-Deployable Interactive Direct Pointing
System . . .” (emphasis added). See Exxon Chem. Patents,
Inc. v. Lubrizol Corp., 64 F.3d 1553, 1557 (Fed. Cir. 1995)
(using patent title to inform claim construction). The
specification also repeatedly emphasizes that the system
is for interacting with a presentation in a “direct-
pointing” manner, ’729 patent, col. 14 ll. 25–28, 33–36,
46–49; col. 15 ll. 3–6; col. 20 ll. 32–35, and even describes
ULTIMATEPOINTER, L.L.C. V. NINTENDO CO., LTD. 11
the handheld device as a “direct-pointing device,” id. col.
24 ll. 45–46, 51–53; col. 31 ll. 21–24.
The written description also emphasizes how direct
pointing is superior to indirect pointing. In the “Back-
ground of the Invention,” the patentee notes that “point-
ing devices may be classified” as either direct or indirect-
pointing devices, id. col. 1 ll. 58–60, and that “[i]t needs
no argument that direct-pointing systems are more natu-
ral to humans, allowing faster and more accurate pointing
actions,” id. col 2 ll. 1–3.
The written description further disparages indirect
pointing. For example, indirect pointing is criticized as
“less natural” than direct pointing, id. col. 2 ll. 35–36, and
as not providing “the speed and intuitiveness afforded by
direct-pointing systems,” id. col. 2 ll. 41–43. Even a prior
art hybrid system, using both direct and indirect pointing,
is criticized as not “afford[ing] the fast and more accurate
interactive pointing actions provided by some other direct-
pointing systems,” id. col. 4 ll. 52–54, and another hybrid
system is criticized for not providing “the desired flexibil-
ity afforded by truly direct-pointing methods,” id. col. 5
ll. 1–3. Although the ’729 patent does include one embod-
iment where the handheld device “may include a conven-
tional, indirect pointing device,” indirect pointing is only
used “where direct pointing is not possible or not desired,”
id. col. 30 ll. 23–26, thus even further disparaging indirect
pointing.
Taken together, the repeated description of the inven-
tion as a direct-pointing system, the repeated extolling of
the virtues of direct pointing, and the repeated criticism
of indirect pointing clearly point to the conclusion that the
“handheld device” in claims 1, 3, 5, 6, and 12 is limited to
a direct-pointing device.
UltimatePointer’s arguments do not require a differ-
ent result. UltimatePointer argues that the term
“handheld device” has an ordinary meaning not limited to
12 ULTIMATEPOINTER, L.L.C. V. NINTENDO CO., LTD.
direct pointing and, absent a clear definition or clear
disclaimer from the patentee, that plain meaning should
control. Appellant’s Br. 25. Adopting UltimatePointer’s
“ordinary meaning,” however, would incorrectly require
us to divorce the claim language from the repeated direct-
pointing description and indirect-pointing criticism in the
specification. In Decisioning.com, Inc. v. Federated De-
partment Stores, Inc., we rejected a proposed broad claim
construction that was not supported by the specification,
although we recognized that the construction was plausi-
ble if “[d]ivorced from the specification.” 527 F.3d 1300,
1308 (Fed. Cir. 2008) (per curiam). Even in Pacing Tech-
nologies, LLC v. Garmin International, Inc., the main case
that UltimatePointer relies on to support its argument,
we stated that “claim terms are construed in light of the
specification and prosecution history, not in isolation.”
778 F.3d 1021, 1024 (Fed. Cir. 2015). In other words,
UltimatePointer’s argument that a court may only deviate
from the ordinary meaning when there is an explicit
definition or disclaimer does not apply because the ordi-
nary meaning of “handheld device,” when read in the
specific context of the specification of the ’729 patent, is
limited to a direct-pointing device. See Trustees of Co-
lumbia Univ., 2016 WL 386068, at *3 (“The only meaning
that matters in claim construction is the meaning in the
context of the patent.”).
UltimatePointer’s argument that the Washington dis-
trict court impermissibly narrowed the Texas district
court’s claim construction is similarly unpersuasive. The
language used by the Washington court—“a product that
places the cursor on the screen at the physical point of
aim”—is taken directly from the patent, where the pa-
tentee defined “direct-pointing devices” as “devices for
which the physical point-of-aim coincides with the item
being pointed at.” ’729 patent, col. 1 ll. 60–62. According-
ly, the Washington district court did not err in its con-
struction of “handheld device.”
ULTIMATEPOINTER, L.L.C. V. NINTENDO CO., LTD. 13
II. NONINFRINGEMENT
UltimatePointer next argues that even if the Texas
district court’s construction of “handheld device” was
correct, the Washington district court nonetheless erred
in granting summary judgment of noninfringement.
We review a district court’s decision to grant summary
judgment under the law of the regional circuit in which
the district court sits, here, the Ninth Circuit. Classen
Immunotherapies, Inc. v. Elan Pharm., Inc., 786 F.3d 892,
896 (Fed. Cir. 2015). In the Ninth Circuit, summary
judgment is reviewed de novo. Burke v. Cty. of Alameda,
586 F.3d 725, 730 (9th Cir. 2009). Summary judgment is
appropriate when, drawing all reasonable inferences in
favor of the nonmovant, there is “no genuine dispute as to
any material fact and the movant is entitled to judgment
as a matter of law.” Fed. R. Civ. P. 56(a); see Anderson v.
Liberty Lobby, Inc., 477 U.S. 242, 255 (1986).
UltimatePointer argues that it introduced evidence
sufficient to generate a genuine dispute of material fact
that the Wii remote is a “handheld direct pointing device,”
as required by the claims, because it presented evidence
in the form of Nintendo’s manuals for the Wii system,
Nintendo’s technical documents, analyses by experts, and
a verified video exhibit of the Wii remote in operation.
Specifically, UltimatePointer argues that when the Wii
system is arranged and used as Nintendo instructs the
user to arrange and use the system, the system causes the
cursor to be displayed at the point-of-aim of the Wii
remote.
Nintendo responds that the Wii remote does not per-
form direct pointing because it is the remote’s interaction
with the sensor bar, not the screen, that controls the
placement of the cursor; for example, if the sensor bar is
placed elsewhere, any approximation of direct pointing
disappears. As a result, according to Nintendo, the Wii
remote is an indirect, not a direct, pointing device. To be
14 ULTIMATEPOINTER, L.L.C. V. NINTENDO CO., LTD.
a direct pointing device, Nintendo argues, the Wii remote
would need to perform various calculations to account for
distance, the size of the television screen, and the position
of the Wii remote in space.
We agree with the district court and Nintendo that the
Wii remote is an indirect, not a direct, pointing device,
and that there is no genuine dispute of material fact on
that point. All of the evidence establishes that it is the
relationship between the Wii remote and the sensor bar,
not the Wii remote and the television screen, that allows
the Wii system to function. The object of pointing, viz.,
the cursor, is displayed, not based on the relationship
between the Wii remote and where the Wii remote is
pointing on the television screen, but instead based on the
relationship between the Wii remote and the sensor bar.
Although the Wii system may create the illusion of direct
pointing, in fact, the cursor is displayed based on an
indirect, not a direct, relationship.
UltimatePointer’s proffered evidence does not other-
wise generate a genuine dispute of material fact. Ninten-
do’s manuals instruct users how to operate the Wii
system, and do not describe the interaction between the
Wii remote and the sensor bar; similarly, the video of the
Wii’s operation simply illustrates how the Wii remote is
used, not how it works. Moreover, the manner in which
Nintendo referred to the Wii remote in its technical
documents does not mean that the Wii remote performs
direct pointing as that term is defined within the ’729
patent. Finally, although UltimatePointer’s technical
experts opined that the Wii remote performed direct
pointing, they did not contest the manner in which the
Wii system functions. As it is that functionality—the
interaction between the Wii remote and sensor bar—on
which we rest our holding, those expert opinions cannot
give rise to a genuine dispute of material fact.
ULTIMATEPOINTER, L.L.C. V. NINTENDO CO., LTD. 15
To counter Nintendo’s statement that moving the sen-
sor bar removes any approximation of direct pointing,
UltimatePointer responds that the fact that a system can
be arranged in a noninfringing manner does not avoid
infringement; i.e., that “imperfect practice of an invention
does not avoid infringement,” Appellant’s Br. 52–53
(quoting Paper Converting Mach. Co. v. Magna-Graphics
Corp., 745 F.2d 11, 20 (Fed. Cir. 1984)), and that “an
accused device that ‘sometimes, but not always, embodies
a claim[] nonetheless infringes,’” id. at 53 (quoting Broad-
com Corp. v. Emulex Corp., 732 F.3d 1325, 1333 (Fed. Cir.
2013)). Although UltimatePointer is correct in principle,
that principle does not apply to the facts here. Paper
Converting, Broadcom, and similar cases apply when an
accused system infringes in one manner of operation, but
does not infringe in another manner. See, e.g., Bell
Commc’ns Research, Inc. v. Vitalink Commc’ns Corp., 55
F.3d 615, 622–23 (Fed. Cir. 1995). In the present case,
the Washington district court found, and we agree, that
the Wii system does not infringe in any arrangement.
Infringement Opinion, 2014 WL 7340604, at *2. That the
Wii system does not approximate direct pointing when the
sensor bar is moved simply shows that the Wii remote
performs indirect, not direct, pointing. Accordingly, the
district court did not err in granting summary judgment
of noninfringement.
For the reasons explained previously, the Texas dis-
trict court did not err in construing the term “handheld
device,” and the Washington district court did not err in
granting summary judgment of noninfringement based on
that construction. Because those determinations entirely
resolve UltimatePointer’s infringement appeal, we need
not, and do not, address UltimatePointer’s challenges to
other claim constructions and the associated infringement
arguments.
16 ULTIMATEPOINTER, L.L.C. V. NINTENDO CO., LTD.
III. INDEFINITENESS
UltimatePointer also challenges the Washington dis-
trict court’s determination that claims 1, 3, 5, and 6 of the
’729 patent are invalid as indefinite.
We review a district court’s ultimate determination
that a claim is invalid as indefinite under 35 U.S.C. § 112
¶ 2 de novo, 2 although, as with claim construction, any
factual findings by the district court based on extrinsic
evidence are reviewed for clear error. Eidos Display, LLC
v. AU Optronics Corp., 779 F.3d 1360, 1364–65 (Fed. Cir.
2015). Neither party alleges that the district court relied
on extrinsic evidence in reaching its conclusion that the
claims are invalid as indefinite, and so our review is de
novo.
Section 112 requires that a patent specification “con-
clude with one or more claims particularly pointing out
and distinctly claiming the subject matter which the
applicant regards as his invention.” The Supreme Court
has read this provision to require that “a patent’s claims,
viewed in light of the specification and prosecution histo-
ry, inform those skilled in the art about the scope of the
invention with reasonable certainty.” Nautilus v. Biosig
Instruments, Inc., 134 S. Ct. 2120, 2129 (2014). We have
held that “a single claim covering both an apparatus and
a method of use of that apparatus” fails to meet the
requirements of § 112 because “it is unclear whether
infringement . . . occurs when one creates a[n infringing]
system, or whether infringement occurs when the user
actually uses [the system in an infringing manner].”
2 Because the ’729 patent was filed before the adop-
tion of the Leahy-Smith America Invents Act, Pub. L. No.
112-29, § 3, 125 Stat. 284, 285–93 (2011), the prior ver-
sion of § 112 governs. See Fleming v. Escort, Inc., 774
F.3d 1371, 1374 n.1 (Fed. Cir. 2014).
ULTIMATEPOINTER, L.L.C. V. NINTENDO CO., LTD. 17
IPXL Holdings, LLC v. Amazon.com, Inc., 430 F.3d 1377,
1384 (Fed. Cir. 2005). Nonetheless, “apparatus claims are
not necessarily indefinite for using functional language.”
Microprocessor Enhancement Corp. v. Texas Instruments
Inc., 520 F.3d 1367, 1375 (Fed. Cir. 2008) (“MEC”). If an
apparatus claim “is clearly limited to a[n apparatus]
possessing the recited structure and capable of perform-
ing the recited functions,” then the claim is not invalid as
indefinite. Id. (emphasis in original).
The district court concluded that claims 1, 3, 5, and 6
of the ’729 patent are directed to both an apparatus and a
method for using that apparatus because they claim “a
handheld device including: an image sensor, said image
sensor generating data” and other similar “generating
data” limitations. Indefiniteness Opinion, 73 F. Supp. 3d
at 1308 (quoting ’729 patent, col. 33 ll. 64–65). The court
concluded that the inclusion of the “image sensor generat-
ing data” limitation made it unclear whether infringe-
ment occurred when an infringing system is assembled, or
when “the apparatus is used to perform the specified
function.” Id. Accordingly, the court concluded that the
claims were invalid as indefinite.
UltimatePointer argues that the claims are not inva-
lid as indefinite because they simply claim a handheld
device with an image sensor capable of generating data,
and recite sufficient structure for that capability. Ulti-
matePointer contends that because claims 1, 3, 5, and 6 of
the ’729 patent claim a structure in connection with the
claimed functionality, the claims are more similar to those
in MEC. Id. 60–62.
Nintendo responds that the claims do not clearly tie
the functional language to the device’s capability. Nin-
tendo argues that the district court’s decision is consistent
with this court’s precedent, and that the United States
Patent and Trademark Office (“USPTO”) routinely rejects
18 ULTIMATEPOINTER, L.L.C. V. NINTENDO CO., LTD.
claims similar to those appearing in the ’729 patent on
IPXL grounds.
We agree with UltimatePointer that claims 1, 3, 5,
and 6 of the ’729 patent are not invalid as indefinite, as
the claims do reflect the capability of the claimed appa-
ratus. Unlike IPXL and similar cases, the claims at issue
here make clear that the “generating data” limitation
reflects the capability of that structure rather than the
activities of the user.
In reaching this conclusion, review of our precedent is
instructive. In IPXL, our first case to address the claim-
ing of two statutory classes, the claim at issue recited a
system including input means, wherein “the user uses the
input means” IPXL, 430 F.3d at 1384. The claims were
unclear whether infringement occurred when the system
was created, or when the user used the system. See id.
We also affirmed a district court’s conclusion finding a
claim invalid as indefinite for being directed to two statu-
tory classes in In re Katz Interactive Call Processing
Patent Litigation, 639 F.3d 1303, 1318 (Fed. Cir. 2011).
In that case, the claims were directed to a system with an
interface for providing automated voice messages to
certain callers, “wherein said certain of said individual
callers digitally enter data.” Id. Although the patentee
argued that this clause indicated functional capability, we
held that the clause was “directed to user actions, not
system capabilities.” Id.
In MEC, however, we reversed a district court’s
determination that a claim directed to a computer proces-
sor with different stages, including “performing a boolean
algebraic evaluation,” “producing an enable-write,” later
“enabling” or “disabling,” and, at a different stage, “de-
termining,” was directed to two different statutory clas-
ses. MEC, 520 F.3d at 1371–72. Instead, we found that
the claim was “clearly limited to a . . . processor pos-
sessing the recited structure and capable of performing
ULTIMATEPOINTER, L.L.C. V. NINTENDO CO., LTD. 19
the recited functions.” Id. at 1375 (emphasis in original).
Because the limitation only indicated a capability of the
structure rather than actual use, the claim was not indef-
inite. See id.
In HTC Corp. v. IPCom GmbH & Co., KG, we also
reversed summary judgment of indefiniteness when the
claim was drawn to a mobile station for use with a net-
work. 667 F.3d 1270, 1277 (Fed. Cir. 2012). The claim at
issue included “storing,” “holding,” and other functional
limitations, id. at 1274, but we concluded that those
limitations “merely establish those functions as the
underlying network environment in which the mobile
station operates.” Id. at 1277. As the limitations only
described the environment in which the network operated
rather than indicating a method of use, however, the
claim was not indefinite.
The claims here are most similar to those at issue in
MEC and HTC Corp. Like those claims, the “data gener-
ating” limitations only indicate that the associated struc-
tures have this capability (for example, the image sensor
and processor in claim 1) and do not require that any data
be actually generated by the user. See ’729 patent, col. 33
l. 65–col. 34 l. 8. Unlike the claims in IPXL and Katz, the
claims do not recite functionality divorced from the cited
structure. Therefore, the claims do not reflect an attempt
to claim both an apparatus and a method, but instead
claim an apparatus with particular capabilities. Accord-
ingly, we reverse the district court’s determination that
claims 1, 3, 5, and 6 of the ’729 patent are invalid as
indefinite.
CONCLUSION
We have considered the remaining arguments, but
find them unpersuasive. For the foregoing reasons, the
decision of the district court is affirmed in part and re-
versed in part.
20 ULTIMATEPOINTER, L.L.C. V. NINTENDO CO., LTD.
AFFIRMED IN PART, REVERSED IN PART
COSTS
No costs.