Be Specific In Your Specification
June 30, 2010
By DeMarcus Levy, Law Clerk
The filing date of a patent application can be critical in determining what prior art can be applied against its claims. In April 2010, Nintendo of America obtained a reversal of a U.S. District Court decision holding that certain Nintendo video game controllers infringed upon a patent, U.S. Patent 6,906,700 (“the ‘700 patent”), owned by Anascape. Anascape, Ltd. v. Nintendo of Am., Inc., 601 F.3d 1333, 1339 (Fed Cir. 2010). The district court held the Anascape ‘700 patent valid and infringed, and awarded damages of $21M. Anascape, Ltd. v. Ninendo of Am., Inc., No. 9:06-CV-158 (E.D.Tex. July 23, 2008). The pivotal issue was the filing date that Anascape’s ‘700 patent could rely on, as that would determine what prior art could be cited against the claims of the patent. Anascape sought to remove prior art in the form of Sony’s “DualShock” (patented in 1998) and “DualShock 2” (patented in 2000) video game controllers by claiming priority to its earlier patent, U.S. Patent 6,222,525 (“the ‘525 patent”), which was patented in 1996. The district court held that the ‘700 patent was substantially described by the ‘525 patent and was thus entitled to the filing date of the ‘525 patent.
To obtain the filing date of a parent patent, the claims of the child patent application must be so described in the parent patent “that one skilled in the art can clearly conclude that the inventor intended the [child] invention as of the [parent patent] filing date sought.” Lockwood v. American Airlines, Inc., 107 F.3d 1566, 1572 (Fed. Cir. 1997). In other words, for a child patent application to be entitled to use of the filing date of a parent patent it must be shown that the parent patent’s specification contained a sufficient description of the later-claimed subject matter of the child patent. Without such a showing, the child patent only receives its own filing date as it is “new matter” for which the parent patent does not give sufficient disclosure.
Here, Anascape asserted that the specification of the ‘525 patent described a controller having a single input member that operated in six degrees of freedom. In addition Anascape asserted that the specification of the ‘525 patent could also be construed to support claims for controllers having multiple input members that together operate in six degrees of freedom (6 DOF), as this was the subject matter described and claimed in the ‘700 patent. The district court noted that for the parent patent “[Anascape] clearly expected the inventions to be used with a single input member (such as a joystick) that moved in 6 DOF to control an image appearing to move in three dimensions.” Anascape, Ltd. v. Nintendo of Am., Inc., No. 9:06-CV-158 (E.D.Tex. July 23, 2008). The Federal Circuit conceded this, but held that the specification of the parent patent failed to explicitly disclose multiple input members that together operate in 6 DOF. The court noted, “A patentee is not deemed to disclaim every variant that it does not mention. However, neither is a patentee presumed to support variants that are not described.” Anascape, Ltd. v. Nintendo of Am., Inc., 601 F.3d 1333, 1339 (Fed. Cir. 2010) (referencing Amgen Inc. v. Hoechst Marion Roussel, Inc., 314 F.3d 1313, 1330 (Fed. Cir. 2003)). In short, the only claimed subject matter in a child patent application which is entitled to the filing date of a parent patent application is the information explicitly and understandably described in a parent patent and intended to apply to future inventions, such as those described in the child patent application.