Use Caution When Writing a Patent Application

Writing a patent application is always a challenge.  In each case, it is a balance.  On one side, you are trying to ensure that you have provided an accurate and complete description of the invention.  On the other you worry about what the patent examiner might turn up in prior art that you didn’t think about when drafting the application.  Sometimes what is included may come back to limit the scope of your invention.

This is exactly what happened to UltimatePointer LLC when they sued Ninentendo for patent infringement (UltimatePointer, LLC v. Nintendo Co., Ltd., No. 15-1297 (Fed. Cir. Mar. 1, 2016).  The Federal Circuit, the appellate court for patent cases, affirmed a district court finding of noninfringement by Nintendo. The district court found the term “handheld device” to require a “direct pointing device”. The Federal Circuit found that UltimatePointer had made “repeated derogatory statements” relating to indirect pointing devices in the patent specification.  The court stated that the “criticized technologies were not intended to be within the scope of the claims.”  The court determined that Nintendo’s pointing involves the hand held remote relative to the sensor bar and not the television screen image. As a result, the court found the Wii system was considered an “indirect” pointing device and did not infringe.   

What’s the take away here?  Be careful what you write in your specification, especially in the area of describing other prior art.  You never know what prior art you may encounter down the road and you need to keep as many options open as possible. 

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