Fresh From the Bench: Latest Federal Circuit Court Case

CASE OF THE WEEK

Genuine Enabling Technology LLC v. Nintendo Co., Ltd., Appeal No. 2020-2167 (Fed. Cir. Apr. 1, 2022)‎

The Federal Circuit’s only precedential patent opinion this week turned on issues of claim ‎construction. In particular, the issue was the effect of statements made by the applicant during the ‎patent’s prosecution. The Court held that the district court erred in applying too narrow a ‎construction, and reversed with a modified construction.‎

The patent at issue concerns the use of certain inputs into a computer, created as part of an invention ‎of a “voice mouse.” The patent claims “at least one input signal.” During prosecution the examiner ‎considered a reference (Yollin) that disclosed using various physiological responses, such as “a ‎‎[Galvanic Skin Response or GSR] sensor, an electromyograph (muscle tension), electrocardiograph ‎‎(heart activity), electroencephalograph (brain activity), thermometer (skin temperature), blood ‎pressure sensor, and the like.” In response, the inventor argued that Yollin failed to adequately teach ‎the limitation. Mr. Nguyen distinguished the “slow varying” physiological response signals discussed in ‎Yollin from the “signals containing audio or higher frequencies” contemplated by his invention.‎