The US Court of Appeals for the Federal Circuit affirmed a summary judgment of no infringement while reversing a summary judgment of indefiniteness, concluding that the district court had properly construed the claim terms but incorrectly construed the functional language within an apparatus claim. Ultimatepointer, L.L.C. v. Nintendo Co., Ltd., Case No. 15-1297 (Fed. Cir., Mar. 1, 2016) (Lourie, J). Specifically, the Federal Circuit concluded that although the accused products give the illusion of infringement, they do not actually infringe, and that the claims are not indefinite because functional language in an apparatus claim term relates only to a capability of the claimed structure, not to the activities of its users.

Ultimatepointer sued Nintendo, claiming that the Wii video game system infringed Ultimatepointer’s patent covering a handheld pointing device used to control a cursor on a screen. A Wii system allows a user to control an on-screen cursor through a remote that sends information to a processor regarding the remote’s interaction with a sensor bar, which is placed near a television screen and emits an infrared light. The district court determined that the Wii remote was not a “handheld device” as required by the asserted claims, and that the claims were indefinite since they were directed to an apparatus (handheld device) but required performance of a method step (generating data). Ultimatepointer appealed. 

The Federal Circuit first addressed the construction of the claim term “handheld device,” which required the device to be “direct pointing.” A direct-pointing device, such as a laser pointer, is a device in which the physical point-of-aim coincides with the object of pointing, such as an on-screen cursor. An indirect-pointing device, such as a computer mouse, is a device in which the physical point-of-aim has an indirect relationship to the object of pointing, such as an on-screen cursor. Ultimatepointer argued that the district court had improperly included the limitation of “direct pointing,” and that the construction should not exclude indirect pointing. The Federal Circuit rejected this argument, relying on the title (“Direct Pointing System”) and the specification that repeatedly disparaged indirect pointing.

The Federal Circuit also rejected Ultimatepointer’s argument that even if the patent requires a direct pointing device, the Wii system still infringes by using direct pointing. Ultimatepointer argued that the Wii system causes an on-screen cursor to be displayed at the Wii remote’s point-of-aim. The Federal Circuit, however, agreed with the district court that the Wii remote does not perform direct pointing, because it is the interaction of the remote with the sensor bar, rather than the television screen, that controls the on-screen cursor. Although the Wii system may provide an illusion of direct pointing, it does not function as such. Since there was no issue of material fact, the Court affirmed that the Wii system did not infringe Ultimatepointer’s patent.

Finally, the Court continued its clarification of the indefiniteness standard under § 112 ¶ 2, based on the Supreme Court of the United States Nautilus decision (IP Update, Vol. 17, No. 6), and reversed the summary judgment determination that certain claims were indefinite for covering both an apparatus and a method of use of that apparatus. If a claim includes both, it becomes unclear whether infringement occurs when the system is created or when the user actually uses the system in the infringing manner. An apparatus claim that uses functional language is still valid if it is limited to an apparatus having recited structures where the structures are capable of performing the recited functions. In this case, the apparatus claims included “generating data” limitations. The Federal Circuit agreed with Ultimatepointer that the “generating” limitations went to the ability of the recited structure, rather than describing the act of data actually being user generated. Therefore, the Court found the claims to be compliant with § 112, ¶ 2 as simply reciting a handheld device having the capability to generate data.