Digest of Tomita Technologies USA, LLC v. Nintendo Co., Ltd., No. 2014-1244 (Fed. Cir. Dec. 8, 2014) (nonprecedential). On appeal from S.D.N.Y. Before Prost, Bryson, and Hughes.
Procedural Posture: Accused infringer Nintendo appealed from a final judgment of infringement, a finding the patent was not invalid, and an award of damages. CAFC affirmed in part, and reversed in part.
- Claim construction — means-plus-function: The CAFC determined that the district court erred in adopting the patentee’s proposed construction of “offset presetting means” because the patent disclosed only one corresponding structure and not multiple embodiments with different corresponding structures as argued by patentee. Two of the figures relied upon by the patentee as purportedly showing further corresponding structure were in fact part of the same embodiment but just showed a larger circuit. Additionally, the repetition or paraphrasing of means-plus-function claim language in the specification alone did not describe any additional structure. And, structure in the specification that performs only part of the claimed function is not corresponding structure.
- Infringement: The CAFC determined that the district court did not err in its denial of Nintendo’s JMOL on infringement of a claim limit calling for “cross-point measuring means.” While the parties presented conflicting arguments and theories, Nintendo did not dispute that Tomita presented evidence in support of its theory. The fact that the jury rejected Nintendo’s evidence does not mean there was a complete lack of evidence supporting the verdict. Contrary to Nintendo’s argument, Tomita’s evidence was also directed to a corresponding structure encompassed by the district court’s construction of this claim limit.
- Invalidity: The district court did not err in denying Nintendo’s JMOL with respect to invalidity for lack of enablement or written description. Nintendo did not show the infringement verdict must have rested on an incorrect assumption by the jury that the asserted claim encompassed cameras with parallel optical axes. Instead, Tomita presented evidence to the effect that while the accused product included parallel cameras, the cameras nonetheless had intersecting optical axes.
- Jury Instructions — claim construction: The district court did not abuse its discretion in denying Nintendo’s motion for a new trial. The CAFC determined that the district court properly instructed the jury on claim construction, including the construction “cross point measuring means.” While the instructions did not include “rigid, legal language,” they nonetheless made clear that the jury was not free to apply its own reading of the disputed terms. Moreover, the district court did not err by declining to construe “cross point.” Nintendo argued that this allowed Tomita to confuse the jury by conflating the terms “cross point” and “cross point information” with “offset.” The CAFC determined, however, that Tomita’s discussions of “cross point” did not differ from its usage in the patent.