Alice Test Saves Nintendo From Jury’s $10.1 Infringement Verdict As Northern District of Texas Rules Patent Invalid Under §101

On January 17th, 2020, Chief Judge Barbara Lynn granted Nintendo’s Motion for Judgment as a Matter of Law, invalidating iLife’s patent claim asserted against Nintendo for its Wii U games and the resulting jury verdict award of $10.1 million.

In the motion, Nintendo raised challenges that the patent (U.S. Pat. No. 6,864,796) for Systems Within a Communications Device for evaluating Movement of a Body and Methods of Operating the Same was invalid as directed to ineligible subject matter under §101 and indefinite under §112 and invalid for lack of enablement and written description under §112.

Despite the jury’s finding that the patent was not invalid, the court found the patent invalid under Alice analysis. At step 1, the court determined that “Claim 1 is directed to the abstract idea of ‘gathering, processing and transmitting…information,’” comparing the claim to those in Elec. Power Grp., LLC v. Alstom S.A.. Meanwhile at step 2, the court found nothing inventive in the claim that could save it for invalidity as ineligible subject matter, rejecting iLife’s identification of inventive aspects disclosed in the written description.

This decision comes at a time when the Supreme Court again rejected the opportunity to provide clarification on §101 subject matter eligibility, having denied certiorari to multiple petitions on the matter including HP Inc. v Berkheimer, Hikma Pharmaceuticals, et al. v. Vanda Pharmaceuticals, and Athena Diagnostics, Inc., et al. v. Mayo Collaborative, et al.

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