Game Controller Patent Fight In N.D. Cal. Heats Up - Gamevice, Inc. v. Nintendo Co. Ltd., Case No. 3:18-cv-01942-RS

Headline:  On June 4, 2020, the Northern District of California granted and denied in part Gamevice’s summary judgment motion against Nintendo, in a case where each party had asserted multiple gaming controller patents against the other.  The Court also threw out Nintendo’s opening expert report and its expert testimony on “reasonable royalty” damages as unreliable.  The case is set for trial on October 26, 2020.

Background:  Gamevice of Simi Valley, California manufactures the “Gamevice” controller system, which attaches to a smartphone or tablet to make it into a portable gaming platform.  Nintendo sells the Nintendo Switch portable gaming console system, which includes a portable console to which controllers can be attached.

Figure: Gamevice at left, Nintendo Switch at right, both pictures from the Gamevice complaint for patent infringement, Dkt. No. 1, at 6, 9.

In its Complaint, Gamevice asserted that Nintendo’s device infringed U.S. Patents Nos. 9,855,498 and 9,808,713 (both entitled “Game controller with structural bridge”).  Nintendo brought counterclaims against Gamevice for infringement of U.S. Patents Nos. 9,700,806 (“Game Operating Device”), 8,702,514 (“Controller device and controller system”) and 7,193,165 (“Operation device for game machine and hand-held game machine”).

Litigation of Gamevice’s patents was stayed pending resolution of its overlapping International Trade Commission case, but Nintendo’s counterclaims were allowed to proceed. Gamevice’s motion for summary judgment sought non-infringement and invalidity rulings on Nintendo’s patents.  Both parties moved to exclude expert testimony of the other.

 Holdings:  The Court’s June 4, 2020 ruling was mixed. 

• The Court denied summary judgment on U.S. Patents Nos. 7,193,165 and 8,702,514. 

  • Regarding non-infringement, the Court decided that a jury needed to resolve factual issues such as whether the Gamevice controllers had a “housing” or an arrangement of buttons as claimed in the ’165 patent or “grip portions” for holding the device as described in the ’514 patent. 

  • Factual issues prevented summary judgment of invalidity on both patents as well.  These claims may proceed to trial.

  • On U.S. Patent No. 9,700,806, the Court found that the Gamevice controller did not have “a support configured to detachably hold at least two sides of the electronic device located on opposite sides of the main surface of the electronic device such that the main surface of the electronic device is visible to the user while the user grasps the gaming device,” given that the Court had construed the term “main surface” to mean “all portions of the main surface.”  Because the Gamevice control units obscured some portion of the display, they necessarily obscured some portion of the main surface, and could not infringe as a matter of law. 

•  The Court also ruled on the parties’ attempts to exclude the other’s expert witnesses. 

  • The Court found Gamevice’s expert’s experience in industrial design and designing video game controllers “sufficiently relevant” to qualify him as an expert in this case. 

  • On the other hand, the Court excluded Nintendo’s economic expert’s opinions on a “reasonable royalty” as unreliable because he failed to explain how the evidence factored into the proposed reasonable royalty rate, admitted at deposition that his calculation was based on an incorrect number, and had a number of inaccuracies in his rebuttal report.

Practical Takeaways:  In the wider context of its related actions,  this case shows that the games industry is not immune from the kind of massively expensive multi-jurisdictional patent war more commonly associated with tech giants like Apple and Google. 

 In the narrow context of this particular case, the ruling emphasizes the highly-fact driven nature of patent actions, and the importance of thorough work in all aspects of litigation.  The Court’s exclusion of Nintendo’s economic expert opinions means that Nintendo enters trial without expert testimony on the important question of reasonable royalty damages.  Although “reasonable royalty” damages are generally the floor in a patent case, their amount still requires evidentiary support, and “a patentee who puts on little or no satisfactory evidence” cannot argue the damages awarded it are not “reasonable.”  See Lindemann Maschinenfabrik GmbH v. Am. Hoist & Derrick Co., 895 F.2d 1403, 1407 (Fed. Cir. 1990).  Without expert testimony, Nintendo may find it difficult to obtain significant damages even if infringement is found in the case. 

A copy of the order is located here.

Erin Jones, the “Wise One”