Federal Circuit Sides with Nintendo in Major Patent Dispute

May.08.2017

The U.S. Federal Circuit Court of Appeals has rejected RecogniCorp’s patent infringement claims against Nintendo Co. Ltd involving image processing technology.

The unanimous panel decision concluded that the patent in the long-running dispute was ineligible for protection because it was directed to an abstract idea of encoding and decoding, and did not amount to a transformative invention.

In a precedential decision, the Federal Circuit upheld a lower court ruling, which likewise found that a patent reliant on an abstract mathematical formula is invalid under the U.S. Supreme Court’s Alice decision. That decision barred patent protections for abstract computer-generated ideas under Section 101 of the Patent Act.

“This method reflects standard encoding and decoding, an abstract concept long utilized to transmit information,” the court wrote. “Morse code, ordering food at a fast food restaurant via a numbering system and Paul Revere’s ‘One if by land, two if by sea’ signaling system all exemplify encoding at one end and decoding at the other end.”

Partner Mark Parris led the Orrick team representing Nintendo, which included Don Daybell, Will Melehani, Marc Shapiro, Alex Chachkes and Jeff Cox.