Koninklijke Philips Electronics N.v v Nintendo of Europe GmbH
| Jurisdiction | England & Wales |
| Court | Chancery Division (Patents Court) |
| Judge | Mr. Justice Birss,Mr Justice Birss |
| Judgment Date | 20 June 2014 |
| Neutral Citation | [2014] EWHC 1959 (Pat) |
| Date | 20 June 2014 |
| Docket Number | HC12E04759 |
[2014] EWHC 1959 (Pat)
IN THE HIGH COURT OF JUSTICE
CHANCERY DIVISION
PATENTS COURT
Royal Courts of Justice
Strand, London, WC2A 2LL
Mr. Justice Birss
HC12E04759
Henry Carr QC & Tom Hinchliffe (instructed by Bristows) for the Claimant
Adrian Speck QC & Brian Nicholson (instructed by Rouse Legal) for the Defendant
Hearing dates: 8th, 9th, 12th, 13th, 14th, 19th 20th May 2014
Approved Judgment
I direct that pursuant to CPR PD 39A para 6.1 no official shorthand note shall be taken of this Judgment and that copies of this version as handed down may be treated as authentic.
| Contents | Paragraph |
| Introduction | 1 |
| The issues | 4 |
| The witnesses | 23 |
| The 484 patent | 29 |
| The skilled person | 30 |
| The common general knowledge | 37 |
| The 484 patent specification | 58 |
| Claim construction | 68 |
| Allowability of the amendments | 106 |
| Infringement | 119 |
| Novelty | 141 |
| WCTM | 142 |
| SEGA Heavyweight Champ | 157 |
| Alpine Racer | 164 |
| Obviousness | 177 |
| WCTM | 179 |
| SEGA Heavyweight Champ | 192 |
| Alpine Racer | 194 |
| The 498 and 650 patents | 195 |
| The skilled person | 196 |
| The common general knowledge | 202 |
| The 498/650 patent specification | 226 |
| Claim construction | 238 |
| Added matter | 273 |
| The amendments and double patenting | 290 |
| Infringement | 312 |
| Novelty | 329 |
| Wacom | 330 |
| Philips application | 345 |
| Sony | 357 |
| Obviousness | 379 |
| Wacom | 381 |
| Philips application | 410 |
| Sony | 427 |
| Summary of outcomes on 498 and 650 and impact on double patenting | 440 |
| Reflection on 498 and 650 | 450 |
| Conclusion | 451 |
Introduction
In this action the claimant, Philips, contends that the Nintendo Wii computer game console infringes its patents. The first patent is EP (UK) No. 0,808,484 entitled "Method and apparatus for controlling the movement of a virtual body". The second patent is EP (UK) No. 1,573,498 entitled "User interface system based on a pointing device". The third patent is EP (UK) 2,093,650. The 650 patent is a divisional with respect to the 498 patent.
Philips alleges that the Nintendo Wii and Wii U systems infringe all three patents. Nintendo counterclaims for revocation.
Philips has applied for conditional amendments to all three Patents. It admits partial invalidity of the 498 patent in its form as granted. Nintendo takes various objections either to the granted claims or to the proposed amendments based on added matter. There is also an objection to one amendment on clarity grounds and an argument about double patenting. Nintendo does not admit that any of the Wii or Wii U systems infringe any of the claims. The invalidity arguments are summarised below.
The issues
Prior art and claim amendments for the 484 patent
As against the 484 patent four prior art citations are relied on in support of allegations of lack of novelty or lack of inventive step. They are:
i) Japanese Unexamined Utility Model Application S64– 56289 filed by Sega Enterprises Co. Ltd entitled "Boxing Game Device" published on 7 April 1989;
ii) the prior use of Sega's arcade game "Heavyweight Champ" made available to the public from 1987. This game is the same as the one described in the Sega Application although the disclosures are not identical;
iii) the prior use of Nintendo's NES console when used in conjunction with a device called the Power Pad of Bandai to play a computer game called World Class Track Meet (WCTM) from 1988;
iv) the prior use of Namco's "Alpine Racer" arcade game. This was made available to the public from June or July 1995.
Philips accepts that all these matters form part of the state of the art as regards the 484 patent.
For the 484 patent the claims maintained as independently valid are: claim 1 and claim 5 as granted, claim 1 as proposed to be amended, and new claim 9 as proposed to be amended.
Claim 1 of the 484 patent as granted is as follows:
1. Virtual body modelling apparatus operable to generate and animate under user direction a representation of a body in a virtual environment the apparatus comprising:
a first data store, holding data defining the virtual environment; a second data store, holding data related to features of the virtual body representation;
user motion detection means monitoring movement of the user in a physical environment;
and processing means arranged to generate a representation of the virtual environment based on data from the first data store,
to generate the body representation within the virtual environment based on data from the second data store,
and to periodically modify the generated body representation in response to signals received from the user motion detection means;
characterised in that the second data store holds data defining at least one sequence of body motions,
and the processor is arranged to call said sequence data and modify the generated body representation such as to follow the sequence of motions on detection of one or more predetermined signals from the user motion detection means.
Claim 5 of the 484 patent as granted is as follows:
5. Apparatus as claimed in Claim 1, wherein the user is presented with the image of the virtual environment from a first viewpoint, said generated representation of the virtual environment being modified to change the viewpoint in synchronism with the following of the sequence of motions.
Claim 1 of the 484 patent as proposed to be amended is as follows:
1. Virtual body modelling apparatus operable to generate and animate under user direction a representation of a body in a virtual environment wherein the virtual body representation is a computer-based model that represents the human, or other, form in the virtual environment, the apparatus comprising:
a first data store, holding data defining the virtual environment; a second data store, holding data related to features of the virtual body representation;
user motion detection means monitoring movement of the user in a physical environment;
and processing means arranged to generate a representation of the virtual environment based on data from the first data store,
to generate the body representation within the virtual environment based on data from the second data store,
and to periodically modify the generated body representation in response to signals received from the user motion detection means and an adaptive mechanism;
characterised in that the second data store holds data defining at least one sequence of body motions,
and the processor is arranged to call said sequence data and modify the generated body representation such as to follow the sequence of motions on detection of one or more predetermined signals from the user motion detection means; and,
the adaptive mechanism is arranged to adapt on the fly to the signals received from the user motion detection means to translate the user's erratic, variable signals into a steady motion."
The proposed amendments to the 484 patent also involve inserting a new claim 9 after existing claim 8 and renumbering subsequent claims. Claim 9 as proposed to be amended is in this form:
9. Apparatus as claimed in any preceding claim, wherein the movement of at least one part of the virtual body is directed by the measured movement of the corresponding part of the user's body.
Prior art and claim amendments for the 498 and 650 patents
The prior art relied on against the 498 and 650 patents is as follows:
i) a Japanese unexamined patent application No. H07–302148 published on 14 November 1995 entitled "Data input device" ("Wacom");
ii) PCT Application WO 00/60534 published on 12 November 2000 entitled "Remote control for display apparatus" ("Philips application"); and
iii) Japanese unexamined patent application 2002–81909 published on 22 March 2002 entitled "Position detector, position detection method, and entertainment apparatus" ("Sony").
Philips accepts that all these matters form part of the state of the art as regards the 498 and 650 patents.
The position with the claims of the 498 and 650 patents is complicated. Philips accepts that claim 1 of 498 as granted is invalid. It is anticipated by Wacom. However claims 2, 3 and 5 as granted are maintained as independently valid. Moreover Philips makes two conditional applications to amend. The first conditional application involves amendments to granted claims 1, 2 and 3. The second conditional application only involves an amendment to claim 1 as granted and relates to a particular point on added matter. In fact Philips also has a third and a fourth conditional proposed amendment. The third one is to put together the first and second amendments. The fourth one relates to a typographical error in granted claim 1.
Nintendo did not object to the informal way in which these two latter matters were dealt with but in future patentees should not adopt this course. It is likely to lead to mistakes being made. No doubt, particularly regarding the combination of the first and second amendments the patentee did not want to make it look as though there were too many alternative amendments being proposed. That is not an excuse for not setting out with precision what the terms of claims sought actually are. I very much doubt the EPO would have permitted the patentee to seek the third or fourth conditional proposed amendments without having them written out formally. Indeed the fourth conditional amendment really could be converted into three different claims sets as well, since the alteration applies to claim 1 in any of its three proposed forms.
At one stage Philips sought to amend claim 6 of the 498 patent and to insert new claims 8 and 9 but those amendments were not pressed at...
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