EPLAW PATENT BLOG

FR – France Brevets and Ms W. v. Nintendo

Posted: September 1st, 2016

France Brevets fails in its attempt to get more than €80,000,000 from Nintendo in Wii Balance Board-related patent dispute as a result of file wrapper estoppel

Ms W. and France Brevets v. Nintendo France and Nintendo of Europe, judgment of the tribunal de grande instance de Paris dated 26 May 2016, docket № 14/05090, with thanks to Pierre Véron, Véron & Associés for providing the judgment as well as a summary and translation thereof

The judgment issued on 26 May 2016 by the tribunal de grande instance de Paris dismisses the infringement proceedings brought against Nintendo France and Nintendo of Europe (“Nintendo”) by Ms W. and France Brevets in relation to the sale in France of Nintendo’s “Wii Balance Board” and its “Wii Fit” companion software.

Background

Ms W. is a retired French physiotherapist and osteopath who developed over the course of her career an interest in walking and plantar sensation-oriented methods and in devices designed to improve balance and human body dynamism.

Ms W. holds several patents related to such devices, in particular French patent № 06 08323 covering a “Dynamic positional apparatus for detecting a balanced biped position”, filed on 22 September 2006 and granted on 6 March 2009.

On 13 September 2007, Ms W. filed a European patent application № 07848230.4 published under № 2 067 009, designating France, claiming priority from this French patent application; this patent was granted in 2014 and an opposition thereto was filed.

However, because French law provides that any infringement proceedings based on a French patent shall be stayed until the final grant of the corresponding European patent, when this European patent has been applied for (Article L. 614-15 of the French Intellectual Property Code), she renounced, in 2013, the effects in France of European patent № 2 067 009: as a result, that European patent no longer designates France.

The invention covered by the patent in question is a scales apparatus comprised of a mobile plate resting on a base through elastic deformable members, like springs, at the end of which force sensors are placed, and equipped with a means of generating the display of information in relation to weight distribution.

It enables the person standing on the device to determine if he is in equilibrium and therefore to dynamically and actively correct his balance imperfections.

Nintendo France and Nintendo of Europe are subsidiaries of the Japanese video game pioneer company Nintendo Co. Ltd., which is among the leaders of the consoles and video game market.

In 2008, two years after the launch of its “Wii” video game console, Nintendo introduced an accessory named “Wii Balance Board”, together with a companion video game called “Wii Fit”.

The Wii Balance Board is a peripheral that reacts to the displacements perceived from the player’s centre of pressure and allows him to reproduce on the screen the movements corresponding to the signals emitted by the sensors  in particular while he is playing “Wii Fit”.

Proceedings

Considering that Nintendo’s “Wii Balance Board” and its companion video game “Wii Fit” infringed her French patent № 06 08323, Ms W. brought proceedings against Nintendo France and Nintendo of Europe in 2010 before the tribunal de grande instance de Paris: however, these proceedings were stayed as a result of the French rule that any infringement proceedings based on a French patent shall be stayed until the final grant of the corresponding European patent.

During the course of the proceedings, in December 2013, Ms W. assigned the co-ownership (half of her rights) of her French patent № 06 08323 and her European patent application № 2 067 009 to France Brevets, a French government-owned investment fund created in 2011.

According to the assignment contract, France Brevets was authorised to continue the proceedings on the basis of French patent № 06 08323 on behalf of the co-owners, but at its sole expense.

Shortly thereafter, France Brevets and Ms W. renounced the effects in France of European patent № 2 067 009, resumed the proceedings and sought, among other remedies, an interim payment of €81,460,000 on account of damages as compensation for the acts of infringement.

In response to these claims, Nintendo argued that French patent № 06 08323 was invalid due to lack of novelty, or, depending on the claims, lack of inventive step; in the alternative, Nintendo argued that its products “Wii Balance Board” and its companion video game “Wii Fit” did not infringe the patent.

The parties’ position on the interpretation of the patent

The discussion primarily focused on an issue of interpretation of the patent which was essential for both validity and infringement.

The discussion revolved around whether the deformable elements and the force sensors could be integrated in a single element or whether the deformable elements should be separated from the force sensors.

More precisely, the parties disagreed as to the meaning to be given to two items of the main claim, providing that the plate on which the user stands is supported by:

“at least three elastic deformable members (a sensor being placed at one end) symmetrically distributed relatively to the central axis of symmetry of the plate”;

“each of these elastic deformable members being oriented along a direction orthogonal to a plane defined by the said reference system part”.

Nintendo argued that, since the deformable elements had to allow the user to become aware of his balance by relying on his plantar sensation, the degree of deformation of the deformable elements had to be sufficient to provide mobility to the plate resting on these deformable elements.

On the contrary, Ms W. and France Brevets contended that the only requirement laid down in the patent was that the force sensors be placed at the end of the deformable elements, and that the patent did not contain any indication as to the minimum degree of deformation required, nor to the effect that the plate be rendered mobile and unstable; they argued that the degree of deformation could be minimal like that of a force sensor’s test specimen.

Ms W. and France Brevets therefore argued that the Wii Balance Board’s test specimen could be considered as an elastic deformable element and therefore fell within the scope of the main claim of their French patent № 06 08323.

The judgment

The issue of interpretation was crucial for the assessment of both the validity and the infringement and is dealt with in detail by the judgment.

The tribunal de grande instance de Paris noted that while the description of the patent did not provide an explicit indication as to the required level of deformation of the elastic members, the prior art mentioned in the patent’s description made it clear that the deformation of the elastic members had to be sufficient to render the plate mobile enough to allow the user to be conscious of his plantar sensation.

The tribunal also paid particular attention to the points raised by Ms W.’s patent attorney during the EPO examination procedure, noting that they were important clues as to the scope of the invention and that they had to be used to help interpreting the patent claims.

In particular, the tribunal applied the file wrapper estoppel theory and held that the patentee could not take before it a position contradicting the position it had taken before the EPO.

Since the patentee had specifically argued during the examination procedure that the claimed deformable elements were distinct from the force sensors, the tribunal held that it was estopped from asserting the contrary in the judicial proceedings:

“Regarding the answers given by Ms W.’s representative in the examination of European patent № 2 067 009, which covers with certainty the same invention as it claims priority from French patent № 06 08323, they are indications that should be taken into account for the interpretation of the claims of a patent, regarding in particular its description.

The answers made in the examination proceedings enlighten the tribunal on the meaning that the inventor himself wishes to give to a certain number of notions and, in certain cases, explain or limit them.

Consequently, they necessarily constitute a good indicator of what the inventor wanted to protect and of what his invention really represents; they are an important indication of the extent of the invention and of the interpretation that should be made thereof.

In the present case and regarding the force sensors and their combination with the elastic deformable members, Ms W. and France Brevets cannot support before this tribunal a position that is fully opposed to that which is supported before the EPO, in application of the principle “no person can contradict oneself to the detriment of another person””.

Having so interpreted the patent, the tribunal found that the prior art put forward by Nintendo taught or made obvious to the person skilled in the art the features of the invention, which, therefore, lacked novelty for the main claim and inventive step for the dependent claims.

It, therefore, declared invalid all claims asserted and accordingly dismissed Ms W. and France Brevets’ case against Nintendo.

A copy of the decision (in French) can be read here.
A copy of the decision (in English) can be read here.

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