In Anascape, Ltd. v. Nintendo of America, the Court of Appeals for the Federal Circuit (“CAFC”) reversed a jury verdict from a District Court that found Microsoft had infringed U.S. Patent No. 6,906,700 (“the ’700 patent”), owned by Anascape. The patent for a hand-operated controller used for video games was a continuation-in-part of U.S. Patent No. 6,222,525 (“the ’525 patent”) filed in 2000, and the infringed patent relied on the 1996 filing date of the parent ’525 patent to remain valid in light of intervening prior art sold by Sony in 1998. The CAFC held that the written description of the ’525 patent did not contemplate the broader scope claimed in the ’700 patent and therefore the claims in the ’700 patent were invalid.

The specification of the parent ’525 patent described controllers that have a single input member, such as a joystick or trackball, that inputs signals electronically to move images in six “degrees of freedom” - left/right, up/down, forward/backward, roll, pitch, and yaw. The ’700 patent - and Nintendo’s alleged infringing use - described controllers that have multiple input members. Thus, the question was whether the parent ’525 patent considered multiple input members.

The CAFC began by noting that the specification, claims and drawings of the parent ’525 patent explicitly referred to a “single input member” more than twenty times. The parent ’525 patent also discussed the advantages of controllers with single input members over those with multiple input members. The CAFC then contrasted the “single input member” language with claim 19 from the ’700 patent, which described three inputs, and found several instances where the parent ’525 patent specification was modified when the application for the ’700 patent was filed. Specifically, “single input member” was changed to “input member(s)” in several instances.

The CAFC recognized that “[f]or a parent application to provide the filing date for claims of a continuing application, the description in the parent must meet the requirements of 35 U.S.C. § 112, first paragraph, as to that claimed subject matter.’” The CAFC held that the substantive changes in the language between the parent ’525 patent and the ’700 patent were “new matter” not supported by the parent ’525 patent’s written description and thus not a valid continuation because the single input matter limitation of the parent ’525 patent was removed and the ’700 patent’s claims were much broader than envisioned by the parent ’525 patent.

The CAFC rejected Anascape’s argument that the single input member description was merely a preferred embodiment of the invention because to satisfy the written description requirement, a patentee cannot rely on undisclosed speculation as to what the inventor envisioned the invention to be. Therefore, the jury verdict was reversed and the CAFC entered judgment as a matter of law finding the ’700 patent invalid based on the 1998 Sony prior art.