Gamevice Considers SCOTUS Cert Petition Over Alleged Procedural Improprieties in Nintendo Switch Patent Case

On April 20, Simi Valley, CA-based gaming tablet developer Gamevice filed a response to Japanese game developer Nintendo’s motion to vacate portions of a Northern District of California judgment that had invalidated Gamevice patent claims to handheld computing accessories as anticipated by the Nintendo Switch. While Gamevice acknowledged that it welcomed the vacatur of any adverse invalidity ruling, its filing points out procedural improprieties stemming from the U.S. Court of Appeals for the Federal Circuit’s remand, which Gamevice indicated may be appealed to the U.S. Supreme Court.

CAFC Uses Extra-Jurisdictional Suggestion to Reconcile Clearly Conflicting Rulings

Nintendo’s request to vacate portions of the district court’s judgment, filed April 6, stems from a January ruling by the Federal Circuit affirming the California district court’s ruling at summary judgment that the Nintendo Switch does not infringe Gamevice’s patent claims. The Federal Circuit affirmed the noninfringement ruling on the sole independent ground that the Nintendo Switch secures buttons and joysticks via rubber actuators and pins, and not via “apertures” or holes that secure “instructional input device[s]” as claimed in Gamevice’s patents. Acknowledging that the noninfringement ruling conflicted with the district court’s invalidity finding, entered in a separate ruling on summary judgment finding that the Nintendo Switch anticipated the same Gamevice patent claims, the Federal Circuit affirmed with directions for Nintendo to request the district court vacate the anticipation findings.

In its response to Nintendo’s request, Gamevice charges that Nintendo identifies no legal basis for modifying the Northern California court’s prior judgment. Nintendo did not file a motion to amend the district court’s judgment within 28 days as required by Federal Rule of Civil Procedure (FRCP) 59, which Gamevice argues is the only mechanism for Nintendo to alter the court’s judgment. Further, the Federal Circuit had no authority to modify the judgment as to invalidity because that portion of the district court’s summary judgment ruling was not appealed. This extra-jurisdictional suggestion from the Federal Circuit “leaves this Court in uncharted waters,” Gamevice told the Northern California district court.

Inconsistencies in Nintendo’s positions during litigation were the focus of Gamevice’s petition for panel and en banc rehearing at the Federal Circuit filed in mid-February. Despite clearly conflicting noninfringement and invalidity findings entered at summary judgment, as well as Gamevice’s objection that such contradiction required vacatur before final judgment, the panel affirmed a clearly contradictory ruling, arguably creating a patent-specific exception to bedrock procedural rules of judicial estoppel.

Gamevice: Evans Cooling/Vanmoor Do Not Create Patent-Specific Exception to Judicial Estoppel

Nintendo defended its about-face in pursuing noninfringement after obtaining favorable rulings on anticipation by citing Federal Circuit rulings in Evans Cooling Systems v. General Motors Corp. (1997) and Vanmoor v. The Glidden Co. (2000), which together allow accused infringers to meet their clear and convincing evidentiary burden that their accused device would be anticipatory prior art based on a plaintiff’s infringement allegations. However, Gamevice argues that the holdings in these decisions are narrowly focused upon burden of proof standards and do not create any estoppel exceptions. In its Petition for Rehearing, Gamevice explained:

“If anything, the entire premise of Evans Cooling and Vanmoor depends on accepting ordinary estoppel principles. The reason accused infringers can rely on the plaintiff’s assertions to prove embodiment is that the plaintiff is bound by its own allegations.”

Independent of those issues, the Federal Circuit’s panel decision required rehearing because it relied upon a compromise that Chief Judge Kimberly Moore procured from Nintendo’s counsel during oral argument. That compromise, relegated to a footnote in the January panel decision, provided an end-around to the Federal Circuit’s appellate jurisdiction that fails to cure the inconsistent rulings at district court.

Nintendo: District Court Has Discretion to Vacate Regardless of Appeal

Gamevice argued that reliance on Nintendo’s promise during oral argument that a motion to amend would be filed on remand violated the Federal Circuit’s appellate jurisdiction codified at 28 U.S.C. § 1295(a)(1), which limits that jurisdiction to a district court’s final decision in a patent case. The proper course for the fatally inconsistent rulings was vacatur or reversal, Gamevice contends, and affirming based on a hypothetical future revision to the district court’s order provides no guarantee that the district court’s revised judgment will properly amend the inconsistencies.

Without Nintendo’s cross-appeal on invalidity, Gamevice points out that the Federal Circuit panel had no authority to sua sponte relieve Nintendo from the consequences of its litigation choices. Citing to the U.S. Supreme Court’s 1976 ruling in Massachusetts Mutual Life Insurance v. Ludwig, Gamevice argued in its rehearing petition that appellees declining to cross-appeal cannot attack judgments in ways that enlarge their rights or lessen adversaries’ rights, even to correct errors.

In Nintendo’s request to vacate portions of the Northern California district court’s judgment, the defendant noted that vacatur is within the court’s discretion without regard to whether validity was appealed. Nintendo also highlighted that all asserted claims of one Gamevice patent had been invalidated in separate proceedings at the Patent Trial and Appeal Board (PTAB), extinguishing Gamevice’s cause of action on that patent.

Image Source: Deposit Photos
Author: kondratya
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