Koninklijke Philips Electronics NV v Nintendo of Europe GmbH

For a computer-implemented patent, functional apparatus language does not ordinarily extend to an unprogrammed general-purpose computer. A claimed virtual environment required a three-dimensional interactive model, but no particular graphics quality or level of immersion was required. A motion detector may monitor movement through switches; continuous measurement is unnecessary. A stored sequence of body motions means an ordered, normally repetitive sequence, and a claimed adaptive mechanism must translate variable input into steady motion in real time. Added matter is assessed by asking what is clearly and unambiguously disclosed by the application, expressly or necessarily implicitly; obviousness is not the test. A double-patenting objection to post-grant amendment is limited to independent claims for the same subject matter and scope, subject to any legitimate interest in both claims.

Philips alleged that Nintendo’s Wii and Wii U systems infringed three patents concerning virtual-body modelling and pointing-device user interfaces. Nintendo counterclaimed for revocation and opposed Philips’s conditional amendments on added matter, clarity and double patenting grounds.

The court considered claim construction, validity over cited prior art, inventive step and infringement under the Patents Act 1977. The 484 patent concerned a virtual body controlled by user movement. The 498 and 650 patents concerned a hand-held pointing device using a camera, room-localisation beacons and motion sensing or trajectory analysis.

1. Construction of the 484 patent. A virtual environment was a real-time interactive three-dimensional model. The claims imposed no particular graphics resolution or immersive quality. First and second data stores had to be logically distinct, but not physically separate. Motion monitoring did not require a range of values or continuous measurement: switches could suffice. A sequence of body motions meant an ordered sequence such as walking or waving, and the adaptive-mechanism language concerned repetitive motion. “Predetermined signals” did not necessarily mean only a limited subset of available signals.
2. Computer apparatus. Although means-plus-function language may generally be read as meaning means suitable for performing the function, a bare general-purpose computer capable of being programmed for the function was not thereby apparatus suitable for it. The relevant configuration and software mattered.
3. Added matter. The test under section 76(2) was whether the amended subject matter was clearly and unambiguously derivable from the application as filed, read as a whole through the eyes of the skilled person and with common general knowledge. Obviousness could not supply missing disclosure. The proposed adaptive-mechanism and body-part amendments to the 484 patent were allowable. The granted “at least one” beacon wording in the 498 and 650 patents introduced matter, because the claims disclosed a single-beacon system although the application did not. Amendments referring to plural beacons cured the objection.
4. Double patenting. Applying section 75(5), the court held that the relevant EPO principles did not make overlapping claims objectionable merely because they overlapped. The claims had to be independent claims for the same subject matter and the same scope, assessed substantively. A legitimate interest could also justify maintaining both claims. The 498 and amended 650 claims had materially different scope, and Philips in any event had a legitimate interest in the earlier patent because of the effect on damages.
5. Validity and infringement. The 484 patent was invalid for lack of inventive step over an upgraded version of WCTM, although SEGA Heavyweight Champ and Alpine Racer did not invalidate it. The 498 and 650 patents were invalid as granted but valid in the permitted amended forms. The Wii systems running the relevant games fell within the surviving claims and the hardware packages and, for 498 and 650, the Wii remote alone, were means relating to an essential element under section 60(2). The patents were infringed.