Tomita won the original judgment against Nintendo in 2013, after a jury concluded that the hand-held video game system Nintendo 3DS infringed Tomita’s patent for a system of viewing three-dimensional images without wearing 3D glasses.
The trial court initially cut that award in half but later issued another judgment of noninfringement.
That determination was affirmed on appeal, prompting Tomita to petition the Supreme Court for certiorari.
“The Federal Circuit’s ruling has far-reaching implications because equivalence remains an important theory of infringement,” Ian DiBernardo with Stroock, Stroock and Lavan said in a statement. “The way the appeals court applied the known interchangeability factor to means-plus-function limitations would essentially preclude a hardware patent from covering a software implementation of the same invention.”
Stroock attorney Kenneth Stein signed Tomita’s petition, which relies on precedent from another Supreme Court case, Warner-Jenkinson Co. v. Hilton Davis Chemical Co.
In that 1997 holding, the nation’s highest court endorsed the so-called doctrine of equivalents — this legal theory holds that a system can infringe on a patent if it is equivalent to the patented idea, even if it is not identical.
The Supreme Court held there that evidence of “known interchangeability” is an “important factor” when evaluating whether two patents fall under the doctrine of equivalents.
Tomita says Nintendo won its noninfringement ruling, meanwhile, because the trial court found “no support in the law” for it to examine evidence that the two technologies are interchangeable.
Stein says this contention “inexplicably” ignores Warner-Jenkinson and is “flat-out wrong.”
“Based on this court’s precedent, there can be no doubt that evidence of known interchangeability in the record must be examined when determining equivalence,” the 35-page petition states. “The Federal Circuit cannot cast it aside. Nor is it proper for the Federal Circuit to question the important of such evidence, as it has done here.”