Claim Construction

“Partially Horizontally Aligned” Button Claim Limitation Deemed Indefinite in Claim Construction Order Involving Hand-Held Game Controllers

Junk Food Custom Arcades, LLC v. Hit Box LLC, Civil Action No. 2:21-cv-00262-RWS (N.D. Ga., Apr. 11, 2023)

Judge Richard Story recently entered claim construction for two patents directed at gaming controllers, siding with the Defendant’s position for four of the five disputed terms.

The dispute involves Hit Box’s U.S. Patent Nos. 10,022,623 (“the ’623 Patent”) and 11,369,867 (“the ’867 Patent”). The ’623 Patent, entitled “Ergonomically Correct Game Controller,” “discloses and claims an allegedly novel hand operated game controller which utilizes an all-push-button surface with an allegedly novel button arrangement.” Claim Construction Order, C.A. No. 2:21-cv-00262-RWS, Dkt. 97, at 2 (N.D. Ga. Apr. 11, 2023). The ’867 Patent is a continuation of the ’623 Patent. The patents generally claim “an innovative arrangement of push buttons as an alternative to traditional gaming controllers to provide the user with greater speed and accuracy in order to facilitate the most efficient play.” Order at 3.

Litigation began nearly a year and a half ago, when Plaintiff Junk Food Custom Arcades, LLC, (JFCA) filed its initial complaint asserting claims for declaratory judgments of invalidity and non-infringement of the ’623 Patent on December 6, 2021. Dkt. 1. Defendant Hit Box responded in kind with a counterclaim for infringement. Dkt. 8. Various procedurals steps, several failed motions to dismiss, and multiple amendments followed. In November 2022, the parties filed their Amended Joint Claim Construction Statement [Dkt. 77] and respective Claim Construction Briefs [Dkts. 80, 81]. A late-February 2023 hearing followed, during which both parties submitted supplemental briefs regarding one of the disputed terms. Dkts. 95, 96.

Judge Story’s balanced presentation of the application law aptly demonstrates the studied nuance required to issue effective claim construction orders. In it, he notes that while “claim construction analysis must begin and remain centered on the claim language itself,” Innova/Pure Water, Inc. v. Safari Water Filtration Sys., Inc., 381 F.3d 1111, 1116 (Fed. Cir. 2004), the claims of a patent are not intended to be read in isolation, Phillips v. AWH Corp., 415 F.3d 1303, 1315 (Fed. Cir. 2005) (en banc).” And, while he understands that “[t]he prosecution history … plays an important role in claim interpretation as intrinsic evidence of how the USPTO and the inventor understood the patent,” he nonetheless maintains that it “often lacks the clarity” needed for claim construction. Order at 9–10, citing Phillips, 415 F.3d at 1317. In addition, Judge Story seems to weigh the importance of intrinsic evidence over extrinsic evidence when assessing claim construction to determine the “legally operative meaning of claim language.” Id. at 11, citing Philips at 1317.

After this careful tee-up of the law, Judge Story then assessed the meaning for five disputed terms: (i) “button” and “push button;” (ii) “disposed” and “disposed on;” (iii) “middle boundary;” (iv) “partially horizontally aligned;” and (v) “of at least one of a portion.” In line with case law dictating that intrinsic evidence outweighs extrinsic, he construed four terms with their plain and ordinary meaning, just as the patent owner had requested.

As to the remaining term, “partially horizontally aligned,” Plaintiff JFCA posited the term is indefinite because it fails to inform how a person of ordinary skill in the art (POSITA) “would understand the top row of function buttons and the bottom row of function buttons to be partially horizontally aligned with each other, particularly because ‘[a] horizontal relationship normally is a side-by-side relationship,’ but the rows in question ‘seem to have a vertical (i.e., one of top of the other) relationship.’” Dkt. 80, internal quotations removed. In contrast, Defendant Hit Box argued for the plain and ordinary meaning, which it contended meant “partially aligned along the horizontal axis.” Dkt. 81.

Siding with the Plaintiff, Judge Story found the disputed term indefinite. The Court summarized, “nothing in the ‘867 Patent’s claims and specification inform, with reasonable certainty, those skilled in the art about the scope of the term ‘partially horizontally aligned.’” Order at 28. Judge Story found that the claims provided no guidance about the scope of the term nor did the specification provide any express definition. In addition, the Court found the Defendant’s proposed construction completely absent from the ’867 Patent. In fact, the Court noted the patent figure cited by Defendants in support included annotations not present in the specification. Lastly, the Court held the disputed term is not used consistently within the patent. For example, the Order cites two conflicting usages of the term “horizontal” within just a few lines of each other in the patent. In the first, horizontal means left to right, while in the other it means top to bottom. “Such inconsistency can support a finding of indefiniteness.” Id. at 27.

The term “partially horizontally aligned” appears in all independent claims of the ‘867 patent, resulting in the invalidity of all asserted claims of that patent. The finding of indefiniteness does not impact the claims of the ‘623 Patent. The case will now proceed before Judge Story on the remaining claims.

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