Creative Kingdoms, LLC v. Itc , 588 F. App'x 993 ( 2014 )

NOTE: This disposition is nonprecedential.
United States Court of Appeals
for the Federal Circuit
______________________
CREATIVE KINGDOMS, LLC, AND
NEW KINGDOMS, LLC,
Appellants,
v.
INTERNATIONAL TRADE COMMISSION,
Appellee,
AND
NINTENDO CO., LTD., AND
NINTENDO OF AMERICA, INC.,
Intervenors.
______________________
2014-1072
______________________
Appeal from the United States International Trade
Commission in Investigation No. 337-TA-770.
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Decided: December 19, 2014
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JAMES R. BARNEY, Finnegan, Henderson, Farabow,
Garrett & Dunner, LLP, of Washington, DC, argued for
appellants. With him on the brief were ELIZABETH D.
FERRILL and LAURENCE M. SANDELL.
2 CREATIVE KINGDOMS, LLC v. ITC
SIDNEY A. ROSENZWEIG, Attorney Advisor, Office of
the General Counsel, United States International Trade
Commission, of Washington, DC, argued for appellee. On
the brief were DOMINIC L. BIANCHI, General Counsel,
WAYNE W. HERRINGTON, Assistant General Counsel and
JIA CHEN, Attorney Advisor.
STEPHEN R. SMITH, Cooley LLP, of Reston, Virginia,
for intervenors. With him on the brief were THOMAS J.
FRIEL, JR., of San Francisco, California, and STEPHEN C.
NEAL, TIMOTHY S. TETER and MATTHEW J. BRIGHAM, of
Palo Alto, California.
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Before NEWMAN, BRYSON, and O’MALLEY, Circuit Judges.
O’MALLEY, Circuit Judge.
Creative Kingdoms, LLC and New Kingdoms, LLC
(collectively, “Creative Kingdoms”) appeal the Interna-
tional Trade Commission’s (“Commission”) finding that
Nintendo Co., Ltd. and Nintendo of America, Inc. (collec-
tively, “Nintendo”) did not violate § 337 of the Tariff Act of
1930 by importing, selling for importation, or selling
certain video game systems and controllers. Specifically,
Creative Kingdoms challenges the Commission’s determi-
nation that claim 7 of U.S. Patent No. 7,500,917 (the “’917
Patent”) and claim 24 of U.S. Patent No. 7,896,742 (the
“’742 Patent”) (collectively, “the asserted claims”) are
invalid for lack of enablement and written description,
that the accused Nintendo products do not infringe the
asserted claims, and that Creative Kingdoms failed to
establish the existence of a domestic industry relating to
the patented articles. Because the Commission properly
determined that the asserted claims are invalid for lack of
enablement, we affirm.
CREATIVE KINGDOMS, LLC v. ITC 3
DISCUSSION
The ’917 and ’742 Patents generally describe motion-
sensing devices, which detect motion and generate wire-
less signals based on that motion to create a desired play
effect in an interactive environment. Specifically, claim 7
of the ’917 Patent is directed to a toy wand comprising a
pair of first motion sensors, which detect a motion, and a
second motion sensor, which detects a different motion
from the first. These sensors then generate signals based
on the detected motions, which are transmitted to a
receiver to control play effects. Similarly, claim 24 of the
’742 Patent is directed to a motion-sensitive device that
contains two arrangements of sensors, which detect
different motions and generate signals that activate or
control play effects based upon those motions. The two
asserted patents are related—the ’742 Patent is a contin-
uation-in-part of the ’917 Patent, and it is undisputed
that the relevant portions of the two specifications are the
same.
The Commission concluded that the asserted claims
are invalid for lack of enablement. It first determined
that a novel aspect of both claims was the combination of
sensors. Because the scope of the asserted claims encom-
passes both mechanical and electronic sensors, but the
specifications do not disclose how to use multiple electron-
ic sensors together to detect different motions, the Com-
mission concluded that the specifications failed to enable
the full scope of the asserted claims.
We agree with the Commission’s enablement conclu-
sion. “To be enabling, the specification must teach those
skilled in the art how to make and use the full scope of
the claimed invention without ‘undue experimentation.’”
ALZA Corp. v. Andrx Pharm., LLC, 603 F.3d 935, 940
(Fed. Cir. 2010) (citation omitted). It is well established
that a specification need not disclose what is well-known
4 CREATIVE KINGDOMS, LLC v. ITC
in the art, but “[i]t is the specification, [and] not the
knowledge of one skilled in the art, that must supply the
novel aspects of an invention in order to constitute ade-
quate enablement.” Auto. Techs. Int’l, Inc. v. BMW of N.
Am., Inc., 501 F.3d 1274, 1283 (Fed. Cir. 2007) (quoting
Genentech, Inc. v. Novo Nordisk A/S, 108 F.3d 1361, 1366
(Fed. Cir. 1997)).
Here, the novelty of the asserted claims includes the
use of sensors in combination, and the scope of the assert-
ed claims includes both mechanical and electronic sen-
sors. But the two specifications contain no guidance as to
how electronic sensors, such as accelerometers and gyro-
scopes, can be substituted or added to detect different
motions, as required by the asserted claims. Instead, the
specifications merely include a laundry list of the types of
electronic sensors that could be used. ’917 Patent col.
10:32–42; ’742 Patent col. 10:56–66. Without any further
guidance, the specifications fail to disclose how to make
and use the full scope of the asserted claims. Accordingly,
the asserted claims are invalid for lack of enablement.
Because the Commission correctly determined that
the asserted claims are invalid for lack of enablement, we
need not address Creative Kingdoms’ other arguments
regarding written description, infringement, and domestic
industry. See Solomon Techs., Inc. v. ITC, 524 F.3d 1310,
1320 (Fed. Cir. 2008) (“[W]e are not required to address
every possible ground on which the Commission’s order
might be sustained.”). Accordingly, we affirm the Com-
mission’s finding of no Section 337 violation.
AFFIRMED