## Facts

- Fairchild Semiconductor Corporation (Fairchild) produced home video entertainment systems and was assigned rights in U.S. Patent No. 4,095,791 (the ’791 patent).
- The ’791 patent described a television-connected game apparatus with a console that received removable game cartridges through a cartridge chute.
- The patent’s described console included parameter-selection switches and a chute containing connector and locking mechanisms.
- As described in the patent, inserting a cartridge would automatically activate a locking mechanism, and a physical catch would hold the cartridge in place against pressure from a spring-loaded rotating connector.
- The connector mechanism provided the electrical interface between the cartridge and the console and was described as using a low-friction cartridge assembly that locked into place with a spring.
- Nintendo Co., Ltd. and related Nintendo entities released the Super Nintendo Entertainment System (SNES), a console that connected to a television and read game data from cartridges.
- The SNES used a cartridge retention/locking arrangement that was activated by the console’s power switch and was not physically part of the cartridge chute in the manner described for the patented device.
- The SNES used a high-friction edge-card connector and did not use a spring-loaded rotating connector with a spring/lock arrangement as described for the ’791 patent.
- The SNES also included parameter-selection switches located on both the console and the hand controllers.
- Fairchild sued Nintendo alleging the SNES infringed the ’791 patent based on the SNES’s cartridge-locking mechanism, connector design, and parameter-selection switch configuration.

## Issues

1. Do the asserted ’791 patent claims require (a) an automatically actuated cartridge lock on insertion, (b) a spring-loaded rotating connector/low-friction locking assembly, and (c) a console-based parameter-selection switch arrangement as described in the patent?
2. Under the proper claim construction, does the SNES literally infringe the asserted claims given its power-switch-actuated cartridge retention, high-friction edge-card connector, and distribution of switches between the console and controllers?
3. If the SNES does not literally meet the asserted claim requirements, can Fairchild establish infringement under the doctrine of equivalents without eliminating specific claimed features?

## Decision

- The court entered judgment for Nintendo on infringement, finding the SNES did not infringe the ’791 patent.
- The court determined that the SNES’s cartridge retention/locking arrangement—activated by the console’s power switch and not configured as the patent described—did not satisfy the patent’s described automatic, insertion-triggered locking mechanism and catch arrangement.
- The court found the SNES’s connector design (a high-friction edge-card connector without the spring-loaded rotating connector/locking configuration described in the patent) was materially different from the connector mechanism claimed or described in the ’791 patent.
- The court also concluded that differences in the placement/configuration of parameter-selection switches (including switches on hand controllers) did not meet the patent’s described arrangement tied to the console.
- To the extent Fairchild relied on the doctrine of equivalents, the court rejected equivalence based on the substantial structural and operational differences between the patented configuration and the SNES design.

## Legal Principles

- Patent infringement requires that the accused product meet every limitation of at least one asserted claim, either literally or under the doctrine of equivalents.
- Literal infringement is absent when the accused device lacks a required structural feature or operates in a materially different way than the claim requires.
- The doctrine of equivalents cannot be used to treat a specifically claimed structural arrangement as optional or to erase meaningful claim boundaries.
- Summary judgment of noninfringement is appropriate when, construing the evidence in the nonmovant’s favor, no reasonable factfinder could find that the accused product satisfies the claim limitations (literally or by equivalents).

## Conclusion

In *Fairchild Semiconductor Corp. v. Nintendo Co., Ltd.*, the district court held that Nintendo’s SNES did not infringe the ’791 patent because the SNES used a power-switch-actuated cartridge retention mechanism, a high-friction edge-card connector lacking the spring-loaded rotating connector/locking arrangement described for the patented system, and a different arrangement for parameter-selection switches, including switches on hand controllers; these differences defeated both literal infringement and any theory of equivalence.


Fairchild Semiconductor Corp. v. Nintendo Co., Ltd., 1994 WL 560607 (1994)