## Facts

- General Electric Co. (GE) owned three patents directed to television/video control circuitry: U.S. Patent Nos. 4,097,899 (’899), 4,169,659 (’659), and 4,279,125 (’125).
- GE sued Nintendo Co., Ltd. and Nintendo of America, Inc. alleging that the Nintendo Entertainment System (NES), Super Nintendo Entertainment System (SNES), and Game Boy infringed the three patents.
- The ’899 patent claimed, in means-plus-function form, a switching arrangement for selecting between antenna broadcast signals and auxiliary video-source signals, using a series-type switching structure that disrupts the antenna signal path.
- The ’659 patent claimed a signal generator architecture that included specialized vertical counters for generating display timing/drive signals.
- The ’125 patent claimed a computer image display technique using a direct-memory-access (DMA) circuit and bit-mapped display output; during prosecution, GE distinguished bit mapping from character-generator approaches.
- Nintendo’s accused systems allowed selection between broadcast and game signals but used a bypass/shunt approach that diverted the antenna signal to ground through an alternative low-resistance path rather than a series switch in the antenna path.
- Nintendo’s display circuitry generated timing/drive signals without the specialized vertical counters required by the ’659 claims.
- Nintendo’s systems used a different data-transfer/display arrangement and relied on character generation rather than the claimed DMA-based bit-mapped approach.
- The district court granted summary judgment for Nintendo on noninfringement of all three patents (literal and equivalents) and held the ’899 patent invalid as anticipated by a published Japanese patent application.
- GE appealed.

## Issues

1. Whether Nintendo’s NES, SNES, and Game Boy infringed the ’899, ’659, or ’125 patents, literally or under the doctrine of equivalents.
2. Whether the ’899 patent was invalid as anticipated by a single Japanese patent application.

## Decision

- The Federal Circuit affirmed summary judgment of noninfringement of the ’899, ’659, and ’125 patents (literal infringement and doctrine of equivalents).
- For the ’899 patent, Nintendo’s bypass/shunt structure did not meet the claimed series-switching means limitation, and treating it as equivalent would eliminate that limitation.
- For the ’659 patent, Nintendo lacked the claimed specialized vertical counters, defeating literal infringement and equivalence on the summary-judgment record.
- For the ’125 patent, claim scope and prosecution history limited the invention to a DMA-based bit-mapped approach; Nintendo’s character-generation system and different hardware arrangement did not satisfy the limitations literally or equivalently.
- The Federal Circuit reversed the district court’s anticipation invalidity ruling for the ’899 patent as legally incorrect because the Japanese reference did not disclose all claim limitations as properly construed.

## Legal Principles

- Literal infringement requires that the accused device contain every limitation of an asserted claim as properly construed; the absence of one limitation defeats infringement.
- Under 35 U.S.C. § 112 ¶ 6 (means-plus-function), the accused structure must include the same or equivalent structure to that disclosed for the claimed function; materially different switching architectures can avoid infringement.
- The doctrine of equivalents requires substantially the same function in substantially the same way to achieve substantially the same result and cannot be used to vitiate an express claim limitation.
- Anticipation requires a single prior-art reference to disclose each and every claim limitation, expressly or inherently; errors in claim construction or element-by-element comparison invalidate an anticipation judgment.

## Conclusion

The Federal Circuit held that Nintendo’s systems did not infringe GE’s three patents because key claim limitations were missing and could not be supplied through equivalence without negating the claims, but it reinstated the validity of the ’899 patent by rejecting the district court’s anticipation finding.


Gen. Elec. Co. v. Nintendo Co., 179 F.3d 1350 (Fed. Cir. 1999)