## Facts

- Edward L. Gussin owned U.S. Patent No. 4,782,335 (the ’335 patent), directed to a “video art electronic system” that lets a user draw and color pictures on a television screen using a movable cursor, on/off drawing control, and selectable colors.
- Claims 1 and 2 described a “pixel memory” that receives and stores digital signals representing the color associated with the cursor position (i.e., color information for pixels).
- During prosecution, Gussin distinguished prior art by arguing that the claimed pixel-memory feature applies only when pixel memory stores actual color data, not when it stores “color pointers” (indices/addresses that refer to color values stored in a separate memory, such as a palette).
- Nintendo of America, Inc. developed the Super Nintendo Entertainment System (SNES) and the Mario Paint program, which allowed users to draw and color images on a television screen.
- Nintendo submitted declarations from technical witnesses stating that the SNES/Mario Paint video system stores color pointers in pixel memory, while the actual color data is stored elsewhere.
- In the Central District of California, Nintendo moved for summary judgment of noninfringement. Under local rules, Gussin was required to file a statement identifying genuine disputes of material fact with supporting record citations.
- Gussin filed a “Statement of Genuine Issues of Material Fact” that did not identify specific disputed facts supported by evidence, and instead posed vague questions.
- The district court granted summary judgment for Nintendo, concluding (1) Gussin’s filing was procedurally deficient under the local rules, (2) properly construed, the claims required pixel memory to store actual color data so there was no literal infringement, and (3) Gussin’s prosecution arguments barred a doctrine-of-equivalents theory by prosecution history estoppel.
- Gussin appealed.

## Issues

1. Whether the district court properly granted summary judgment because Gussin failed to submit a compliant local-rule statement identifying genuine disputes of material fact supported by record evidence.
2. Whether the “pixel memory” limitation in claims 1 and 2 requires pixel memory that stores actual color data (rather than color pointers), based on the intrinsic record and prosecution history.
3. Whether, under the correct construction, Nintendo’s SNES/Mario Paint system literally infringed claims 1 and 2.
4. Whether prosecution history estoppel barred Gussin from asserting infringement under the doctrine of equivalents for a pointer-based pixel-memory design.

## Decision

- The Federal Circuit affirmed summary judgment for Nintendo.
- The court agreed that Gussin’s “Statement of Genuine Issues of Material Fact” failed to comply with the applicable local rule because it did not identify specific, evidence-supported disputes of material fact.
- The court agreed with the district court’s construction of “pixel memory” as requiring storage of actual color data, not merely pointers to color data stored in another memory.
- Under that construction and the unrebutted technical evidence about how the SNES stores pixel information, Nintendo did not literally infringe claims 1 and 2.
- The court also agreed that prosecution history estoppel prevented Gussin from using the doctrine of equivalents to cover systems where pixel memory stores color pointers, because Gussin had clearly argued during prosecution that his claims excluded such systems.

## Legal Principles

- A district court may grant summary judgment when the nonmovant fails to comply with local rules requiring a specific, record-supported statement of genuine disputes of material fact; conclusory assertions or vague questions do not create a triable issue.
- Claim construction is informed by the intrinsic record, including the prosecution history, and an applicant’s clear arguments distinguishing prior art can narrow the meaning of a claim term.
- Literal infringement requires the accused product to meet every properly construed claim limitation; if the accused device lacks one limitation as construed, there is no literal infringement.
- Prosecution history estoppel bars a patentee from using the doctrine of equivalents to recapture subject matter that the patentee clearly gave up to obtain allowance of the claims.
- Summary judgment of noninfringement is appropriate where the claim scope is resolved as a matter of law and the material facts about the accused product’s operation are established without a genuine evidentiary dispute.

## Conclusion

The Federal Circuit affirmed summary judgment of noninfringement for Nintendo because Gussin did not present a compliant, evidence-based statement of disputed facts, the asserted claims’ “pixel memory” limitation was properly read to require storage of actual color data (which the SNES did not do), and Gussin’s prosecution statements surrendering pointer-based implementations barred any doctrine-of-equivalents theory.


Gussin v. Nintendo of America, Inc., 1995 WL 460566 (1995)