## Facts

- Sanders Associates owned U.S. Patent Re. 28,507, directed to interactive television game apparatus that generates and manipulates on-screen symbols, including ball-and-paddle type play where a “hit” changes a moving symbol’s motion.
- Magnavox held an exclusive license and sold home video-game systems implementing the patented concepts.
- Activision manufactured and sold multiple sports-themed game cartridges designed for use with compatible consoles, enabling ball-and-paddle style games.
- Magnavox and Sanders sued Activision for infringement, alleging the claimed apparatus was practiced when Activision’s cartridges were used with a cooperating console.
- Activision argued the patent was obvious over prior art, that the claims were limited to Magnavox’s analog implementation rather than later digital/microprocessor systems, that cartridges were not a material part of the patented apparatus, and that users’ cartridge swapping was permissible repair rather than reconstruction.
- The district court held the asserted claims valid and infringed, and found Activision liable for direct, contributory, and induced infringement; it found no willful infringement and denied enhanced damages, attorney’s fees, and injunctive relief.
- Activision appealed the validity and infringement rulings; Magnavox cross-appealed the denial of willfulness findings and enhanced remedies.

## Issues

1. Whether Activision proved the asserted claims were invalid for obviousness in view of the prior art.
2. Whether the asserted apparatus claims covered the functional console-plus-cartridge combination (including digital implementations), and whether Activision was liable for direct, contributory, and induced infringement.
3. Whether inserting interchangeable cartridges into an authorized console was permissible repair/adaptation or impermissible reconstruction of the patented combination.
4. Whether the denial of willfulness, enhanced damages, attorney’s fees, and injunctive relief was erroneous.

## Decision

- The Federal Circuit affirmed the judgment in all respects.
- Activision did not establish obviousness; the district court’s findings on claim limitations and prior art teachings were not clearly erroneous, and conclusory expert testimony was insufficient.
- Substantial evidence supported infringement based on the combined operation of cartridge and console meeting the claims’ functional limitations; Activision’s manufacture and sale of cartridges supported contributory and induced infringement.
- The repair/reconstruction defense did not defeat infringement where the cartridge supplied the component that completed the patented combination in use.
- The district court’s findings of no willfulness and its refusal to award enhanced damages, attorney’s fees, or an injunction were upheld.

## Legal Principles

- Obviousness must be proven with persuasive evidence tied to claim limitations; conclusory expert assertions carry little weight.
- Functional “means-for” claim limitations may be satisfied by later-developed digital or microprocessor implementations when the claimed functions are performed by the accused system.
- A party may be liable for contributory infringement by supplying a component especially made or adapted for use in a patented combination, particularly where it has no substantial noninfringing use, and for induced infringement by encouraging users’ infringing combination and use.
- The repair doctrine does not immunize supplying a component that, when combined with an authorized item, forms and practices the patented combination in a manner treated as infringing use.

## Conclusion

The Federal Circuit left intact a judgment that a pioneering television video-game apparatus patent was valid and infringed by the use of unlicensed game cartridges with compatible consoles, while also affirming the denial of willfulness findings and enhanced remedies.


Magnavox Co. v. Activision, Inc., 848 F.2d 1244 (Fed. Cir. 1988)