Nintendo of America plays no games when it gets sued for patent infringement. The company usually refuses to settle such lawsuits and tends to make life as difficult for those that dare to take them to trial.
Yet Mike Wilson recently convinced a Dallas federal jury to award his client $10.1 million against the video game maker for infringing on motion detection technology used in the company’s once-popular Wii gaming consoles.
Wilson and his law firm, Munck Wilson & Mandela, have represented the Dallas-based licensing company Ilife Technologies since the late 1990s in pursuing patents for motion detection technology that was originally intended to detect debilitating falls for the elderly.
Ilife moved on to other products but began licensing its motion detection patents in 2012. It sued Nintendo for infringing on those patents in 2013 filed in a Dallas U.S. district court.
But just getting the case to trial was a massive chore, Wilson explained.
Nintendo responded to the lawsuit by seeking to have Ilife’s patents invalidated through inter partes (IPR) review before the U.S. Patent and Trademark Office—a process that is famously unfriendly to patent plaintiffs. And while Nintendo invalidated many of Ilife’s motion detection patents through IPR review, one of them survived—enough to get the case to trial.
“We had to overcome quite a bit. It’s unusual to get patents that survive IPR challenges,” Wilson said.
The gaming company then tried to move the case from Dallas to Nintendo of America’s home base of Washington state by citing the U.S. Supreme Court’s May decision in TC Heartland v. Kraft.
And when that failed, the company was far from finished in attempting to derail the litigation, Wilson said.
“Nintendo used pretty much a scorched-earth process,” Wilson said. “They challenged validity at trial, they denied infringement, they challenged the marking requirements—pretty much any defense available to them they asserted.”
During a two-week long trial, Nintendo argued that Ilife’s patents only applied to its original purpose of detecting falls for the elderly. But Wilson argued that his client’s patents were much broader than that. And on Aug. 31, the jury agreed with Wilson that Nintendo had infringed on Ilife’s patent, rejecting the company’s invalidation claim, awarding Ilife $10.1 million in reasonable royalties.
“We’ve been litigating this case for three-and-half years while Nintendo has been fighting us the entire time,” Wilson said. “And the jury saw it a different way.”
Stephen Smith, a partner in Cooley’s Washington, D.C., office who represented Nintendo at trial, declined to comment. A Nintendo company representative did not immediately return a call for comment.