Kaye Scholer Secures Non-Infringement Judgment for Nintendo in Patent Battle with Tomita Technologies

May 11, 2016

Kaye Scholer has achieved a major victory for Nintendo of America Inc. and its parent company, Nintendo Co., Ltd. in its five-year patent battle with Tomita Technologies International Inc. and Tomita Technologies USA, Inc. On Sunday, April 24, 2016, Judge Jed Rakoff of the Southern District of New York ruled that the Nintendo 3DS handheld gaming device does not infringe Tomita Technologies' '664 patent involving 3D display technology, vindicating Nintendo's position from the very outset of the case that was filed in 2011.

In 2011, Tomita Technologies sued Nintendo alleging infringement of the '664 patent by the Nintendo 3DS. After a three-week trial in February and March of 2013, a jury awarded Tomita $30.2 million in damages. Post-trial, Judge Rakoff reduced the damages award, halving it to $16.1 million, and set an ongoing royalty rate of for each 3DS unit sold in the future. Kaye Scholer subsequently filed an appeal to the Federal Circuit for Nintendo. In December 2014, the Federal Circuit reversed Judge Rakoff's construction of a key means-plus-function claim term in Nintendo's favor and remanded the case.

In August 2015, Judge Rakoff held a second trial, this time a week-long bench trial, on the issue of infringement of the '664 patent. On Sunday, April 24, 2016, Judge Rakoff issued extensive Findings of Fact and Conclusions of Law in which he ruled that the Nintendo 3DS does not infringe the '664 patent, eliminating all damages claimed by Tomita. Judge Rakoff's non-infringement ruling for the Nintendo 3DS also should resolve in Nintendo's favor a second, follow-on case filed by Tomita in December 2014, also before Judge Rakoff, in which Tomita claims that Nintendo's next generation handheld gaming product, the Nintendo 3DS XL, infringes the '664 patent.

Kaye Scholer partners James Blank and Scott Lindvall and counsel Paul Margulies represented Nintendo throughout all stages of the litigation. The team also included counsels Sam Deka and Bert Slonim and associate James Lyons.


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