Fed. Circuit Judge Offers Nintendo Deal to Keep Patent Win (2)

A Federal Circuit judge, wrestling with seemingly inconsistent district court rulings in a patent suit against Nintendo Co., offered the video gaming giant a path to keep its win during oral argument.

Asked by Chief Judge Kimberly Moore whether Nintendo could live with losing on the invalidity of patent claims asserted against the removable controllers of its Nintendo Switch console if it won on the question of infringement, the company’s attorney, Dan Bagatell of Perkins Coie, didn’t mince words.

“We prefer to keep the anticipation finding, but if that’s going to be an impediment to affirming, we’ll take the judgment of noninfringement and go home,” Bagatell said.

At the district court, Nintendo fended off allegations from Gamevice Inc., by arguing that certain claims in Gamevice’s patent were invalid because they postdated the release of the Nintendo Switch in the US, but, later in the case, that other, surviving claims that had an earlier priority date weren’t actually infringed. At Thursday’s argument, Gamevice’s attorney Erik Puknys said that created a logical inconsistency.

“This is a fundamentally intellectually displeasing case,” said Moore, agreeing with Puknys, a partner at Finnegan, Henderson, Farabow, Garrett & Dunner. “I don’t think you get to switch horses in the middle of the race,” she then told Bagatell.

Moore said Nintendo definitively pivoted when it shifted from validity to infringement, and benefited from the flip-flop. “It’s not fair for you to invalidate claims by virtue of saying your device has all of the elements and then avoid infringement of the same patent by saying our device does not have all the elements.”

But Moore also expressed frustration with how Gamevice presented its appeal—particularly its not having explicitly argued the issue of judicial estoppel—and pondered aloud whether the inconsistencies of the case might be wiped out if the US Court of Appeals for the Federal Circuit simply sided with Nintendo on the infringement finding, which Gamevice also is contesting.

“Let’s see what kind of compromise we can strike right now,” she told Bagatell. Moore suggested the panel could vacate the invalidity ruling below, which was based on the Switch anticipating many of Gamevice’s asserted patent claims, while affirming the lower court’s noninfringement finding.

“That would wipe away the fundamental unfairness I perceive and not cause me to do something that might create really wacky case law,” Moore said.

After Bagatell’s affirmative response, Moore quipped, “Excellent doing business with you, counsel.”

Puknys began his rebutal by addressing Moore: “Let me unwind that bargain you just struck with opposing counsel,” and returned to his argument for why the US District Court for the Northern District of California also erred in its infringement finding.

Though Moore was the most active questioner during the argument, Judge Raymond T. Chen chimed in at one point to note the unique fact pattern vexing his colleague.

“It feels like a one-timer,” Chen said.

The two judges were joined on the panel by District Judge Richard G. Andrews of the US District Court for the District of Delaware, who was sitting by designation.

The case is Gamevice Inc. v. Nintendo Co., Fed. Cir., 24-1467, oral argument 9/4/25.