An Unexceptional Case: Nintendo V. Syncpoint

Jason Bourgeois     |     07/16/2018     |       Case Law

Fees and exceptional status denied

In the U.S. District Court for the Eastern District of Texas, Judge Payne denied Nintendo’s motion to declare a case filed by Syncpoint Imaging exceptional or to grant attorneys’ fees. The motion stems from a case filed on September 18th, 2015 against Nintendo and Pixart Imaging Inc. The case was stayed in January 2016 following Syncpoint’s declaration of bankruptcy. The end result of the bankruptcy proceedings and the stay was a dismissal with prejudice and Pixart taking control of the patent at issue (United States Patent No. 6,275,214). Nintendo and Pixart then filed a motion seeking attorneys’ fees up to $2.5 million.

The first claim of the ‘214 patent is reproduced below:

1. A method for remotely controlling a computer having an associated screen for displaying output from the computer and having an internal cursor generated by the computer, the method comprising:

detecting at least one property of an external cursor and position of the external cursor relative to the output from the computer;

generating a command to move the internal cursor to a position on the screen corresponding to the position of the external cursor; and

generating a command for the computer based on the at least one detected property of the external cursor.

The court noted that “[a]n exceptional case is—by definition—rare. It is one that stands out from others with respect to the substantive strength of a party’s litigating position (considering both the governing law and the facts of the case) or the unreasonable manner in which the case was litigated.” The Court found that the lawsuit was neither frivolous nor objectively unreasonable. This decision was based on the fact that the inventor and owner of Syncpoint “spent hundreds of hours investigating the Wii. He may not have initially considered the Wii to be an embodiment of his invention, given the claims’ emphasis on external and optical cursors, but his later change in course was grounded in facts and had at least a reasonable prospect of prevailing.” Claim construction doomed Syncpoint’s infringement case, but the Plaintiff’s belief was not an unreasonable one.

In closing, the court noted that “[t]his case bears very few of the marks of an exceptional case within the meaning of § 285.” The case “had a plausible infringement read against a carefully targeted defendant. PixArt considered Hansen’s patent seriously enough to take a license for four years.” The court saw no evidence of “exploiting the high costs to defend complex litigation to extract a nuisance settlement.”


Jason is a founding member of Ipvaluation Partners. Having experience in Patent Law Jason provides a unique insight into patent cases.