NOTE: This disposition is nonprecedential.

United States Court of Appeals 

for the Federal Circuit ______________________ 

NINTENDO OF AMERICA INC., NINTENDO CO., 

LTD.,

Appellants

v.

ILIFE TECHNOLOGIES, INC.,

Appellee

______________________ 

2016-2266

______________________ 

Appeal from the United States Patent and Trademark 

Office, Patent Trial and Appeal Board in No. IPR2015-

00109.

______________________ 

Decided: December 27, 2017

______________________ 

JOSEPH PRESTA, Nixon & Vanderhye P.C., Arlington, 

VA, argued for appellants. Also represented by ROBERT 

FARIS. 

MICHAEL CRAIG WILSON, Munck Wilson Mandala, 

LLP, Dallas, TX, argued for appellee. Also represented by 

DANIEL E. VENGLARIK, SAMUEL WALLACE DUNWOODY, IV. 

______________________ 
2 NINTENDO OF AMERICA INC. v. ILIFE TECHNOLOGIES, INC. 

Before LOURIE, TARANTO, and CHEN, Circuit Judges.

CHEN, Circuit Judge. 

iLife Technologies owns U.S Patent No. 6,864,796 (the 

’796 patent), which claims a system for sensing and 

evaluating a person’s movement. On a petition for inter 

partes review filed by Nintendo of America Inc. (Nintendo), the Patent Trial and Appeal Board (Board) instituted 

review of several claims of the ’796 patent in view of the 

Yasushi reference. During the proceeding, iLife argued 

that Yasushi was not prior art, presenting evidence to 

establish that its claimed invention predated Yasushi. 

Nintendo appeals from the Board’s final written decision

concluding that Yasushi was not prior art. Specifically, 

the Board found that (1) the challenged claims of the ’796 

patent were adequately supported by the written description of its grandparent application; and (2) the inventors 

of the ’796 patent produced a working prototype by August 1998 that fell within the scope of all of the challenged claims. Because substantial evidence supports the 

Board’s finding that the grandparent application provides 

sufficient disclosure of the subject matter of the challenged claims, we affirm as to that finding. However, 

only for some, but not all, of the challenged claims is there 

substantial evidence supporting the Board’s finding that 

the inventors’ 1998 working prototype reduced the claims 

to practice. We thus affirm-in-part and reverse-andremand-in-part for the Board to consider Yasushi as a 

prior art reference for those claims reciting elements that 

were not contained in the working prototype.

BACKGROUND

A. The ’796 Patent

The ’796 patent is directed to systems for evaluating 

movement of a body relative to an environment (e.g., falls 

or irregular movement) by sensing the acceleration of the 

body, processing that acceleration to yield an output 
NINTENDO OF AMERICA INC. v. ILIFE TECHNOLOGIES, INC. 3

signal, and transmitting the output signal to an external 

device or computer network. Claim 1 is exemplary:

1. A system within a communications device capable of evaluating movement of a body relative to 

an environment, said system comprising:

a sensor, associable with said body, that senses 

dynamic and static accelerative phenomena of

said body, and

a processor, associated with said sensor, that processes said sensed dynamic and static accelerative 

phenomena as a function of at least one accelerative event characteristic to thereby determine 

whether said evaluated body movement is within 

environmental tolerance[;]

wherein said processor generates tolerance indicia 

in response to said determination; and 

wherein said communication device transmits 

said tolerance indicia.

Dependent claims directed to specific communication 

device embodiments (e.g. cell phones, computers) and 

additional types of indicia (e.g. state indicia, dynamic 

indicia) are also at issue in this case.

B. Proceedings before the Board

Nintendo asserted that claims 1–3, 9–12, and 18–20 of

the ’796 patent (the challenged claims) were unpatentable 

over Japanese Patent Publication H10-295649 (Yasushi),

which was published November 10, 1998. The Board’s 

final written decision centered on whether Yasushi was in 

fact prior art to the challenged claims. See IPR2015-

00109, Paper 40 (P.T.A.B. Apr. 28, 2016). The application 

from which the ’796 patent issued is a continuation of 

application 09/727,974, which was filed on November 30, 

2000. The ’974 application is a continuation-in-part of 

application 09/396,991 (the original application), filed on 
4 NINTENDO OF AMERICA INC. v. ILIFE TECHNOLOGIES, INC. 

September 15, 1999. The Board assessed whether (1) the 

challenged claims were supported by the written description of the original application; and (2) whether iLife

could establish an actual reduction to practice prior to 

Yasushi’s November 1998 date.

The Board first held that the challenged claims are 

entitled to the priority date of the original application

because that application disclosed a system according to 

the challenged claims along with various examples of the 

claimed “communications device” usable in the invention. 

The Board recognized that the original application disclosed a “system 11” which included a “sensor 25,” a 

“processor,” and an “indicating means 41” “operable to . . . 

communicate such state, or tolerance indicia to a monitoring controller.” J.A. 19 (quoting original application 

specification, J.A. 1257, 1259–60). The Board further 

recognized that the original application disclosed that 

“indicating means 41 may take any number of forms” and 

that in the “present embodiment, stage 41 is an RF 

transmitter.” J.A. 19 (quoting original application specification, J.A. 1260). 

The Board disagreed with Nintendo’s contention that 

the original application’s only disclosed communications 

device was an RF transmitter. The Board found that the 

original application disclosed that the invention could use 

other communication devices (besides RF transmitters) by 

stating that “system 11 may be implemented using any 

suitably arranged computer or other processing micro, 

personal, mini . . . as well as network combinations of two 

or more of the same.” J.A. 20–21 (quoting original application specification, J.A. 1261). In addition, the Board 

recognized that when the communications device consists 

of the “advantageous embodiment [where] sensor 25 and 

processor 47 are not co-located, but rather associated 

wirelessly,” the wireless receivers “may be any suitable 

cellular devices, including conventional cellular telephones, PCS handset devices, portable computers, meter-
NINTENDO OF AMERICA INC. v. ILIFE TECHNOLOGIES, INC. 5

ing devices, transceivers, and the like.” J.A. 21 (quoting 

original application specification, J.A. 1271). Thus, the 

board found the range of communications devices described in the original application provided written description support for the recited “communications device” 

in the challenged claims. J.A. 21–22.

Next, the Board held that iLife had established an actual reduction to practice of the challenged claims prior to 

November 1998, the Yasushi prior art date. The Board 

relied on iLife’s submission of declarations from the 

inventors and two corroborating witnesses to determine 

that “the inventors constructed a working prototype of the 

fall detection device and tested it on human subjects in 

August 1998.” J.A. 24. The Board also found that the 

inventors prepared formal engineering drawings for 

further prototypes and tested those prototypes successfully in September 1998. J.A. 25–26. In making these 

findings, the Board additionally relied on contemporaneous notes and records provided by the inventors. J.A. 26. 

In order to determine that the challenged claims had been 

reduced to practice, the Board correlated the evidence 

provided by the inventors with each claim element to 

demonstrate that every element was present in the prototype produced by the inventors.1 J.A. 26–30 (citing inventor evidence throughout). Thus, the Board concluded that 

the challenged claims were reduced to practice as early as 

August 1998, and therefore that Yasushi was not prior art 

1 The Board did not explicitly discuss claims 2, 3, 11, 

or 12 in its analysis. The Board appears to find the 

limitations of these claims, which are directed to the case 

where the communications device is a telephone or a 

computer, implicitly present in the statement by the 

inventors that the system would “activate an automatic 

telephone dialing module to call for help.” J.A. 28 (quoting lead inventor declaration, J.A. 1968).

 
6 NINTENDO OF AMERICA INC. v. ILIFE TECHNOLOGIES, INC. 

to any challenged claim. The Board accordingly issued its 

final decision finding that the challenged claims had not 

been shown to be unpatentable.

STANDARD OF REVIEW

We review decisions of the Board under the standard 

of the Administrative Procedure Act (APA). Novartis AG 

v. Torrent Pharm. Ltd., 853 F.3d 1316, 1323 (Fed. Cir. 

2017). We hold unlawful and set aside the actions of the 

Board if they are “not in accordance with law” or “unsupported by substantial evidence.” 5 U.S.C. § 706.

We review the legal conclusions of the Board de novo 

and review any underlying factual determinations for 

substantial evidence. Nike, Inc. v. Adidas AG, 812 F.3d 

1326, 1332 (Fed. Cir. 2016). Substantial evidence is “such 

relevant evidence as a reasonable mind might accept as 

adequate to support a conclusion.” Consol. Edison Co. of 

New York v. N.L.R.B., 305 U.S. 197, 229 (1938).

DISCUSSION

A. Written Description

“[A] patent application is entitled to the benefit of the 

filing date of an earlier filed application only if the disclosure of the earlier application provides support for the 

claims of the later application, as required by 35 U.S.C. 

§ 112.” PowerOasis, Inc. v. T-Mobile USA, Inc., 522 F.3d 

1299, 1306 (Fed. Cir. 2008) (quoting In re Chu, 66 F.3d 

292, 297 (Fed.Cir.1995)). “To satisfy the written description requirement the disclosure of the prior application 

must ‘convey with reasonable clarity to those skilled in 

the art that, as of the filing date sought, [the inventor] 

was in possession of the invention.’” PowerOasis, 522 

F.3d at 1306 (quoting Vas–Cath Inc. v. Mahurkar, 935 

F.2d 1555, 1563–64 (Fed.Cir.1991)).

The Board’s finding that iLife possessed the claimed 

invention at the time of the original application is sup-
NINTENDO OF AMERICA INC. v. ILIFE TECHNOLOGIES, INC. 7

ported by substantial evidence. The Board recognized 

that the original application disclosed a system according 

to the invention including a sensor, a processor, and a

communications device—i.e., a transmitter. See J.A. 19–

20, 1257–60. In addition, the Board recognized that the 

original application disclosed the implementation of the 

invention using “any suitably arranged computer or other 

processing system including micro, personal, mini . . . as 

well as network combinations of two or more of the same.” 

See J.A. 20–21, 1261. Furthermore, in the context of a 

specific embodiment of the invention, the Board recognized that the original application explained that the 

invention could be used in conjunction with “conventional 

cellular telephones, PCS handset devices, portable computers, metering devices, transceivers, and the like.” See 

J.A. 21, 1271. A reasonable mind could understand this 

evidence to disclose to a skilled artisan a communications 

device according to the challenged claims.

Nintendo argues that under our opinion in PowerOasis, the Board was required to review the new disclosure 

added to the continuation-in-part application and determine whether that content corresponds to the particular 

claim limitations in dispute. This misreads our precedent. PowerOasis, along with our other written description precedent, explains that “[t]o satisfy the written 

description requirement the disclosure of the prior 

application must ‘convey with reasonable clarity to 

those skilled in the art that, as of the filing date sought, 

[the inventor] was in possession of the invention.’” 522 

F.3d at 1306 (emphasis added) (quoting Vas–Cath, 935 

F.2d at 1563–64). Thus, the key question is whether the 

descriptive matter is present in the original application, 

not whether it is also present in any added disclosure.

Nintendo also argues that the Board’s written description analysis depends on its incorrect construction of 
8 NINTENDO OF AMERICA INC. v. ILIFE TECHNOLOGIES, INC. 

“communications device” to include the original application’s disclosed device with an RF transmitter.2 But as 

Nintendo correctly recognizes, whether the RF transmitter is a “communications device” is not dispositive of the 

possession issue. Rather, the issue the Board had to 

resolve was the debate over whether the original application disclosed sufficient types of “communication devices” 

to provide support for the claimed “communication device.” Challenged claim 2 is directed to the system of 

claim 1 “wherein said communications device comprises 

one of: a cordless telephone, a cellular telephone and a 

personal digital assistant.” Challenged claim 3 is directed 

to the system of claim 1 “wherein said communications 

device comprises one of: a hand held computer, a laptop 

computer and a wireless Internet access device.” Because 

claims 2 and 3 depend from claim 1, the scope of “communications device” in exemplary claim 1 must necessarily 

include telephones and personal computers in addition to 

any more rudimentary communications devices. Thus, 

the Board could not—and did not—conclude that indicating means 41 and its RF transmitter, standing alone, 

demonstrate possession of the challenged claims. Rather, 

the disclosure of the indicating means, which “may take 

any number of forms,” J.A. 19, 1260, along with the 

disclosure of the use of the invention with computers and 

cellular telephones, is sufficient to persuade a reasonable 

mind that iLife possessed the full scope of communication 

2 While we need not reach the issue to resolve this appeal, we are inclined to think that the Board’s partial 

construction of “communications device” as including 

“devices with an RF transmitter and devices with twoway communication,” J.A. 15, is consistent with the 

broadest reasonable interpretation of the claims at issue. 

See Cuozzo Speed Techs., LLC v. Lee, 136 S. Ct. 2131, 

2146 (2016).

 
NINTENDO OF AMERICA INC. v. ILIFE TECHNOLOGIES, INC. 9

devices in exemplary claim 1, including telephones and 

personal computers.

B. Reduction to Practice

“To demonstrate an actual reduction to practice, the 

applicant must have: (1) constructed an embodiment or 

performed a process that met all the limitations of the 

claim and (2) determined that the invention would work 

for its intended purpose.” In re Steed, 802 F.3d 1311, 

1318 (Fed. Cir. 2015). That is, to reduce any particular 

claim to practice, the applicant must have constructed an 

operational embodiment within the scope of that claim. 

We review the Board’s reduction to practice analysis in 

light of that requirement. 

The Board’s finding that exemplary claim 1 and similar claim 10 were actually reduced to practice by August 

1998 is supported by substantial evidence. The Board 

analyzed each claim limitation in turn and reasonably 

relied on the testimony of the inventors, corroborating 

witnesses, and corroborating documentary evidence from 

iLife’s business files. With regard to the preamble’s 

disclosure of a “system . . . capable of evaluating movement of a body relative to an environment,” the Board 

credited inventor testimony and corroborating witness 

testimony that the constructed prototype was “capable of 

monitoring the movements of an elderly person and 

automatically detecting real falls as opposed to normal 

daily activity.” J.A. 26 (citing Lehrman Declaration ¶ 4, 

J.A. 1961; James Declaration ¶ 4, J.A. 2026). With regard 

to the limitation of a “sensor, associable with said body, 

that senses dynamic and static accelerative phenomena of 

the body,” the Board credited inventor testimony and 

corroborating documentary evidence that the prototype 

used a “dual-axis accelerometer” which “was configured to 

measure static and dynamic acceleration to evaluate 

changes in the wearer’s movement and orientation.” J.A. 

27 (citing Lehrman Declaration ¶ 19, J.A. 1965–66; “Fall 
10 NINTENDO OF AMERICA INC. v. ILIFE TECHNOLOGIES, INC. 

Down” Project Definition, J.A. 2066). As to the limitation 

of a “processor, associated with said sensor, that processes 

said sensed dynamic and static accelerative phenomena 

as a function of at least one accelerative event characteristic,” the Board credited inventor testimony and corroborating documentary evidence that the prototype used “a 

microprocessor with code configured to process the sensed 

static and dynamic acceleration to determine if the user 

had experienced a real fall as opposed to normal daily 

activities.” J.A. 27 (citing Lehrman Declaration ¶ 18, J.A. 

1966; PERS Fall Down Detection Method and System, 

J.A. 2069–71). As to the limitation of “wherein said 

processor generates tolerance indicia in response to said 

determination,” the Board credited inventor testimony

and corroborating documentary evidence that the prototype “generated and communicated information indicating 

whether the evaluated body was within tolerance to a 

base station for remote monitoring”3 and that the prototype used the generated information to “activate an 

automatic telephone dialing module to call for help.” J.A. 

28–29 (citing Lehrman Declaration ¶¶ 30, 23, J.A. 1970–

71, 1968; PERS Fall Down Detection Method and System, 

J.A. 2069–71). The Board also relied on the statements 

that the prototype “communicated information” and 

“activate[d] an automatic telephone dialing module” for 

the disclosure of the “communications device” limitation. 

J.A. 28–29 (citing Lehrman Declaration ¶¶ 30, 23, J.A. 

3 In addition to its relevance to claims 1 and 10, the 

statement “to a base station for monitoring” also shows 

that the prototype fell within claims 9 and 18, which 

depend from claims 1 and 10, respectively, and recite the 

additional limitations “wherein said communications 

device transmits said tolerance indicia to a monitoring 

controller” and “transmitting said tolerance indicia from 

said communications device to a monitoring controller,” 

respectively.

 
NINTENDO OF AMERICA INC. v. ILIFE TECHNOLOGIES, INC. 11

1970–71, 1968; PERS Fall Down Detection Method and 

System, J.A. 2069–71). Substantial evidence supports the 

Board’s finding that the record evidence discloses a 

“communication device” according to the claims 1 and 10.

Finally, the Board concluded that the prototype would 

work for its intended purpose based on inventor testimony

and corroborating witness testimony that “[t]he prototypes all performed as expected and were suitable for 

their intended purpose of movement evaluation and fall 

detection when tested in August and September of 1998.” 

J.A. 26–30 (quoting Lehrman Declaration ¶ 30, J.A. 1970–

71; citing James Declaration ¶ 28, J.A. 2038–39). 

Throughout its analysis, the Board relied on not only the 

Lehrman declaration, but also on the other inventor 

declarations, the declarations of corroborating witnesses, 

and the corroborating contemporaneous evidence submitted by iLife. This evidence, taken together, is sufficient 

for a reasonable mind to conclude that the prototype 

created by the inventors by August 1998 was within the 

scope of claims 1 and 10 and would work for its intended 

purpose.

The Board’s finding that dependent claims 2 and 11 

were actually reduced to practice by August 1998 is also 

supported by substantial evidence. The Board does not 

explicitly explain how these claims were reduced to practice, but implicitly does so by explaining when the prototype “generated and communicated information indicating 

whether the evaluated body was within tolerance to a 

base station for remote monitoring” and used the generated information to “activate an automatic telephone dialing 

module to call for help,” it satisfied the “communications 

device” limitation of claim 1. J.A. 28 (quoting Lehrman 

Declaration ¶¶ 30, 23, J.A. 1970–71, 1968). Under the 

deferential standard of review we apply to Board findings,

the evidence of the use of a telephone module was sufficient for a reasonable mind to conclude that the inventors 

reduced these claims to practice. 
12 NINTENDO OF AMERICA INC. v. ILIFE TECHNOLOGIES, INC. 

The Board’s finding that dependent claims 3 and 12 

were actually reduced to practice by August 1998 is, 

however, not supported by substantial evidence. Like 

claims 2 and 11, the Board implicitly states that the 

prototype fell within these claims by its discussion of 

claim 1. Unlike claims 2 and 11, there is no evidence 

cited by the Board or discussed in the inventor declarations showing that any prototype contained “a hand held 

computer, a laptop computer, [or] a wireless Internet 

access device.” Thus, there is no evidence sufficient to 

support the Board’s conclusion as to these claims. 

The Board’s finding that dependent claims 19 and 20 

were actually reduced to practice by August 1998 is also 

not supported by substantial evidence. Claim 19 is directed to the additional concept of generating and transmitting “state indicia,” i.e., indicia of the current position 

and/or orientation of the sensor, while claim 20 is directed 

to generating and transmitting “an output signal that is 

indicative of measurements of both static and dynamic 

acceleration of said body in plural axes,” i.e., dynamic 

indicia. In holding that these claims were reduced to 

practice, the Board relied on inventor testimony that the 

prototype measured “both static and dynamic acceleration” and “communicated information indicating whether 

the evaluated body was within tolerance to a base station.” J.A. 29 (quoting Lehrman declaration ¶ 30, J.A. 

1970–71). However, the statement that the prototype 

“communicated information indicating whether the evaluated body was within tolerance” is limited to the transmission of tolerance information, i.e., tolerance indicia. 

These portions of testimony do not disclose the transmission of state indicia or dynamic indicia as required by 

claims 19 and 20. The prototype has not been shown to 

meet all the limitations of these claims, Steed, 802 F.3d at 

1318, and the record thus lacks evidence sufficient to 

support the Board’s conclusion.
NINTENDO OF AMERICA INC. v. ILIFE TECHNOLOGIES, INC. 13

CONCLUSION

For the foregoing reasons, we affirm the Board’s holding that all of the challenged claims were supported by 

the written description of the original application. We 

affirm the Board’s holding that challenged claims 1, 2, 9–

11, and 18 were reduced to practice prior to November 

1998. We reverse the Board’s holding that challenged 

claims 3, 12, 19, and 20 were reduced to practice prior to 

November 1998.4 Because Yasushi is prior art as to those 

claims, we remand for further proceedings consistent with 

this opinion.5

AFFIRMED-IN-PART, REVERSED-ANDREMANDED-IN-PART

COSTS

No costs.

4 iLife argues that Nintendo has waived any position 

that Yasushi is prior art under pre-AIA § 102(a) by characterizing it as prior art under pre-AIA § 102(b). We 

disagree. In Nintendo’s Reply to Patent Owner’s Response, it stated that an earlier priority date would 

“mak[e] Yasushi a 102(a) instead of a 102(b) reference.” 

J.A. 2124. Thus, Nintendo’s position at that time was 

that even if the challenged claims were entitled to the 

priority date of the original application, Yasushi would 

nevertheless be prior art under § 102(b).

5 Because the claims of related U.S. Patent No. 

7,095,331 that the Board found to be unpatentable in IPR 

No. IPR2015-00112 do not contain the “communications 

device” limitation central to this case, we decline Nintendo’s invitation to hold claims 3, 12, 19, and 20 unpatentable based on collateral estoppel and remand for the Board 

to determine whether those claims are unpatentable over 

Yasushi.