       NOTE: This disposition is nonprecedential.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. (Ninten-
do), 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 descrip-
tion of its grandparent application; and (2) the inventors
of the ’796 patent produced a working prototype by Au-
gust 1998 that fell within the scope of all of the chal-
lenged claims. Because substantial evidence supports the
Board’s finding that the grandparent application provides
sufficient disclosure of the subject matter of the chal-
lenged 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-and-
remand-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 ca-
   pable 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 pro-
   cesses said sensed dynamic and static accelerative
   phenomena as a function of at least one accelera-
   tive 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 descrip-
tion 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 dis-
closed 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 monitor-
ing 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 specifi-
cation, 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 appli-
cation 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 tele-
phones, 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 de-
scribed in the original application provided written de-
scription support for the recited “communications device”
in the challenged claims. J.A. 21–22.
     Next, the Board held that iLife had established an ac-
tual 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 successful-
ly in September 1998. J.A. 25–26. In making these
findings, the Board additionally relied on contemporane-
ous 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 proto-
type produced by the inventors. 1 J.A. 26–30 (citing inven-
tor 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 (quot-
ing 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 “unsup-
ported 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 disclo-
sure 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 descrip-
tion 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 recog-
nized that the original application explained that the
invention could be used in conjunction with “conventional
cellular telephones, PCS handset devices, portable com-
puters, 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 PowerOa-
sis, the Board was required to review the new disclosure
added to the continuation-in-part application and deter-
mine whether that content corresponds to the particular
claim limitations in dispute. This misreads our prece-
dent. PowerOasis, along with our other written descrip-
tion 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 de-
scription analysis depends on its incorrect construction of
8       NINTENDO OF AMERICA INC.   v. ILIFE TECHNOLOGIES, INC.



“communications device” to include the original applica-
tion’s disclosed device with an RF transmitter. 2 But as
Nintendo correctly recognizes, whether the RF transmit-
ter 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 applica-
tion disclosed sufficient types of “communication devices”
to provide support for the claimed “communication de-
vice.” 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 “commu-
nications 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 indicat-
ing 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



    2While we need not reach the issue to resolve this ap-
peal, we are inclined to think that the Board’s partial
construction of “communications device” as including
“devices with an RF transmitter and devices with two-
way 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 simi-
lar 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 move-
ment 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 character-
istic,” the Board credited inventor testimony and corrobo-
rating 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 proto-
type “generated and communicated information indicating
whether the evaluated body was within tolerance to a
base station for remote monitoring” 3 and that the proto-
type 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.


     3In 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 proto-
types 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 submit-
ted 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 prac-
tice, but implicitly does so by explaining when the proto-
type “generated and communicated information indicating
whether the evaluated body was within tolerance to a
base station for remote monitoring” and used the generat-
ed 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 suffi-
cient 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 declara-
tions 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 di-
rected to the additional concept of generating and trans-
mitting “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 accelera-
tion” and “communicated information indicating whether
the evaluated body was within tolerance to a base sta-
tion.” J.A. 29 (quoting Lehrman declaration ¶ 30, J.A.
1970–71). However, the statement that the prototype
“communicated information indicating whether the eval-
uated body was within tolerance” is limited to the trans-
mission of tolerance information, i.e., tolerance indicia.
These portions of testimony do not disclose the transmis-
sion 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 hold-
ing 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-AND-
             REMANDED-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 char-
acterizing it as prior art under pre-AIA § 102(b). We
disagree. In Nintendo’s Reply to Patent Owner’s Re-
sponse, 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 Ninten-
do’s invitation to hold claims 3, 12, 19, and 20 unpatenta-
ble based on collateral estoppel and remand for the Board
to determine whether those claims are unpatentable over
Yasushi.
