Case No. 11-cv-02415, Filed July 22, 2011
Hidden Image Technology Solutions, a Georgia company, has sued Thomas Barnhart asserting that he falsely promotes himself as the sole inventor of several patents, and has profited from this false promotion. The lawsuit seeks to remove Barnhart as an inventor of those patents, and to instate his co-inventor, Joel Brooks, as the sole inventor of the patents. The patents in question are:
5,984,367: “Hidden image game piece.” Granted 11/16/1999.
7,747,472: “Hidden image game piece.” Granted 6/29/2010.
6,629,888: “Hidden image game piece.” Granted 10/7/2003.These are physical game patents, consisting of printed pieces, that when held against pre-programmed colors on a television or computer screen, reveal hidden messages. The first use of this patent by Brooks, in the early 1990s, was for a hidden printed message distributed in newspapers, called the “Red Reveal Game Piece.” When held against a red part of the screen set to appear during a Dallas Cowboys football game, the game piece would reveal a hidden message or advertisement. The idea garnered interest from television outlets like MSNBC, and Brooks also worked to adjust the invention to the growing opportunity of the internet. Brooks developed a WebDecoder® based on the patents above, and shared his idea for marketing it with Barnhart. According to Hidden Image’s complaint, Barnhart cajoled himself into the position of co-inventor of these patents by convincing Brooks that this was necessary for Brooks’ own “protection.” In reality, according to Hidden Image, Barnhart was not an inventor of the patents, and Brooks was the true sole inventor.
The complaint alleges that Barnhart not only forced his way into the co-inventor position on three of the patents, but without Brooks’ knowing, he had himself listed as the sole inventor of the ‘888 patent. Barnhart also attempted to license these patents giving Brooks only 10% of the royalties. Brooks in 2003 licensed his rights, title and interest in these patents to a subsidiary of Hidden Images. Hidden Images now seeks to have Barnhart’s name stricken from the records of the USPTO, and to instate Brooks as the sole inventor of all four patents. Hidden Images also seeks an injunction barring Barnhart from using the patents, and to recover damages, profits, and attorney’s fees.
Because this is a physical game patent, we won’t follow this one further. You can learn more about the case filings at PriorSmart.
Ross A. Dannenberg publishes new book: “The American Bar Association’s Legal Guide to Video Game Production”
- Patents, Copyright and Trademarks
- Business and Finance Issues
- Risk and Insurance
- Intellectual Property Agreements
- The Children’s Online Privacy Protection Act
- Publishing Your Game
- Licensing and Open Source Material
Mr. Dannenberg is an adjunct professor of copyright law at George Mason University School of Law. Mr. Dannenberg is also the Editor-in-Chief of the Patent Arcade website, a legal blog discussing intellectual property protection of video games.
While not a video game case per se, this will likely affect patents claiming video games because the Federal Circuit (a US appeals court for patent matters, among other things) strikes down a computer readable medium claim (aka, Beauregard claim) as non-eligible subject matter for a patent. They don’t strike down ALL Beauregard claims, but they do draw a line in the sand where you simply put a computer-readable medium preamble on an otherwise non-technological method. Relevant text appears below. Claim 3 was a method claim that the court first addressed and found unpatentable under section 101. Claim 2 was the beauregard claim:
Regardless of what statutory category (“process, machine, manufacture, or composition of matter,” 35 U.S.C. § 101) a claim’s language is crafted to literally invoke, we look to the underlying invention for patent-eligibility purposes. Here, it is clear that the invention underlying both claims 2 and 3 is a method for detecting credit card fraud, not a manufacture for storing computer-readable information. This case is thus similar to In re Abele, 684 F.2d 902 (CCPA 1982). In Abele, claim 5 of the patent at issue recited “[a] method of displaying data” comprising the steps of “calculating the difference” between two numbers and “displaying the value.” Id. at 908. The court concluded that claim 5 was not directed to patent eligible subject matter because it claimed an abstract idea. Id. However, claim 7 was argued to be different because it recited an “[a]pparatus for displaying data” comprising “means for calculating the differences” between two numbers and “means for displaying the value.” Id. at 909 (emphases added). Though claim 7 literally invoked an “[a]pparatus,” the court treated it as a method claim for the purpose of its § 101 analysis. Due to its “broad” and “functionally-defined” nature, the court found that treating claim 7 as an apparatus claim would “exalt form over substance since the claim is really to the method or series of functions itself.” Id. (citation omitted). Accordingly, the court placed “the burden . . . on the applicant to demonstrate that the claims [were] truly drawn to [a] specific apparatus distinct from other apparatus[es] capable of performing the identical functions.” Id. (citation omitted).In the present case, CyberSource has not met its burden to demonstrate that claim 2 is “truly drawn to a specific” computer readable medium, rather than to the underlying method of credit card fraud detection. To be sure, after Abele, we have held that, as a general matter, programming a general purpose computer to perform an algorithm “creates a new machine, because a general purpose computer in effect becomes a special purpose computer once it is programmed to perform particular functions pursuant to instructions from program software.” In re Alappat, 33 F.3d 1526, 1545 (Fed. Cir. 1994). But we have never suggested that simply reciting the use of a computer to execute an algorithm that can be performed entirely in the human mind falls within the Alappat rule. Thus, despite its Beauregard claim format, under Abele, we treat claim 2 as a process claim for patent-eligibility purposes.
- The mere manipulation or reorganization of data, however, does not satisfy the transformation prong.
- As we stated in Bilski, to impart patent eligibility to an otherwise unpatentable process under the theory that the process is linked to a machine, the use of the machine “must impose meaningful limits on the claim’s scope.” In other words, the machine “must play a significant part in permitting the claimed method to be performed.”
- Abele made clear that the basic character of a process claim drawn to an abstract idea is not changed by claiming only its performance by computers, or by claiming the process embodied in program instructions on a computer readable medium. Thus, merely claiming a software implementation of a purely mental process that could otherwise be performed without the use of a computer does not satisfy the machine prong of the machine-or-transformation test.
The court went on to contrast this case to SiRF Tech. and Research Corp. Tech. v. Microsoft, where in each case the claims at issue could not have been performed wholly within a human mind, and were upheld as patent eligible under 101. There is much to learn here.
Earlier this year we reported on Walker Digital’s suit against 2K Games, filed April 25, 2011. Walker voluntarily dismissed the April claims against 2K Games and all other defendants on April 28 and May 4. Only to sue them again.
In the present suit, filed July 22, Walker alleges that Take-Two Interactive Software, three subsidiaries, 2K Games Inc., 2K Sports Inc,. and Grand Theft Auto-creator Rockstar Games Inc., infringe on patents for technology enabling electronic tournament game play for multiple players and storing player information for future use.
- Whether the federal securities laws were violated by Defendants’ acts
- Whether the Prospectus and Registration Statement issued by Defendants to the investing public in connection with the Offering omitted and/or misrepresented material facts about Giant Interactive and its business
- Whether Defendants’ statements issued during the Class Period were materially false and misleading; and
- The extent of injuries sustained by members of the Class and the appropriate measure of damages
- The Registration Statement for the IPO was inaccurate and misleading, contained untrue statements of material facts, and omitted necessary and material facts
- Giant Interactive was responsible for the contents and dissemination of the Statement and the Prospectus and, as a result, were strictly liable for the misstatements and omissions
- None of the Defendants made a reasonable investigation or possessed reasonable grounds for the belief that the statements in the Registration Statement were true or were not misleading
- The Registration Statement contained a Prospectus which was used to induce investors to purchase Giant Interactive’s ADSs
- That Giant Interactive solicited purchases for their personal financial gain through the preparation and dissemination of the Prospectus
- The Prospectus contained untrue statements of material fact and omitted facts necessary to make the statements not misleading
- That Defendants were obligated to make a reasonable and diligent investigation of the statements contained in the Prospectus to ensure that such statements were true
- None of the Defendants made a reasonable investigation or possessed reasonable grounds for the belief that the statements contained in the Prospectus were accurate and complete
- Awarding Plaintiffs damages together with interest (for purchase of the ADSs)
- Awarding Plaintiffs their costs and expenses of litigation
- Awarding Plaintiffs further relief as may be just and proper under the circumstances